Ex parte Collins

Board of Patent Appeals and Interferences

Sep 17, 1997

08224163 (B.P.A.I. Sep. 17, 1997)

Application for patent filed April 7, 1994.1
-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journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte STEPHEN J. COLLINS
________________
Appeal No. 96-3919
Application 08/224,1631
________________
ON BRIEF
________________
Before CALVERT, LYDDANE and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Stephen J. Collins (appellant) appeals from the final
rejection of claims 1-5 and 12-14, all the claims remaining in
the application.
Appeal No. 96-3919
Application 08/224,163
The preamble of dependent claims 2-4 is inconsistent with2
the preamble of claim 1, from which these claims depend. For
purposes of this appeal, we have interpreted claims 2-4 as being
directed to “The combination of claim 1, . . . .” In the event
of further prosecution, this inconsistency should be rectified.
-2-
Appellant’s invention pertains to the combination of a
writing implement and a cap for removably receiving the writing
tip of the writing implement (claims 1-5 and 14) , and a cap for2
removably receiving the writing tip of a writing implement
(claims 12 and 13). The cap includes a blade portion for receipt
between the pages of a book for acting as a bookmark.
Independent claim 1 is illustrative of the appealed subject
matter and reads as follows:
1. In combination:
a writing implement comprising an elongated body and a
writing instrument situated at one end of said body; and
a cap comprising a body portion and a recess in said body
portion for removably receiving a tip of said writing instrument
when not in use, said cap further including an arm portion
extending outwardly from said body portion and a blade portion
extending downwardly from said arm portion so as to be positioned
in spaced relation to said writing implement when said cap is
assembled with said writing implement, said blade portion
extending in a plane which is generally perpendicular to a
centerline of said body portion.
said cap being slidably received over a spine of a book
wherein said blade portion of said cap extends downwardly between
pages of a book and said writing implement extends downwardly
along an outside surface of a book spine.
Appeal No. 96-3919
Application 08/224,163
Our understanding of this German language patent is derived3
from a translation prepared in the Patent and Trademark Office, a
copy of which is appended to this opinion.
-3-
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Neidhardt et al. (Neidhardt) 3,733,139 May 15, 1973
British Patent (Downes) 8,626 May 20, 1891
German Patent (Manzardo) 13,735 May 17, 19563
Claims 12 and 13 stand rejected under 35 U.S.C. § 112,
second paragraph, “as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention” (answer, page 3).
Claims 1-5 and 12-14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over British Patent No. 8,626 to Downes in
view of German Patent No. 13,735 to Manzardo and further in view
of Neidhardt.
The 35 U.S.C. § 112, Second Paragraph, Rejection
Considering first the 35 U.S.C. § 112, second paragraph,
rejection, the examiner correctly notes that the term “said blade
portion” in claim 12 and the term “said arm portion” in claim 13
lack a proper antecedent basis. Based on these examples of claim
deficiencies, the examiner concludes that claims 12 and 13 are
indefinite.
Appeal No. 96-3919
Application 08/224,163
-4-
In response, appellant states on page 4 of the brief that
“[he] does not contest the formal nature of this rejection” and
that the terms in question were intended to be “the arm” and “the
blade.” Appellant further offers to make such amendments to the
claims, if required, upon resolution of this appeal.
Since appellant has not pointed out how the examiner has
erred in the rejection of claims 12 and 13 under 35 U.S.C. § 112,
second paragraph, and has in effect acquiesced to the rejection,
we are constrained to sustain this rejection.
The 35 U.S.C. § 103 Rejection
In rejecting the appealed claims under 35 U.S.C. § 103, the
examiner states:
British Patent #8626 discloses substantially similar
structure [as appellant], see Figure 2. It is noted
that using the blade portion to mark is merely intended
use . . . and does not structurally distinguish over
the art . . . . The German Patent discloses using the
blade portion for marking, while Niedharedt [sic] et al
discloses a ball point and highlight marker. It would
have been obvious to a mechanic with ordinary skill in
the art to use these teachings. The motivation is
provided by the references. [answer, page 4]
In the “Response to argument” section of the answer, the
examiner further states:
The German Patent clearly discloses a blade
similar to appellant’s in Figures [sic] 2 and Figure 6.
Figure 6 additionally discloses marking pages with such
a blade. It would have been obvious . . . to
substitute such a blade to [sic] the primary reference.
Appeal No. 96-3919
Application 08/224,163
-5-
The motivation is to mark pages as shown in Figure 6 of
the German Patent. [answer, page 5]
At the outset, we cannot agree with the examiner that using
the blade portion as a bookmark is “merely intended use . . . and
does not structurally distinguish over the art.” The last
paragraph of each of the independent claims on appeal positively
recites that the blade portion of the cap extends downwardly
between the pages of a book, and that the writing implement (in
the case of claims 1 and 14) or the body portion of the cap (in
the case of claim 12) extends downwardly along an outside of a
book spine. Thus, using the blade portion as a bookmark is not
merely a statement of intended use. In any event, even if the
relationships between the cap and the book called for in the
claims were considered to be functional statements directed to
the intended use of the claimed device, they cannot be casually
dismissed as the examiner has done here. Rather, one should
consider whether or not the reference structure reasonably
appears to be capable of functioning in the manner called for in
the claims. See, for example, In re Ludtke, 441 F.2d 660, 664,
169 USPQ 563, 566 (CCPA 1971). In the present case, the examiner
has made no such inquiry.
Second, and more importantly, we do not share the examiner’s
views regarding the relevance of Downes and Manzardo to the
Appeal No. 96-3919
Application 08/224,163
-6-
claimed subject matter. An objective of Downes is to convert the
pencil of a notebook into a page marker by rigidly connecting a
tubular clip or “cap” to the back of the book so that the tip of
a pencil may be received therein and the body of the pencil held
between the notebook’s pages. To this end, the tubular clip is
provided with sharp prongs f or rivets (not shown) for rigidly
fastening the clip to the notebook’s back. Manzardo, on the
other hand, does not disclose a cap for a writing implement for
any purpose, much less a cap for a writing implement that
additionally functions as a bookmark. Rather, Manzardo discloses
a specialized writing implement having a tab (element A in the1
Figure 1 embodiment, element C in the Figure 2 embodiment,1
element E in the Figure 3 embodiment) at the end opposite the1
writing tip, which tab acts as a bookmark. In order to hold the
writing implement in proper position so that the tab can function
in the manner intended, Manzardo provides a “cartridge” on either
the front edge of the cover (see element F in Figure 7) or the2
spine (see, for example, element B in Figure 4) for receipt of1
the writing implement. Translation, page 2, lines 9-10 and 18-
20; page 3, lines 15 and 25-26; page 4, lines 13-15; page 5,
lines 3-4.
Appeal No. 96-3919
Application 08/224,163
-7-
Given the differences in structure and function of the
devices of Downes and Manzardo, it is not at all apparent to us,
and the examiner has not adequately explained, how he proposes to
modify Downes in view of Manzardo’s teachings to arrive at the
claimed subject matter (i.e., a cap having a blade portion
extending between the pages of a book). In contrast to the
appellant’s device, wherein the cap of a writing implement is
used as a bookmark, Downes and Manzardo are directed to
alternative arrangements wherein the writing implement itself is
used as a bookmark. Furthermore, absent appellant’s disclosure,
it is not clear to us why one of ordinary skill in the art would
have been motivated to undertake any such modification of one of
these references in view of the other.
Where prior art references require a selective combination
to render obvious a claimed invention, there must be some reason
for the combination other than hindsight gleaned from the
invention disclosure, Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact
situation before us, we are unable to agree with the examiner
that one of ordinary skill in the art would have been motivated
to combine the teachings of Downes with those of Manzardo in a
manner which would have resulted in the claimed subject matter.
Appeal No. 96-3919
Application 08/224,163
-8-
We have also carefully reviewed the Neidhardt reference
additionally relied upon by the examiner but find nothing therein
that makes up for the deficiencies of Downes and Manzardo
discussed above.
In light of the foregoing, we will not sustain the standing
rejection of the appealed claims under 35 U.S.C. § 103.
New Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR § 1.196(b), we enter
the following new rejections.
Claims 1-5 and 12-14 are rejected under 35 U.S.C. § 112,
first paragraph, as being based on an original disclosure that
does not provide descriptive support for the invention as now
claimed.
With respect to the written description requirement found in
the first paragraph of 35 U.S.C. § 112,
[t]he test for determining compliance . . . [therewith]
is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that
the inventor had possession at that time of the later
claimed subject matter, rather than the presence or
absence of literal support in the specification for the
claim language. The content of the drawings may also
be considered in determining compliance with the
written description requirement.
Appeal No. 96-3919
Application 08/224,163
We are aware of the amendment to the drawings proposed by4
appellant adding line 27 to Figures 3 and 4, and the
corresponding amendment to the specification describing line 27
as a “longitudinal centerline” of the body portion. In our view,
these amendments are inconsistent with that which was originally
disclosed. In any event, these changes have no effect on
appellant’s original disclosure, which is the standard used for
determining compliance with the description requirement found in
the first paragraph of 35 U.S.C. § 112.
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In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983) (citations omitted; emphasis added).
In the present application, appellant added to each of the
independent claims the limitation that the blade portion of the
cap extends in a plane which is generally perpendicular to a
centerline of the body portion. We believe one of ordinary skill
in the art, upon review of appellant’s specification and drawing
figures, would consider the centerline of body portion 23 to be
an axial line passing through the center of the body portion of
the cap, such that the blade 26 extends radially in a plane which
includes the centerline of the body portion, rather than
perpendicular thereto. Based on this interpretation of what
constitutes the centerline of the body portion 23, there is no
descriptive support in the original disclosure for the invention
as now claimed.4
Appeal No. 96-3919
Application 08/224,163
-10-
Claims 1-5 and 12-14 are also rejected under 35 U.S.C.
§ 112, second paragraph. In order to satisfy the second
paragraph of § 112, a claim must accurately define the claimed
subject matter in the technical sense. See In re Knowlton, 481
F.2d 1357, 1365, 178 USPQ 486, 492 (CCPA 1973). Moreover, while
the claim language may appear, for the most part, to be
understandable when read in the abstract, no claim may be read
apart from and independent of the supporting disclosure on which
it is based. In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98
(CCPA 1971); In re Moore, 439 F.2d 1232, 1235 n.2, 169 USPQ 236,
238 n.2 (CCPA 1971). Applying these principles to the present
case, the claim language “extending in a plane which is generally
perpendicular to a centerline of said body portion” appearing in
each of the independent claims may appear to be clear when read
in a vacuum. However, when read in light of the supporting
disclosure, and especially the drawing figures, this claim
language raises an unreasonable degree of uncertainty as to what
the claim language may mean.
Summary
The standing rejection of claims 12 and 13 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
Appeal No. 96-3919
Application 08/224,163
-11-
The standing rejection of claims 1-5 and 12-14 under 35
U.S.C. § 103 is reversed.
Pursuant to 37 CFR § 1.196(b), new rejections of claims 1-5
and 12-14 have been made.
The decision of the examiner is affirmed-in-part.
The new rejections under 37 CFR § 1.196(b) should not be
considered final for the purpose of judicial review.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
hereof. 37 CFR § 1.197.
With respect to the new rejections under 37 CFR
§ 1.196(b), should appellant elect the alternate option under
that rule to prosecute further before the Primary Examiner by way
of amendment or showing of facts, or both, not previously of
record, a shortened statutory period for making such response is
hereby set to expire two months from the date of this decision.
In the event appellant elects this alternate option, in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Appeal No. 96-3919
Application 08/224,163
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If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to us for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
WILLIAM E. LYDDANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-3919
Application 08/224,163
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Stephen J. Holmes
Salter, Michaelson & Benson
321 South Main Street
Providence, RI 02903