Ex parte Kocivar

Board of Patent Appeals and Interferences

Oct 25, 1999

08569999 (B.P.A.I. Oct. 25, 1999)

Application for patent filed December 8, 1995.1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KARL KOCIVAR
_____________
Appeal No. 1999-2365
Application 08/569,9991
______________
ON BRIEF
_______________
Before CALVERT, PATE and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-2365
Application 08/569,999
We note that in the copy of claim 20, line 3, "fire" is2
misspelled. Also, in any future prosecution, claim 17 should
be corrected by inserting --of-- after "plurality" in line 3,
and in claim 29, line 2, "configuration" should be plural.
This reference was cited by the examiner in the first3
Office action (Paper No. 3).
2
This is an appeal from the final rejection of claims
1 to 12 and 14 to 31, all the claims remaining in the applica-
tion.
The appealed claims are drawn to an emergency care
blanket, and a copy thereof is included in Appendix A of
appellant's brief.2
The references applied in the final rejection are:
Shears 3,083,430 Apr. 2, 1963
Goldman 3,477,552 Nov. 11, 1969
Buchman 4,261,058 Apr. 14, 1981
Asher 4,484,362 Nov. 27, 1984
Prandina 4,573,227 Mar. 4, 1986
Russell 4,757,832 July 19, 1988
Haruvy et al. (Haruvy) 4,872,220 Oct. 10, 1989
Scherer 4,884,303 Dec. 5, 1989
Goldstein 4,989,282 Feb. 5, 1991
Ackley 5,010,610 Apr. 30, 1991
An additional reference, of record, applied herein
in a rejection pursuant to 37 CFR § 1.196(b), is:
Thier 5,533,216 July 9,
19963
Appeal No. 1999-2365
Application 08/569,999
3
(filed Aug. 23,
1994)
The claims on appeal stand finally rejected under 35
U.S.C. § 103(a) as unpatentable over the following combina-
tions of references:
(1) Claims 1, 14 to 16, 28, 29 and 31, Buchman in view of
Prandina;
(2) Claims 2, 3 and 27, Buchman in view of Prandina and Rus-
sell;
(3) Claims 4, 5 and 20, Buchman in view of Prandina and
Haruvy;
(4) Claims 6, 7 and 23, Buchman in view of Prandina and
Goldman;
(5) Claims 8 and 24, Buchman in view of Prandina, Goldman and
Ackley;
(6) Claims 9, 10 and 25, Buchman in view of Prandina and
Asher;
(7) Claims 11, 22 and 30, Buchman in view of Prandina and
Goldstein;
Appeal No. 1999-2365
Application 08/569,999
4
(8) Claims 12 and 26, Buchman in view of Prandina, Goldstein
and Russell;
(9) Claim 17, Buchman in view of Prandina and Shears;
(10) Claim 18, Buchman in view of Prandina and Scherer;
(11) Claim 19, Buchman in view of Prandina, Scherer and
Russell;
(12) Claim 21, Buchman in view of Prandina, Russell and
Haruvy.
Rejection (1)
The essence of this rejection, as stated on page 4
of the examiner's answer, is:
Prandina discloses the use of a blanket
assembly composed of "at least two
interconnectable blankets" (10, 11) wherein
each blanket has an "upper second covering
surface" and a "lower second covering
surface" (see Figures 1-5; column 1,
lines 52-66; and column 2, lines 1-26).
The skilled artisan would have found it
obvious to provide the emergency care
blanket of Buchman with a "second
rectangularly con- figured flexible
covering" having an "upper second covering
surface" and a "lower second covering
surface" in order to form a larger blanket
assembly to accommodate more than one user
Appeal No. 1999-2365
Application 08/569,999
5
or to provide additional warmth for a user
as desired (see Prandina, column 1, lines
15-26 and column 2, lines 24-26).
After fully considering the record in light of the arguments
presented in appellant's brief and reply brief, and in the
examiner's answer, we conclude that this rejection is not well
taken, for a number of reasons.
First, the device disclosed by Buchman, while called
"a blanket-like wrap" (col. 1, line 5), is more in the nature
of a garment, i.e., a "comforter-robe" (col. 1, lines 8, 30,
33, etc.). On the other hand, the Prandina reference concerns
a blanket assembly to be used on a bed (col. 1, line 7),
whereby two blankets can be joined together at their sides to
fit a wider bed, and/or can be attached together in a double
layer. Given this disparity between the types of devices
disclosed by these two references, we do not consider that one
of ordinary skill would derive from Prandina a suggestion to
modify the Buchman comforter-robe in the manner proposed by
the examiner.
Second, even if Buchman and Prandina were combined,
we do not consider that the resulting structure would contain
Appeal No. 1999-2365
Application 08/569,999
6
fasteners which would meet the limitations of independent
claims 1, 14, 28 and 31. Claim 28, for example, recites in
part (c) "each of said fasteners including a first fastening
structure of a first type [e.g., male] and a second fastening
structure of a second type [e.g., female] that is matable with
the first type." The fasteners disclosed by Buchman are not
combined male-female snaps, such as disclosed by appellant in
Fig. 7, but rather appear to be simply conventional male snaps
(designated by "M") and conventional female snaps (designated
by "F"); they are, as shown in Figs. 1, 2 and 3, separate
items. Although pending claims, during patent examination,
must be interpreted as broadly as their terms reasonably
allow, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989), we do not consider that the term "fastener"
as used in the instant claims can be reasonably interpreted to
cover a pair of separate male and female snaps, such as those
disclosed by Buchman. In the context of this case, such a
pair of separate snaps constitutes two fasteners, rather than
one.
Accordingly, we will not sustain rejection (1).
Appeal No. 1999-2365
Application 08/569,999
7
Rejections (2) to (12)
None of these rejections will be sustained, since
the additional references applied therein do not supply the
above-noted deficiencies in the combination of Bushman and
Prandina.
New Grounds of Rejection
Pursuant to 37 CFR § 1.196(b), we enter the
following new grounds of rejection:
(A) Claims 1, 2, 4, 28, 29 and 31 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Thier. This reference discloses a
sleeping bag including an outer bag 14 and an inner bag 16,
both of thermally insulating material 28, 30, and having inner
and outer walls of nylon (col. 3, line 36), which would be a
weather resistant material. The bags are of a "selected
geometric shape," as broadly recited in claims 1 and 31. As
shown in Fig. 3A, each bag 14, 16 has fasteners 34 projecting
from its upper and lower surfaces, the male portions 36 being
Appeal No. 1999-2365
Application 08/569,999
8
engageable with the female portions 38. As for claim 28,
Thier discloses at col. 5, lines 22 to 26, that there may be
"more than one inner bag [16]"; such a plurality of inner bags
would constitute the pluralities of first and second flexible
coverings recited in this claim.
With regard to the recitation of "[a]n emergency
care blanket" or "[a] modular emergency care blanket system"
in the first line of these claims, this recitation in the
preamble is of no patentable significance because it offers
no distinct definition of any of the claimed invention's
limitations, but merely states the purpose or intended use of
the invention. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
Moreover, it appears that the Thier apparatus would
"accommodate an individual in need of assistance" and "protect
the individual from heat loss and against prevailing
environmental conditions," as recited in the preamble of
claims 1, 28 and 31.
Appeal No. 1999-2365
Application 08/569,999
9
(B) Claim 29 is rejected for failure to comply with the second
and fourth paragraphs of 35 U.S.C. § 112. The recitation of
the Markush group as "consisting of, but not limited to"
certain configurations renders the group indefinite as to its
scope, violating § 112, second paragraph. See Ex parte
Morrell, 100 USPQ 317, 319 (Bd. App. 1953). Also, by virtue
of the expression "but not limited to," the claim covers all
possible configurations, and therefore does not constitute a
"further limitation" on parent claim 28, as required by § 112,
fourth paragraph.
Remand to the Examiner
Pursuant to 37 CFR § 1.196(e), this case is remanded
to the examiner to consider:
(I) Whether any of claims 3, 5 to 12, 14 to 27 and 30 should
be rejected under 35 U.S.C. § 103 as unpatentable over Thier
in view of other prior art.
Appeal No. 1999-2365
Application 08/569,999
10
(II) Whether the specification and/or drawings should be
objected to, or claims rejected under 35 U.S.C. § 112, in view
of the following:
(i) There is a discrepancy between Figs. 1 and 2. In Fig. 2,
one edge of the blanket is shown as folded over, as it
apparently would have to be in order for the male portion of
the snaps 70 along one edge to engage the female portion of
the snaps 70 along the other edge; this puts one end (the
right end in Fig. 2) of draw cord 32 inside the folded
blanket. However, in Fig. 1, of which Fig. 2 purports to be
an enlarged end view, neither of the engaged edges of the
blanket is shown as folded over, and both ends of each of the
draw cords 32 extend beyond the edges of the blanket. Also,
in Fig. 2 the unengaged parts of the fasteners 70 are not
shown (unlike in Figs. 7 and 12).
(ii) On page 13, lines 13 to 15, the first flexible covering
20 is described as being an insulating layer 21 and a shell

Appeal No. 1999-2365
Application 08/569,999
Fasteners 80, 82 on second covering 60 are disclosed as4
constructed similarly to fasteners 70, 72 (page 17, lines 23
to 26).
11
layer 30. However, in Fig. 6, in addition to layer 21 (not
numbered) and layer 30 there seems to be another layer, with
backing material 79 in between layer 21 and this other layer.
Also, if the second flexible covering 60 is a single layer, it
is not clear how fasteners with backing material 79 can be
applied thereto.4
(iii) Claims 9, 10 and 25 recite litter handles on each of the
first and second flexible coverings. Litter handles on the
first covering are disclosed at page 16, lines 6 to 14, but
reference numbers 34, 36 are not found in the drawings, nor is
it clear where in the drawings the litter handles and parallel
strap portions are located on flexible coverings 20 and 60.
Conclusion
The examiner's decision to reject claims 1 to 12 and
14 to 31 is reversed. Claims 1, 2, 4, 28, 29 and 31 are
rejected pursuant to 37 CFR § 1.196(b), and the application is
remanded to the examiner pursuant to 37 CFR § 1.196(e).
Appeal No. 1999-2365
Application 08/569,999
12
This decision contains new grounds 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. and Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides that "[a] new ground of
rejection shall not be considered final for purposes of
judicial review."
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
grounds 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. . . .
Appeal No. 1999-2365
Application 08/569,999
13
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
This application, by virtue of its "special" status,
requires an immediate action, MPEP § 708.01(d). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
REVERSED and REMANDED
37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
Appeal No. 1999-2365
Application 08/569,999
14
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
IAC:psb
Appeal No. 1999-2365
Application 08/569,999
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Timothy J. Martin
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