Ex parte Brady

Board of Patent Appeals and Interferences

Apr 9, 1999

08590388 (B.P.A.I. Apr. 9, 1999)

Application for patent filed January 25, 1996. 1
According to appellant, this application is a continuation of
Application No. 08/338,002, filed November 10, 1994, now
abandoned.
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journal and (2) is not binding precedent of the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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. BRADY
____________
Appeal No. 98-1428
Application No. 08/590,3881
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1428
Application No. 08/590,388
2
This is a decision on appeal from the examiner's final
rejection of claims 1 through 13, which are all of the claims
pending in this application.
Appellant’s invention relates to a flexible liner for
insertion into a waste receptacle and to a method of
installing such a flexible liner in a waste receptacle.
Independent claims 1, 10 and 12 are representative of the
subject matter on appeal and a copy of those claims may be
found in Appendix A of appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Meroney 3,148,799 Sep. 15,
1964
Cote 4,027,774 Jun.
7, 1977
Metcalf 5,028,022 Jul. 2,
1991
An additional prior art reference of record in the
present application relied upon by this panel of the Board in
a new ground of rejection entered pursuant to 37 CFR §
1.196(b) is:
Appeal No. 98-1428
Application No. 08/590,388
3
Jaeger 4,328,895 May 11,
1982

Claims 1 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Metcalf in view of Meroney.
Claims 10 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Metcalf in view of Meroney as
applied to claims 1 through 9 above, and further in view of
Cote.
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. 10, mailed October 23, 1997) for the examiner's complete
reasoning in support of the rejections, and to appellant’s
brief (Paper No. 9, filed September 5, 1997) and reply brief
(Paper No. 11, filed October 31, 1997) for appellant’s
arguments thereagainst.
Appeal No. 98-1428
Application No. 08/590,388
4
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 reached the determinations
which follow.
Looking to the examiner's prior art rejection of appealed
claims 1 through 9 under 35 U.S.C. § 103 as being unpatentable
over Metcalf in view of Meroney, we note that both of these
patents disclose a waste receptacle liner and method of use
wherein a frame structure is associated with the liner as a
means for holding the liner to the top portion of the waste
receptacle. In Metcalf, the frame structure is a separate
member that fits over and around the outside of the liner (4)
after the liner has been inserted into a trash receptacle (2)
and has had a top portion thereof folded over the top edge of
the receptacle, as seen, for example, in Figures 2, 7 and 8.
The frame structure (e.g., Figs. 3-6) includes downwardly
depending grasping fingers (14) directed toward the interior
Appeal No. 98-1428
Application No. 08/590,388
5
of the trash receptacle, or, as seen in Figure 7, includes
deformable scalloped projections (21) that may be deformed
interiorly of the trash receptacle, so as to capture the liner
relative to the trash can.
In Meroney, the frame structure (e.g., 38, 40, 42, 44 of
Figure 1) is made of stiffened paper or plastic (col. 3, lines
9-12) and is attached to the interior surface of the liner
sleeve (32) by adhesive or heat sealing. Figure 4 of Meroney
shows a simplified version of the receptacle liner therein
where only panels (68, 70) are provided at the mouth of the
liner sleeve. As can be seen in Figure 5, the panels (68, 70)
may carry a pressure-sensitive adhesive strip (76) protected
by a readily removable protective film (78) for allowing the
panels to be attached to the exterior of a receptacle to
assist in holding the liner sleeve about the rim of the
receptacle.
Appeal No. 98-1428
Application No. 08/590,388
6
Contrary to the examiner’s reasoning on pages 3-4 of the
answer, we do not consider that it would have been obvious to
one of ordinary skill in the art
to have employed an adhesive strip along the bag
upper edge in the device of Metcalf, in view of
the adhesive mounting strip teaching in Meroney,
motivated by the cost savings of employing such
mounting teaching and the elimination of the
need for the channel member in Fig. 1 of
Metcalf.
Like appellant, we see no teaching or suggestion in
either Metcalf or Meroney which would have motivated one of
ordinary skill in the art to combine these references so as to
result in eliminating the frame structure (10) or (18) of
Metcalf and in application of an adhesive strip directly to
the bag liner (4) of Metcalf, as is urged by the examiner. If
anything, it would appear to us that one of ordinary skill in
the art considering the collective teachings of these patents
would have, at best, found it obvious to substitute the
attached frame structure of Meroney for the separate frame
structure of Metcalf, thus basically resulting in essentially
the same structure already disclosed in Meroney. For these
Appeal No. 98-1428
Application No. 08/590,388
7
reasons, we will not sustain the examiner’s rejection of
claims 1 through 9 on appeal under
35 U.S.C. § 103.
Appeal No. 98-1428
Application No. 08/590,388
8
With regard to the examiner's rejection of method claims
10 through 13 under 35 U.S.C. § 103 based on Metcalf and
Meroney as combined above, and further in view of Cote, we
share appellant’s view as expressed on pages 9-11 of the brief
and in the reply brief, that the examiner’s proposed
combination of these patents is completely unsupported by the
teachings of the references themselves and is based on
impermissible hindsight derived solely from appellant’s own
teachings and disclosure. For that reason, the examiner’s
rejection of claims 10 through 13 under 35 U.S.C. § 103 will
likewise not be sustained.
As is apparent from the foregoing, the decision of the
examiner rejecting claims 1 through 13 of the present
application is reversed.
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new ground of rejection against
appellant’s claims 1, 2 and 5 through 9 on appeal.
Claims 1, 2 and 5 through 9 are rejected under 35 U.S.C.
Appeal No. 98-1428
Application No. 08/590,388
9
§ 103 as being unpatentable over Metcalf in view of Jaeger.
Metcalf shows (in Figure 1) a flexible liner (4) for insertion
into a waste receptacle (2). This liner has a construction
like that set forth in appellant’s claims 1, 2, 5 and 6 on
appeal, except that it has no adhesive strip disposed on the
outer
surface of the liner side wall adjacent the upper edge thereof
as required in the claims on appeal. Jaeger shows a container
(10) in the form of a bag for collecting and disposing of
cigarette butts, ashes and other tobacco smoking wastes. The
bag includes a strip of self-sticking adhesive (36) applied to
the outside of at least one side wall and a removable strip of
protective cover material (38) over the adhesive. As
indicated in column 2, lines 56-63, of Jaeger
The container provided with this adhesive stripe
can be adhered to the edge of a table, for
example, so that its opening is facing upward.
In like manner, the disposable ash container can
be attached, for example, to the dashboard of
motor vehicles within reach of a passenger, and
can thus serve in lieu of the car ash tray to
receive cigarette butts and other tobacco
smoking wastes.
Appeal No. 98-1428
Application No. 08/590,388
10
Further, in Jaeger column 4, lines 27-30, it is noted
that the adhesive strip should be applied to the sidewall of
the bag that will confront the side that is folded down when
the bag is closed for disposal.
Given the collective teachings of Metcalf and Jaeger, 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 liner bag (4) of Metcalf with an adhesive strip
positioned as in Jaeger so as to allow the liner bag of
Metcalf to be used in the general manner suggested in Jaeger,
i.e., by being adhered to
the edge of a table by the adhesive strip (36), or to a
surface of the dashboard of a motor vehicle, and used for the
collection of waste material, and then closed and disposed of
by having an upper portion of the bag folded down and brought
into contact with the adhesive strip so as to seal the bag
prior to disposal.
As for the release paper of claim 7 on appeal, Jaeger
provides a teaching of such a release covering at (38) to
Appeal No. 98-1428
Application No. 08/590,388
11
protect the adhesive and maintain its viability. While it is
not entirely clear exactly what the specific nature of the
contact adhesive strip (36) in Jaeger is, we are of the
opinion that it would have been obvious to one of ordinary
skill in the art that such a strip would be either a segment
of two sided tape like that set forth in appellant’s claim 8,
or a strip of adhesive applied directly to the outer surface
of the bag as in appellant’s claim 9, given that both of these
forms of contact adhesive strips are old and well known in the
art as alternatives to one another. In this regard, we also
note that Jaeger use both the term "stripe of contact
adhesive" (col. 4, lines 17-18) and "contact adhesive strip"
(col. 4, lines 22) to describe element (36) seen in Figure 1
of the patent.
This decision contains a new ground of rejection pursuant
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 (Oct. 21, 1997)).
37 CFR
Appeal No. 98-1428
Application No. 08/590,388
12
§ 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 exercise
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 examiner, in
which event the application will be remanded to
the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .
Appeal No. 98-1428
Application No. 08/590,388
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136 (a).
REVERSED; 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/sld
Appeal No. 98-1428
Application No. 08/590,388
14
Kit M. Stetina
Stetina, Brunda and Buyan
24221 Calle De La Louisa
Suite 401
Laguna Hills, CA 92653
Shereece
Appeal No. 98-1428
Application No. 08/590,388
APJ FRANKFORT
APJ
APJ
REVERSED
Prepared: March 20, 2000