Ex Parte Edinger et alDownload PDFBoard of Patent Appeals and InterferencesNov 7, 201111951786 (B.P.A.I. Nov. 7, 2011) Copy Citation 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. 11/951,786 12/06/2007 Larry Edinger 04116-P0001E 9053 24126 7590 11/08/2011 ST. ONGE STEWARD JOHNSTON & REENS, LLC 986 BEDFORD STREET STAMFORD, CT 06905-5619 EXAMINER CHEN, JOSE V ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 11/08/2011 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 LARRY EDINGER, WALTER JONES, and JULIAN CHAN ____________________ Appeal 2010-002288 Application 11/951,786 Technology Center 3600 ____________________ Before: LINDA E. HORNER, KEN B. BARRETT, and CHARLES N. GREENHUT, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002288 Application 11/951,786 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 21. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a tablecloth covering and method of covering and skirting a table. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of covering a table, the method comprising the steps of: providing a table having tabletop of predetermined dimensions and having a top surface and a plurality of side surfaces; providing a plurality of table covers, each of the plurality of table covers including a top cover having a generally polygonal contour with a plurality of sides at an outer periphery thereof, and a plurality of side drops for covering the side surfaces of the tabletop, each side drop extending generally orthogonally downwardly from a respective one of the sides of the top cover to a free edge, and a plurality of pre-fitted corners, each corner defined by two adjacent side drops permanently attached to one another along abutting ends thereof, wherein the top cover of each of the plurality of table covers has different dimensions than the top surface of each other of the plurality of table covers; selecting one of the plurality of table covers having a top surface with dimensions suitable for covering the tabletop of the table; fitting at least one of the pre-fitted corners of the selected table cover onto a corner of the tabletop of the table; pulling and extending the selected table cover across over other corners of the tabletop of the table; and fitting all remaining pre-fitted corners of the selected table cover onto corresponding corners of the tabletop of the table such that the table is covered and ready for use. Appeal 2010-002288 Application 11/951,786 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ruben Bergsbaken Hairston US 4,095,300 US 5,452,729 US 5,778,802 Jun. 20, 1978 Sep. 26, 1995 Jul. 14, 1998 REJECTIONS Claims 1-4, 8, 9, and 14-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergsbaken and Ruben. Ans. 3. Claims 5-7, and 10-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergsbaken, Ruben and Hairston. Ans. 4. OPINION In rejecting the claims over the combination Bergsbaken and Ruben or Bergsbaken, Ruben and Hairston the Examiner found that, regarding Bergsbaken and the claimed subject matter, “the only difference [is] that the connection structure is a separate piece of material.” Ans. 3-4. The Examiner also found that “Ruben teaches the use of providing a folded cover with attaching structure as a unitary one piece member” and concluded that “[i]t would have been obvious at the time of the invention to modify the structure of Bergsbaken et al to include a cover of a unitary construction, as taught by Ruben since such structures are conventional alternative structures used in the same intended purpose.” Ans. 4. It is unclear from the Examiner’s rejection what the Examiner regards as “the differences between the prior art and the claims at issue” (Ans. 3-4 citing Graham v. John Deere Co., 383 U.S. 1 (1966)) since the claim language is not discussed by the Examiner. In determining obviousness, Appeal 2010-002288 Application 11/951,786 4 there is no legally recognizable essential gist or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (citation omitted). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Further, it is unclear why or how the Examiner proposes to incorporate the teachings of Ruben into Bergsbaken. The structure of Bergsbaken referred to by the Examiner is a triangular material added to an inside corner of a surgical table to account for the gap between the first 12 and second 24 portions of a drape 10 that covers both a patient and the table. See Fig. 7. In contrast, Ruben discusses the stitching of material to form a fitted outside corner 11 of a bedspread 10. See Figs. 1-6. The Examiner fails to explain how Bergsbaken could benefit from Ruben’s teaching. Further, the Examiner does not explain, and it is not apparent from the references, how the claimed subject matter would have been rendered obvious in light of the combined teachings of Bergsbaken and Ruben. Hairston, as applied by the Examiner, fails to cure this deficiency. Since the key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious, we cannot sustain the Examiner’s rejections. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). DECISION The Examiner’s rejection of claims 1-21 are reversed. REVERSED nlk Copy with citationCopy as parenthetical citation