Ex parte Jackson

Board of Patent Appeals and Interferences

Dec 21, 2000

08887453 (B.P.A.I. Dec. 21, 2000)

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for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TERRY R. JACKSON
____________
Appeal No. 2000-0305
Application No. 08/887,453
____________
HEARD: November 28, 2000
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 9, 11 and 12. Claim 10, the only
other claim pending in this application, stands allowed.
We AFFIRM-IN-PART and enter a new rejection pursuant to
37 CFR § 1.196(b).
Appeal No. 2000-0305 Page 2
Application No. 08/887,453
BACKGROUND
The appellant's invention relates to protective casings
for articles (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellant's
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Alwitt 5,101,974 April 7,
1992
Andersen 5,320,261 June 14,
1994
De Putter et al. EP 0 577 582 A1 Jan. 05, 1994
(De Putter)
The claims on appeal stand finally rejected as follows:
(1) Claims 1, 2, 8, 9, 11 and 12 under 35 U.S.C. § 102(b) as
being anticipated by Andersen.
(2) Claims 1, 6 to 9, 11 and 12 under 35 U.S.C. § 102(b) as
being anticipated by Alwitt.
(3) Claims 3, 6 and 7 under 35 U.S.C. § 103 as being
unpatentable over Andersen in view of Alwitt.
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Application No. 08/887,453
(4) Claims 4 and 5 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103
as obvious over Andersen.
(5) Claims 4 and 5 under 35 U.S.C. § 103 as being unpatentable
over Andersen in view of De Putter.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 20,
mailed May 7, 1999) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 19,
filed February 24, 1999) and reply brief (Paper No. 21, filed
July 2, 1999) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
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Application No. 08/887,453
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Application No. 08/887,453
Rejection (1)
We sustain the rejection of claims 11 and 12 under 35
U.S.C. § 102(b) as being anticipated by Andersen, but not the
rejection of claims 1, 2, 8 and 9.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Appeal No. 2000-0305 Page 6
Application No. 08/887,453
Andersen discloses a restraining and protection device
100 for the protection and the restraint of
neckstrap-suspended equipment used in the field (e.g.,
binoculars 80). As shown in Figures 1-3, the restraining and
protective device 100 includes (1) a cover 10 which consists
of a single expanse of flexible material, preferably also
being stretchable and waterproof;
(2) an elastomeric material 20 sewn directly to the outer
extremities of the cover 10, fed through a casing, or
otherwise attached to the outer extremities of the cover 10 to
form an expandable opening; (3) attach tabs 40A and 40B sewn
or otherwise attached directly to the cover 10; and (4) slits
70A and 70B provided for the attachment of a stretchable strap
90 or a clip 30A and 30B. Andersen teaches (column 4, lines
30-33) that the restraining and protective device could be
made in one piece by forming or molding elastomeric,
stretchable, waterproof materials into a one piece stretchable
cover with attaching means built in. Andersen further teaches
(column 2, lines 31-41) that
[t]he relaxed length of the elastomeric material 20 is
less than the relaxed length of the cover 10 edge. A
gathering or puckering of the cover 10 edge occurs when
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Application No. 08/887,453
the elastomeric material 20 is attached. The cover 10
size, and the length of the elastomeric material 20
attached to the cover 10 is of sufficient size and length
to allow for the covering of approximately 98% of all
neckstrap-suspended equipment surfaces not facing the
user, in this case a pair of binoculars as shown in FIGS.
1 and 2.
To use Andersen's device the user merely stretches the
elastomeric material 20 and the cover 10 to a size sufficient
to allow the positioning of the device 100 over the piece of
equipment to be restrained and protected. For example (see
column 3, lines 11-19), a pair of neckstrap-suspended
binoculars 80 is protected and restrained from movement by
first stretching the lower portion of the cover 10 and
elastomeric material 20 around and over the lower portion of
the suspended binoculars 80 which covers the lenses facing
down. Next the upper portion of the cover 10 and elastomeric
material 20 is stretched up, over, and around the upper
portion of the suspended binoculars covering the lenses facing
up.
Claim 11
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The appellant argues (brief, p. 12) that Andersen does
not disclose stretching and inverting only that portion of the
casing that covers an end of the article to cover and uncover
the end of an article as recited in claim 11. We find this
argument unpersuasive since we find ourselves in agreement
with the examiner that Andersen's device is inherently capable
of stretching and inverting only that portion of the casing
that covers an end of the article to cover and uncover the end
of an article. In that regard, the prior art reference need
not expressly disclose each claimed element in order to
anticipate the claimed invention. See Tyler Refrigeration v.
Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847
(Fed. Cir. 1985). Rather, if a claimed element (or elements)
is inherent in a prior art reference, then that element (or
elements) is disclosed for purposes of finding anticipation.
See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d at
631-33, 2 USPQ2d at 1052-54.
It is well settled that the burden of establishing a
prima facie case of anticipation resides with the Patent and
Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468,
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Application No. 08/887,453
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon
the theory of inherency, the PTO must provide a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. &
Int. 1990).
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986).
In this case, the basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of Andersen is his teaching that cover 10 is made of
a stretchable flexible material which can be stretched up,
Appeal No. 2000-0305 Page 10
Application No. 08/887,453
over, and around the upper portion of the suspended binoculars
covering the lenses facing up. In view of the nature of
Andersen's cover 10, it is our determination that it is
reasonable to conclude that the cover 10 is inherently capable
of stretching and inverting only that portion of the cover
that covers an end of the article to cover and uncover the end
of an article. Hence, the appellant's burden before the PTO
is to prove that Andersen does not perform the functions
defined in claim 11. The appellant has not come forward with
any evidence to satisfy that burden. Compare In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971).
Appellant's mere argument on page 12 of the brief that
Andersen does not disclose the functions defined in claim 11
is not evidence. See In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974)(attorney's arguments in a brief
cannot take the place of evidence).
For the reasons set forth above, the decision of the
examiner to reject claim 11 under 35 U.S.C. § 102(b) as being
anticipated by Andersen is affirmed.
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Application No. 08/887,453
Claim 12
The appellant argues (brief, p. 12) that Andersen does
not disclose a hollow interior space similar to the shape of
an article whereby closure and release is provided through an
opening as a portion of the protective case is inverted and
re-inverted over an end of the article as recited in claim 12.
We find this argument unpersuasive for the same reasons as set
forth above with respect to claim 11. Furthermore, as shown
in Figures 1-3 of Anderson, his cover 10 does provide a hollow
interior space similar to the shape of the binoculars 80.
For the reasons set forth above, the decision of the
examiner to reject claim 12 under 35 U.S.C. § 102(b) as being
anticipated by Andersen is affirmed.
Claims 1, 2, 8 and 9
The appellant argues (brief, pp. 9-11) that Andersen's
cover does not provide a shape retaining hollow interior space
as recited in claim 1. We agree. In that regard, the hollow
interior space defined by Andersen's cover is not shape
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Application No. 08/887,453
retaining (i.e., unchangeable shape) due to the material
thereof being flexible and thus fully capable of changing
shape.
For the reasons set forth above, the decision of the
examiner to reject claims 1, 2, 8 and 9 under 35 U.S.C. §
102(b) as being anticipated by Andersen is reversed.
Rejection (2)
We sustain the rejection of claims 1, 6 to 9, 11 and 12
under 35 U.S.C. § 102(b) as being anticipated by Alwitt.
Alwitt discloses a reversible, deformable camera carrying
case. Alwitt states (column 1, lines 53-61) that his
invention overcomes the drawbacks of the prior art, by
protecting the camera with a case of flexible, deformable
material with a latch included in the material in the form of
an aperture that slides over the case-covered lens portion of
the camera. The resiliency and deformability of the material
is such that one case
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Application No. 08/887,453
As used by Alwitt, the term "unitary construction" or1
"unitary composition" refers to an object that, although it
may be manufactured from one or more pieces of material, has
no well-defined boundaries, so that it is impossible to
determine where one portion or component of the object ends
and the next begins. In the camera case of his invention, for
example, the cover and body of the case are made of continuous
material, and there is no distinct boundary between the two
portions. (Column 2, lines 50-58).
size will fit most cameras. The case is also of unitary
construction, in that the cover and body of the case are1
continuous, minimizing assembly time and costs.
As shown in Figures 1-3, the camera protective case 10 is
of unitary composition, and comprises main body housing 14,
which provides a housing for the complete camera 12, and cover
16. Main housing 14 has contours which correspond generally
to the contours of a camera to be carried therein. Although
the housing is of unitary construction, it may be considered
to have a floor 18, front 20 and rear panels 22, sides 24,
lenspiece 26, and top 28. The housing has an open pocket 32
through which a camera may be inserted in and removed from
housing 14. Cover 16 extends from the main housing 14 at the
top of rear panel 22. Cover 16 contains aperture 34 disposed
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Application No. 08/887,453
near the center. Aperture 34 may be of any shape or size as
long as it is deformable to a position permitting entry of the
lenspiece 26 and the part of floor 18 underlying lenspiece 26
when the camera is disposed in
pocket 32. When aperture 34 is engaged by entry of lenspiece
26 and floor 18, the aperture fits snugly over the lens and
the case is closed by the "latch" so formed, as seen in Figure
3.
Alwitt teaches (column 3, lines 14-27) that
[i]n the preferred embodiment of this invention,
body 14 and cover 16 are made of resilient, deformable,
waterproof material, most preferably both are made of the
same material. Examples of such materials are elastic
polymers including neoprene rubber, Hypolon , or neoprene®
rubber with laminated nylon on one or both sides.
The resilient, deformable nature of the material and
the unitary construction of the case permits the case to
be easily reversible or invertible, so that pocket 32
becomes the outer surface of body housing 14 and vice
versa. Reversibility permits the user to change at will
the color, texture, or other qualities of the outer
surface of the case.
Claim 11
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The appellant argues (brief, p. 14) that Alwitt does not
disclose a casing having an opening that is maintained in an
open state and where the portion of the casing that covers an
end of the article is stretchable to permit the opening to be
enlarged as the casing is stretched and inverted to thereby
cover and uncover the end of an article as recited in claim
11. We find this argument unpersuasive since we find
ourselves in agreement with the examiner that Andersen's
device inherently meets these limitations. In that regard,
Alwitt's camera case in the position shown in Figures 1 and 2
does have an opening (i.e., open pocket 32 through which a
camera may be inserted in and removed from housing 14) that is
capable of being maintained in an open state. Additionally,
Alwitt's cover 16 is capable of being stretched and inverted
to permit the opening to be enlarged to thereby cover and
uncover an end of an article.
In this case, the basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of Alwitt is his teaching that case 10 (including
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Application No. 08/887,453
cover 16) is made of a resilient, deformable, waterproof
material which permits the case to be easily reversible or
invertible. In view of the nature of Alwitt's cover 16, it is
our determination that it is reasonable to conclude that the
cover 16 is inherently capable of stretching and inverting to
cover and uncover an end of an article. Hence, the
appellant's burden before the PTO is to prove that Alwitt does
not perform the functions defined in claim 11. The appellant
has not come forward with any evidence to satisfy that burden.
Appellant's mere argument on page 14 of the brief that Alwitt
does not disclose the functions defined in claim 11 is not
evidence.
For the reasons set forth above, the decision of the
examiner to reject claim 11 under 35 U.S.C. § 102(b) as being
anticipated by Alwitt is affirmed.
Claim 12
The appellant argues (brief, p. 14) that Alwitt does not
disclose a case whereby an enlarged opening is maintained when
a portion of the case is inverted and re-inverted over an end
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Application No. 08/887,453
of the article as recited in claim 12. We find this argument
unpersuasive for the same reasons as set forth above with
respect to claim 11.
For the reasons set forth above, the decision of the
examiner to reject claim 12 under 35 U.S.C. § 102(b) as being
anticipated by Alwitt is affirmed.
Claims 1, 8 and 9
The appellant argues (brief, pp. 12-13) that Alwitt's
case does not disclose inverting and reinverting part of the
case to access or insert/remove an article as recited in claim
1. We do not agree. As set forth above with respect to claim
11, Alwitt's cover 16 is inherently capable of inverting and
reinverting to access or insert/remove an article from the
case 10.
For the reasons set forth above, the decision of the
examiner to reject claims 1, 8 and 9 under 35 U.S.C. § 102(b)
as being anticipated by Alwitt is affirmed.
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Application No. 08/887,453
Claims 6 and 7
The appellant argues (brief, p. 14) that Alwitt's case is
of "unitary construction," wherein there is no distinct
boundary (i.e., an independent wall as recited in claim 6).
We do not agree. In our view, the claimed independent wall is
readable on Alwitt's teaching (column 2, lines 50-58) that the
cover may be manufactured from more than one piece of
material.
For the reasons set forth above, the decision of the
examiner to reject claims 6 and 7 under 35 U.S.C. § 102(b) as
being anticipated by Alwitt is affirmed.
Rejection (3)
We will not sustain the rejection of claims 3, 6 and 7
under 35 U.S.C. § 103 as being unpatentable over Andersen in
view of Alwitt. In that regard, the deficiency of Andersen
discussed above with respect to claim 1 is not cured by the
examiner's determination (answer, p. 8) that it would have
been obvious in view of Alwitt to make Andersen's casing from
neoprene rubber.
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Rejection (4)
We will not sustain the rejection of claims 4 and 5 under
35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Andersen.
Once again the deficiency of Andersen discussed above with
respect to claim 1 is not cured by this rejection.
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Rejection (5)
We will not sustain the rejection of claims 4 and 5 under
35 U.S.C. § 103 as being unpatentable over Andersen in view of
De Putter. In that regard, the deficiency of Andersen
discussed above with respect to claim 1 is not cured by the
examiner's determination (answer, p. 9) that it would have
been obvious in view of De Putter to modify Andersen's casing
to include a belt-engaging portion.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 2 and 3 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Alwitt. As set forth above, Alwitt
anticipates claim 1. The additional claim limitations of
dependent claims 2 and 3 are clearly met by Alwitt's teaching
(column 3, lines 14-20) that the body 14 and cover 16 are made
of resilient, deformable, waterproof material, most preferably
both are made of the same material such as neoprene rubber.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 8, 9, 11 and 12 under 35 U.S.C. § 102(b) as being
anticipated by Andersen is reversed as to claims 1, 2, 8 and 9
and affirmed as to claims 11 and 12; the decision of the
examiner to reject claims 1, 6 to 9, 11 and 12 under 35 U.S.C.
§ 102(b) as being anticipated by Alwitt is affirmed; the
decision of the examiner to reject claims 3, 6 and 7 under 35
U.S.C. § 103 as being unpatentable over Andersen in view of
Alwitt is reversed; the decision of the examiner to reject
claims 4 and 5 under
35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103 as obvious over Andersen is
reversed; the decision of the examiner to reject claims 4 and
5 under 35 U.S.C. § 103 as being unpatentable over Andersen in
view of De Putter is reversed; and a new rejection of claims 2
and 3 under 35 U.S.C. § 102(b) has been added pursuant to
provisions of 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
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Application No. 08/887,453
rejection pursuant to 37 CFR § 1.196(b). 37 CFR § 1.196(b)
provides, "[a] new ground of rejection shall not be considered
final for purposes of judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
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 (37
CFR § 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. . . .
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Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
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Application No. 08/887,453
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0305 Page 26
Application No. 08/887,453
CUSHMAN DARBY AND CUSHMAN
IP GROUP OF PILLSBURY MADISON & SUTRO
NINTH FLOOR EAST TOWER
1100 NEW YORK AVENUE NW
WASHINGTON, DC 20005-3918
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JVN/dl