Ex parte ORR

Board of Patent Appeals and Interferences

Sep 8, 1998

08291719 (B.P.A.I. Sep. 8, 1998)

Application for patent filed August 17, 1994.1
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RODNEY J. ORR
_____________
Appeal No. 97-0519
Application 08/291,7191
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-0519
Application 08/291,719
2
This is a decision on appeal from the examiner's
final rejection of claims 1, 3, 4, 6, 7, 9 through 28, 37, 41
and 42. Claims 8, 38 through 40 and 43 through 55, the only
other claims remaining in the application, stand allowed.
Claims 2, 5 and 29 through 36 have been canceled.
Appellant's invention relates to an emergency
breathing apparatus which includes a decorative and/or
functional front portion that "is sized so that the container
1, mouthpiece 2, and actuator 3 are substantially unobservable
when the device is viewed along a front elevational view
thereof" (specification, page 8). Appellant’s intent here is
that when the emergency breathing device is not in use, it may
be decoratively situated in virtually any setting with the
decorative front portion thereof exposed to view. Independent
claims 1, 12 and 21 on appeal appear to be directed to this
embodiment of appellant’s invention. An additional embodiment
of appellant’s invention is set forth in independent claim 18
on appeal. This embodiment of the invention relates to an
emergency breathing apparatus which includes "means for
Appeal No. 97-0519
Application 08/291,719
3
providing a location of said apparatus in darkness." As
explained in appellant’s specification (page 9),
such a means may include a battery operated light (8) and/or a
sound generating means (10). In addition, such a means may
comprise an outer portion of the apparatus being constructed
from
luminescent material so as to substantially glow in the dark
following exposure to a light source (specification, page 8).
Claims 1, 18 and 21 are representative of the subject matter
on appeal and a copy of those claims, as they appear in the
Appendix to appellant's brief, is attached to this decision.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Benedict 2,550,954 May 1, 1951
Hall 4,637,387 Jan. 20, 1987
Heffer 4,905,684 Mar. 6, 1990
Dosch et al. (Dosch) 5,113,854 May 19, 1992
Claims 1, 3, 4, 6, 7, 9, 11 through 16, 18, 20
through 28, 37 and 41 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hall in view of Heffer and Benedict.
Appeal No. 97-0519
Application 08/291,719
4
Claims 10, 17, 19 and 42 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hall, Heffer and
Benedict as applied to the above-noted claims, and further in
view of Dosch.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those rejec-
tions, we make reference to the examiner's answer (Paper No.
15, mailed November 12, 1996) for the examiner's reasoning in
support
of the rejections, and to appellant's brief (Paper No. 14,
filed August 19, 1996) and reply brief (Paper No. 16, filed
January 16, 1997) 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
Appeal No. 97-0519
Application 08/291,719
5
respective positions articulated by appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.
Turning first to the examiner's rejection of claims
1, 3, 4, 6, 7, 9, 11 through 16, 18, 20 through 28, 37 and 41
under 35 U.S.C. § 103, we note that independent claim 1 on
appeal requires that "a front portion" of the storing means,
the mouth- piece member, and the airflow permitting means of
the emergency breathing apparatus include "a decorative and/or
functional
device," wherein said decorative and/or functional device com-
prises a means for retaining a pictorial image. Claim 12 on
appeal is similar to claim 1 and requires that "a front
portion" of the container for maintaining air under pressure,
the air discharging means, and the air delivering means for
orally
delivering air in said container to a user include "a
decorative front surface," and that said decorative front
Appeal No. 97-0519
Application 08/291,719
6
surface comprises "a frame for slidably receiving a pictorial
representation." Independent claim 21 is also directed to an
embodiment of appel- lant’s invention which has "a decorative
front portion which serves as an aesthetically-pleasing home-
like decoration so that said emergency breathing apparatus can
be conveniently located in a variety of settings." By
contrast, independent claim 18 on appeal makes no mention of a
decorative front portion on the emergency breathing apparatus
defined therein, but instead defines a breathing apparatus
which includes "means for pro-viding a location of said
apparatus in darkness."
The examiner urges (answer, page 5) that Hall
teaches the basic emergency breathing apparatus of appellant’s
claims on appeal, but does not teach "hiding the device behind
an attached picture frame for cosmetic reasons." To address
this difference the examiner looks to Heffer and Benedict,
taking the position that
Heffer teach [sic] a similar emergency
breathing device, and also teach hiding
the emergency breathing device behind a
decorative picture or the like for cosmetic
Appeal No. 97-0519
Application 08/291,719
7
reasons - see column 5 [sic, 3]. Heffer
does not teach a completely portable unit
with a
picture frame mounted thereon. Benedict
teaches a cabinet for dispensing room
deodor- izers or the like, where a picture
frame is mounted on the front thereof for
cosmetic purposes. In view of the art of
record, it is shown that the emergency
breathing appara- tus claimed is known in
the art. Therefore the unobviousness
question is based upon providing a known
emergency breathing device with a cosmetic
cover in the form of a pic- ture frame.
The prior art teaches decora- tively
disguising emergency breathing devices with
picture frames as well as other func-
tional devices. Therefore, the teachings
of the prior art teach that it would have
been obvious to one of ordinary skill in
the art to have decoratively hid an
emergency breath- ing device behind a
picture frame for cos- metic purposes
(answer, page 6).
In an apparent effort to address independent claim
18 on appeal, the examiner has additionally taken the position
that
Heffer teach [sic] the need for visual and
audible location indicating means to allow
the devices to be located during a fire, so
that the victims using the device may be
rescued by firefighters. As such, it would
Appeal No. 97-0519
Application 08/291,719
8
have been obvious to one of ordinary skill
in the art to have provided the Hall device
with such location indication means for the
same reasons (answer, page 7).
Like appellant (brief, page 6), we are of the
opinion that the examiner’s above positions are based on
impermissible hindsight gleaned from appellant’s own
disclosure and not from any fair teaching or suggestion found
in the applied prior art
references themselves. In this regard, we consider that the
examiner has used appellant’s own disclosure and the claimed
invention itself as a blueprint for piecing together unrelated
elements in the prior art so as to defeat patentability of the
apparatus defined in appellant’s independent claims 1, 12, 18
and 21 on appeal.
Absent the disclosure of the present application, it
is our opinion that one of ordinary skill in the art would not
have been motivated to modify the portable breathing apparatus
of Hall in light of the decorative cabinet door (13) of Heffer
Appeal No. 97-0519
Application 08/291,719
9
or the wall mounted picture frame and deodorizing cabinet of
Benedict, so as to arrive at the subject matter set forth in
appellant’s claims 1, 12 and 21 on appeal. As to independent
claim 18, we share appellant’s view that one of ordinary skill
in the art would not have found any suggestion in the applied
references to merely take the warning lights and buzzers from
the wall mounted fume protection cabinet in Heffer and somehow
apply those same
features to the portable breathing apparatus of Hall. Thus,
the examiner's rejection of appellant's claims 1, 3, 4, 6, 7,
9, 11 through 16, 18, 20 through 28, 37 and 41 under 35 U.S.C.
§ 103 based on Hall, Heffer and Benedict will not be
sustained.
We have also reviewed the patent to Dosch applied by
the examiner in the § 103 rejection of dependent claims 10,
17, 19 and 42. However, we find nothing in this reference
which would supply that which we have noted above to be
lacking in the basic combination of Hall, Heffer and Benedict.
Accordingly, the examiner's rejection of claims 10, 17, 19 and
Appeal No. 97-0519
Application 08/291,719
10
42 on appeal under 35 U.S.C. § 103 will likewise not be
sustained.
As should be apparent from the foregoing, the
decision of the examiner rejecting claims 1, 3, 4, 6, 7, 9
through 28, 37, 41 and 42 of the present application is
reversed.
Under the provisions of 37 CFR § 1.196(b), we enter
the following new ground of rejection against claims 18 and 19
on appeal.
Claims 18 and 19 are rejected under 35 U.S.C. § 103
as being unpatentable over Hall in view of Dosch. Hall
discloses a portable breathing apparatus generally like that
set forth in
appellant’s claims 18 and 19 on appeal, except that the
breathing apparatus of Hall does not include "means for
providing a loca- tion of said apparatus in darkness" as in
claim 18 on appeal, and
Appeal No. 97-0519
Application 08/291,719
11
also does not teach or suggest an arrangement wherein an
appara- tus location providing means like that of claim 18
would include "a visual indicating means," which latter means
includes "an outer surface of said device comprising
luminescent material," as in dependent claim 19 on appeal.
However, we note that Dosch discloses a portable emergency
breathing apparatus wherein the apparatus includes one or more
chemiluminescent elements (64) connected thereto to assist in
donning of the breathing apparatus particularly in the dark,
and which chemiluminescent elements are later used for
assisting in finding the wearer by rescue person- nel. Based
on the collective teachings of Hall and Dosch, it is our
opinion that it would have been obvious to one of ordinary
skill in the art at the time of appellant’s invention to
provide the emergency breathing apparatus of Hall with
chemiluminescent or luminescent elements as generally
suggested in Dosch so as to provide the user of Hall’s
breathing apparatus with assistance in donning the apparatus
in the dark and also with a visual indicat- ing means that
Appeal No. 97-0519
Application 08/291,719
12
allows the user to be more easily located in the dark by
rescue personnel.
In addition to the foregoing, we also REMAND this
case to the examiner for a consideration of the appropriate
scope of
the "second means" set forth in independent claim 21 on appeal
under 35 U.S.C. § 112, sixth paragraph, and for a
consideration of whether such a means (1) is distinguishable
from the printed indicia, advertisements or the like (col. 8,
lines 31-39) on the breathing apparatus of Hall, or (2) serves
to distinguish the claimed subject matter from a breathing
apparatus like that resulting from the combination of Hall and
Dosch in our new rejection of claims 18 and 19 above.
This decision contains a new ground of rejection
pur- suant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
Appeal No. 97-0519
Application 08/291,719
13
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that "[a] new
ground of rejection shall not be considered final for purposes
of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both,
and have the matter reconsidered by the
exam- iner, in which event the application
will be remanded to the examiner. . . .
(2) Request that the application be re-
heard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
Appeal No. 97-0519
Application 08/291,719
14
REVERSED, 37 CFR § 1.196(b) AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0519
Application 08/291,719
15
Weiner, Carrier, Burt & Esser, P.C.
24101 Novi Road
Suite 100
Novi, MI 48375-3248
Appeal No. 97-0519
Application 08/291,719
- A1 -
APPENDIX
1. An emergency breathing apparatus, comprising:
means for storing air under pressure;
a mouthpiece member;
means, connected to said storing means and said
mouthpiece member, for selectively permitting airflow from
said storing means to said mouthpiece member;
a front portion of said storing means, said
mouthpiece member, and said airflow permitting means includes
a decorative and/or functional device;
said air storing means, mouthpiece member and said
airflow permitting means are substantially portable for
suspen- sion from a user’s mouth when in use; and
wherein said decorative and/or functional device
comprises a means for retaining a pictorial image.
18. An emergency breathing apparatus, comprising:
means for storing pressurized gas for breathing;
a mouthpiece operatively connected to said storing
means;
means, connected to said storing means, for
selectively discharging air from said storing means to said
mouthpiece in response to initiation of said discharging means
by a user of said apparatus;
means for providing a location of said apparatus in
darkness; and
wherein said gas storing means, said mouthpiece and
said air discharging means are substantially portable and sub-
Appeal No. 97-0519
Application 08/291,719
- A2 -
stantially sized so as to suspend from a user’s mouth when in
use.
21. An emergency breathing apparatus, comprising:
first means for providing air to a user in an
emergency situation;
second means for a decorative and/or functional
purpose;
said first and said second means are substantially
portable;
a predetermined portion of said first means includes
said second means; and
said predetermined portion of said first means which
includes said second means comprises a decorative front
portion which serves as an aesthetically-pleasing home-like
decoration so that said emergency breathing apparatus can be
conveniently located in a variety of settings.