Ex Parte Hastings

Board of Patent Appeals and Interferences

Oct 28, 2002

08867949 (B.P.A.I. Oct. 28, 2002)

1
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not written for publication and is not binding precedent of the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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN T. HASTINGS
__________
Appeal No. 2001-1301
Application 08/867,949
___________
ON BRIEF
___________
Before FRANKFORT, MCQUADE, and CRAWFORD, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
John T. Hastings appeals from the final rejection (Paper No.
18) of claims 39, 40, 43 and 46, all of the claims pending in the
application.
This is the second appeal to this Board involving the
instant application. In a decision (Paper No. 16) rendered in
the first appeal (Appeal No. 1999-2757), the Board determined
that the appellant’s claims were indefinite and lacking in
written descriptive support, entered corresponding 35 U.S.C.
§ 112, first and second paragraph, rejections, and reversed the
Appeal No. 2001-1301
Application 08/867,949
1 Although the “Easyboard Presentation Holder” materials do
not bear a distribution or publication date, the appellant
acknowledges in the information disclosure statement that they
2
examiner’s 35 U.S.C. § 103(a) rejection because the claim
indefiniteness prevented a reasoned evaluation thereof. The
appellant has since amended the claims to overcome the § 112
rejections and the examiner has reinstated the § 103(a) rejection
which is now before us for review.
THE INVENTION
The invention relates to “a display holder for holding and
displaying sheets of paper or similar material” (specification,
page 1). Representative claim 39 reads as follows:
39. A unitary display frame for displaying a document on a
fabric covered surface comprising:
a cover having a front side, a rear side, a transparent
central portion, and an opaque peripheral portion; and
attachment means secured to said rear side of said opaque
peripheral portion of said cover for selectively engaging the
fabric of the fabric covered surface and supporting the document
in a defined retention area, between said cover and the fabric of
the fabric covered surface, for limiting relative movement
between the document and said cover.
THE PRIOR ART
The prior art relied on by the examiner as evidence of
obviousness consists of:
The “Easyboard Presentation Holder” product and
description sheets made of record by the appellant in
an information disclosure statement filed August 22,
1997, Paper No. 2 (Easyboard).1
Appeal No. 2001-1301
Application 08/867,949
are prior art relative to the claimed invention.
2 As noted by the examiner on page 2 in the answer, the term
“said frame means” in claim 40 lacks a proper antecedent basis
and should be changed to --said cover-- in the event of further
prosecution.
3
THE REJECTION
Claims 39, 40, 43 and 46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Easyboard.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 20 and 22) and to the examiner’s answer (Paper
No. 21) for the respective positions of the appellant and the
examiner regarding this rejection.2
DISCUSSION
The description sheets characterize the Easyboard product as
comprising “[a] clear, matte, no glare film attached on all four
sides by Velcro to a rigid, lightweight, white core board for
presentations, posters, exhibits, charts, blueprints, maps or
signage.” The film and board are rectangular in shape, and the
film, which can be written on with an erasable marker, has an
opaque printed border simulating a picture frame. The VELCRO®
elements comprise four strips of hook-type fasteners extending
along the rectangular periphery of the core board and four mating
strips of loop-type fasteners extending along the rectangular
Appeal No. 2001-1301
Application 08/867,949
4
periphery of the film behind the opaque border. The strips
cooperate to selectively attach the film to the board with a
document affixed therebetween.
The film component of the Easyboard product constitutes a
display frame meeting all of the limitations in the appealed
claims except for the one in independent claim 39 requiring the
attachment means to be capable of selectively engaging the fabric
of a fabric covered surface and the one in dependent claim 43
further defining the attachment means as comprising hook-type
fasteners. As indicated above, the attachment means on the
Easyboard film are loop-type fasteners. The record is devoid of
any evidence that these loop-type fasteners are capable of
selectively engaging a fabric, or that the hook-type fasteners
which they do selectively engage comprise a fabric as urged by
the examiner (see pages 5 and 6 in the answer).
The appellant’s arguments that the Easyboard product is
further deficient with respect to the subject matter claimed
because (1) it is not used in combination with a fabric covered
wall, (2) it is a two-piece holder which does not meet the
“unitary” limitations in claims 39 and 40 or the “flexible”
limitation in claim 40, and (3) its attachment means has four
sections rather than “three” as recited in claim 43 are
Appeal No. 2001-1301
Application 08/867,949
5
unpersuasive, essentially because they are not commensurate with
the actual scope of the appealed claims. To begin with, these
claims recite a display frame per se, not a display frame in
combination with a fabric covered surface and not a method of
using a display frame with such a surface. Although utilized
together, the Easyboard film and core board are separate and
distinct elements, and the film alone embodies a “unitary”
display frame comprising attachment means and a “unitary” and
“flexible” cover. Finally, claim 43 is an open-ended
“comprising” claim which covers, i.e., does not exclude,
additional unrecited elements (see AFG Industries Inc. v.
Cardinal IG Co., 239 F.3d 1239, 1244-45, 57 USPQ2d 1776, 1780-81
(Fed. Cir. 2001)), such as the fourth attachment means section on
the Easyboard film component.
As for the above noted failure of the Easyboard product to
meet the limitation in claim 39 requiring the attachment means to
be capable of selectively engaging the fabric of a fabric covered
surface and the limitation in claim 43 further defining the
attachment means as comprising hook-type fasteners, the examiner
has concluded (see page 5 in the answer) that it would have been
an obvious matter of design choice to switch the positions of the
Easyboard hook-type and loop-type fasteners, with the hook-like
Appeal No. 2001-1301
Application 08/867,949
6
fasteners thus being placed on the film. As so modified, the
film would have hook-type fasteners as recited in claim 43 which
are inherently capable of selectively engaging the fabric of a
fabric covered surface as recited in claim 39. The appellant
counters that there is no motivation or suggestion for this
modification, and that it therefore rests on impermissible
hindsight.
The assessment of this obviousness issue must take into
account the skill that must be presumed on the part of the
artisan (see In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985)), the common knowledge and common sense of such
a person (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549
(CCPA 1969)), and, in addition to the specific teachings of the
prior art, the inferences which the artisan would reasonably be
expected to draw therefrom (see In re Preda, 401 F.2d 825, 159
USPQ 342, 344 (CCPA 1968)). Viewed in this light, the examiner’s
conclusion of obviousness is well taken. One of ordinary skill
in the art, considering the Easyboard product as a whole,
including its structure and intended use, would not attach any
significance to whether the loop-type and hook-type fasteners
were disposed on the film and core board, respectively, or on the
core board and film, respectively, and therefore would consider
Appeal No. 2001-1301
Application 08/867,949
7
either placement to be an obvious matter of design choice. Thus,
the Easyboard product, seen through the eyes of a person having
ordinary skill in the art, would have suggested a film component
having hook-type attachment means. Such a film component would
respond to all of the display frame limitations in the appealed
claims. In this regard, it is again pointed out that these
claims are drawn to a display frame per se, and not to a display
frame in combination with a fabric covered surface or to a method
of using a display frame with such a surface.
We shall therefore sustain the standing 35 U.S.C. § 103(a)
rejection of claims 39, 40, 43 and 46.
SUMMARY
The decision of the examiner to reject claims 39, 40, 43 and
46 is affirmed.
Appeal No. 2001-1301
Application 08/867,949
8
No time period for taking any subsequent action in conection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JPM/kis
Appeal No. 2001-1301
Application 08/867,949
9
VICKERS, DANIELS & YOUNG
2000 TERMINAL TOWER
CLEVELAND, OH 44113-2235