Ex parte Castel et al.

Board of Patent Appeals and Interferences

Dec 17, 1997

08101668 (B.P.A.I. Dec. 17, 1997)

Application for patent filed August 3, 1993. According1
to appellants, the application is a continuation of
Application 07/953,570, filed September 29, 1992, now
abandoned, which is a continuation of Application 07/771,505,
filed October 4, 1991, now Patent No. 5,188,586, issued
February 23, 1993.
-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journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN C. CASTEL, DAWN S. CASTEL
and MICHAEL R. HALL
________________
Appeal No. 96-1830
Application 08/101,6681
________________
ON BRIEF
________________
Before McQUADE, NASE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1830
Application 08/101,668
-2-
This appeal is from the final rejection of claims 1
through 5 and 23, all of the claims pending in the
application.
The invention relates to “a back support belt to be worn
by a worker to reduce the risk of back injury during lifting
activities” (specification, page 1). Claim 1 is illustrative
and reads as follows:
1. In a brace for preventing back injuries to a wearer
of the brace during lifting activities, the improvement
comprising:
(a) a back section adapted to generally extend across
the back of the wearer of the brace;
(b) a left side section and a right side section secured
to the opposite ends of said back section such that said left
side section is adapted to extend around the left side of the
wearer and the right side section is adapted to extend around
the right side of the wearer during use;
(c) said back section, said left side section and said
right side section forming a first support belt having a
supporting configuration wherein said left side and right side
sections are secured together and said support belt is adapted
to encircle a user and support the back of a user and a
nonsupporting configuration wherein said left side and said
right side sections are not secured together and said support
belt does not encircle a user; said support belt, when in the
supporting configuration thereof, having an inward facing
surface adapted to snugly encircle a user;
(d) adjustable fastening means for adjustably fastening
Appeal No. 96-1830
Application 08/101,668
As indicated in note 1, supra, the instant application2
is the grandchild of the application from which the Castel
patent issued.
-3-
said left side section relative to said right side section
such that said brace encircles the wearer and such that the
fit of the brace with respect to the wearer may be adjusted;
and
(e) position maintaining means located on said brace so
as to be adapted to cooperatively engage underlying clothing
of a user for releasably securing said brace to the clothing
so as to prevent said brace from being urged upward and out of
a preselected position during use in both said supporting
configuration and said non-supporting configuration; said
position maintaining means comprising first and second loops
sized and aligned to receive a second pant’s belt that also
passes through loops of pants of a user when said brace is in
a user encircling configuration; and said first loop being
located on said left side section and said second loop being
located on said right side section and said first and second
loops are located so that during use said first and second
loops are located to the front side of the user so as to
facilitate the placement of said pant’s belt through said
first and second loops; and further said first and second
loops being located on said belt inward facing surface.
The references relied upon by the examiner are:
Votel et al. (Votel) 5,176,131 Jan. 5, 1993
(filed Jun. 21, 1990)
Castel et al. (Castel) 5,188,586 Feb. 23, 19932
Claims 1 through 5 and 23 stand rejected:
a) under 35 U.S.C. § 102(e) as being anticipated by
Appeal No. 96-1830
Application 08/101,668
Although the rejection of claims 1 through 5 and 23 as3
being anticipated by Votel was made under § 102(a) in the
final rejection (Paper No. 15) and answer (Paper No. 19), it
is apparent given the relevant dates involved that the
rejection instead should have been made under § 102(e). We
have assumed that the examiner intended to make the rejection
under § 102(e) and that the failure to do so was the result of
an inadvertent, and ultimately harmless, oversight.
In the final rejection, claim 23 also was rejected under4
35 U.S.C. § 112, first and second paragraphs. Upon
reconsideration, the examiner has withdrawn these rejections
(see page 3 in the answer).
-4-
Votel; and 3
b) under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1
through 3 of the Castel patent.4
With regard to the first of these rejections,
anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Votel discloses a back support or brace 10 consisting of
a waistband 11 adapted to be secured about the waist of a
wearer to provide abdominal and lumbosacral support. As shown
Appeal No. 96-1830
Application 08/101,668
-5-
in Figure 3 and described by Votel,
[a] belt 50, having a buckle 51 operatively
connected thereto, is attached to the waistband 11.
Four straps 51, 52, 53 and 54 have their first ends
operatively connected, such as by stitching, to the
waistband 11. Their second ends have a loop through
which belt 50 may pass and be supported thereby. On
the belt 50 may be hung a variety of carriers or
attachments. For instance, a simple strap 55 may
have a first loop 55a through which the belt 50 may
be passed and a second loop 55b through which a tool
may be hung. Similarly, a pouch 56 may have two
straps 57 and 58 attached thereto. The straps 57
and 58 have a loop through which the belt 50 may be
passed. The pouch 56 may then be utilized to place
various piece[s] of equipment or items to be used by
the wearer. The belt 50 may be specifically
designed for the support 10, or may be any belt,
such as a miner’s belt, which may have a variety of
well-known constructions [column 5, lines 19 through
36].
Claims 1 and 23, the two independent claims on appeal,
respectively recite a brace (claim 1) and the combination of a
brace and a pant’s belt (claim 23) wherein the brace forms a
support belt having an inward facing surface. Both claims
require, inter alia, position maintaining means comprising
loops located on the inward facing surface of the support belt
for receiving the pant’s belt. In response to the appellants’
argument that “Votel includes no loops located on the belt
inward facing surface” (main brief, Paper No. 18, pages 10 and
Appeal No. 96-1830
Application 08/101,668
-6-
11), the examiner contends that Votel’s loops 51 through 54
“are located on the inward face of the support. The loops do
extend beyond the support. However, the base[s] of the loops
are located on the inward face of the support (Figure 3)”
(answer, page 3). Votel, however, does not provide any
factual support for the examiner’s finding that the bases of
straps 51 through 54 are located on the inward facing surface
of support 10. Moreover, even if the bases of the straps 51
through 54 were located on the inward facing surface of the
support 10, the loops defined by the straps are not as is
clearly evident from Figure 3. Since Votel does not disclose
any other loops located on the inward facing surface of the
support, this reference does not meet the above noted
limitations in claims 1 and 23. It therefore follows that the
subject matter recited in these claims is not anticipated by
Votel.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(e) rejection of claims 1 and 23, or of claims 2 through
5 which depend from claim 1, as being anticipated by Votel.

As for the standing rejection of claims 1 through 5 and
Appeal No. 96-1830
Application 08/101,668
The examiner has indicated that a terminal disclaimer5
would indeed overcome the rejection (see page 3 in the
answer).
-7-
23 under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1 through 3
of the Castel patent, the appellants have not disputed the
merits of such rejection and have offered to file a terminal
disclaimer to obviate same (see pages 11 and 12 in the main
brief). Under these circumstances, we shall summarily5
sustain the standing obviousness-type double patenting
rejection of claims 1 through 5 and 23.
In summary and for the above reasons, the decision of the
examiner to reject claims 1 through 5 and 23 is reversed with
respect to the 35 U.S.C. § 102(e) rejection and affirmed with
respect to the obviousness-type double patenting rejection.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 96-1830
Application 08/101,668
-8-
§ 1.136(a).
AFFIRMED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-1830
Application 08/101,668
-9-
Litman, McMahon & Brown
1200 Main Street
Suite 1600
Kansas City, MO 64105