Ex Parte Dolan

Board of Patent Appeals and Interferences

Mar 18, 2003

09567392 (B.P.A.I. Mar. 18, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DORIS B. DOLAN
__________
Appeal No. 2002-1898
Application 09/567,392
___________
ON BRIEF
___________
Before ABRAMS, STAAB, and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Doris B. Dolan originally took this appeal from the final
rejection of claims 1 through 5. As the appellant has since
canceled these claims and replaced them with claims 6 through 8,
the appeal now involves the latter three claims, which are all of
the claims currently pending in the application.
THE INVENTION
The invention relates to a back pack designed to protect the
wearer’s spinal column against deformity. Representative claim 6
reads as follows:
6. A load carrying back pack that fits over the thoracic
spinal column of the back comprising:
a main material holding compartment;
Appeal No. 2002-1898
Application 09/567,392
2
additional material holding compartments;
front shoulder straps that are anchored to the main material
holding compartment at the top of the main material holding
compartment and anchored higher than the bottom of the main
material holding compartment so as to concentrate the load of the
back pack to the thoracic spinal column;
a transverse laod carrying strap that is located over the
thoracic spinal column;
buckles attached to the straps for adjustment of the length
of each strap;
a quick release buckle attached to the transverse load
carrying strap; and
fasteners that permit opening and closing of each material
holding compartment of the back pack
whereby the entire load of the back pack is located over the
thoracic spinal column of the user.
THE PRIOR ART
The references relied on by the examiner to support the
appealed rejections are:
Thatcher 5,114,059 May 19, 1992
McAllister 5,255,833 Oct. 26, 1993
THE REJECTIONS
Claims 6 and 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Thatcher.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Thatcher in view of McAllister.
Attention is directed to the brief (Paper No. 11) and answer
(Paper No. 12) for the respective positions of the appellant and
the examiner regarding the merits of these rejections.
Appeal No. 2002-1898
Application 09/567,392
3
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection
Thatcher discloses “a soft, comfortable backpack that
supports the pack in the comfortable lumbar region of the back,
which allows pivotal body motion at hips and shoulders and allows
complete adjustability of load location and shoulder harness
attachments” (column 2, lines 6 through 10). As described by
Thatcher,
[t]he backpack [10] of the present invention generally
stated comprises a nylon cloth body [12] having a
plurality of compartments, including a main compartment
[70] accessible by a top zipper [72], two insulated
side compartment bottle holsters [28], a triangular
zipper pocket [78] at a center portion of the pack,
and, on larger models, a gussetted [sic] zipper pocket
[90] below the triangular pocket, a shoulder harness
[14], and a hip belt [16].
A shoulder harness [14] attaches pivotally to the
body within a slot [20] between a back pad [18] and the
body. It ca[n] be adjusted up or down on a pivot
buckle [112], thereby adapting to different body
lengths. The shoulder harness also has adjustable and
padded shoulder straps [30] that can also be shortened
or lengthened. The shoulder straps are maintained on
the shoulders by a shoulder blade strap [36] on the
back and a sternum strap [34] on the chest. The front
portion of the straps have a diagonally fixed nylon
mesh piece [40] on each strap that has a buckle [44]
and a mesh piece strap [42] attached to the pack body
adjacent the bottle holsters at the sides.
A hip belt [16] and attached hip pad [26] are
inserted in a slot between the body and a lumbar pad
[22] to support the bulk of the pack weight [column 2,
lines 16 through 40].
Appeal No. 2002-1898
Application 09/567,392
1 There is nothing intrinsically wrong with using such
functional language in a claim to define something by what it
does rather than by what it is. In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971).
4
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 Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
In applying Thatcher against claim 6 (see page 3 in the
answer), the examiner reads the claim limitations pertaining to
the front shoulder straps and the transverse load carrying strap
on Thatcher’s shoulder straps 30 and sternum strap 34,
respectively. Claim 6 also requires of the recited back pack
that “the entire load of the back pack is located over the
thoracic spinal column of the user.”1 The examiner has not
explained, however, nor is it apparent, how this last limitation
Appeal No. 2002-1898
Application 09/567,392
5
is met by Thatcher. As indicated above, Thatcher’s backpack 10
is designed to be worn such that the bulk of its weight is
supported through hip belt 16 by the lumbar region of the
wearer’s back. Hence, the backpack contemplated by Thatcher
clearly would not locate its entire load over thoracic spinal
column of the user as called for by claim 6. Moreover, there is
nothing in the teachings of Thatcher which would support any
speculation that the entire load of the back pack 10 would be
located over the thoracic spinal column of the user through the
shoulder straps 30 and sternum strap 34 if the hip belt 16 were
inoperative, i.e., unbuckled.
Thus, Thatcher does not disclose each and every element of
the back pack recited in claim 6. Accordingly, we shall not
sustain the standing 35 U.S.C. § 102(b) of claim 6, and dependent
8, as being anticipated by Thatcher.
II. The 35 U.S.C. § 103(a) rejection
Since McAllister does not cure the above noted shortcomings
of Thatcher relative to parent claim 6, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claim 7 as
being obvious over Thatcher in view of McAllister.
Appeal No. 2002-1898
Application 09/567,392
2 See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492-93 (CCPA 1973).
6
III. Remand to the examiner
The application is remanded to the examiner to consider
whether the recitation in claim 6 that the “entire” load of the
back pack is located over the thoracic spinal column of the user
is accurate as required by 35 U.S.C. § 112, second paragraph,2
and has written descriptive support as required by 35 U.S.C.
§ 112, first paragraph, and if not, to enter the appropriate
rejection(s). In this regard, the underlying specification (see
pages 6 and 7) and drawings (see Figure 3) seem to indicate that
while the load of the back pack is “concentrated” over the
thoracic spinal column region, some minor components of the load
are borne by other areas of the user’s body, e.g., the shoulders.
SUMMARY
The decision of the examiner to reject claims 6 through 8 is
reversed, and the application is remanded to the examiner for
further consideration.
Appeal No. 2002-1898
Application 09/567,392
7
REVERSED AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
LAWRENCE J. STAAB )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-1898
Application 09/567,392
8
NATHAN BOATNER ATTORNEY
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