Ex parte WEI

Board of Patent Appeals and Interferences

Sep 29, 1998

08538419 (B.P.A.I. Sep. 29, 1998)

Application for patent filed October 2, 1995.1
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not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte REN R. WEI
__________
Appeal No. 98-0973
Application No. 08/538,4191
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-6, which constitute all of the
claims of record in the application.
Appeal No. 98-0973
Application No. 08/538,419
2
The appellant's invention is directed to a relaxing
device comprising a hollow spherical ball having a sounding
device located within. The subject matter before us on appeal
is illustrated by reference to claim 1, which has been
reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Lambert 1,286,657 Dec. 3,
1918
Salisbury 2,003,957 Jun.
4, 1935
THE REJECTION
Claims 1-6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Salisbury in view of Lambert.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
Appeal No. 98-0973
Application No. 08/538,419
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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). 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, 221
USPQ 1125 (Fed. Cir. 1984). 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
Appeal No. 98-0973
Application No. 08/538,419
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USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
All of the claims stand rejected as being unpatentable
over Salisbury in view of Lambert. It is the examiner’s
position that Salisbury lacks only one of the limitations set
forth in independent claim 1, and that is “the teaching for
the ball to have a decorative coating at a plurality of spaced
locations” (Answer, page 3). We agree with the appellant that
this is only one of the limitations lacking in Salisbury.
The initial limitation recited in independent claim 1 is
that the relaxing device comprises a “hard” hollow spherical
ball. The appellant has provided guidance as to the
definition to be applied to “hard,” in that the suggested
materials from which it is to be made are “tough plastic,
aluminum, steel or iron,” with iron being preferred because of
its “sounding properties” (specification, page 3). We agree
with the appellant that this is not taught by Salisbury. The
ball disclosed by Salisbury is intended to be a toy for dogs,
and is described as being of “semihard rubber” (page 1, column
1, line 10) “to make the ball capable of withstanding the
chewing” while providing sufficient hardness in the hollow
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interior to repel the noise making ball encapsulated therein
to emit the desired jingling sound (page 1, column 2, line 3
et seq.). We also observe that the term “bounds” is used to
refer to the action of the ball when in use (page 1, column 2,
line 11), which indicates that the material from which it is
made is sufficiently soft to allow the ball to bounce.
Furthermore, it is our view that the artisan would understand
that a ball to be chewed by a dog must not have a surface that
is of a hardness such as that of iron or steel, in that it
could not be chewed and therefore would not be attractive to
dogs.
Claim 1 further requires that the ball be “of a size to
be completely encircled and gripped in the palm of the hand of
the user.” The appellant has provided guidance here, also, by
stating on page 1 of the specification that the inventive ball
is “smaller than a billiard ball,” and on page 3 that in the
preferred embodiment it has a diameter of “about one and one
half inches so as to be easily held in the palm of the hand.”
Salisbury provides no explicit size information about the dog
toy disclosed therein, and therefore it would be speculative
to assume that it meets this term of the claim.
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Application No. 08/538,419
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The claimed ball also must have “a relatively thin walled
rigid shell to resist any deformation in its normal range of
use.” The Salisbury ball is disclosed as being “so thick as
to prevent pressure on the ball from inverting the curvature
of any particular section of the ball” and must be capable of
withstanding “the rough chewing of a dog” (page 1, column 1,
lines 45-55). This suggests that it is contemplated that some
deformation would occur. It therefore is our view that one of
ordinary skill in the art would not have considered the
Salisbury ball to have the required “rigid” shell.
There also is no indication in Salisbury that the ball
has a “smooth, hard, decorative coating on the outer surface
of the shell.” In fact, it would appear, in our view, that in
order for the Salisbury ball to function as a toy for dogs,
such a coating would not be desirable.
Finally, as the examiner has admitted, Salisbury clearly
does not disclose or teach placing a figure 8 on the surface
at a plurality of locations.
Lambert discloses a billiard ball characterized by the
presence of a number of “level areas” (7), where symbols can
be placed. While no details are provided as to the material
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from which the ball is made, in view of its intended use it
can safely be assumed that its surface is hard. It is
described as being colored, although there is no clue as to
whether this is accomplished by coating the outside surface,
or by coloring the material from which it is made. As
evidenced by the shading in Figure 2, the Lambert ball is
solid, and does not have an interior chamber.
It is the examiner’s opinion that it would have been
obvious to one of ordinary skill in the art to provide the
Salisbury ball with a decorative coating “for purposes of mere
ornamental design” (Answer, page 3). We disagree with this
because there is no clear teaching in Lambert that color is
provided by a coating, as well as on the basis that there is
no evidence from which to conclude placing a coating upon the
Salisbury ball would serve a legitimate purpose, inasmuch as
its intended use is as a chew toy for dogs. In fact, its
intended use would seem to provide a disincentive for such a
modification, since a “coating” would seem to be incompatible
with a surface that is to be chewed by an animal.
In addition, as we pointed out above, there are several
other shortcomings in the Salisbury reference which would not
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be alleviated by looking to the teachings of Lambert. To make
the Salisbury ball hard, as in Lambert, would fly in the face
of its intended use and thus, from our perspective, one of
ordinary skill in the art would not have been motivated to do
so. Nor does Lambert suggest that the ball be of lesser size
than a billiard ball, about one and one half inches in
diameter, since it is a billiard ball. Finally, although
Lambert does not preclude the use of the figure 8 on the ball,
it does not suggest that this particular numeral be used,
which the appellant considers to be of significance in the
present invention (specification, pages 2 and 4).
It therefore is our conclusion that the teachings of the
two applied references fail to establish a prima facie case of
obviousness with regard to the subject matter recited in claim
1. This being the case, we will not sustain the rejection of
independent claim 1 or, it follows, of claims 2-6, which
depend therefrom.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-0973
Application No. 08/538,419
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NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
bae
Appeal No. 98-0973
Application No. 08/538,419
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Eli Lieberman
1712 Overlook Drive
Silver Spring, MD 20903