Ex parte Meoli Jr. et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

08609551 (B.P.A.I. Sep. 29, 1998)

Application for patent filed March 1, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RUDY B. MEOLI JR. and ARMANDO PADILLO
__________
Appeal No. 98-1204
Application No. 08/609,5511
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-21, which constitute all of the
claims of record in the application.
Appeal No. 98-1204
Application No. 08/609,551
A rejection under 35 U.S.C. § 112 erroneously was2
included in the listing of standing rejections on page 4 of
the Answer. This rejection was overcome by amendment (see
Paper No. 7).
This is erroneously recited in the Answer as 08/609,551.3
2
The appellants’ invention is directed to a spreader bar
for a hammock. The subject matter before us on appeal is
illustrated by reference to claim 1, which has been reproduced
in an appendix to the Brief (Paper No. 8).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Nickerson 369,546 Sep. 6,
1887
Palmer 468,576 Feb. 9, 1892
Lloyd 631,747 Aug. 22, 1899
THE REJECTIONS2
Claims 20 and 21 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting over claims 21 and 22 of copending Application
Serial No. 08/609,550.3
Claims 1, 4, 6 and 7 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Nickerson.
Appeal No. 98-1204
Application No. 08/609,551
3
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nickerson.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nickerson in view of Palmer.
Claims 5, 8-11 and 13-19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Nickerson in view of Lloyd.
Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nickerson in view of Lloyd and Palmer.
The rejections are explained in Paper No. 4 (the final
rejection).
The appellants’ arguments are set forth in the Brief.
OPINION
The Double Patenting Rejection
No terminal disclaimer has been filed, and no arguments
have been made disputing the examiner’s position with regard
to this rejection. We therefore shall sustain it.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
Appeal No. 98-1204
Application No. 08/609,551
4
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994). Anticipation by a prior art reference
does not require either the inventive concept of the claimed
subject matter or recognition of inherent properties that may
be possessed by the reference. See Verdegaal Brothers Inc. v.
Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). The reference need not teach what the
applicant is claiming, all that is required is that the claim
on appeal "read on" something disclosed in the reference,
i.e., all limitations of the claim are found in the reference.
See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
Claims 1, 4, 6 and 7 stand rejected as being anticipated
by Nickerson, which discloses an elongated spreader bar body
A. The bar is provided with apertures H for receiving cords.
While as pictured in Figure 1 the Nickerson spreader bar
body is oriented so that it is curved vertically, we agree
with the examiner’s conclusion that the claim language reads
Appeal No. 98-1204
Application No. 08/609,551
5
on it, for it meets the claim requirement that the curve be in
a direction “horizontally transverse to [its] direction of
elongation” (emphasis added) if it is reoriented by rotating
it ninety degrees. Although the appellants argue that such is
improper, that it not the case. The disclosure of the
appellants’ invention informs us that the inventive spreader
bar is to be used in conjunction with the body supporting
element of a hammock. However, claim 1 is more broad, in that
it is directed only to a “spreader bar.” The claim contains
no language that relates the orientation of the spreader bar
to other structures, much less to the body supporting portion
of the hammock, and therefore it is simply a free article, the
orientation of which is not restricted by its relationship to
another element.
It therefore is our conclusion that the subject matter
recited in claim 1 is anticipated by Nickerson, and we will
sustain this rejection. In view of the fact that the
appellants have elected not to challenge with any reasonable
specificity before this Board the rejection of dependent
claims 4, 6 and 7, they are grouped with independent claim 1,
from which they depend, and fall therewith. See In re
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Application No. 08/609,551
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Nielson, 816 F.2d 1567, 1570, 2 USPQ2d 1525, 1526 (Fed. Cir.
1987).
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 USC § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
Appeal No. 98-1204
Application No. 08/609,551
7
Independent claim 2 stands rejected as being unpatentable
over Nickerson. It adds to claim 1 the requirement that the
radius of curvature of the spreader bar body be approximately
twenty-two inches. The appellants have decided to group this
claim with claim 1 (Brief, argument section, page 1), the
rejection of which we have sustained, and therefore we shall
sustain the rejection of claim 2 also.
Claim 3 adds to claim 1 the requirement that the bar body
include upper and lower bar members having “snap connectors”
for secure interconnection. This claim stands rejected on the
basis of Nickerson and Palmer. Nickerson fails to disclose or
teach either of these added limitations. Palmer does disclose
a spreader bar constructed of upper and lower members.
However, the two bar members in Palmer are attached together
by rivets, which are not, in our view, the same as or
equivalent to the “snap connectors” called for in the claim.
Rivets have no “snap together” capability, but must be
installed by a special tool. This is not the case with the
appellants’ “snap connectors” (see specification, pages 12 and
13, and Figures 6 and 11). It therefore is our determination
that the combined teachings of Nickerson and Palmer fail to
Appeal No. 98-1204
Application No. 08/609,551
See, for example, Merriam Webster’s Collegiate4
Dictionary, Tenth Edition, 1996, page 1270.
8
establish a prima facie case of obviousness with regard to the
subject matter of claim 3, and we will not sustain the
rejection.
Claim 5 depends from claim 1, and adds the requirement
that the apertures be “tubular” and “radially oriented” with
respect to the arc of curvature of the spreader bar body. The
common definition of “tube” is “a cylindrical structure.” 4
This is not contradicted by the explanations provided in the
appellants’ disclosure. The apertures (H) in the Nickerson
spreader bar clearly are not tubular, but have an elongated
cross-section. In addition to this shortcoming, the apertures
are not radially oriented with respect to the arc of curvature
of the spreader bar, but are perpendicular thereto. It is the
examiner’s position on pages 6-7 of the Final Rejection that,
in view of Lloyd,
[i]t would have been obvious to curve the spreader
bar of Nickerson horizontally and outwardly from the
longitudinal axis . . . in order to increase the
body supporting area of the hammock. The apertures
of the combined structure would inherently have a
radial orientation since the bar is curved.
Appeal No. 98-1204
Application No. 08/609,551
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Lloyd discloses a wire mesh hammock having a spreader bar
(9) that functions to “extend the hammock at each end” (page
2, line 29). Each is described as “a flexible spreader,
preferably a flat spring or steel strip,” which is “secured to
the edges of the hammock” by clips (page 2, line 32 et seq.).
As shown in Figure 1 of the Lloyd drawings, the spreader bar
is curved “horizontally and longitudinally,” as is required by
this claim. However, the mere fact that the prior art
structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Here, we fail to perceive any
teaching, suggestion or incentive in the references cited
against the claim which would have led one of ordinary skill
in the art to modify the Nickerson spreader bars in the manner
proposed by the examiner, inasmuch as the function of
extending the hammock at each end already is being performed
by Nickerson’s vertically curved spreader bars. Our reviewing
court stated in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992):
Appeal No. 98-1204
Application No. 08/609,551
10
It is impermissible to use the claimed invention as
an instruction manual or "template" to piece
together the teachings of the prior art so that the
claimed invention is rendered obvious. This court
has previously stated that "[o]ne cannot use
hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate
the claimed invention" (citations omitted).
It is our view that the only suggestion for the proposed
change is found in the hindsight accorded one who first viewed
the appellants’ disclosure, and therefore a prima facie case
of obviousness has not been established by the applied
references. In view of this, we will not sustain the
rejection of claim 5.
Independent claim 8 also stands rejected on the basis of
Nickerson in view of Lloyd. In the preamble, this claim
expresses the invention as being a spreader bar “for
connection to a body supporting member,” and goes on to
require that the spreader bar body be “curved longitudinally
outwardly relative to the body supporting member when
connected thereto” (emphasis added). The examiner has applied
the same rationale here that was used in combining Nickerson
and Lloyd in the rejection of claim 5, and we find it to be
unacceptable on the same basis we advanced against it there.
Appeal No. 98-1204
Application No. 08/609,551
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That is, from our perspective, one of ordinary skill in the
art would not have been motivated to modify the Nickerson
spreader body in the manner proposed by the examiner. This
being the case, the teachings of these two references fail to
establish a prima facie case of obviousness with regard to the
subject matter of claim 8, and we will not sustain the
rejection. We also will not sustain the rejection of claims
9-11 and 13-19, which depend from claim 8 and were rejected on
the same grounds.
Claim 12 adds to claim 8 that the spreader bar body is
split into upper and lower members, and that these members
intersect the apertures through their entire length. The
examiner adds Palmer to the basic combination for its teaching
of such an arrangement. Be that as it may, Palmer fails to
alleviate the problem of lack of suggestion to combine
Nickerson and Lloyd in the manner proposed by the examiner,
which rendered the rejection of claim 8 fatally defective.
Thus, the three references applied against claim 12 fail to
meet the threshold of establishing a prima facie case of
obviousness, and we will not sustain the rejection.
Appeal No. 98-1204
Application No. 08/609,551
12
We have carefully considered all of the arguments raised
by the appellants but, as to the Section 102 rejection of
claims 1, 4, 6 and 7, and the Section 103 rejection of claim
2, they have not convinced us that the decision of the
examiner was in error. Our position with regard to them
should be apparent from the explanations we have provided.
SUMMARY
The provisional double patenting rejection of claims 20
and 21 is sustained.
The rejection of claims 1, 4, 6 and 7 under 35 U.S.C.
§ 102(b) is sustained.
The rejection of claim 2 under 35 U.S.C. § 103 is
sustained.
The rejection of claim 3 under 35 U.S.C. § 103 is not
sustained.
The rejection of claims 5, 8-11 and 13-19 under 35 U.S.C.
§ 103 is not sustained.
The rejection of claim 12 under 35 U.S.C. § 103 is not
sustained.
The decision of the examiner is affirmed-in-part.
Appeal No. 98-1204
Application No. 08/609,551
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Appeal No. 98-1204
Application No. 08/609,551
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH, )
Senior )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
bae
Appeal No. 98-1204
Application No. 08/609,551
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Chris Papageorge
14625 South Vermont #5
Gardena, CA 90247