Ex Parte Edinger et al

Board of Patent Appeals and Interferences

Nov 7, 2011

11951786 (B.P.A.I. Nov. 7, 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.
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