Ex parte Britt

Board of Patent Appeals and Interferences

Dec 22, 1999

08688825 (B.P.A.I. Dec. 22, 1999)

Application for patent filed July 31, 1996. According to the1
appellant, this application is a continuation of Application No. 08/354,718,
filed December 6, 1994, now abandoned.
The examiner's comment on page 2 of the answer that the amendment2
after final rejection filed July 15, 1996 in parent Application No. 08/354,718
has not been entered appears to be in error. The file record indicates that
(continued...)
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for publication in a law journal and (2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MERRIE BRITT
____________
Appeal No. 1999-0635
Application No. 08/688,8251
____________
ON BRIEF
____________
Before CALVERT, COHEN and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2, 5 and 7 through 20, which are all of
the claims pending in this application.2
Appeal No. 1999-0635 2
Application No. 08/688,825
(...continued)2
the amendment was entered, pursuant to the appellant's request to do so on
page 2 of the "Request for File Wrapper Continuing Application under 37 CFR §
1.62" filed July 31, 1996. In any event, based on the examiner's answer (page
3) and the appendix to the reply brief filed April 17, 1998 (Paper No. 30),
there is no dispute as to the claims involved in this appeal.
We REVERSE.
BACKGROUND
The appellant's invention relates to an extensible door
barrier in combination with a door. An understanding of the
invention can be derived from a reading of exemplary claim 5,
which appears in the opinion section of this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Pyle 671,414 Apr. 2, 1901
Warfel 1,204,833 Nov. 14, 1916
Hutchinson, Jr. (Hutchinson) 1,716,060 Jun. 4,
1929
Christison 2,455,112 Nov. 30, 1948
The following rejections are before us for review.
1. Claims 5, 7-15 and 17-20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Christison in view of
Hutchinson.
Appeal No. 1999-0635 3
Application No. 08/688,825
In claims 9 and 15, the "opening of said door" (emphasis added) lacks3
clear antecedent basis. Specifically, the claims recite an opening "between
the door and the door frame" and not an opening "of said door." While this
informality does not render the claims indefinite, it is deserving of
(continued...)
2. Claims 2 and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Christison in view of Hutchinson, as
applied above, and further in view of Pyle.
3. Claims 5, 7-15 and 17-20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Warfel in view of
Hutchinson.
4. Claims 2 and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Warfel in view of Hutchinson, as
applied above, and further in view of Pyle.
Reference is made to the brief (Paper No. 28) and reply
brief (Paper No. 30) and the answer (Paper No. 29) for the
respective positions of the appellant and the examiner with
regard to the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims , to the applied prior art references, and to the3
Appeal No. 1999-0635 4
Application No. 08/688,825
(...continued)3
correction in the event of further prosecution before the examiner.
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Before addressing the examiner's rejections based upon
prior art, it is essential that the claimed subject matter be
fully understood. Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. §§ 102 and 103 begins with
a determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472
(Fed. Cir. 1988). Accordingly, we will initially direct our
attention to appellants' claim 5 to derive an understanding of
the scope and content thereof.
Claim 5 reads as follows:
An extensible doorway barrier for deterring
passage through an opening of a door, the door
mounted to a door frame, said barrier comprising:
Appeal No. 1999-0635 5
Application No. 08/688,825
flexible material means for spanning a lower
portion of the otherwise unobstructed opening of
said door to provide a visual barrier deterring
egress of pets or small children while leaving an
upper portion of the opening unobstructed, said
flexible material means yielding downwardly in
response to weight of a child or pet attempting to
climb the flexible material means;
a reel attached to a proximal end of said
flexible material means for storing said flexible
material means and paying out said flexible material
means as the door is opened, said reel adapted for
attachment to one of said door frame and said door
on a side thereof proximate to the door opening;
rewinding means associated with said reel for
maintaining tension in said flexible material means
during opening of the door, for facilitating said
yielding downwardly in response to weight of said
flexible material means, and for automatically
rewinding said flexible material means onto said
reel as the door is closed; and
attachment means connected to a distal end of
said flexible material means and adapted for
connection to at least one attachment point on the
other of the door frame and the door, proximate to
the door opening, for permitting manual attachment
of said distal end to, and removal of said distal
end from, said attachment point [emphasis added].
Where words in the preamble of a claim are essential to
point out the invention defined in the claim, those words do
constitute a limitation which must be accorded weight in
Appeal No. 1999-0635 6
Application No. 08/688,825
interpreting the scope of the claim. See Kropa v. Robie, 187
F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the case of appellant's claim 5, the language in the
body of the claim shown in bold above appears to us to
incorporate the door mentioned in the preamble as part of the
claimed invention because incorporation of the door is
essential to permit one of ordinary skill in the art to
understand what is meant by the limitations shown in bold and,
hence, what structure is required to meet those limitations.
Moreover, as the door is further limited in the preamble as
being "mounted to a door frame," this limitation is further
incorporated as part of the claimed invention. See Bell
Communications Research, Inc. v. Vitalink Communications
Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995)
(In a claim reciting in the preamble a "method for
transmitting a packet . . . said packet including a source
address and destination address," the steps of broadcasting
"said packet" and associating an identifier with "said packet"
in the body of the claim were held to have incorporated by
reference the preambular phrase "said packet including a
source address and destination address." As a result, the
Appeal No. 1999-0635 7
Application No. 08/688,825
The appellant expressly indicates that these arguments apply to4
independent claim 5, as well as to independent claims 9 and 15 (brief, page
23).
claim was held to be limited to a method for transmitting
packets having both source and destination addresses.).
For the above reasons, we interpret claim 5 as being
directed to a combination of an extensible doorway barrier and
a door mounted to a door frame. This is consistent with the
appellant's arguments in the brief, which read as follows:
Hutchinson, Christison, and Warfel do not suggest a
flexible material structure which spans a lower
portion of an otherwise unobstructed opening of a
door . . . while leaving an upper portion of the
opening unobstructed to allow deliveries. None of
these references suggests a device where the
flexible material is paid out as the door is opened
and rewound as the door is closed [brief, page 12].
[T]here is no suggestion in any reference of
mounting a reel and attachment on the opening side
of the door frame so that the material spans the
door opening, rather than the door itself as taught
by Hutchinson. For these reasons, the proposed
combinations ultimately fail to create a structure
similar to that of the amended claims [brief, pages
13 and 14].4
That claims 9 and 15, the remaining independent claims on
appeal, are also directed to the combination of a door mounted
Appeal No. 1999-0635 8
Application No. 08/688,825
(movably or swingably) to a door frame, we think, requires no
discussion.
Turning now to the examiner's rejection of claims 5, 7-15
and 17-20 under 35 U.S.C. § 103 as being unpatentable over
Christison in view of Hutchinson, we note that Christison
discloses a burglar proof door guard comprising an extensible
gate including vertical members (16-18) and toggles or links
(19) pivoted to the vertical members as indicated at (20).
The outer vertical member (14) is secured by a pair of hinges
(23, 24) and screws (26) to a flat strip (27). The inner
vertical member (16) is slidably supported by U bolts (29)
fitting about a plurality of horizontal rods (28) mounted to a
wall (30). The gate is attached to the door using a pair of
links (38, 39) adapted to fit about the door knob handle (13)
and a locking ring (46) for locking the links about the knob
handle.
The examiner states on pages 3 and 4 of the answer that
Christison does not disclose the extensible doorway barrier as
comprising an open mesh attached to and stored on a reel, as
required by the claims. We further note that Christison lacks
"flexible material means for spanning a lower portion of the
Appeal No. 1999-0635 9
Application No. 08/688,825
otherwise unobstructed opening of said door . . . while
leaving an upper portion of the opening unobstructed" as
required by all of the independent claims.
Hutchinson discloses a guard (7) comprised of "wire mesh
or the like" for use with a conventional toggle-joint elevator
guard gate (5) of the 1920's. The outer edge of the guard (7)
is bound by means of a strip (10), which is attached to the
outer edge of the guard gate (5) by means of rivets or the
like. The opposite end of the guard (7) is secured to a
roller (13) provided at the bottom with a spindle (14)
rotatably mounted in a bracket (15) carried by the elevator
wall. A coiled spring is provided in the roller (13) to hold
the guard in tension such that it unwinds when the guard gate
(5) is closed and re-winds when the gate is opened, without
any additional effort by the elevator operator. The purpose
of the guard (7) is to prevent umbrellas, canes and the like
from becoming jammed within the toggle-joints of the gate
(page 1, lines 91-101).
It is the examiner's position that it would have been
obvious to use Hutchinson's open mesh (7) attached to and
stored on a roller (13) "in lieu of the extensible doorway as
Appeal No. 1999-0635 10
Application No. 08/688,825
disclosed by Christison for the purpose of substituting a
mechanical equivalent for another to obtain the advantages
inherent therein, such as precluding the pinching of one's
fingers within the links 19 of Christison" (answer, page 4).
We do not agree.
As pointed out by the appellant on pages 3 and 4 of the
brief, Hutchinson does not teach and would not have suggested
provision of the mesh material (7) as a free standing
structure for use as a barrier to intruders. On the contrary,
Hutchinson would have suggested to one of ordinary skill in
the art that the disclosed mesh material (7) would not have
been sufficient as a barrier; if the mesh material were
considered sufficient, there would have been no need for the
guard gate (5). Thus, we agree with the appellant that, even
if the teachings of Christison and Hutchinson were combined,
the combined teachings would not have suggested replacement of
the extensible gate of Christison with the mesh material of
Hutchinson. While these references may have suggested
provision of an extensible guard comprising a reel of wire
mesh mounted to one side of the extensible toggle-joint gate
of Christison in a pinch-protecting capacity, such an
Appeal No. 1999-0635 11
Application No. 08/688,825
arrangement, because of the presence of the extensible gate in
addition to the mesh guard, would not result in the flexible
material means "spanning a lower portion of the otherwise
unobstructed opening of said door to provide a visual barrier
deterring egress of pets or small children while leaving an
upper portion of the opening unobstructed" as required by the
claims.
For the foregoing reasons, we shall not sustain the
examiner's rejection of claims 5, 7-15 and 17-20 under 35
U.S.C. § 103 as being unpatentable over Christison in view of
Hutchinson.
We have reviewed the teachings of Pyle, but we find
nothing therein which overcomes the above-noted deficiencies
of the combination of Christison and Hutchinson. It follows
then that we shall also not sustain the examiner's 35 U.S.C. §
103 rejection of claims 2 and 16 as being unpatentable over
Christison in view of Hutchinson and Pyle.
Turning now to the examiner's rejection of claims 5, 7-15
and 17-20 under 35 U.S.C. § 103 as being unpatentable over
Warfel in view of Hutchinson, Warfel discloses a door screen
adapted to be applied to a door for holding the door open for
Appeal No. 1999-0635 12
Application No. 08/688,825
purposes of ventilation and which will at the same time
prevent intrusion. It is important to Warfel that the screen
serves as a barrier and cannot be detached from the outside.
(page 1, lines 8-22). The door screen (3) embodies a pair of
overlapping sections (4,5) each provided with a frame and a
panel (6), which may be of wire-mesh or of fabric to allow air
to pass therethrough. The frames are slidably connected by
means of U-shaped clips (7). The screen is further provided
with means for attaching the screen to the door knob of the
door and to the door casing.
The examiner concedes that Warfel does not disclose the
extensible doorway barrier as comprising an open mesh attached
to and stored on a reel, but contends that to use the open
mesh material (7) of Hutchinson "in lieu of the extensible
doorway [barrier] as disclosed by Warfel for the purpose of
substituting a mechanical equivalent for another to obtain the
advantages inherent therein, such as ease of storing the
extensible doorway barrier in a compact configuration, would
have been obvious to one of ordinary skill in the art"
(answer, page 5).
Appeal No. 1999-0635 13
Application No. 08/688,825
As discussed above, Hutchinson does not teach and would
not have suggested provision of the mesh material (7) as a
free standing structure for use as a barrier to intruders and,
in fact, would have suggested to one of ordinary skill in the
art that the disclosed mesh material (7) would not have been
sufficient, alone, as a barrier. Thus, we cannot agree with
the examiner that it would have been obvious, in view of the
combined teachings of Warfel and Hutchinson, to provide the
reeled wire mesh material (7) of Warfel in lieu of the
slidable panel arrangement disclosed by Warfel.
Moreover, even assuming that Warfel and Hutchinson would
have suggested modification of the Warfel barrier by
attachment of the reeled wire mesh material (7) taught by
Hutchinson to the frames of the barrier as an auxiliary guard,
such an arrangement would still not result in flexible
material means "spanning a lower portion of the otherwise
unobstructed opening of said door to provide a visual barrier
deterring egress of pets or small children while leaving an
upper portion of the opening unobstructed" as required by the
claims.
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Application No. 08/688,825
Therefore, we shall not sustain the examiner's rejection
of claims 5, 7-15 and 17-20 under 35 U.S.C. § 103 as being
unpatentable over Warfel in view of Hutchinson.
We have reviewed the teachings of Pyle, but we find
nothing therein which alters our view with regard to the
combination of Warfel and Hutchinson. Thus, it follows that
we shall also not sustain the examiner's 35 U.S.C. § 103
rejection of claims 2 and 16 as being unpatentable over Warfel
in view of Hutchinson and Pyle.
Appeal No. 1999-0635 15
Application No. 08/688,825
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2, 5 and 7 through 20 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0635 16
Application No. 08/688,825
JDB/pgg
Evan R. Smith
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2010 Corporate Ridge
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