Ex Parte Katz

Board of Patent Appeals and Interferences

Nov 26, 2007

10647618 (B.P.A.I. Nov. 26, 2007)

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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SUSAN G. KATZ
____________________

Appeal 2007-3309
Application 10/647,618
Technology Center 3600
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Decided: November 26, 2007
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Before: WILLIAM F. PATE, III, TERRY J. OWENS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1-12 and 14-23. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Appeal 2007-3309
Application 10/647,618

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Independent claim 1 is representative of the Appellant’s claims and
reads as follows:

1. A decorative external curtain assembly for
applying fabric material to an external facade of a
building, the assembly comprising:
a sheet of fabric material;
complementary engageable fastener strips
for respectively fastening the fabric material to the
external façade of the building; and
an attachment arrangement for attaching one
of the complementary engageable fastener strips to
the building and another of the complementary
engageable fastener strips to the fabric material;
and
wherein the complementary engageable
fastener strips are made of a pair of strips, one strip
having co-acting miniature hooks formed of a
relatively rigid filament material and another of the
strips having loops also formed of a relatively rigid
filament material which engage one another to
form a bond between the building and the fabric
that is broken by pulling apart the pair of strips;
and
wherein the complementary engageable
fastener strips fasten the fabric material to the
external façade along an entire edge of the fabric
material.

The appealed claims are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hillstrom (U.S. Patent 5,040,586) in light of Phillips (U.S.
Patent 5,074,348).
We affirm.
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ISSUE
The sole issue in this appeal is whether the Examiner erred in
contending that the substitution of hook-and-loop material as taught by
Phillips into a system for holding and displaying a banner as taught by
Hillstrom would have been obvious.

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.

1. Hillstrom discloses a system for holding and displaying a
banner on an exterior surface of a building. (Hillstrom, col. 1, ll. 5-7; col. 2,
ll. 55-68). The banner may be made from vinyl material, plastic material or
any “appropriate material.” (Hillstrom, col. 3, ll. 23-31). The parties do not
dispute the Examiner’s contention that the “appropriate material” for the
banner may be a sheet of fabric material. (See Office Action, Jan. 13, 2005
at 2). Hillstrom’s system uses a “frame device” which suspends the banner
on hooks between an extruded aluminum base member screwed or nailed
into the building surface and an extruded aluminum cover member biased
over the free ends of the hooks. (Hillstrom, col. 4, l. 59 –col. 5, l. 3 and col.
4, ll. 8-14). Hillstrom states that the system “allows relatively quick and
easy changes of the banners.” (Hillstrom, col. 1, ll. 51-56).
2. The Examiner found that “Hillstrom discloses a banner attached
to the exterior of a building, the banner being made of ‘any appropriate
material,’ which clearly includes a fabric. The banner is removably attached
so that it can be changed easily, column 2 lined [sic, lines] 29-33. It is
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attached to an eave at the roof line of a fast food restaurant. What is not
shown are the hook and loop fasteners.” (Office Action, Jan. 13, 2005 at 2).
Although the Appellant expressly agreed that “Hillstrom fails to disclose the
use of hook and loop fasteners for attaching a banner to the exterior of a
building” (Br. 6), the Appellant did not traverse the Examiner’s other
findings as to the scope and content of Hillstrom.
3. Phillips teaches “a valance treatment for a window which is
made of standard components both swags and jabot elements that can easily
be mounted to suit almost any width of window.” (Phillips, col. 1, ll. 46-
50). The swags are formed from textile materials. “Attachment strips”
consisting of hook and loop tape are sewn across the top of each swag.
(Phillips, col. 2, ll. 53-59; col. 3, ll. 1-2; and Fig. 4). The valance treatment
is supported by a wood strip extending from a wall. A strip of hook-tape or
loop-tape is attached to the top of the wood strip. The attachment strip sewn
to the top edge of each swag is pressed against the hook-tape or loop-tape
lying on the wood strip so that the swag folds over the exposed side of the
wood strip. (Phillips, col. 3, ll. 8-24).

PRINCIPLES OF LAW
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” In Graham v. John Deere Co.,
383 U.S. 1 (1966), the Supreme Court set out factors to be considered in
determining whether claimed subject matter would have been obvious:
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Under § 103, the scope and content of the prior art
are to be determined; differences between the prior
art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art
resolved. Against this background the obviousness
or nonobviousness of the subject matter is
determined. Such secondary considerations as
commercial success, long felt but unsolved needs,
failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of
the subject matter sought to be patented.

Id., 383 U.S. at 17-18.
In order to reject a claim under 35 U.S.C. § 103(a), an examiner must
establish a “prima facie” case for obviousness. If the examiner rejects the
claim, the applicant may submit arguments detailing reasons why the
applicant believes the examiner failed to make a prima facie case. Once the
examiner establishes a prima facie case, however, the claim is properly
rejected unless the applicant submits evidence proving sufficient new facts
such that the sum of the facts before the examiner does not to prove the
claimed subject matter obvious. See In re Dillon, 919 F.2d 688, 692-93
(Fed. Cir. 1990) (en banc).
An examiner cannot establish a prima facie case that a claim is
obvious “merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1741 (2007). Since not every combination of prior art references
which happens to show each of the elements recited in a claim will suffice to
establish a prima facie case for obviousness, the examiner must articulate
reasons why the teachings of a particular combination suffice. That said, an
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examiner establishes a prima facie case that claimed subject matter is
obvious when the examiner articulates reasons consistent with the level of
ordinary skill in the art at the time of the invention why (in the words of 35
U.S.C. § 103(a)) “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

ANALYSIS
The first step in determining whether the Examiner has established a
prima facie case for obviousness is to determine the scope and content of the
prior art. With respect to claim 1, Hillstrom discloses a decorative external
curtain assembly for applying a sheet of an “appropriate material” to a wall.
The parties do not dispute that the Examiner’s contention that the
“appropriate material” could be a sheet of fabric material. (FF 1).
Phillips teaches complementary engageable fastener strips (namely,
hook-tape and loop-tape) sewn to a fabric material for engagement along an
entire edge of the fabric material. (FF 3). The limitation of claim 1:

wherein the complementary engageable fastener
strips are made of a pair of strips, one strip having
co-acting miniature hooks formed of a relatively
rigid filament material and another of the strips
having loops also formed of a relatively rigid
filament material which engage one another to
form a bond between the building and the fabric
that is broken by pulling apart the pair of strips

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merely describes the structure and predictable operation of such hook tape
and loop tape. The parties do not dispute the Examiner’s contention that the
use of hot glue or another adhesive for attaching lightweight materials such
as hook-and-loop material to solid surfaces such as the external facades of
buildings was within the level of ordinary skill in the art. (See Office
Action, Sept. 22, 2005 at 2-3).
The second step in determining whether the Examiner has established
a prima facie case for obviousness is to ascertain the differences between the
prior art and the claims at issue. The only differences between Hillstrom’s
system and the subject matter of claim 1 is that, in the assembly of claim 1, a
fastener strip of hook-and-loop material sewn across an entire edge of a
fabric material and another fastener strip adhered to the building surface are
used to fasten the fabric material to the building surface. (FF 2). The
fastener strips and their attachment arrangement are taught or suggested by
Phillips.
The third step in determining whether the Examiner has established a
prima facie case for obviousness is to resolve the level of ordinary skill in
the art. The factors which may be considered in determining the level of
ordinary skill include the teachings of the prior art references themselves;
the education and experience of the inventor; and the sophistication of the
technology. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed.
Cir. 2007). The Appellant does not contest that hook-and-loop material
predictably creates temporary bonds which are easily broken by pulling
apart the hook and loop tapes. (Specification 3). The Appellant’s
background suggests that one skilled in the art would have had “considerable
experience with regard to the use of textiles and fabrics as articles of
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manufacture” (Rule 132 Affidavit, Nov. 2, 2004, ¶ 2). Given this level of
experience and the well-known prevalence of hook-and-loop material in
garments and other textile products, one skilled in the art would have
recognized that hook-and-loop material could be used to fasten fabric
materials to substrates and that fabric materials fastened by hook-and-loop
material could be easily detached. (FF 4). Given the relatively
unsophisticated nature of the technology, one skilled in the art would have
had the capacity to use hook-and-loop material to hold and display a fabric
material against an external facade of a building.
The final step in determining whether the Examiner has established a
prima facie case of obviousness is to determine whether the Examiner
articulated reasons why the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole
would have been obvious to a person having ordinary skill in the art. The
reasons for combining the teachings of the prior art may arise from the
nature of the combination itself. For example, a simple substitution of one
known element for another according to a known method to obtain
predictable results is prima facie unpatentable. KSR, 127 S.Ct. at 1740.
In the present case, it would have been obvious to substitute hook-
and-loop material sewn to a fabric material for engagement along an entire
edge of the fabric material as taught by Phillips into a system for holding
and displaying the fabric material on an exterior building surface as taught
by Hillstrom. Phillips taught that hook-and-loop material could be used to
hang a sheet of fabric material indoors. Substituting the hook-and-loop
material of Phillips for the “frame device” of Hillstrom would not change
the manner in which the hook-and-loop material fastened the fabric material
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to the building surface—the substitution would merely move the hook-and-
loop material from an indoor location to an outdoor location. As such, the
results of the substitution would have been predictable. These reasons alone
suffice to establish a prima facie case that the subject matter of the claim 1
was obvious.
The Appellant argues that a passage in Hillstrom criticizing “known
systems and devices” as unreliable, particularly when “placed outdoors
where they are subject to high winds and other harsh conditions” (Hillstrom,
col.1, ll. 32-34) teaches away from the substitution of hook-and-loop
material for the “frame device” disclosed in Hillstrom. (Br. 8-9). The
Examiner correctly observed that Hillstrom does not criticize the use of
hook-and-loop material specifically to hold and display banners outdoors.
(Ans. 4-5). The Examiner also observed that substituting hook-and-loop
material as taught by Phillips for the “frame device” disclosed by Hillstrom
in an outdoor display would “render changing of the banner easier.” (Ans.
3; compare Specification 3 (stating that hook-and-loop material creates
temporary bonds that are easily broken by pulling apart the hook-and-loop
strips) with Hillstrom, col. 5, ll. 41-63 (describing sequence of steps required
to change a banner held in Hillstrom’s “frame device.”)). Hillstrom does not
teach away from the claimed subject matter because the reference’s criticism
of “known systems and devices” is not specific enough to have discouraged
one skilled in the art motivated to use hook-and-loop material to simplify the
changing of outdoor banners.
The Appellant further argues that the claimed subject matter was
intended to address the problem of displaying a sheet of fabric material
outdoors and that the alleged unreliability of hook-and-loop material renders
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it unsuitable to solve this problem. In support of this argument, the
Appellant cites In re Wright, 848 F.2d 1216, 1219 (Fed. Cir. 1988) for the
proposition that “the question posed, is whether what the Appellant did
would have been obvious to one of ordinary skill in the art attempting to
solve the problem upon which the inventor was working.” (Br. 11 [emphasis
added]). This proposition does not represent the current state of the law. In
re Translogic Tech., Inc., Appeal No. 2006-1192 slip op. at 18-19 (Fed. Cir.
Oct. 12, 2007); see also In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en
banc) (overruling Wright at least in part). The subject matter of claim 1
consists of known elements combined in a known manner yielding
predictable results. This rationale suffices to establish prima facie
obviousness.
The Appellant submitted a “Rule 132 Affidavit” declaring that, in the
Appellant’s experience,

the idea that [hook-and-loop] tape could be
effectively used to attach a curtain to the outside of
a building where the curtain is subjected to harsh
environmental conditions is unexpected because
the general opinion in the art is that [hook-and-
loop material] would form too weak a bond to
effective [sic] hold the banner or curtain to the
exterior of the building when harsh environmental
conditions such as wind and rain are encountered
by the exterior curtain.

(Id., ¶ 7). The Appellant’s opinion regarding the legal issue of whether the
differences between the claimed subject matter and the prior art would have
been obvious to a person having ordinary skill in the art is not evidence in
the case. In re Lindell, 385 F.2d 453, 456 (C.C.P.A. 1967). To the extent
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that the Appellant sought to offer opinion testimony regarding the level of
skill in the art or to establish “unexpected results” as secondary evidence of
non-obviousness, the Appellant’s opinion testimony does not overcome the
strong prima facie evidence proving the obviousness of claim 1. See id.;
Leapfrog Enterps., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
On the record before us, the Appellant has not rebutted the
Examiner’s prima facie case that the subject matter of representative claim 1
was obvious. Since the Appellant did not separately argue the patentability
of claims 3 and 6-21, those claims fall with claim 1.

CONCLUSION OF LAW
On the record before us, the Appellant has not shown that the
Examiner erred in rejecting the claims 1, 3 and 6-21 as being unpatentable
over Hillstrom in light of Phillips.

DECISION
The Examiner’s rejection of claims 1, 3 and 6-21 is affirmed.

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AFFIRMED
JRG

SUSAN G. KATZ
205 W. ROBERTS STREET
NORRISTOWN, PA 19401
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