10986484 (B.P.A.I. May. 24, 2011)

Ex Parte Daves

Board of Patent Appeals and InterferencesMay 24, 2011

10986484 (B.P.A.I. May. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/986,484 11/10/2004 Scott G. Daves 53863/TJD/D560 5657 23363 7590 05/25/2011 CHRISTIE, PARKER & HALE, LLP PO BOX 7068 PASADENA, CA 91109-7068 EXAMINER SKURDAL, COREY NELSON ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 05/25/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SCOTT G. DAVES ____________ Appeal 2009-012342 Application 10/986,484 Technology Center 3700 ____________ Before MICHAEL W. O’NEILL, FRED A. SILVERBERG, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Scott G. Daves (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-012342 Application 10/986,484 2 The Invention The claimed invention is to a carrying bag. Claims 1, reproduced below, is illustrative of the subject matter on appeal. 1. A carrying bag comprising: a main bag portion having a length sufficient to carry architectural drawings; and a front pocket portion attached to the main bag portion and adapted for carrying standard- sized documents. The Rejections The following Examiner’s rejections are before us for review: Claims 1, 3-10, 14, 15, 17, 18, 20, 21, 22, 25, 26, and 28-30 are rejected under 35 U.S.C. § 102(e) as anticipated by Greenstein (U.S. Patent Application Publication No. 2003/0024960 A1, published Feb. 6, 2003). Claims 2, 11-13, 19, 23, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Greenstein. Claims 16 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Greenstein and Godshaw (U.S. Patent No. 6,655,565 B2, issued Dec. 2, 2003). SUMMARY OF DECISION We AFFIRM. Appeal 2009-012342 Application 10/986,484 3 OPINION Analysis Anticipated based upon Greenstein The Examiner has taken the position, and Appellant refutes, that the main bag portion of Greenstein’s carrying bag has a length sufficient to carry architectural drawings. Ans. 7-8 and App. Br. 6. Thus, the issue is whether the length of Greenstein’s main bag portion inherently satisfies the functional limitation of being “sufficient to carry architectural drawings.” Although we agree with Appellant’s characterization of the law on inherency, i.e., that the characteristic alleged to be inherent in the prior art must be necessarily present (App. Br.7), we note that where the alleged inherent characteristic is a function or intended use of the device, Appellant, and not the United States Patent and Trademark Office (USPTO), is in the best position to establish the existence or non-existence of this characteristic. Thus, as was done by the Examiner (Ans. 3 and 7-8), the USPTO may shift the burden to Appellant to prove that the prior art does not possess the characteristic alleged by the Examiner to be inherent. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). Nevertheless, we recognize that before Appellant can be put to this burdensome task, the Examiner must provide sufficient evidence or scientific reasoning to establish the Appeal 2009-012342 Application 10/986,484 4 reasonableness of the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art. Here, the Examiner reasonably found that the structural similarities of Greenstein and the claimed invention provided a basis to conclude that Greenstein’s main bag portion was of a length sufficient to perform the recited function of carrying architectural drawings. Ans. 3 and 7-8. The claim recitation that the main bag portion has “a length sufficient to carry architectural drawings” is not precisely defined. Appellant argues that the Specification defines the main bag portion’s length as being between 32 and 37 inches (Reply Br. 1) and that a person of ordinary skill in the art would understand from the Specification that architectural drawings are not standard-sized documents (App. Br. 6). However, the Examiner asserts that architectural drawings are not restricted to any particular size and can be made in numerous sizes including small drawings that would fit entirely within Greenstein’s main bag portion. Ans. 8. We agree with the Examiner that architectural drawings are not restricted to any particular size, as architectural paper sizes commonly used in the United States for commercial architectural and landscape drawings (drafting documents) include 9” x 12” (Arch A or Arch 1), 12” x 18” (Arch B or Arch 2), 18” x 24” (Arch C or Arch 3), 24” x 36” (Arch D or Arch 4), 30” x 42” (Arch E1 or Arch 5), and 36” x 48” (Arch E or Arch 6).1, 2 1 See Technical drawing paper sizes in the United States, http://www.sizes.com/materls/paperUStech.htm (last visited May 23, 2011). 2 Further, it is a well-known and accepted practice to fold the larger architectural drawings for transport and storage. See Alan Jefferis & David A. Madsen, How to Fold Prints, Architectural Drafting and Design, pp. 47- 49 (Thomson Delmar Learning 2004). See also, Folding a Large Format Appeal 2009-012342 Application 10/986,484 5 Regardless of the size of the architectural drawings, since it is known to fold architectural drawings for transport, we note that the main bag portion of Greenstein’s carrying bag need not be as long as the length of the architectural drawings. Thus, we are not convinced by Appellant’s arguments that if Greenstein’s bag was of a sufficient length to carry architectural drawings, it would have to be upended to quickly and easily retrieve small sized items, it would drag on the ground and interfere with the wheels of a stroller when hung from the handle, or it would strike the legs to interfere with walking when a user carried the bag over the shoulder. App. Br. 6. Appellant has failed to provide sufficient evidence to show that Greenstein’s main bag portion does not have a sufficient length to carry architectural drawings. In view of the foregoing, we sustain the Examiner’s rejection of claims 1, 3-10, 14, 15, 17, 18, 20, 21, 22, 25, 26, and 28-30 under 35 U.S.C. § 102(e) as anticipated by Greenstein. Since Appellant does not separately argue the subject matter of claims 11-13, 16, 19, 23, 24, and 27, we also sustain the Examiners rejection of claims 11-13, 19, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Greenstein and the Examiner’s rejection of claims 16 and 27 under 35 U.S.C. § 103(a) as unpatentable over Greenstein and Godshaw. Obviousness based upon Greenstein Although Greenstein fails to disclose that the main bag portion has a length of between 32 to 37 inches as recited in claim 2, the Examiner Drawing, http://www.archtoolbox.com/representation/graphic-symbols/84- foldlargedrawing.html (last visited May 23, 2011) and How to Fold a Drawing, http://www.jimonlight.com/2009/06/08/how-to- fold-a-drawing/ (last visited May 23, 2011). Appeal 2009-012342 Application 10/986,484 6 concludes that it would have been obvious to lengthen the main bag portion of Greenstein’s carrying bag to between 32 and 37 inches since changes in size have generally been recognized as being within the level of skill in the art and lengthening the main bag portion would allow for carrying additional items. Ans. 6 and 9. Appellant contends that changes in size are only considered within the level of skill in the art when the modified prior art device is capable of being modified in that manner and when the modified device having the different size would not perform differently than the prior art device. App. Br. 7. Here, Appellant alleges that lengthening the main bag portion of the baby bag 20 of Greenstein to between 32 to 37 inches as the Examiner proposes would result in a substantial change in the functionality of the bag to negate its usefulness as a baby bag since small items, such as bottles and diapers, would rest on the bottom of the bag and could not be quickly and easily retrieved without upending the bag. App. Br. 8. Appellant also alleges that lengthening the main bag portion of Greenstein’s baby bag 20 would cause the bag to drag on the floor and interfere with the wheels of the stroller when hung from the handle and strike the legs of the user to interfere with walking when slung over the user’s shoulder. Id. We are not persuaded by Appellant’s arguments that lengthening the main body portion of Greenstein’s baby bag 20 to be between 32 to 37 inches would substantially change the functionality of the bag. It is speculation on Appellant’s part that lengthening Greenstein’s bag 20 would negate its usefulness as a baby bag. While it might be harder or more time consuming to retrieve small items from the lengthened bag, the bag may prove more convenient in other ways such as being able to carry additional Appeal 2009-012342 Application 10/986,484 7 items. Moreover, “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” See KSR v. Teleflex, 550 U.S. 398, 421 (2007). Thus, the ordinary skilled artisan could use his knowledge and creativity to design pockets on the inside of an upper portion of the bag, as are well known in the art, to make it easier and more convenient to store and retrieve small items from the bag and could come up with ways to prevent the lengthened bag from dragging on the ground, interfering with the wheels of the stroller, or striking the legs of the user to interfere with the user’s walking when slung over the user’s shoulder. In view of the foregoing, we sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as anticipated by Greenstein. DECISION We affirm the Examiner’s rejections of: claims 1, 3-10, 14, 15, 17, 18, 20, 21, 22, 25, 26, and 28-30 under 35 U.S.C. § 102(e) as anticipated by Greenstein; claims 2, 11-13, 19, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Greenstein; and claims 16 and 27 under 35 U.S.C. § 103(a) as unpatentable over Greenstein and Godshaw. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh