McCarthy, In re, 84-1682

• Decision Date: 31 May 1985
• Docket Number: No. 84-1682,84-1682
• Citation: 763 F.2d 411,226 USPQ 99
• Parties: In re Hubert McCARTHY. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 411

763 F.2d 411

226 U.S.P.Q. 99

In re Hubert McCARTHY.

Appeal No. 84-1682.

United States Court of Appeals Federal Circuit.

May 31, 1985.

Joseph W. Berenato and George A. Garvey, Shlesinger, Arkwright, Garvey & Fado, Arlington, Va., for appellant.

Robert D. Edmonds, Associate Sol., United States Patent and Trademark Office, of Arlington, Va., for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Jere W. Sears, Deputy Sol., Washington, D.C.

Before BENNETT, NIES and NEWMAN, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

Hubert McCarthy appeals from the decision of the Patent and Trademark Office Board of Appeals (Board) upholding the Examiner's rejection of claims 16-19 of patent application Serial No. 302,134 as unpatentable for failure to meet the requirements of 35 U.S.C. Sec. 103. We affirm.

I.

Mr. McCarthy's invention relates to shipping form units to be adhered to the outside of a container, to provide an accompanying weatherproof and damage-resistant set of form sheets. As shown below in a modified version of Figure 6 of the patent application, the unit includes first and second sets of multiple shipping forms, 14 and 16 respectively, attached at end portion 44. First set 14 is housed in a heat-sealed adhesive-backed transparent envelope, the clear front panel of which is shown at 18. Using various carbon paper interleaves, written shipping information inscribed on the top form of second set 16 is reproduced on all the forms in both sets, and after removal of second set 16 this information is visible through the envelope enclosing first set 14. This is accomplished without removing any carbon paper from the first set by use of a sheet of double-faced carbon paper below a top sheet of very thin paper.

Fig. 6

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The Examiner's rejection relied on three prior art references: Alderman, U.S. Patent No. 4,153,163; Wolowitz, U.S. Patent No. 2,666,655, and Gardiner, U.S. Patent No. 3,987,960. The Examiner and Board held Mr. McCarthy's claims to be obvious over Alderman in view of Wolowitz, and also taken with Gardiner. Mr. McCarthy's position on appeal is that it was not proper to combine these references, since there is no suggestion in any reference for doing so. Mr. McCarthy asserts that the Board has merely engaged in a hindsight reconstruction of his device, by selecting isolated elements from various references--a practice this court has consistently deplored.

The Commissioner challenges this position, and asserts that since the Board's decision has "a rational basis" it must be affirmed.

II.

The Commissioner, through the Solicitor, raises the threshold question of the scope of appellate review. The Commissioner urges the novel position that this court's role, in fulfillment of the mandate of 35 U.S.C. Secs. 141-144, is limited to an inquiry as to whether the Board's decision has a rational basis. With respect to this appeal, the Commissioner states "[t]here is a rational basis for the Board decision. Consequently, there would not be reversible error therein."

We have articulated, on occasion, the standard by which we review a Board determination that a claimed invention would have been obvious under 35 U.S.C. Sec. 103. Obviousness is a conclusion of law. It is our responsibility, as for all appellate courts, to apply the law correctly; without deference to Board determinations, which may be in error even if there is a rational basis therefor. This principle controlled our predecessor court, see, e.g., In re Carleton, 599 F.2d 1021, 1024 n. 14, 202 USPQ 165, 168-69 n. 14 (CCPA 1979); In re Warner, 379 F.2d 1011, 1016 n. 6, 154 USPQ 173, 177 n. 6 (CCPA 1967) (obviousness is a legal conclusion), cert. denied, 389 U.S. 1057, 88 S.Ct. 811, 19 L.Ed.2d 857 (1968); and continues in this court, see, e.g., In re Andersen, 743 F.2d 1578, 1580, 223 USPQ 378, 380 (Fed.Cir.1984); In re De Blauwe, 736 F.2d 699, 703, 222 USPQ 191, 195 (Fed.Cir.1984) ("we caution the Solicitor that obviousness is a question of law").

There is no authority for the asserted restriction of the scope of appellate review under 35 U.S.C. Secs. 141-144 to a "rational basis" standard. Such a standard is inimical to our duty to ensure the legal correctness of the Board's decisions that are appealed, a duty entrusted to the courts.

III.

On review of the Board's decision concerning Mr. McCarthy's claimed invention, applying 35 U.S.C. Sec. 103 as a matter of law, we conclude that Mr. McCarthy's invention as a whole would have been obvious to a person having ordinary skill in that art.

The Examiner...