Ex parte Long

Board of Patent Appeals and Interferences

Dec 17, 1998

08519375 (B.P.A.I. Dec. 17, 1998)

Application for patent filed Aug 25, 1995. According to1
appellant, this application is a continuation of Application
08/227,432 filed April 14, 1994, now U.S. Patent No. 5,459,982
issued October 24, 1995.
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journal and (2) is not binding precedent of the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 JAMES M. LONG
____________
Appeal No. 97-1691
Application No. 08/519,3751
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Judge, MEISTER and
ABRAMS, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-1691
Application No. 08/519,375
The appellant's brief is defective in that it does not2
contain an appendix containing a copy of the claims on appeal
as expressly required by 37 CFR § 1.192(c)(9).
This rejection was set forth as a new ground of3
rejection in the answer.
2
James M. Long (the appellant) appeals from the final
rejection of claims 1-10, the only claims present in the
application.
We AFFIRM.
The appellant's invention pertains to an apparatus for
compressing and packaging microfibers. Independent claim 1 is
further illustrative of the appealed subject matter and a copy
thereof may be found on pages 2 and 3 of the brief.2
The references relied on by the examiner are:
Rieger 3,088,499 May 7, 1963
Strömberg 4,162,603 Jul. 31,
1979
Long 5,459,982 Oct. 24,
1995
Claims 1-10 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1-30 of U.S. Patent No. 5,459,982.3
Appeal No. 97-1691
Application No. 08/519,375
3
Claims 1-10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Rieger in view of Strömberg.
The arguments of the appellant and examiner in support of
their respective positions may be found on pages 9-16 of the
brief, pages 1-4 of the reply brief and pages 6-9 of the
answer. As evidence of nonobviousness the appellant has
relied on an affidavit by Bender.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief, and by
the examiner in the answer. As a consequence of this review,
we will sustain the rejection under the judicially created
doctrine of obviousness-type double patenting. We will not,
however, sustain the rejection under 35 U.S.C. § 103.
Appeal No. 97-1691
Application No. 08/519,375
4
Considering first the rejection under the judicially
created doctrine of obviousness-type double patenting, it is
the examiner's position that:
Although the conflicting claims are not identical,
they are directed to the same inventive concept and
are not patentably distinct from each other because
the subject matter of the application claims is
fully disclosed in the patent specification and
covered by the patented claims. The patented claims
are inclusive for they are drafted using the
"comprising-type" format and cover the subject
matter of the application claims(s). Since
applicant has obtained the right to exclude others
from making and using the subject matter set forth
in the claims of this application by virtue of the
patented claims, the issuance of this application
into a patent without a terminal disclaimer as
provided for under 37 CFR § 1.321(b) would amount to
an unjustified extension of this right.
As stated IN [sic, in In] Re Schneller, 37 F.2d
350, 158 USPQ 210 (CCPA 1968), and quoted with
approval IN [sic, in In] re Van Ornum, 686 F.2d 937,
214 USPQ 761 (CCPA 1982), "the fundamental for the
rule against double patenting is to prevent
unjustified timewise extension of the right to
exclude granted by a patent no matter how the
extension is brought about." [Answer, pages 4 and
5.]
The appellant does not argue that 35 U.S.C. § 121 acts as
a bar to a rejection based on obviousness-type double
patenting in view of the restriction requirement in the
Appeal No. 97-1691
Application No. 08/519,375
However, the terminal disclaimer was deemed unacceptable4
by the examiner and not entered (see the response to the reply
brief mailed February 19, 1997 (Paper No. 15)).
5
application upon which the patent is based. Instead, it is
the appellant's position that:
The claims of United States Patent '982 rely for
patentability on different novel features of the
novel compression packaging machine, i.e. see claim
14 [of] that patent, particularly lines 42-43 where
patentability is based on the length of the
compression chamber beyond the opening in which
material is charged into the compression chamber and
the structure and function of a pivot wall that
forces the work product into the compression
chamber. Claims 14, 15 and others of the '892
patent can be infringed without infringing the
claims of the present application, e.g. a prior art
retaining wall could be used since the retaining
wall means is in the preamble of the improvement
claims.
However, since at least a portion of the present
invention is included in claim 1 of '892 in
combination with other novel and unobvious features
such as the structure and function of the pivot
wall, a terminal disclaimer is included with this
Reply Brief to remove this issue from the appeal. 4
[Reply brief, page 2; footnote added.]
The appellant, however, has not presented any argument as
to why the examiner erred in rejecting the appealed claims on
obviousness-type double patenting with respect to claim 1 of
the patent. Obviously, claim 1 of the patent could not be
Appeal No. 97-1691
Application No. 08/519,375
6
infringed without infringing claim 1 of the instant
application.
In view of the foregoing, we will sustain the rejection
of claims 1-10 under the judicially created doctrine of
obviousness-type double patenting.
Turning to the rejection of claims 1-10 under 35 U.S.C.
§ 103 as being unpatentable over Rieger in view of Strömberg,
independent claim 1 expressly requires a retaining wall and
means for moving the retaining wall such that the
surface in contact with the highly compressed mass
moves away from said mass and then into an opening
in a wall of said packaging chamber and in smooth
alignment with said interior surface of said
packaging chamber when in a second position . . . .
[Emphasis added.]
Recognizing that Rieger does not teach such a limitation,
the examiner relies on the teachings of Strömberg for
the concept of a moveable retaining wall 29 that
pivots into openings in the packaging chamber and
back to its initial position as one of the walls of
a compression chamber (figures 16a and 17a).
[Answer, page 7.]
However, as the appellant has correctly pointed out on page 10
of the brief, the covers or retaining walls 29 of Strömberg do
not move into an opening in a packaging chamber as the
Appeal No. 97-1691
Application No. 08/519,375
7
examiner asserts. Rather, these members move into an open
space between the compression chamber 16 and roller conveyors
37 of a packing and binding device in order to "bridge the
distance" (column 4, lines 65 and 66) between these two work
stations. Since there is nothing in either Rieger or
Strömberg which either teaches or fairly suggests a moveable
retaining wall that pivots into an opening in a packaging
chamber as expressly required by independent claim 1, the
prior art relied on by the examiner fails to establish a prima
facie case of obviousness with respect to the subject matter
defined by claims 1-10.
Since the prior art relied on by the examiner fails to
establish a prima facie case of obviousness, we need not
consider the appellant's evidence of nonobviousness. In re
Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596, 1600 (Fed. Cir.
1988).
In view of the above, we will not sustain the rejection
of claims 1-10 under 35 U.S.C. § 103 based on the combined
teachings of Rieger and Strömberg.
In summary:
Appeal No. 97-1691
Application No. 08/519,375
8
The rejection of claims 1-10 under the judicially created
doctrine of obviousness-type double patenting is affirmed.
The rejection of claims 1-10 under 35 U.S.C. § 103 is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 97-1691
Application No. 08/519,375
9
JMM/jlb
Appeal No. 97-1691
Application No. 08/519,375
10
Cornelius P. Quinn
Schuller International Inc.
Patent and Licensing Department
P.O. Box 5108
Denver, Colorado 80217