Ex parte GOULAIT

Board of Patent Appeals and Interferences

Sep 15, 1998

08521256 (B.P.A.I. Sep. 15, 1998)

Application for patent filed August 30, 1995. According1
to appellant, this application is a continuation of
Application 08/137,566, filed October 15, 1993, now abandoned.
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID J.K. GOULAIT
__________
Appeal No. 97-4184
Application No. 08/521,2561
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and STAAB, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-4184
Application No. 08/521,256
2
This is an appeal from the decision of the examiner
finally rejecting claims 1-5 and 21-23, which constitute all
of the claims remaining of record in the application.
The appellant's invention is directed to a fastening
system.
The subject matter before us on appeal is illustrated by
reference to claim 1, which reads as follows:
1. A fastening system releasably attachable to and in
combination with a complementary receiving surface, said
fastening system comprising a bilaterally staggered array of
free formed prongs joined at a base to an elastically
extensible substrate prestrained to thereby increase the
density of said prongs, said prongs extending outwardly from
said substrate along a shank to an engaging means, said pre-
strained substrate comprising a generally planar sheet of
material and having a relaxation-extension area ratio in one
direction of at least about 6.0, a five second recovery of at
least 50%, and a spring rate of less than 500 grams per inch
of width, whereby said prongs and said pre-strained substrate
apply a preload when attached to said complementary receiving
surface.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Aeschbach et al. (Aeschbach) 4,628,709 Dec.
16, 1986
Noel et al. (Noel) 5,032,122 Jul. 16,
1991
Appeal No. 97-4184
Application No. 08/521,256
A rejection under 35 U.S.C. § 112, first paragraph, was2
withdrawn in Paper No. 21.
3
Gomez-Acevedo 5,133,112 Jul. 28,
1992
Murasaki 5,361,462 Nov. 8,
1994
(filed Apr. 22, 1993)
THE REJECTIONS
Claims 1-5, 21 and 23 stand rejected under 35 U.S.C. §
103 as being unpatentable over Gomez-Acevedo in view of
Murasaki.
Claim 22 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gomez-Acevedo in view of Murasaki and either
Aeschbach or Noel.
The rejections are explained in the Examiner's Answer.2
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
At the outset, pursuant to our authority under 37 C.F.R.
§ 1.196(b), we make the following new rejection:
Appeal No. 97-4184
Application No. 08/521,256
4
Claims 1-5 and 21-23 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
In the specification, a “prestrained” substrate has been
defined as a substrate that is provided with a particular
density of prongs and then “may be later activated (such as by
heat shrinking) to contract” so that the density of the prongs
is increased (page 6, lines 30-32). An alternative also is
described, wherein a substrate “which is not thermally
activated may be pre-stretched, the prongs 10 applied thereto,
then released and allowed to contract” (sentence spanning
pages 6 and 7). The clear implication here is that
“prestraining” is a condition that exists only during the
manufacturing of the substrate, that is, while the prongs are
being installed, and that when this has been completed, the
substrate no longer is “prestrained.” The specification goes
on to state that “[a] prestrained substrate . . . has the
advantage of providing a preload in the product” (page 6,
lines 33-34; emphasis added). This raises four issues, which
also pertain to the claims. The first is that “preload” is
Appeal No. 97-4184
Application No. 08/521,256
5
not defined in the specification, nor is there any indication
of what structure is “preloaded.” Second, it is not clear
whether the “product” referred to here is the fastening system
(the substrate and the prongs), to which the appellant’s
claims are directed, or the combination of the fastening
system and the receiving surface, or something else. Third,
what is meant by stating that the preload is provided “in the
product” (emphasis added) is not clear. Fourth, if it is only
the prestrained substrate which provides the preload, it would
appear that preload is not present after the assembly of the
prongs to the substrate, and therefore is not relevant to the
claims, which are directed to a product and not a method of
making a product.
These inadequacies in the specification become important
when one attempts to determine the metes and bounds of claim
1. Because a patentee has the right to exclude others from
making, using and selling the invention covered by the patent,
the public must be apprised of exactly what the patent covers,
so that those who would approach the area circumscribed by the
claims of a patent may more readily and accurately determine
the boundaries of protection involved and evaluate the
Appeal No. 97-4184
Application No. 08/521,256
6
possibility of infringement and dominance. It is to this that
the second paragraph of 35 U.S.C. 112 is directed. See In re
Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
Claim 1 is directed to a fastening system comprising an
array of prongs joined to an elastically extensible substrate
that is “prestrained to thereby increase the density of said
prongs.” According to the definition of “prestrained”
provided in the specification, this means that the elastically
extensible substrate was stretched, the prongs were installed,
and then it was allowed to contract in order to increase the
density of the prongs. It therefore would appear that the
prestrained condition that was present during the
manufacturing process has come and gone, and is not present in
the completed fastening system article, which is the subject
of the claims. However, the claim goes on to state “whereby
said prongs and said pre-strained substrate apply a preload
when attached to said complementary receiving surface,” which
would seem to indicate that the prestrained condition is still
in existence when the substrate is attached to the receiving
surface. We are at a loss to determine what this seemingly
Appeal No. 97-4184
Application No. 08/521,256
7
contradictory language means, or what effect it is intended to
have upon the preceding portion of the claim.
Moreover, as we stated above, the specification provides
no precise meaning to be accorded to the term “preload.” And
to further complicate this matter, the recitation in the
specification differs from that recited in claim 1, in that
the specification states that the preload is provided by the
“prestrained substrate,” and it acts upon “the product,” a
term which is not used in the claims and whose meaning is not
established in the specification, while claim 1 states that
the preload is provided by “said prongs and said pre-strained
[prestrained?] substrate” (emphasis added).
When no definite meaning can be ascribed to certain terms
in a claim, as is the case with independent claim 1, the
subject matter does not become obvious, but rather the claim
becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165
USPQ 494, 496 (CCPA 1970). Since it is clear to us that
considerable speculation and assumptions are necessary to
determine the metes and bounds of what is being claimed, and
since a rejection under 35 U.S.C. § 103 cannot be based upon
speculation and assumptions, we are constrained not to sustain
Appeal No. 97-4184
Application No. 08/521,256
8
the examiner's rejections. In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). We hasten to point out,
however, that this action should not be construed as an
indication that the claimed subject matter would not have been
obvious in view of the prior art cited against the claims. We
have not addressed this issue, for to do so would require on
our part the very speculation which formed the basis of our
rejection under Section 112.
SUMMARY
The rejection of claims 1-5, 21 and 23 under 35 U.S.C. §
103 as being unpatentable over Gomez-Acevedo in view of
Murasaki is not sustained.
The rejection of claim 22 under 35 U.S.C. § 103 as being
unpatentable over Gomez-Acevedo in view of Murasaki and either
Aeschbach or Noel is not sustained.
Pursuant to 37 C.F.R. § 1.196(b), claims 1-5 and 21-23
are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention.
Appeal No. 97-4184
Application No. 08/521,256
9
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-4184
Application No. 08/521,256
10
REVERSED, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 97-4184
Application No. 08/521,256
11
Larry L. Huston
The Proctor and Gamble Company
Winton Hill Technical Center
6100 Center Hill Avenue
Cincinnati, OH 45224