Ex parte Jones

Board of Patent Appeals and Interferences

May 10, 1999

08052507 (B.P.A.I. May. 10, 1999)

Application for patent filed April 26, 1993. 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journal and (2) is not binding precedent of the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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARVIN L. JONES
____________
Appeal No. 96-0655
Application No. 08/052,5071
____________
ON BRIEF
____________
Before METZ, JOHN D. SMITH, and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s second rejection of claims 9 through 16 (see the
Rejection dated Dec. 7, 1994, Paper No. 7). Claims 1 through
8 and 22, the only other claims remaining in this application,
Appeal No. 96-0655
Application No. 08/052,507
Appellant states that claims 9-16 stand rejected but that2
claims 9-16 and 22 are on appeal (Brief, page 2). Appellant
argues that the restriction requirement applied to claim 22 is
improper (Brief, page 4) and this issue is properly before the
Board since it involves substantive claim construction (Reply
Brief, Paper No. 11, page 2). However, as noted by the
Examiner on page 2 of the Answer, the propriety of a
restriction requirement is petitionable, not appealable. See
35 U.S.C.
§ 134; 37 CFR §§ 1.144, 1.181 and 1.191(a); and the Manual of
Patent Examining Procedure, §§ 1002.02(c) and 1201, 7th ed.,
July 1998. Claim 22 has not been finally or twice rejected
and therefore this merits panel has no jurisdiction in regard
to this claim. Accordingly, the claims on appeal are claims 9
through 16.
2
stand withdrawn from further consideration by the examiner as
being directed to a nonelected invention (Answer, page 1).2
According to appellant, the invention is directed to a
composite, full length window covering constructed from short
remnant lengths of panels of cellular fabric (Brief, page 2).
Claim 9 is illustrative of the subject matter on appeal and is
reproduced below:
9. A method of making a composite window covering
from panels of cellular fabric, said fabric being constructed
of tubular cells arranged in side by side relationship,
comprising the steps of:
providing a first panel of cellular fabric of desired width;
trimming a cell of said first panel of cellular fabric to
leave a first attachment strip surface extending
centrally of the thickness of said first panel of material
and the full length of said cell;
Appeal No. 96-0655
Application No. 08/052,507
3
providing a second panel of cellular fabric of said desired
width;
trimming a cell of said second panel of cellular fabric to
leave a second attachment strip surface extending
centrally of the thickness of said second panel
the full length of said cell;
placing an adhesive along the length of said second
attachment strip surface; and
pressing said second attachment strip surface to said first
attachment strip surface in aligned relationship
until bonding occurs between said first and second
panels of cellular fabric.
The examiner has relied upon the following references as
evidence of obviousness:
Rupe 1,489,716 Apr. 8,
1924
Elsas 3,250,164 May 10,
1966
Worcester 4,564,542 Jan. 14,
1986
Hull 4,675,241 Jun. 23,
1987
Lampe et al. (Lampe) 4,746,395 May 24,
1988
Judkins 4,974,656 Dec. 4,
1990
Schön 5,078,195 Jan. 7,
1992
Claims 9 and 13-16 stand rejected under 35 U.S.C. § 103
as unpatentable over Judkins in view of Worcester “and
Appeal No. 96-0655
Application No. 08/052,507
The examiner’s second rejection of the claims dated Dec.3
7, 1994, Paper No. 7, included a rejection of claim 10 under
the second paragraph of 35 U.S.C. § 112 (see page 1 of Paper
No. 7). Appellant has submitted a proposed amendment to claim
10 and the examiner has stated that the rejection of claim 10
under the second paragraph of § 112 is withdrawn (see the
Reply to Examiner’s Answer dated Aug. 28, 1995, Paper No. 11,
page 2, the Supplemental Examiner’s Answer dated Nov. 6, 1995,
Paper No. 12, page 3, and the Supplemental Examiner’s Answer
dated Mar. 12, 1996, Paper No. 14, page 1). However,
appellant has only submitted a supplemental Appendix with
amended claim 10 therein (see the Letter dated Nov. 20, 1995,
Paper No. 13, and page 1 of Paper No. 14). No actual
amendment to claim 10 has been submitted by appellant nor has
any amendment to claim 10 been physically entered into the
file record. Upon return of this application to the examiner,
this deficiency must be corrected. For purposes of this
appeal, we will consider the rejection of claim 10 under § 112
to be withdrawn.
4
optionally in view of Schön” (Answer, page 5). Claim 103
stands rejected under 35 U.S.C. § 103 as unpatentable over the
references as applied to claim 9 and further in view of Hull,
Elsas, and Rupe (Answer, page 6). Claims 11 and 12 stand
rejected under 35 U.S.C. § 103 as unpatentable over the
references as applied to claim 10 further in view of Lampe
Appeal No. 96-0655
Application No. 08/052,507
The restatement of this rejection on page 7 of the Answer4
omits the Elsas and Rupe references although referring to the
rejection "as applied to claim 10", which included Elsas and
Rupe along with Hull. In view of our disposition of this
appeal as noted infra, this inconsistency by the examiner is
harmless error.
5
(Answer, page 7). We reverse all of the examiner’s4
rejections for reasons which follow.
OPINION
The method of appealed claim 9 recites, inter alia,
“trimming a cell of said first panel of cellular fabric to
leave a first attachment strip surface extending centrally of
the thickness of said first panel of material and the full
length of said cell” and a corresponding trimming step for a
cell of a second panel to form a second attachment strip
surface such that these surfaces can be adhered together to
form the composite window covering (see also the
specification, page 5, line 25-page 6, line 2).
The examiner applies Judkins as the primary reference to
“show[s] a method of forming a tubular honeycomb shade wherein
a splice joint may be used to secure two pieces of material
either for repair of a defective or damaged material, to
achieve a desired aesthetic effect or to customize the length
Appeal No. 96-0655
Application No. 08/052,507
6
or width of the shade” (Answer, page 5, citing Judkins,
Abstract; column 1, lines 43-58; column 2, lines 33-68; and
column 9, lines 56+).
Appellant and the examiner agree that Judkins is silent
with respect to the trimming of the honeycomb pieces to form
attachment strip surfaces (Brief, page 5, and the Answer, page
5). The examiner concludes that it would have been obvious to
trim the honeycomb pieces “so as to provide complimentary
mating faces of the honeycomb pieces”, especially in view of
Worcester, which is cited “as exemplary to show that it is
well known to shear the ends of pieces to be joined to provide
complimentary mating faces” (Answer, page 5). With regard to
Worcester, appellant states that this reference represents an
entirely different technology and the specific splicing method
disclosed by Worcester would be impractical to apply to a
honeycomb shade construction (Brief, page 6).
“When relying on numerous references or a modification of
prior art, it is incumbent upon the examiner to identify some
suggestion to combine references or make the modification.
[Citation omitted].” In re Mayne, 104 F.3d 1339, 1342, 41
USPQ2d 1451, 1454 (Fed. Cir. 1997). The examiner has not
Appeal No. 96-0655
Application No. 08/052,507
7
identified any suggestion or motivation to modify the tabular
formation shown by Judkins by trimming or shearing. The tabs
22 of Judkins are formed from either a single piece of
material (Figure 4) or when splicing together two different
pieces of material (14 and 14' in Figure 4A). These tabs can
also be formed when the material is fashioned in a honeycomb
structure (Judkins, column 9, lines 56-63). However, the
examiner has not identified any suggestion in the prior art to
modify the splicing or tab formation in Judkins by the
shearing of the ends of a belt in Worcester to achieve the
method recited in appealed claim 9. The examiner has not
identified why the shearing of the ends of a belt in Worcester
to provide mating faces (see Worcester, column 2, lines 17-29)
would have suggested a trimming step of the overlapping
material forming a tab in Judkins.
Additionally, Worcester is directed to improving the
strength of a spliced section of a belt that does not have
overlapping sections by cutting grooves into the belt,
cementing cords such as KEVLAR® in the grooves and then curing
the product (column 1, lines 17-18 and 40-44). The examiner
Appeal No. 96-0655
Application No. 08/052,507
The remaining references to Hull, Elsas, Rupe and Lampe5
have been applied by the examiner for showing the use of a
trimming member in a honeycomb cell, the use of a backing
member during the trimming, and that it is well known to move
a surface past a stationary glue applicator (Answer, pages 6-
7). The examiner has not applied any of these references to
show the trimming step of appealed claim 9. We find that
these references do not remedy the deficiencies in the
rejection as noted above.
8
does not identify any teaching or suggestion in Worcester that
the step of cutting or shearing to provide the respective
faces 14 and 15 of end belt sections 10 and 11 for subsequent
abutting engagement (column 2, lines 27-29) would improve the
splice strength of the overlapping material forming tabs in a
honeycomb construction of Judkins.
The examiner has also “optionally” applied the Schön
reference to show including an additional attachment strip
between the attached pieces of a shade to increase the
stiffness (Answer, page 6). However, as argued by appellants
on page 6 of the Brief, none of the claims on appeal require
an additional stiffening or attachment strip. The trimming
step of appealed claim 9 does not form any additional
attachment strip but trims “a cell of said first panel of
cellular fabric to leave a first attachment strip surface”. 5
Appeal No. 96-0655
Application No. 08/052,507
9
Therefore the Schön reference does not supply the suggestion
or teaching missing from Judkins and Worcester.
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view
of the applied prior art. Accordingly, the rejections of all
of the claims on appeal are reversed. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The decision of the examiner is reversed.
REVERSED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 96-0655
Application No. 08/052,507
10
lp
Appeal No. 96-0655
Application No. 08/052,507
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TRASK, BRITT & ROSSA
P.O. BOX 2550
SALT LAKE CITY, UT 84110
Leticia
Appeal No. 96-0655
Application No. 08/052,507
APJ WALTZ
APJ JOHN D. SMITH
APJ METZ
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: March 20, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT