Ex parte Sutherland

Board of Patent Appeals and Interferences

Jul 28, 1998

08233216 (B.P.A.I. Jul. 28, 1998)

Application for patent filed April 26, 1994. According to appellant,1
this application is a continuation of application 07/844,588, filed March 27,
1992.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT L. SUTHERLAND
_____________
Appeal No. 97-2807
Application 08/233,2161
______________
ON BRIEF
_______________
Before FRANKFORT, STAAB and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 26 through 29 and 32 through 35, all of the
claims remaining in the application. Claim 1 through 25, 30 and
31 have been canceled.
Appeal No. 97-2807
Application 08/233,216
2
Appellant's invention relates to a ski which is designed "to
remain closer [to] the surface of soft snow when skiing downhill
such that it will float, and plane, to allow foot steering"
(specification, page 1). Claim 26 is representative of the
subject matter on appeal and a copy of that claim may be found in
the Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Guild 3,926,451 Dec. 16, 1975
Sarver 4,007,946 Feb. 15, 1977
Bortoli 4,264,087 Apr. 28, 1981
Johnston et al. (Johnston) 4,343,485 Aug. 10, 1982
Claim 26 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Johnston in view of Sarver.
Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Johnston in view of Sarver as applied to claim
26 above, and further in view of Guild.
Claims 28, 29 and 32 through 35 stand rejected under § 103
as being unpatentable over Johnston, Sarver and Guild as applied
above to claim 27, and further in view of Bortoli.
Appeal No. 97-2807
Application 08/233,216
3
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 rejections, we make
reference to the examiner's answer (Paper No. 30, mailed March 3,
1997) for the examiner's reasoning in support of the rejections,
and to appellant's brief (Paper No. 29, filed December 9, 1996)
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 determinations which follow.
Turning first to the examiner's rejection of independent
claim 26 under 35 U.S.C. § 103, we note that while Johnston does
disclose a long instructional ski which has a length within
appellant's claimed range, the width (c) of such ski at its
widest point is significantly less than that required in
appellant's claim 26. As for the "short" ski of Sarver, while it
may have a width within appellant's claimed range, the length of
this ski is significantly less than that required in appellant's
claim 26. Moreover, and perhaps more importantly, the entire
Appeal No. 97-2807
Application 08/233,216
4
thrust of the disclosure in Sarver is to a "new skiing technique"
(col. 3, line 19, et seq.) and to a specially designed ski,
having a flexible forward shovel section and a less flexible
after section, specifically configured for use in practicing that
new skiing technique.
Given the wide disparity in the types of skis disclosed in
Johnston and Sarver, and the clear differences in the manner in
which such skis are intended to be used, we share appellant's
view that Johnston and Sarver are not properly combinable in the
manner urged by the examiner. In our opinion, the only possible
reason that one of ordinary skill in the art would have con-
sidered the combination as proposed by the examiner is based on
hindsight derived from appellant's own disclosure and not from
any teachings or suggestions found in the applied references
themselves. Like appellant, we consider that, absent the
disclosure of the present application, one of ordinary skill in
the art would not have been motivated to modify the long
instructional ski of Johnston in view of the teachings associated
with the short specialized ski of Sarver. For this reason, the
examiner's rejection of appellant's claim 26 under 35 U.S.C.
§ 103 will not be sustained.
Appeal No. 97-2807
Application 08/233,216
5
We have also reviewed the patents to Guild and Bortoli
applied by the examiner in the § 103 rejections of claims 27
through 29 and 32 through 35. However, we find nothing in either
of these references which would supply that which we have noted
above to be lacking in the patents to Johnston and Sarver.
Accordingly, the examiner's rejections of dependent claims 27
through 29 and 32 through 35 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 26 through 29 and 32 through 35 of
the present application is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2807
Application 08/233,216
6
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