Ex parte Shelleby et al.

Board of Patent Appeals and Interferences

Sep 22, 1998

08258788 (B.P.A.I. Sep. 22, 1998)

Application for patent filed June 13, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT A. SHELLEBY and DONALD K. WISEMAN JR.
________________
Appeal No. 96-2680
Application No. 08/258,7881
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-19,
all the claims in the present application. Claim 1 is
illustrative:
1. An insulating cover for covering an opening in a torpedo
car comprising:
an upper mesh layer and a lower mesh layer;
an insulating layer positioned between said upper and lower
mesh layers;
Appeal No. 96-2680
Application No. 08/258,788
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tie means for securing said upper mesh layer and said lower
mesh layer together and holding said insulating layer in
position; and
at least one ferromagnetic plate, whereby each said
ferromagnetic plate provides a lift point for lifting said
insulating cover.
The examiner relies upon the following references as
evidence of obviousness:
Schnabel 982,883 Jan. 31, 1911
Evans et al. (Evans) 1,466,823 Sep. 4, 1923
Grant et al. (Grant) 4,424,957 Jan. 10, 1984
Appellants' claimed invention is directed to an insulating
cover for the opening in a torpedo car, as well as methods for
forming and installing the insulating cover. Torpedo cars, or
ladle cars, are used for carrying molten metal. The insulating
cover of the present invention comprises an insulating layer
positioned between upper and lower mesh layers and at least one
ferromagnetic plate. The ferromagnetic plate enables the
insulating cover to be lifted by an electromagnet.
Appealed claims 1-19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Grant in view of either Schnabel or Evans.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
ourselves in agreement with appellants that the prior art applied
by the examiner fails to establish a prima facie case of
Appeal No. 96-2680
Application No. 08/258,788
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obviousness for the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection.
Grant discloses an insulating cover for a torpedo car
similar to the one presently claimed. For instance, the cover of
Grant comprises an insulating layer positioned between upper and
lower mesh layers. The cover of Grant does not have the claimed
ferromagnetic plate. Rather, Grant employs a metallic lattice 39
as a gripping means for holding and placement of the cover by
workmen. Recognizing this deficiency of Grant with respect to
the appealed claims, the examiner cites either Schnabel or Evans
for evidence that "in metallurgical plants it is old and well
known to employ electromagnets to accurately and efficiently
place objects with ferromagnetic components" (page 3 of Answer).
Based on this prior art evidence, the examiner concludes that it
would have been obvious for one of ordinary skill in the art to
employ flat, ferromagnetic plates in place of the metallic
lattice of Grant so that electromagnets could replace manual
labor for positioning and removing insulating covers.
In view of the long-held knowledge in the art of using
electromagnets to move and position ferromagnetic components in
industry, we appreciate that the examiner's underlying reasoning
has a certain intuitive appeal. However, upon thorough scrutiny
of the present record, we find that there is insufficient factual
Appeal No. 96-2680
Application No. 08/258,788
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evidence to support the examiner's legal conclusion of
obviousness within the meaning of 35 U.S.C. § 103. As correctly
urged by appellants, neither the primary nor secondary references
applied by the examiner provide any teaching or suggestion of an
insulating cover of the type disclosed by Grant having a
ferromagnetic plate. In the absence of such teaching or
suggestion in the cited references, the examiner's rationale
relies more upon the impermissible use of hindsight than
evidentiary support. The apparent desirability of modifying the
prior art cannot serve as the basis for obviousness under § 103.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
clm
William H. Logsdon
700 Koppers Bldg.
436 Seventh Ave.
Appeal No. 96-2680
Application No. 08/258,788
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Pittsburgh, PA 15219-1818