Ex parte Holland

Board of Patent Appeals and Interferences

Aug 26, 1997

08235538 (B.P.A.I. Aug. 26, 1997)

Application for patent filed April 29, 1994. According to1
the appellant, the application is a continuation-in-part of
Application 08/058,329, filed May 10, 1993, now abandoned.
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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD B. HOLLAND
____________
Appeal No. 96-4043
Application 08/235,5381
___________
ON BRIEF
____________
Before CALVERT, ABRAMS, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
Appeal No. 96-4043
Application 08/235,538
The record in this application indicates (1) that none of2
claims 12 through 14 has been twice rejected and (2) that the
decision of the examiner appealed from (Paper No. 8) was not
expressly designated as a final rejection or action. These
circumstances raise the issue of whether the instant appeal is
premature (see 35 U.S.C. § 134 and 37 CFR § 1.191(a)). It is
apparent from the Notice of Appeal (Paper No. 9) and main brief
(Paper No. 10) that the appellant considers the decision appealed
from to be a final rejection or action. It would also appear
from the statement in the answer (Paper No. 11) that “[n]o
amendment after final has been filed” (page 1) that the examiner
also considers the decision appealed from to be a final rejection
or action. In this light, we regard the decision appealed from
to be a final rejection or action, with the examiner’s failure to
expressly designate it as such being the result of an inadvertent
oversight.
2
DECISION ON APPEAL
This appeal is from the decision of the examiner to reject
claims 12 through 14. Claims 15 through 23, the only other2
claims pending in the application, stand allowed.
The invention relates to “containers for light-sensitive
strip or sheet materials” (specification, page 1). Claim 12 is
illustrative of the subject matter on appeal and reads as
follows:
12. A container for enclosing a strip or sheet of light
sensitive material of the type including an elongated opening
from said container for withdrawing said light-sensitive
material, said opening having a pair of opposed inner faces; and
a strip of light-locking material attached to each of said inner
faces, characterized by: said light-locking material being a
woven, napped and sheared fabric having staple yarn weft floats
with said staple yarn fibers raised therefrom to form a pile to
prevent light from entering said container and exposing said
light-sensitive material.
Appeal No. 96-4043
Application 08/235,538
The examiner has refused entry of the reply brief (Paper3
No. 12) filed by the appellant in response to the answer (see
Paper No. 13). Accordingly, we have not considered the arguments
advanced in the reply brief in reviewing the merits of the
appealed rejections.
3
The references relied upon by the examiner as evidence of
obviousness are:
Okamoto et al. (Okamoto) 3,865,678 Feb. 11, 1975
Tate et al. (Tate) 5,158,118 Oct. 27, 1992
Mizuno 5,219,128 Jun. 15, 1993
(filed Jun. 11, 1992)
The appealed claims stand rejected under 35 U.S.C. § 103 as
follows:
a) claim 12 as being unpatentable over Mizuno in view of
Okamoto; and
b) claims 13 and 14 as being unpatentable over Mizuno in
view of Okamoto, and further in view of Tate.
Reference is made to the appellant’s main brief (Paper No.
10) and to the examiner’s decision appealed from (Paper No. 8)
and answer (Paper No. 11) for the respective positions of the
appellant and the examiner with regard to the propriety of these
rejections.3
Mizuno discloses a photographic film cassette having an
elongated film-passage mouth 6. The mouth has a pair of opposed
inner surfaces carrying light-trapping members 7 and 8. These
Appeal No. 96-4043
Application 08/235,538
4
light-trapping members “consist of sheets with fluffs as facing
layers and flexible or compressible materials as base layers”
(column 3, lines 53 through 55). Mizuno teaches that “a material
for the sheets can be selected from among woven and knitted
fabrics of synthetic fiber such as nylon, polyester and acrylic,
regenerated fiber such as rayon, cupro and natural fiber such as
cotton, silk and sheep wool; non-woven fabrics; synthetic
leathers; fluffy materials; flocked material and films” (column
3, lines 56 through 62). In Example 5,
[a] polyester thread of 70 denier/20 filaments was
used to form a ribbon of a twill fabric in accordance
with a weave illustrated in FIG. 6 in which one warp
thread overlies two weft threads and underlies one weft
thread alternately. . . . The ribbon was then treated
for raising by a cylindrical sand grinder to form short
loops 0.2 mm long, as fluffs, and cut at a
predetermined size to obtain the sheets [column 8,
lines 6 through 22].
It is not disputed that the Mizuno cassette meets all of the
limitations in appealed claim 12 except for those relating to the
specifically defined light-locking material.
Okamoto discloses “a raised woven fabric whose surface is
covered with extra-fine fibers having a suede-like touch,
appearance and feel” (column 1, lines 5 through 7). Figure 2
illustrates a cross-sectional schematic view of a raised woven
fabric
Appeal No. 96-4043
Application 08/235,538
5
wherein (4) is a warp consisting of crimped fibers,
(5) is a weft consisting of a bondle [sic, bundle] of
fine fibers, and (6), (7) and (8) are raised fibers.
When a woven fabric having an appropriate number of
floating wefts is subjected to raising processing,
raised fibers (6) in the form of downy hairs consisting
mainly of fine fibers of the weft (5) or raised fibers
(7) in the form of small loops are formed, the weft (5)
is mutually restricted with the warp (4), the weft does
not float in the form of a large loop and a uniform
suede-like woven fabric having a good cover of raised
fibers is obtained [column 7, lines 42 through 53].
Okamoto also teaches that the woven fabric may be made of
polyester fibers (see columns 6 and 7) and that the fabric may be
sheared after the raising processing to obtain an excellent nap
(see column 15, lines 11 through 18).
In explaining the rejection of claim 12, the examiner
contends that
[i]t would have been obvious to one of ordinary skill
in the art to provide the film cassette of Mizuno with
the material of Okamoto for use as a light trap. No
unusual or unobvious result is attained by substituting
one old and well known type of woven, napped and
sheared material for another to provide a similar
function. Also, the use of a spun, staple length yarn
for the weft or warp in the fabric of Mizuno as
modified by Okamoto would have been obvious to one of
ordinary skill in the art since such types of yarn are
old and well known for their durability and the
examiner takes official notice of same [Paper No. 8,
page 3].
The appellant, on the other hand, argues that “[t]here is no
teaching nor is it obvious to substitute the fabric of Okamoto
for that of Mizuno. Neither Mizuno or Okamoto recognize[s] that
Appeal No. 96-4043
Application 08/235,538
6
the claimed light-fabric would provide excellent light-lock
characteristics. Furthermore, the Okamoto fabric is not napped
and sheared as required by the claims” (main brief, page 3).
Given the combined teachings of Mizuno and Okamoto, the
appellant’s argument is not persuasive.
As indicated above, Mizuno teaches that the light-trapping
components of the photographic film cassette disclosed therein
may be made of any number of different materials including raised
woven polyester fabrics. Okamoto discloses a raised and sheared
woven polyester fabric of the type defined in claim 12 and
teaches that such has uniform suede-like properties and a good
cover of raised fibers. One of ordinary skill in the art would
have readily appreciated the Okamoto fabric, with its uniform
properties and good cover of raised fibers, to be one of the many
suitable materials contemplated by Mizuno for use as a light-
trapping component. Given this appreciation, the artisan would
have found it obvious to so utilize the Okamoto fabric in the
Mizuno cassette. The appellant has not challenged the examiner’s
official notice that staple yarns are old and well known for
their durability, or the examiner’s additional conclusion that
the use of such yarns in the fabric of Mizuno as proposed to be
Appeal No. 96-4043
Application 08/235,538
7
modified in view of Okamoto would have been obvious to one of
ordinary skill in the art.
Moreover, the above noted teachings of Mizuno and Okamoto
regarding the use of polyester belie the appellant’s argument
(see page 3 in the main brief) that the references would not have
suggested “warp yarns of substantially 100% polyester” as recited
in claim 14.
For these reasons, the differences between the subject
matter recited in claims 12 and 14 and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art. Therefore, we shall sustain the standing 35 U.S.C.
§ 103 rejection of these claims.
We shall also sustain the standing 35 U.S.C. § 103 rejection
of claim 13, which depends from claim 12, since the appellant has
not argued such with any reasonable specificity, thereby allowing
this claim to stand or fall with its parent claim (see In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987)).
Appeal No. 96-4043
Application 08/235,538
8
In summary, the decision of the examiner to reject claims
12 through 14 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-4043
Application 08/235,538
9
Terry T. Moyer
P.O. Box 1927
Spartanburg, SC 29304
JPM/jrg
APPEAL NO. 96-4043 - JUDGE McQUADE
APPLICATION NO. 08/235,538
APJ McQUADE
APJ CALVERT
APJ ABRAMS
DECISION: AFFIRMED
Typed By: Jenine Gillis
DRAFT TYPED: 17 Feb 99
FINAL TYPED: