Ex Parte Hui

Board of Patent Appeals and Interferences

Jul 31, 2008

10229083 (B.P.A.I. Jul. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN HUI
__________

Appeal 2007-3860
Application 10/229,083
Technology Center 3600
__________

Decided: July 31, 2008
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ and
MELANIE L. McCOLLUM, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge McCOLLUM.

Opinion Dissenting-in-part filed by Administrative Patent Judge ADAMS.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a bedding
article. The Examiner has rejected the claims as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Appeal 2007-3860
Application 10/229,083

INTRODUCTION
The Specification describes bedding articles, particularly sleeping
bags (Spec. 1). Specifically, the Specification describes a sleeping bag
having a main cover layer “with a transverse slit that is wide enough for a
person to put his or her legs through” (id. at 3-4). The Specification states
that “[a]top the leg area portion of the sleeping bag a top half length cover is
placed and is permanently secured along the sides of the main cover layer”
(id. at 4).
Claims 1-5, 7-10, 14, 16, and 17 are on appeal. Claims 6, 11-13, 15,
and 18-20 are also pending but have been indicated to be allowable. We will
focus on claims 1 and 7, which are representative and read as follows:
1. A bedding article for accommodating the body of a person
comprising:
an elongated main cover layer of flexible material having an upper
body portion and also a lower body portion with a foot extremity and
including a transverse slit defined in said lower body portion between said
upper body portion and said foot extremity, and
a top cover layer overlying said lower body portion of said main cover
layer and secured thereto.
7. A bedding article according to Claim [1 wherein said top cover
layer has a foot extremity and further comprising an upper fastening system
releaseably joining said foot extremity of said top cover layer to said foot
extremity of said main cover layer] wherein said upper fastening system is a
zipper.
LUCAS
Claims 1-4, 8, 16, and 17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lucas (US 2,060,092, Nov. 10, 1936). The Examiner finds
that “Lucas discloses a bedding article comprising an elongated main cover
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layer (3) . . . including a transverse slit ((8) . . . ) defined in [a] lower body
portion . . . and a top cover layer (14) overlying said lower body portion of
said main cover layer and secured thereto” (Ans. 3-4). The Examiner argues
that “whether the slit is transverse or longitudinal depends clearly on ones
interpretation of a particular orientation, point of view and/or perspective”
(id. at 8).
Appellant argues, however, that “the Lucas reference cannot
reasonably be interpreted as having a ‘transverse slit’ in an ‘elongated main
cover layer’ between the upper body portion and the foot extremity thereof”
(Br. 11).
The issue is whether Lucas’s slit 8 constitutes the “transverse slit”
recited in claim 1.
Findings of Fact
1. In Merriam-Webster Online Dictionary (2008), the term
“transverse,” when used as an adjective, is defined as follows: “1 : acting,
lying, or being across : set crosswise” and “2 : made at right angles to the
long axis of the body” (definition attached).
2. The Specification describes a sleeping bag having a main cover
layer “with a transverse slit that is wide enough for a person to put his or her
legs through” (Spec. 3-4).
3. The Specification states that “[t]his slit is parallel to the bottom
of the sleeping bag and located at about the level of a person’s shins” (id. at
4).
4. In Figure 1, the Specification depicts a transverse slit 34 that is
“across the width of the [elongated] main cover layer 24” (id. at 10).
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5. Lucas “relates to a sleeping bag for infants” (Lucas, p. 1, col. 1,
ll. 1-2).
6. Lucas describes a sleeping bag “provided with a longitudinally
extending central opening or slit 8” (id. at p. 1, col. 1, ll. 53-55).
7. Lucas states that “Figure 1 is a view in perspective of the
sleeping bag conforming to [the] invention” (id. at p. 1, col. 1, ll. 37-38).
8. The sleeping bag depicted in Lucas’s Figure 1 has a rectangular
shape.
9. Lucas’s Figure 2 depicts a view of the sleeping bag along the
long axis of the rectangle depicted in Figure 1.
10. Lucas states that “Figure 2 is a longitudinal sectional view
along a central line of Figure 1” (id. at p. 1, col. 1, ll. 39-40).
11. Lucas’s Figure 3 depicts a view of the sleeping bag along one
of the short sides of the rectangle depicted in Figure 1.
12. Lucas states that “Figure 3 is a transverse sectional view of
Figure 1” (id. at p. 1, col. 1, ll. 41-42).
Analysis
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citation omitted). One of
the dictionary definitions for the term “transverse” is “made at right angles
to the long axis of the body” (Finding of Fact (FF) 1). The Specification
uses the term “transverse” to describe a slit that is “parallel to the bottom of
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the sleeping bag” (FF 3). In Figure 1, the Specification depicts “transverse
slit 34,” which is at right angles to the long axis of the elongated main cover
layer (FF 4). In addition, Lucas provides evidence that one of ordinary skill
in the art would have referred to the long axis of a rectangle as a longitudinal
axis and would have referred to the short axis of a rectangle as a transverse
axis (FF 6-12). Consistent with how the term “transverse” is used in the
Specification and the evidence provided by Lucas of how this term would
have been used in the art, we interpret claim 1 to require that the “transverse
slit” be at right angles to the long axis of the elongated main cover layer.
Lucas’s slit 8 is not at right angles to the long axis of its sleeping bag
(FF 6). Therefore, we agree with Appellant that the Examiner has not set
forth a prima facie case that Lucas anticipates claim 1 or claims 2-4 and 8,
which depend from claim 1. We also find that the Examiner has not
adequately explained how Lucas anticipates claims 16 and 17, which recite
or depend from a claim that recites a slit “defined through and transversely
across said second portion of said main cover.” We therefore reverse the
rejection of claims 1-4, 8, 16, and 17 under 35 U.S.C. § 102(b) over Lucas.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Lucas. Claim 7 indirectly depends from claim 1. We have already
concluded that the Examiner has not set forth a prima facie case that Lucas
anticipates claim 1. In addition, the Examiner has not set forth sufficient
basis to conclude that it would have been obvious to modify Lucas’s
sleeping bag include a transverse slit. Thus, we conclude that the Examiner
has not set forth a prima facie case that claim 7 would have been obvious
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over Lucas. We therefore reverse the obviousness rejection of claim 7 over
Lucas.
LAPIERRE
Claims 1-4, 9, 10, and 16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lapierre (US 622,812, Apr. 11, 1899). The Examiner finds
that “Lapierre discloses a bedding article comprising an elongated main
cover layer . . . including a transverse slit (a) defined in [a] lower body
portion . . . and a top cover layer (a') overlying said lower body portion of
said main cover layer and secured thereto” (Ans. 4).
Appellant argues that the “large rectangular opening a in Lapierre
cannot reasonably be considered to be a ‘slit’” (Br. 13).
The issue is whether Lapierre’s rectangular opening a can be
considered a slit.
Findings of Fact
13. In Merriam-Webster Online Dictionary (2008), the term “slit,”
when used as a noun, is defined as “a long narrow cut or opening”
(definition attached).
14. Lapierre describes a sleeping bag that is “closed on all sides,
forming a closed compartment, with the exception of an opening a on the
top of the bag, through which the person using the bag passes inside”
(Lapierre, p. 1, ll. 51-59).
15. In Figure 1, Lapierre depicts a rectangular opening a that
appears to be slightly longer in one direction than the other (id. at Fig. 1).
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Analysis
As noted above, “[i]t is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their broadest reasonable
interpretation consistent with the specification.” In re Sneed, 710 F.2d at
1548. However, we find it unreasonable to consider rectangular opening a
to be a “slit,” as this term would have been understood by one of ordinary
skill in the art. In addition, the term “opening” used in the Specification
(FF 14) does not anticipate a “slit.” Therefore, we agree with Appellant that
the Examiner has not set forth a prima facie case that Lapierre anticipates
claim 1 or claims 2-4, 9, 10, or 16, which also recite or depend from a claim
that recites a slit. We therefore reverse the rejection of claims 1-4, 9, 10, and
16 under 35 U.S.C. § 102(b) over Lapierre.
HINDS
Claims 1, 2, 9, 10, 14, 16, and 17 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hinds (US 2,368,220, Jan. 30, 1945). The
Examiner finds that “Hinds discloses a bedding article comprising an
elongated main cover layer (16) . . . including a transverse slit (26,28)
defined in [a] lower body portion . . . and a top cover layer (21) overlying
said lower body portion of said main cover layer and secured thereto”
(Ans. 5). The Examiner considers the portion of Hinds’ sleeping bag that is
covered by storm curtain 21 to be the “lower body portion” and the other
portion of the bag to be the “upper body portion” (id. at Exhibit C).
Appellant argues that Hinds “lacks the transverse slit 34 defined in a
lower body portion of an elongated main cover layer, as well as a top cover
layer 36 overlying the lower body portion of the cover layer” (Br. 14).
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The issues are whether the sleeping bag described in Hinds has a
transverse slit in a lower body portion of an elongated main cover layer and
has a top cover layer overlying the lower body portion of the cover layer.
Findings of Fact
16. Hinds describes a sleeping bag containing “two lengths of
waterproof cloth 16 and 17 which are fastened together at one side and
bottom in the conventional manner. In order to provide an opening in the
bag by which the camper may enter, the two lengths of cloth are joined by a
zipper fastener 18.” (Hinds, p. 1, col. 1, ll. 44-52; see Figs. 4-6.)
17. Hinds discloses providing a piece of mosquito netting 26 in
upper cloth 16 “[t]o provide free circulation of air” (id. at p. 1, col. 2, ll. 12-
16).
18. Hinds also discloses that “[b]oth lengths of cloth are left open at
the top, the upper length 16 being folded over to provide a compartment 20
for clothing and the lower length 17 continuing over the top of the bag to
form a storm curtain 21” (id. at p. 1, col. 1, l. 53, to col. 2, l. 2).
19. In order to enter compartment 20 from the exterior of the bag,
Hinds describes providing “the free or unsecured end of the upper section 16
. . . with a transverse opening position[ed] between the storage compartment
and the netting. A zipper closure 28 . . . is adapted to open or close the
transverse opening.” (Id. at p. 1, col. 2, ll. 22-31.) The transverse opening
closed by zipper closure 28 is a transverse slit (id. at Fig. 7)
Analysis
Based on our findings and those of the Examiner, we conclude that
the Examiner has set forth a prima facie case that Hinds anticipates claim 1.
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In particular, we agree with the Examiner that Hinds describes a bedding
article comprising an elongated main cover layer of flexible material (16)
including a transverse slit (that is opened or closed by zipper 28) and a top
cover layer (21) that is secured to the main cover layer (FF 16-19).
With regard to the recitation in claim 1 of an “upper body portion,”
we interpret this recitation to require that the main cover layer includes a
portion that is capable of accommodating the upper body of a person. With
regard to the recitation in claim 1 of a “lower body portion with a foot
extremity,” we interpret this recitation to require that the main cover layer
includes a portion that is capable of accommodating the lower body of a
person, this portion including an extremity at the bottom near where the
person’s feet would be. We agree that the Examiner has set forth a prima
facie case that the portion of Hinds’ sleeping bag that is covered by storm
curtain 21 is capable of accommodating the lower body of a person and
includes an extremity at the bottom near where the person’s feet would be
and that the other portion of the bag is capable of accommodating the upper
body of a person.
Appellant argues:
The Examiner’s interpretation of the Hinds reference is
completely illogical. If one were to attempt to utilize the
sleeping bag 15 of the Hinds reference as proposed by the
Examiner the occupant’s head would be completely confined
within the “upper portion” of the Hinds bag, as labeled by the
Examiner, and the occupant would suffocate.
(Br. 14.)
We are not persuaded by this argument. We agree with the Appellant
that Hinds does not describe orienting a person in its sleeping bag such that
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the person’s head is within the portion of the sleeping bag that the Examiner
designates the upper portion. However, claim 1 does not recite a bedding
article containing a person in this orientation. In addition, the Examiner has
set forth a prima facie case that Hinds’ sleeping bag is capable of
accommodating a person in this orientation.
With regard to the Appellant’s allegation that the person would
suffocate, Hinds discloses a piece of mosquito netting 26 in upper cloth 16
“[t]o provide free circulation of air” (FF 17). Furthermore, additional air
could be provided to the person by unzipping zipper 18 (see FF 16). Thus,
we agree with the Examiner that the allegation that “the occupant would
suffocate . . . is mere speculation” (Ans. 9).
Unlike the automobile analogy provided by our dissenting colleague,
the recitations in claim 1 of an “upper body portion” and a “lower body
portion with a foot extremity” do not provide an orientation of the bedding
article. That is, the claim does not require that the “upper body portion” of
the bedding article be oriented in space above the “lower body portion.”
Instead, these limitations describe the orientation of a person with respect to
the bedding article. However, as discussed above, claim 1 does not recite a
bedding article containing a person in this orientation. Therefore, these
limitations recite an intended use. “[T]erms [that] merely set forth the
intended use for . . . an otherwise old [product] . . . do not differentiate the
claimed [product] from those known in the prior art.” In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974). Here, the “upper body portion” and “lower
body portion” are intended uses that do not structurally distinguish the
claimed bedding article from the prior art. For the automobile, however, the
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top and bottom portions would clearly be understood to be structurally
different from each other, having a roof and tires, respectively.
Appellant also argues that “the top layer of waterproof cloth 16 lacks
any structure that could be considered to be a ‘transverse slit’. Rather, the
cloth 16 has only a transverse upper edge, not a slit, that can be folded over
to provide a compartment 20 for clothing.” (Br. 14.)
We are not persuaded by this argument. Hinds describes a transverse
opening that can be opened or closed by zipper 28 (FF 19). We agree with
the Examiner that this transverse opening constitutes a transverse slit (Ans. 5
& 9).
We conclude that the Examiner has set forth a prima facie case that
claim 1 is anticipated by Hinds, which Appellant has not rebutted. We
therefore affirm the rejection of claim 1 under 35 U.S.C. § 102(b). Claims 2,
9, 10, 14, 16, and 171 have not been separately argued2 and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
HUANG
Claims 1, 4, and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Huang (US 5,005,235, Apr. 9, 1991). The Examiner finds
that

1 Claims 16 and 17 do not recite (or depend from a claim that recites) an
“upper body portion” or a “lower body portion with a foot extremity.” Thus,
Appellant’s argument concerning these phrases does not appear to even
apply to claims 16 and 17.
2 The Appeal Brief groups claims 9, 10, and 14 separate from claims 1, 2,
16, and 17 (Br. 7). However, the Appeal Brief does not provide any
argument that claims 9, 10, and 14 are separately patentable over Hinds.
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Huang discloses a bedding article comprising an elongated
main cover layer (2) . . . including a transverse slit (28) defined
in [a] lower body portion . . . and a top cover layer (4) overlying
said lower body portion of said main cover layer and secured
thereto. The foot extremity of the top cover layer is joined to
the foot extremity of the main cover layer (25,41).
(Ans. 5.)
Appellant argues that Huang fails to teach the transverse slit and the
top cover layer of claim 1 and the zipper of claim 7.
The issues are whether Huang teaches the transverse slit and the top
cover layer of claim 1 and the zipper of claim 7.
Findings of Fact
20. Huang describes a sleeping bag comprising “an outer panel
made from moisture-proof cloth, and a warm lining disposed inside the outer
panel” (Huang, Abstract).
21. Huang discloses that the outer “[p]anel 2 is made from two
layers of cloth, the inner layer of which is a warm lining 26 . . . , while the
outer layer is a moisture-proof cloth 27. . . . The warm lining has two
parallel zippers 28, and is used for enveloping two soft pads 5 . . . for
providing a comfortable base for the user.” (Id. at col. 2, ll. 38-46.)
22. Huang also discloses “an outer zipper 24 attached around three
edges, except the top edge, of the outer panel 2” and an inner zipper 25
“along the inner edge of the outer panel 2,” which is parallel to the outer
zipper (id. at col. 2, ll. 32-37).
23. In addition, Huang discloses a “lining 4 . . . provided with a
zipper 41 extending around the edge thereof, [which] can be fastened
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together with the inner zipper 25 attached around the outer panel 2” (id. at
col. 2, ll. 46-49).
24. Huang also discloses folding the sleeping bag and fastening
“via the outer zipper 24 to form a sleeping bag” (id. at col. 2, ll. 56-58).
25. In addition, Huang discloses an unfolded sleeping bag. When
the sleeping bag is unfolded, lining 4 overlies outer panel 2, including the
lower body portion thereof. (Id. at Fig. 4.)
26. Zipper 24 is at the foot extremity of Huang’s sleeping bag (id.
at Fig. 3).
27. Zippers 28 are in warm lining 26 of outer panel 2 separated
from the portion of zipper 24 that is at the foot extremity by a distance that
includes room for zipper 25 (id. at Fig. 1).
Analysis
Based on our findings and those of the Examiner, we conclude that
the Examiner has set forth a prima facie case that Huang anticipates claims 1
and 7. In particular, we agree with the Examiner that Huang describes a
bedding article comprising an elongated main cover layer of flexible
material (2) including a transverse slit (closed by zipper 28) and a top cover
layer (4) that is secured to the main cover layer (2) by a zipper (lining
zipper 41 is fastened with inner zipper 25) (FF 20-24).
Appellant argues, however, that “the transverse slit closed by the
zipper 28 is not defined in the lower body foot portion between the upper
body portion and the foot extremity, but rather at the foot extremity”
(Br. 15).
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We are not persuaded by this argument. The outer zipper 24 is at the
foot extremity of Huang’s sleeping bag (FF 22 & 26). The transverse slit
closed by zipper 28 is separated from the portion of zipper 24 that is at the
foot extremity by a distance that includes room for zipper 25 (FF 27). Thus,
we do not agree with Appellant that the transverse slit defined by the
opening closed by zipper 28 is at the foot extremity.
Appellant also argues that
the structure of the Huang reference lacks a top cover layer 4
overlying the lower body portion of the main cover layer 2.
Quite to the contrary, and as clearly illustrated in Fig. 8, the
layer 4 is not a “top cover layer” overlying the lower body
portion of the main cover layer (2), but rather lies beneath the
main cover layer 2.
(Br. 15-16.)
We are not persuaded by this argument. Huang describes an unfolded
sleeping bag. When the bag is unfolded, lining panel 4 overlies the lower
body portion of outer panel 2. (FF 25.)
In addition, Appellant argues that “Claim 7 is not anticipated by the
Huang reference in that the zippered closure 24 is not between the top and
main cover layer, but rather between the top cover layer and bottom cover
layer” (Br. 16).
We are not persuaded by this argument. As indicated by the
Examiner, Huang’s zipper members (25,41), not zipper closure 24, is being
considered the zipper of claim 7 (Ans. 10).
We conclude that the Examiner has set forth a prima facie case that
claims 1 and 7 are anticipated by Huang, which Appellant has not rebutted.
We therefore affirm the rejection of claims 1 and 7 under 35 U.S.C.
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§ 102(b). Claim 4 has not been separately argued and therefore falls with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
CALUTOIU AND UPGRADE BIVY
Claim 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious
over Calutoiu (US 4,507,805, Apr. 2, 1985) in view of Upgrade Bivy. The
Examiner relies on Calutoiu for disclosing “a bedding article comprising a
main cover layer (see Fig. 1) with a transverse slit (see Fig. 1, (20,21)) in the
lower portion” (Ans. 7). The Examiner relies on Upgrade Bivy for teaching
“a micro mesh bivy (top cover layer) attached to cover over a sleeping bag
to provide customized ventilation while protecting the sleeping bag and the
user of the sleeping bag from the elements (insects, dew, etc.)” (id.). The
Examiner concludes that it would have been obvious “to modify Calutoiu to
include the top cover layer as taught by . . . Upgrade Bivy . . . in order to
provide customized ventilation while protecting the sleeping bag and the
user of the sleeping bag from the elements (insects, dew, etc.)” (id.).
Appellant argues that the combination of a bivy “with the disclosure
of the Calutoiu reference would fail to provide a transverse slit in the lower
body portion of a main cover between the upper body portion and the foot
extremity thereof” (Br. 19). In particular, Appellant argues that “the
transverse slits 20 and 21 are located at the foot extremities of the main
cover layer . . . so that the user may open each element and then extend his
feet through the respective openings so as to move about freely” (id. at 20).
In addition, Appellant argues that “[t]here is no disclosure or suggestion in
the Calutoiu reference that would lead one to reposition any of the transverse
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slits to a location between the upper body portion and the foot extremity”
(id. at 20-21).
The issue is whether the combination of Calutoiu with Upgrade Bivy
would teach or suggest a transverse slit in the lower body portion of a main
cover layer between the upper body portion and the foot extremity thereof.
Findings of Fact
28. Calutoiu describes “a sleeping bag that is easily converted to a
form which permits its user to walk about freely without having to get out of
the bag” (Calutoiu, col. 1, ll. 7-10).
29. In particular, Calutoiu describes a sleeping bag having
“individual leg receiving portions [that] are provided at their respective
lower extremities with individual closure elements shown at 20 and 21 so
that the user may open each element and then extend his feet through the
respective openings so as to move about freely” (id. at col. 2, ll. 54-59).
Analysis
As pointed out by the Examiner, zippers 20 and 21 are not at the very
bottom edge of the drawing of a sleeping bag in Calutoiu’s Figure 1
(Ans. 10). However, based on the teaching in Calutoiu that the closure
elements at 20 and 21 are each at the lower extremity of a leg receiving
portion (FF 29), we agree with Appellant that, in the three-dimensional
sleeping bag depicted in Figure 1, the transverse slits closed by the closure
elements at 20 and 21 are at the foot extremity of the main cover layer, not
between the upper body portion and the foot extremity. In addition, the
Examiner has not pointed to any teaching in Upgrade Bivy that would
overcome this deficiency. Thus, we agree with Appellant that the Examiner
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has not set forth a prima facie case that Calutoiu and Upgrade Bivy render
obvious claim 1 or claims 2-5 and 7, which depend from claim 1. We
therefore reverse the rejection of claims 1-5 and 7 under 35 U.S.C. § 103(a)
over Calutoiu and Upgrade Bivy.
CONCLUSION
We affirm the anticipation rejection of claims 1, 2, 9, 10, 14, 16, and
17 over Hinds and the anticipation rejection of claims 1, 4, and 7 over
Huang. However, we reverse the anticipation rejection of claims 1-4, 8, 16,
and 17 over Lucas and the anticipation rejection of claims 1-4, 9, 10, and 16
over Lapierre. We also reverse the obviousness rejections of claims 1-5 and
7. Thus, claims 3, 5, and 8 are no longer subject to a rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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ADAMS, Administrative Patent Judge, dissenting-in-part.
I agree with the Majority’s conclusion that Huang anticipates
Appellant’s claims 1, 4, and 7.
I also agree with the Majority that the anticipation rejections over
Lucas and Lapierre, as well as the obviousness rejections cannot be
sustained.
I disagree, however, that Hinds anticipates Appellant’s claims 1, 2, 9,
10, 14, 16, and 17. Therefore, I limit my discussion to the rejection of
claims 1, 2, 9, 10, 14, 16, and 17 under 35 U.S.C. § 102(b) as anticipated by
Hinds.
The Majority limits their analysis to Appellant’s claim 1; accordingly
I do the same (see supra 8-11). Claim 1 is drawn to a bedding article. The
claimed bedding article comprises two elements:
1. an elongated main cover layer of flexible material.
The cover layer has:
a. an upper body portion;
b. a lower body portion with a foot extremity; and
c. a transverse slit defined in the lower body portion between
the upper body portion and the foot extremity; and
2. a top cover layer that overlays and is secured to the lower body
portion of the main cover layer.
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Hinds’ “invention relates to sleeping bags” (Hinds 1: col. 1, l. 5).
Similarly, Appellant’s claimed invention “has particular applicability to
sleeping bags” (Spec. 6; and Title). For clarity, I reproduce Hinds’ figures 5
and 9 below:

“Fig. 5 is a side elevation of” Hinds’ sleeping bag (Hinds 1: col. 1, l. 34).
“Fig. 9 is an enlarged vertical section through the upper end of the bag”
(Hinds 1: col. 1, ll. 41-42).
According to Hinds:
To provide free circulation of air and to provide means
for protecting the camper from insects, reptiles and the like, a
piece of mosquito netting or the like 26 is provided in the upper
cloth 16. To prevent the netting 26 from contacting the face of
the camper there is provided a bowed frame 27 which is
threaded through loops on the underside of the cover 16 as
shown in Fig. 9.

(Hinds 1: col. 2, ll. 12-20 (emphasis added)). Hinds’ sleeping bag comprises
“a compartment 20 for clothing” (Hinds 1: col. 1, l. 55). According to Hinds
“[i]n order that entrance may be had to the compartment 20, from the
exterior of the bag, the free or unsecured end of the upper section 16 is
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provided with a transverse opening position between the storage
compartment and the netting” (Hinds 1: col. 2, ll. 22-27).
Accordingly, it is clear from Hinds that the disclosed sleeping bag has
a specific orientation, wherein the upper body portion includes mosquito
netting 26 and a bowed frame 27 to prevent the netting 26 from contacting
the users face, and a lower body portion with a foot extremity at the opposite
end of the sleeping bag, e.g., to the right of the mosquito netting 26 and
support posts 22, as illustrated in Hinds’ Fig. 5. In this orientation, the
transverse slit that defines the opening for Hinds’ storage compartment is
above the users head, or stated differently is in, or above, the upper body
portion of the bag.
This is quite different from the article defined by Appellant’s claim 1,
which requires a transverse slit defined in the lower body portion between
the upper body portion and the foot extremity. To overcome this apparent
deficiency in Hinds, the Majority enters into a two page discourse of why
they believe the express orientation set forth in Hinds, as discussed above, is
inaccurate and that in reality, Hinds’ upper body portion including mosquito
netting 26 and bowed frame 27 are where a user would place his feet and
therefore Hinds anticipates Appellant’s claim 1 (see supra 9-10).
According to the Majority, the lower body portion of Hinds’ sleeping
bag “is capable of accommodating the upper body of a person” (supra 9).
Assuming, arguendo, that the Majority had a factual basis to support this
assertion, it does not change that fact that even if a person were to stuff his
upper body into the lower body portion of Hinds’ sleeping bag – it will still
remain to be the lower body portion of Hinds’ sleeping bag – based on
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Appeal 2007-3860
Application 10/229,083

Hinds’ disclosure. The orientation Hinds discloses for the sleeping bag does
not change simply because a user entered the bag the wrong way (e.g., head
first). As such, the transverse slit will remain in or above the upper body
portion of Hinds’ sleeping bag as it is disclosed in Hinds.
An analogy may simplify the issue. An automobile has a top (e.g., the
roof) and a bottom (e.g., the tires). No doubt, an automobile can be flipped
over so that the roof is on the ground and its tires are sticking up in the air.
Does this upside down orientation make the tires the roof and the roof the
tires? I think not.
Orientation and the context that orientation provides the observer,
reader, or speaker is essential to the way we communicate and in this case -
interpret the claimed invention. Based on the analogy set forth above,
assume that an automobile has flipped over and come to rest with its roof on
the ground and its tires sticking up in the air. Imagine the confusion
resulting from a first responder reporting back his findings from an accident,
stating that “the automobile is upside down – its tires are on the ground.”
Notwithstanding Appellant’s disclosure (see e.g., Spec. 6: 12-18) the
Majority, apparently unfamiliar with the structure of a sleeping bag, asserts
that unlike a familiar automobile which comprises a roof and tires (see supra
10) - a sleeping bag (as disclosed by Hinds and Appellant) does not have a
specific orientation (e.g., a place to put your feet and a place to put your
head). This conclusion is inconsistent with Hinds’ express teaching that
bowed frame 27 serves to prevent the netting 26 from contacting the face of
the camper (Hinds 1: col. 2, ll. 12-20). According to the Majority’s logic,
and in contrast to Hinds’ express teaching, bowed frame 27 prevents netting
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Appeal 2007-3860
Application 10/229,083

26 from contacting the camper’s feet. Clearly, the orientation proposed by
the Majority is inconsistent with Hinds’ express teachings. Therefore I
disagree with the Majority’s assertion that Appellant’s claimed requirement
of an “‘upper body portion’ and ‘lower body portion’ [(of a sleeping bag)]
are intended uses that do not structurally distinguish the claimed bedding
article from the prior art [sleeping bag as taught by Hinds] (see supra 10).
In sum, I disagree with the factually unsupported rhetoric the Majority
relies upon to support their conclusion. No matter which way a user decides
to enter Hinds’ sleeping bag, Hinds’ disclosure defines the orientation of the
sleeping bag and thus the position of the transverse slit as being in or above
the upper body portion of Hinds’ sleeping bag. As such Hinds does not and
cannot anticipate Appellant’s claimed invention.
Accordingly, I dissent from the Majority’s decision to affirm the
rejection of claim 1, as well as their conclusion that claims 2, 9, 10, 14, 16,
and 17 fall together with claim 1.

DISSENTING-IN-PART

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