Ex parte KAPLAN

Board of Patent Appeals and Interferences

Aug 13, 1998

08233215 (B.P.A.I. Aug. 13, 1998)

Application for patent filed April 25, 1994. According to appellant,1
this application is a continuation of application 07/900,674, filed June 19,
1992, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SEYMOUR KAPLAN
_____________
Appeal No. 97-0256
Application 08/233,2151
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3 and 5 through 7, which are the
only claims remaining in this application. Claim 4 has been
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canceled. On page 3 of the examiner’s answer (Paper No. 20), the
examiner has indicated that dependent claim 3 is now objected to
and would be allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening
claims. This determination leaves for our review in this appeal
only the examiner’s rejections of claims 1, 2 and 5 through 7.
Appellant’s invention relates to a reversible writing pad
(14) seen in Figures 1-3 of the application drawings, wherein
said writing pad has a main substantially rectangular writing
surface or message recording area (24) and an extension (18)
extending from the main message recording area so as to form a
substantially “L” shaped combined writing surface and extension.
As shown in Figure 1, the extension (18) is generally provided
for placement between a person’s elbow and a support surface
(20), such as a table or desk top surface, to allow the writing
pad to be held in place beneath said elbow while the person is
writing on the message recording area (24) with the other hand.
A substantially correct copy of claims 1 through 3 and 5 through
7 may be found in the Appendix to appellant’s brief. Minor
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Application 08/233,215
While the date of this catalog is clearly subsequent to appellant's2
effective filing date, we note that appellant has not argued that PT is not
available as a prior art reference in this case. Accordingly, we assume that
the pads depicted in PT and relied upon by the examiner are prior art to
appellant and we proceed with our decision in this appeal on that basis.
3
errors in this copy of the claims have been noted on page 2 of
the examiner’s answer (Paper No. 20).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Clarkson 1,449,145 Mar. 20, 1923
Rogow Des. 142,670 Oct. 23, 1945
“The Personal Touch™”, An Artistic Greeting Catalog, Fall,
1994, pg. 39, item A. A to Z Initial Pads. (PT)2
Claims 1, 6 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over PT.
Claims 2 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over PT in view of Clarkson.
Claims 1, 6 and 7 stand additionally rejected under 35
U.S.C. § 102(b) as being anticipated by Rogow.
Claims 2 and 5 stand additionally rejected under 35 U.S.C.
§ 103 as being unpatentable over Rogow in view of Clarkson.
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Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above rejections, we
make reference to the examiner's answer and various supplemental
answers (Paper Nos. 20, 22, 24 and 28) for the examiner's
reasoning in support of the rejections, and to appellant’s brief
and various reply briefs (Paper Nos. 19, 21 and 27) for
appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
Looking first to the examiner’s rejection of claims 1, 6 and
7 under § 103 based on PT, we note that item No. 1490 on page 39
of PT is described as “A to Z Initial Pads” and that such pads
are shown generally as being in the shape of a desired initial,
such as the shown “N” and “S” pads, with “X” being the only
letter of the alphabet indicated as “not available.” From this
disclosure, the examiner concludes that an “L” initial pad from
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PT would have a configuration generally like that set forth in
appellant’s claim 1 on appeal and that such a pad would be
capable of use in the manner described in claim 1. To address
the “central hinge” limitations of dependent claims 6 and 7 on
appeal, the examiner indicates (answer, page 3) that
Steno pads are well known in the art. PT does not use
a steno pad type hinge. It would have been obvious to
modify PT by providing a steno type hinge since such is
well known in the art for securing and versatility
purposes.
Appellant’s arguments regarding claim 1 urge that PT does
not teach a reversible pad or a pad formed from two rectangular
surfaces. More specifically, appellant indicates that there is
no disclosure as to what the fancy letter “L” pad of PT looks
like or if it even exists. As for claims 6 and 7, appellant
argues that the examiner has used the claimed invention as a
teaching guide to reconstruct the pads of PT. We do not find
appellant’s arguments persuasive with regard to claim 1 on
appeal, but we agree with appellant as to claims 6 and 7.
Like the examiner, we are of the opinion that an “L” shaped
pad as disclosed in PT would be fully responsive to the
reversible writing pad set forth in claim 1 on appeal and would
be usable in the manner required in appellant’s claim 1. Since
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PT indicates that only the letter “X” is not available, we find
it reasonable to conclude that a pad in the shape of the letter
“L” is available, and thus, contrary to appellant’s position,
that it does exist. While the exact configuration of the “L”
shaped pad in PT may not be specifically known, we consider that
it can be safely said that one of ordinary skill in this art
would reasonably conclude that such a pad would comprise a
plurality of vertically stacked sheets of paper with a writing
surface on both sides of said sheets and that each of the sheets
of such a pad would have a “substantially” rectangular larger
vertically oriented leg or main message area/writing surface
defining the longer leg of the “L” and a somewhat smaller
“substantially” rectangular extension from the lower end of the
longer leg defining the lower base leg of the “L,” which is the
configuration of the pad as broadly set forth in claim 1 on
appeal. Given the substantial similarity in the configuration of
the claimed “L” shaped pad and the “L” shaped pad of PT, we find
it eminently reasonable to conclude that the “L” shaped pad of PT
is also usable in the manner set forth in claim 1 on appeal.
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Accordingly, we will sustain the examiner’s rejection of claim 1
under 35 U.S.C. § 103 based on PT.
As for the examiner’s position regarding claims 6 and 7, we
share appellant’s view that the examiner’s attempt to provide the
“L” shaped pad of PT with a “central hinge” as required in claims
6 and 7 on appeal is based on an improper hindsight
reconstruction motivated by having first viewed appellant’s
disclosed and claimed invention. For that reason, we will not
sustain the examiner’s rejection of claims 6 and 7 under 35
U.S.C. § 103 based on PT.
We next review the examiner’s rejection of claims 1, 6 and
7 under 35 U.S.C. § 102(b) as being anticipated by Rogow.
Contrary to appellant’s arguments, we consider that the article
depicted in Rogow is generally “L” shaped, and that it includes a
“substantially” rectangular vertically oriented leg or main
writing surface/message area defining an upstanding leg of the
“L” and a “substantially” rectangular extension from the lower
end of the upstanding leg defining the lower base leg of the “L.”
While the extension seen in Rogow has a rounded top right corner,
we nonetheless consider that the writing surface of the extension
is “substantially” rectangular. As to the proper definition of
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the term “book,” we share the examiner’s view as expressed on
pages 5 and 6 of the supplemental answer mailed May 16, 1997
(Paper No. 28), and further point out that Rogow specifically
indicates that the design therein is to “a book or article of
similar nature” (emphasis added). Moreover, since the
configuration of the article in Rogow is substantially the same
as that of the pad broadly set forth in claim 1 on appeal, we
must conclude that it is clearly usable in the manner recited in
claim 1.
As for dependent claim 6, we share the examiner’s view that
the front and back covers of the article in Rogow define “top and
bottom surfaces” of the pad, and that when the article is opened
to an intermediate page therein, the hinge seen at the left side
of the article in Figure 1 of Rogow becomes a “central hinge”
which extends vertically upwards (in the thickness dimension of
the hinge and out of the paper) from the top (front) and bottom
(back) surfaces and “through said writing surface.” With regard
to dependent claim 7, we observe that the “central hinge” as
described above also extends “parallel” to the top (front) and
bottom (back) surfaces, in the sense that it extends lengthwise
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in the same plane as the front and back covers of the article
when the article is opened in the manner noted above.
Based on the foregoing, we will sustain the examiner’s
rejection of claims 1, 6 and 7 under 35 U.S.C. § 102(b) as being
anticipated by Rogow.
The last of the examiner’s rejections for our review are
those of claims 2 and 5 under 35 U.S.C. § 103 as being
unpatentable over PT in view of Clarkson and unpatentable over
Rogow in view of Clarkson. The examiner points to the line of
perforations (5) used in Clarkson to assist in separation of the
receipt (3) from the remainder of a page of the ledger book
therein and concludes that it would have been obvious to one of
ordinary skill in the art to modify the “L” shaped writing pad of
PT or the article of Rogow by providing a frangible line where
desired as shown in Clarkson. Like appellant, we see nothing in
the collective teachings of the applied prior art which would
have led one of ordinary skill in the art to the combinations as
proposed by the examiner. It is again our conclusion that the
examiner has engaged in an improper hindsight reconstruction of
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the claimed invention from the writing pad of PT and the article
in Rogow motivated by having first viewed appellant’s disclosed
and claimed invention. We do not believe that one of ordinary
skill in the art would have used the teachings of the frangible
line in the specialized receipt/ledger book of Clarkson to modify
the simple writing pad of PT or the article in Rogow. Thus, the
examiner’s rejections of claims 2 and 5 under 35 U.S.C. § 103
will not be sustained.
Under the provisions of 37 CFR 1.196(b)(effective Dec. 1,
1997), the Board of Patent Appeals and Interferences is empowered
to reject “any pending claim” in an application if they should have
knowledge of grounds of rejection not involved in the appeal. We
enter the following new ground of rejection against claims 3, 6 and
7 of the present application.
Claims 3, 6 and 7 are rejected under 35 U.S.C. § 112, first
paragraph, as being directed to subject matter which finds no clear
“written description” support in the specification as originally
filed. Looking to the disclosure of the application as originally
filed, we note that independent claim 1 in its present form on
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appeal and dependent claims 2 and 5 are specifically directed to
the embodiment seen in Figures 1 through 3 of the application
drawings, with dependent claim 3 apparently being directed
specifically to the embodiment of Figure 4, while dependent claims
6 and 7, respectively, are directed only to the memo calendars seen
in Figures 5 and 6 of the drawings. As is apparent from a review
of the application drawings and appellant’s specification as
originally filed, the embodiments seen in Figures 1-3, 4, 5 and 6
are each distinctly different from one another and there appears to
be no way that claims drawn to one of the embodiments of Figures 4,
5 or 6 can be dependent from claims drawn to the other embodiment
seen in Figures 1-3. In this regard, we view the respective
embodiments of appellant’s invention as originally filed as being
mutually exclusive of one another. Accordingly, the subject matter
now defined in dependent claims 3, 6 and 7 on appeal finds no
support in the application as filed. Appellant has simply provided
no indication in the disclosure of this application that the
combination now recited in claim 1/3, 1/6, or 1/7 forms any part of
his invention.
To summarize, we note that the examiner’s rejection of claims
1, 6 and 7 under 35 U.S.C. § 103 as being unpatentable over PT, is
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Application 08/233,215
12
affirmed as to claim 1, but reversed as to claims 6 and 7. The
rejection of claims 2 and 5 under 35 U.S.C. § 103 as being
unpatentable over PT in view of Clarkson is reversed. The
examiner’s rejection of claims 1, 6 and 7 under 35 U.S.C. § 102(b)
as being anticipated by Rogow is affirmed, while the rejection of
claims 2 and 5 under 35 U.S.C. § 103 as being unpatentable over
Rogow in view of Clarkson is reversed. It follows from the
foregoing that the decision of the examiner is affirmed-in-part.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
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 . . . .
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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. . . .
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
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Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing
thereof.
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
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0256
Application 08/233,215
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Frank D. Gilliam
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