Ex parte Mingledorff

Board of Patent Appeals and Interferences

Feb 23, 1998

08125750 (B.P.A.I. Feb. 23, 1998)

Application for patent filed September 24, 1993.1
While the examiner has approved entry of the amendments filed under 2
37 CFR § 1.116, we note that these amendments have not as of yet been clerically
entered. This oversight should be corrected in any further prosecution before the
examiner.

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publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NEIL H. MINGLEDORFF
__________
Appeal No. 95-2264
Application 08/125,7501
___________
ON BRIEF
___________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to allow claims 5
through 9 and 11 through 22 as amended subsequent to the final rejection in papers
filed on June 27 and 29, 1994 (Paper Nos. 8 and 9). Claims 5 through 9 and 112
Appeal No. 95-2264
Application 08/125,750
Our understanding of this Japanese language document is based upon a3
translation prepared for the U.S. Patent and Trademark Office. A copy of that
translation accompanies this decision.
2
through 22 are all of the claims remaining in this application. Claims 1 through 4 and
10 have been canceled.
Appellant's invention relates to an auxiliary, after-market, rearview mirror
assembly for attachment to a conventional side-mounted rearview mirror that is already
mounted on a vehicle. Objectives of appellant's invention are (1) to eliminate the blind
spot which exists when only using a conventional flat or convex side-mounted vehicle
rearview mirror, and (2) to increase the angular viewing range of such conventional
mirrors without requiring replacement of the conventional mirrors. Claims 21 and 22
are representative of the subject matter on appeal and a copy of those claims appears
in the Appendix to appellant's brief.
The prior art references relied upon by the examiner in rejecting the appealed
claims under 35 U.S.C. § 103 are:
Bloom 4,223,983 Sep. 23, 1980
Otaka 2,144,240 Jun. 4, 1990
(Japanese Patent)3
Musinu 443,990 Aug. 28, 1991
(European Patent Application)

Based on the examiner's commentary on pages 1 through 4 of the examiner's
Appeal No. 95-2264
Application 08/125,750
The examiner’s attention is directed to § 1208 of the M.P.E.P. for proper4
guidance on the content and format of an examiner’s answer.
3
answer (Paper No. 13), we understand the rejection before us on appeal to be that of
claims 5 through 9 and 11 through 22 under 35 U.S.C. § 103 as being unpatentable
over Bloom in view of Musinu and Otaka.4
Rather than attempt to reiterate the examiner's full commentary with regard to
the above-noted rejection and the conflicting viewpoints advanced by the examiner and
appellant regarding the rejection, we make reference to the examiner's answer (Paper
No. 13, mailed October 28, 1994) for the examiner's reasoning in support of the
rejection, and to appellant's brief (Paper No. 12, filed July 26, 1994) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner's rejection of the
appealed claims under 35 U.S.C. § 103 is not well founded and will therefore not be
sustained. Our reasoning in support of this determination follows.
The Bloom patent discloses an auxiliary, or after-market, wide angle mirror
assembly (10) for attachment to a conventional side-mounted rearview mirror (11, 12).
Appeal No. 95-2264
Application 08/125,750
4
Bloom seeks to eliminate the blind spot which exists when only using the conventional
flat, side-mounted vehicle rearview mirror and to increase the angular viewing area of
the conventional mirror. The assembly (10) comprises an integrally molded box-like
body (15), a rigid plate (25) attachable to the body (15), and a relatively thick resilient
pad (26) and adhesive layers (27, 28) on the pad for joining the resilient pad to the
plate (25) and mounting the mirror assembly onto the conventional mirror glass (12).
As noted at column 3, lines 48-59, the exposed curved surface (38) of the box-like body
is coated with a suitable reflective coating to produce the wide angle reflective effect,
but, alternatively, the entire outer surface of the box-like body may be so coated or
mirrored. The mirror assembly of Bloom differs from that set forth in appellant's claim
21 on appeal in that it does not include a first flat mirror and a second convex mirror,
each of which are "positioned within said housing" and in a respective first and second
predetermined relationship with the rear surface of the housing. The mirror assembly
of Bloom differs from that set forth in appellant's claim 22 on appeal in that it does not
include a first convex mirror and a second convex mirror, each of which are "positioned
within said housing" and in a respective first and second predetermined relationship
with the rear surface of the housing.
The examiner's attempt to selectively modify the auxiliary mirror assembly of
Bloom by the disparate teachings of the factory-installed mirror assemblies of Musinu
and Otaka is unavailing. In our opinion, it is contrary to the teachings of Bloom to
Appeal No. 95-2264
Application 08/125,750
As to the examiner’s reliance on the Aikawa et al. reference (answer, pages 7-5
8), we direct attention to In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970), cited in § 706.02(I) of the Manual of Patent Examining Procedure
(M.P.E.P.).
5
modify the integrally molded body or housing therein, with its curved coated mirror
surface (38), in the manner proposed by the examiner so as to arrive at the mirror
assembly as defined in appellant's claims 21 and 22 on appeal. It is our view that in
searching for an incentive for modifying the auxiliary mirror assembly of Bloom the
examiner has impermissibly drawn from appellant's own teachings and fallen victim to
what our reviewing Court has called "the insidious effect of a hindsight syndrome
wherein that which only the inventor has taught is used against its teacher." W. L.
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313
(Fed. Cir. 1983). Since we have determined that the examiner's conclusion of
obviousness is based on a hindsight reconstruction using appellant's own disclosure as
a blueprint to arrive at the claimed subject matter, it follows that we will not sustain the
examiner's rejection of independent claims 21 and 22 under 35 U.S.C. § 103, or that of
claims 5 through 9, 11 through 20 which depend therefrom.5
The decision of the examiner to reject claims 5 through 9 and 11 through 22
under 35 U.S.C. § 103 is reversed.
REVERSED
Appeal No. 95-2264
Application 08/125,750
6
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-2264
Application 08/125,750
7
Donald A. Kettlestrings
414 Hungerford Dr., Ste. 211
Rockville, MD 20850