Ex parte Cowan

Board of Patent Appeals and Interferences

Jun 16, 1998

08396253 (B.P.A.I. Jun. 16, 1998)

Application for patent filed February 28, 1995. According to appellant,1
the application is a continuation of Application 07/674,097, filed March 25,
1991, now abandoned.
An appeal in appellant’s parent application identified in footnote 12
supra, resulted in an affirmance of the examiner’s rejection of claims 28 through
33 under 35 U.S.C. § 103 (see Appeal No. 95-0172). These claims have been
canceled in favor of prosecuting the claims now pending in the application.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID A. COWAN
_____________
Appeal No. 96-4044
Application 08/396,2531
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and COHEN
and MEISTER, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 34 through 40 under 35 U.S.C. § 103. No2
other claims are pending in the application.
Appeal No. 96-4044
Application 08/396,253
This feature is shown in Figure 2 of the original drawings to satisfy3
the description requirement in the first paragraph of 35 U.S.C. § 112, but is not
described in the specification as required in 37 CFR §§ 1.71, 1.75(d)(1).
2
Appellant’s invention relates to a plastic fencing
structure of the type having a plurality of openings 6. In
appellant’s invention as defined in claim 34 (the only
independent claim on appeal), a plastic reflective tape strip
means 2 having a water resistant pressure sensitive adhesive
backing 8 is disposed on one side of the fence and is adhered
through the openings in the fence to a plastic backing strip
means 9 on the other side of the fence. Claim 34 further recites
that the reflective tape has a width between edges which is less
than the height of the openings in the fence, that the edges of
the reflective tape lie within the height of the openings and3,
that substantially the entire surface area of the reflective tape
overlying the openings is adhered to the backing strip.
A copy of the appealed claims is appended to appellant’s
brief.
The following references are relied upon by the examiner
as evidence of obviousness in support of his rejections under 35
U.S.C. § 103:
Appeal No. 96-4044
Application 08/396,253
In our decision (Appeal No. 95-0172) in appellant’s parent application,4
we agreed with these conclusions of obviousness.
3
Lappala et al. (Lappala) 3,214,320 Oct. 26, 1965
Andrews 3,347,527 Oct. 17, 1967
Schmanski et al. (Schmanski) 4,605,204 Aug. 12, 1986
Claims 34 through 40 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Andrews in view of Schmanski and Lappala.
The examiner concedes that claim 34 differs from Andrews by
reciting that the fencing is plastic and that the reflective tape
has a water resistant pressure sensitive adhesive. He concludes,
however, that the teaching of Schmanski would have made it
obvious to make Andrews’ fencing from plastic and that the
teachings of Lappala would have made it obvious to utilize a
water resistant pressure sensitive adhesive for adhering Andrews’
reflective tape to the backing strip.4
In addition, the examiner concedes that the applied
references do not teach the claimed relationship of the width of
the reflective tape to the height of the openings in the fence as
defined in claim 34 and as described supra. He nevertheless
contends that it ?would have been an obvious matter of
engineering design choice? (answer, page 5) to provide Andrews’
Appeal No. 96-4044
Application 08/396,253
4
structure with the claimed relationship of the width of the
reflective tape to the height of the openings in the fence such
that substantially the entire surface area of the reflective tape
overlying the openings adheres to the backing strip.
In support of patentability, appellant contends on pages 3,
4 and 6-8 of the brief that the claimed relationship of the width
of the reflective tape to the height of the openings and to the
backing strip solves two problems not solved or even recognized
by the applied references. First, he states that the claimed
relationship eliminates ?any creases in the reflective tape strip
means across its entire width in the region of the openings,
. . .? (brief, page 7). Second, he states that the claimed
relationship ?eliminates any possibility of the reflective tape
strip means being pulled away from the backing strip means across
its width in the region of the openings . . .? (brief, page 7).
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we conclude that the rejection of the
appealed claims cannot be sustained.
Appeal No. 96-4044
Application 08/396,253
5
In the present case, the examiner acknowledges on page 8 of
the answer that appellant’s claimed relationship of the width of
the reflective tape to the backing tape and to the height of the
openings in the fence as defined in claim 34 solves the first
problem stated supra, namely the elimination of creases in the
reflective tape across its entire width in the region of the
openings. As a result, this claimed relationship may not be
dismissed as an obvious matter of design choice as the examiner
has done here. Compare In re Kuhle, 526 F.2d 553, 555, 188 USPQ
7, 9 (CCPA 1975) (?Use of such a means . . . solves no stated
problem and would be an obvious matter of design choice within
the skill of the art.?). The solution to the first problem stated
supra is sufficient to preclude the application of the Kuhle rule
pertaining matters of design choice. It therefore is no moment
that the asserted solution to the second problem mentioned above
may be ?unfounded? as contended by the examiner on page 8 of the
answer.
Appeal No. 96-4044
Application 08/396,253
6
The examiner’s decision rejecting appealed claims 34 through
40 is reversed.
REVERSED
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES M. MEISTER )
Administrative Patent Judge )
Appeal No. 96-4044
Application 08/396,253
7
Donald L. Otto
RENNER, OTTO, BOISSELLE & SKLAR
1621 Euclid Avenue
Nineteenth Floor
Cleveland, OH 44115