Ex parte JERRY LIAO

Board of Patent Appeals and Interferences

Jul 31, 1997

08046945 (B.P.A.I. Jul. 31, 1997)

Application for patent filed April 16, 1993.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JERRY LIAO
_____________
Appeal No. 96-1834
Application 08/046,9451
______________
ON BRIEF
_______________
Before LYDDANE, MEISTER and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Jerry Liao (the appellant) appeals from the final rejection
of claim 1, the only claim present in the application. We
reverse and, pursuant to our authority under the provisions of 37
CFR § 1.196(b), will enter a new rejection of the appealed claim.
Appeal No. 96-1834
Application 08/046,945
2
The appellant’s invention pertains to a method of providing
a clothes storage closet using a rectangular closet component of
fabric construction material and a skeletal support of
interconnected structural members. Of special importance are the
steps of assembling and disassembling the skeletal support within
the rectangular closet component. The claim is further
illustrative of the appealed subject matter and reads as follows:
1. A method of providing a clothes storage closet using a
rectangular closet component of fabric construction material
having panels forming a top, a bottom, a front, a back, a left
side and a right side which cooperate to bound a storage
compartment for said closet, and having zipper means in said
front panel for gaining access therethrough into said storage
compartment, said method comprising the steps of opening said
front panel zipper means incident to obtaining access to the
interior of said fabric closet component; erecting within said
interior of said fabric closet component a skeletal support of
interconnected structural members of a type having cooperating
male and female connecting means so as to hold in spaced apart
relation said top panel, said bottom panel, said front panel,
said back panel, said left side panel, and said right side panel
without including as a part of said skeletal support any
structural members adjacent to said front panel across the area
defined thereby to bound therebetween said storage compartment
for said closet, said erected skeletal support being sized to
have a snug fit within said storage compartment; closing said
front panel zipper means so as to both form a closure for said
closet and also to draw taut said fabric of said closet component
about said skeletal support so that said male and female inter-
connecting means are held in place by said fabric tautness during
Appeal No. 96-1834
Application 08/046,945
In the answer the examiner also listed French Patent No.2
1,381,948 to Plastra as being relied on; however, this reference
was not used in either the final rejection (see Paper No. 13) or
a new ground of rejection in the answer.
Translation attached.3
Translation attached.4
We observe, however, that the question of whether the5
elimination of an element and its function would have been
obvious is “is based upon a determination of obviousness under
section 103 and not upon a mechanical rule.” In re Wright, 343
F.2d 761, 769, 145 USPQ 182, 192 (CCPA 1965)
3
use of said closet; and subsequently opening said front panel
zipper means and disassembling within said interior of said
fabric closet component said male and female interconnecting
means of said skeletal support, whereby said clothes storage
closet is place into a component storage condition to facilitate
storage and transport thereof.
The references relied on by the examiner are:2
Poirier 1,445,789 Jun. 06, 1966
(France)3
Despujols 1,467,955 Dec. 26, 1966
(France)4
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Despujols or Poirier. It is the examiner’s
position that:
The difference between the claimed device and the
references is the lack of structural support for the
door in the applicant’s device. It is well settled in
case law that the elimination of an element and its
function is an obvious matter of design choice for one
having ordinary skill in the art. Therefore to modify5
Appeal No. 96-1834
Application 08/046,945
4
Despujols or Portier [sic, Poirier] by eliminating of
[sic] the door support members and the support for the
doors therewith is an obvious matter of design choice
for one having an [sic] ordinary skill in the art.
[Final rejection, page 2; footnote added.]
In support of this position the answer states that:
The claimed method is inherent to the assembly of the
closets of the cited references. Whether the method is
specifically recited cannot be readily determined since
the references are foreign language documents. The
appellant has not provided evidence that the method of
assembly of the cited references is anything other than
the method recited in the appellant[’s] claim. [Page
3.]
We will not support the examiner’s position. Even if we
were to agree with the examiner that the elimination of the door
support members and their function in the wardrobes or suitcases
of Despujols and Poirier would have been obvious, we cannot agree
that there is a reasonable basis to conclude that the steps of
assembly and disassembly specifically recited in claim 1 are
“inherent” in these references as the examiner contends. When
relying upon the theory of inherency, the examiner has the
initial burden of establishing 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 prior art. Ex parte Levy, 17 USPQ2d 1461, 1464
(Bd. Pat. App. & Int. 1990).
Appeal No. 96-1834
Application 08/046,945
5
Here, the examiner has not discharged that initial burden.
That is, the examiner has merely made the bald assertion that the
method steps set forth in claim 1 are “inherent” without
providing any basis in fact and/or technical reasoning whatsoever
to support such an assertion. Neither Despujols nor Poirier make
any mention of the specifically recited steps of (1) opening the
front panel zipper means, (2) erecting a skeletal support of
interconnected structural members within the interior of the
fabric closet component, (3) closing the front panel zipper means
and (4) subsequently opening the front panel zipper means and
disassembling the skeletal support within the interior of the
fabric closet component so that the entire device may be stored
in a compact condition for storage. Insofar as the disclosure of
these two references is concerned the skeletal support might be
first assembled and the fabric closet component thereafter formed
around the skeletal support, with no disassembly whatsoever being
contemplated. Indeed, it does not even appear that Poirier even
has the capability of being assembled and disassembled in the
claimed manner without destroying the entire device since the
frame 9 is attached by soldering (see translation, page 3).
Viewing Fig. 2 of Poirier it also appears that the connectors 6,
7 and 8 are similarly attached.
Appeal No. 96-1834
Application 08/046,945
6
Even when viewed in a light most favorable to the examiner’s
position, the most that can be said is that there is a
possibility that the skeletal supports of Despujols and Poirier
might somehow be assembled and disassembled from within the
fabric closet component. Inherency, however, may not be
established by probabilities or possibilities. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) and In
re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir.
1993).
Since we find nothing in either Despujols or Poirier which
teaches or fairly suggests the method steps set forth in claim 1,
we will not sustain the examiner’s rejection of this claim under
35 U.S.C. § 103 based on these two references.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 1 is rejected under 35 U.S.C. § 112, second paragraph.
In order to satisfy the requirements of the second paragraph of
§ 112, a claim must accurately define the invention in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1366, 178
USPQ 486, 492-93 (CCPA 1973). Here, claim 1 sets forth that the
skeletal support is erected within the interior of the fabric
Appeal No. 96-1834
Application 08/046,945
7
closet component “without including as a part of said skeletal
support any structural members adjacent to said front panel
across the area defined thereby . . . .” However, viewing Figs.
1, 2 and 4 of the drawing it is readily apparent that the front
portion of the members 18 of the skeletal structure do indeed
contact the front panel 24. Moreover, the front lower skeletal
member 16 can be considered to be “adjacent” the front panel 24.
Thus, claim 1 does not define the invention accurately in the
technical sense.
In summary:
The examiner’s rejection of claim 1 under 35 U.S.C. § 103 is
reversed.
A new rejection of claim 1 is made under 35 U.S.C. § 112,
second paragraph.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
of the decision (37 CFR § 1.197). Should appellant elect to have
Appeal No. 96-1834
Application 08/046,945
8
further prosecution before the examiner in response to the new
rejection under 37 CFR § 1.196(b) by way of amendment or showing
of facts, or both, not previously of record, a shortened
statutory period for making such response is hereby set to expire
two months from the date of this decision.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
WILLIAM F. LYDDANE )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-1834
Application 08/046,945
9
MYRON AMER
114 OLD COUNTRY RD.
STE. 310
MINEOLA, NY 11501