Ex Parte Lyons

Board of Patent Appeals and Interferences

Dec 11, 2008

10724653 (B.P.A.I. Dec. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL L. LYONS
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Appeal 2008-4777
Application 10/724,653
Technology 3700
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Decided: December 11, 2008
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Before ERIC GRIMES, RICHARD M. LEBVOVITZ, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a folding
pocket wallet. The Examiner has rejected the claims as anticipated and as
lacking a written description in the Specification. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-4777
Application 10/724,653

BACKGROUND
The Specification states that carrying … a wallet in a rear pocket,
especially while seated for prolonged periods, can be a cause of back pain,
sciatica and spinal misalignment, and it is thus recommended that one carry
the wallet not in the rear pocket” (Specification 1).
“Front pockets are often shaped differently from rear pockets, being
tapered toward their closed end” (id.). The Specification discloses “a wallet
which, when folded, has a tapered end to better fit such a front pocket” (id.).
DISCUSSION
1. CLAIMS
Claim 12 is on appeal1 and reads as follows:
Claim 12: A folding pocket wallet shaped to fit a front trousers
pocket, said front pocket wallet, when folded for placement in a front
trousers pocket, comprising
(a) a single fold line at one end;
(b) two edges adjacent said single fold line, one of said edges being a
shorter edge; and
(c) one end opposite to said single fold line;
said shorter edge having substantially rounded tapering where it joins
said end and defining the edge of a money pocket within said folding pocket
wallet,
whereby use of said folding pocket wallet obviates spinal
misalignment and neural damage.

1 Claims 13-22 are also pending: Claim 13 stands rejected and claims 14-22
have been objected to (Office Action mailed June 6, 2006, pp. 3-4).
Appellant filed an amendment canceling claims 13-22 and adding claims
23-34 (Amendment After Final Rejection, filed Sept. 5, 2006). However,
the Examiner did not enter the proposed amendment (Advisory Action
mailed Sept. 26, 2006). Because Appellant has not disputed the merits of
the rejection of claim 13 set out in the Office Action mailed June 6, 2006,
we summarily affirm that rejection.
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Application 10/724,653

2. WRITTEN DESCRIPTION
Claim 12 stands rejected under 35 U.S.C. § 112, first paragraph, on
the basis that it lacks written description in the Specification (Answer 3).
The Examiner finds that the “original disclosure does not support the
single fold line at one end” (Answer 3). The Examiner reasons that “the
multiple layers would form multiple fold lines at portion 11” (id.).
Appellant argues that the “Examiner reads the words ‘fold line’ as
being a crease formed after folding in each one of a multiplicity of layers”
but that Appellant “selected the words ‘fold line’ to indicate the place or line
where the wallet is folded - a place which forms and thereby defines one end
of the folded wallet, where prior to folding … there was merely a region of
the unfolded wallet …” (Appeal Br. 4).
The purpose of the written description requirement is to “ensure that
the scope of the right to exclude, as set forth in the claims does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.” Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000). To that end, to satisfy the written description
requirement, the inventor must “convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). “One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations.” Lockwood v.
American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997).
We agree with Appellant that the originally filed Specification
provides adequate descriptive support for the disputed limitation. The
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Examiner’s argument is essentially that the term “single fold line” should be
interpreted to mean a fold in only one layer versus a “single fold line” that
may fold multiple layers.
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Here, the Specification discloses in Figure 1 an embodiment of the
invention having multiple layers folded at the same place which is
specifically referred to as a “fold line” (Spec. 3: 3-5). Read in light of the
Specification, therefore, the broadest reasonable interpretation of the term
“single fold line” encompasses a fold line where multiple layers may be
folded. Thus, given the wallet illustrated in Figure 1 of the Specification,
one of skill in the art would have understood that Appellant was in
possession of the wallet of claim 12.
The rejection of claim 12 under 35 U.S.C. § 112, first paragraph, on
the basis of lack of written description in the Specification is reversed.
3. ANTICIPATION
Claim 12 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Wieland.2
The Examiner sets forth three interpretations of how Wieland
discloses the wallet of claim 12, one of which is reproduced below:

2 Wieland, US 601,922, Apr. 5, 1898.
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(Answer 4.) The Examiner’s diagram shows Fig. 1 of Wieland (i.e., a wallet
made from a sheet of material folded twice – first laterally and then
vertically – and having one rounded corner opposite the vertical fold line)
with the Examiner’s annotation that the vertical fold corresponds to the
“single fold line at one end” of claim 12.
The Examiner further finds that the claim language reciting that “the
wallet obviates spinal misalignment” is a statement of intended use that does
not patentably distinguish the invention of claim 12 from the prior art wallet
of Wieland (id.).
We agree with the Examiner that Wieland discloses all the limitations
of claim 12. Wieland discloses a “pocket-book formed of stiff paper, the …
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paper being folded twice” (Wieland, p. 1, ll. 88-90, and Fig. 1 of Wieland
(with the Examiner’s annotations) as set forth above). Wieland also
discloses that “[o]ne outer front corner h of each fold preferably is rounded
… to remove sharp corners that would be liable to injury” (id. at p. 1, ll. 74-
76). Thus, Wieland discloses a wallet meeting the limitations of claim 12 as
set forth in the Examiner’s “Interpretation 1 of Wieland” (Answer 4,
reproduced above).
Appellant argues that the Examiner’s reasoning that the wallet of
Wieland has “a single fold line at one end” is in error because Wieland’s
“wallet has two fold lines - not one single fold line” (Appeal Br. 11).
We are not persuaded by this argument. Claim 12 specifies that the
wallet has a single fold line at one end, but does not exclude the wallet from
having fold lines at other locations along its body. The transitional term
“comprising” used in claim 12 opens the claim to additional, unrecited
elements. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
(Fed. Cir. 2007). Thus, the pocket-book of Wieland would be reasonably
interpreted to meet the limitations of claim 12 because it has a single fold
line at one end, as well as two fold lines along the side.
Appellant “agrees with the Examiner in saying Wieland's corner is
‘substantially round,’” but argues that “[b]eing ‘substantially round … is
totally different from being ‘substantially rounded.’” (Appeal Br. 12).
Appellant further argues “‘substantial’ . . . means much more than simply
rounding off a corner to protect the corner from damage; it means, for
example, half the entire width of the wallet” (id. at 13). Appellant concludes
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that the claimed invention “uniquely provides substantially rounded
tapering, across a significantly broader region, than in any prior wallet” (id.).
We are not persuaded by this argument. The Examiner reasonably
interpreted the edge “having substantially rounded tapering” to encompass a
rounded corner as in Wieland. Because Wieland’s pocket-book edge is
depicted as completely rounded off, we agree with the Examiner that it
would be “substantially” rounded, contrary to Appellant’s argument (App.
Br. 13). Appellant also argues that “substantially round” is different from
substantially rounded tapering” but fails to provide a definition from the
Specification or other evidence of this purported difference. Thus, the
rounded corner of Wieland would be reasonably construed by one of
ordinary skill in the art to be at least one form of substantially rounded
tapering, and meet this claim limitation.
Appellant further argues that the “recitation of use as a front pocket
wallet in fact does result in structural differences between the invention as
claimed and the prior art” (Appeal Br. 15). Appellant also argues that “use
as a wallet in a front trousers pocket” provides “extraordinary benefits to
spinal alignment, sciatica and neurological health [that] are novel and
unanticipated results - … not intended uses” (id.).
We do not find these arguments to be persuasive. “Where . . . a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997). Claim 12 recites a structurally complete invention; as discussed
above, we do not agree that the claimed wallet differs structurally from the
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one disclosed by Wieland. The disclosure in the preamble that the claimed
product is a “front pocket wallet” is a statement of intended use, not a claim
limitation. Further, Appellant’s argument that the use of the claimed wallet
provides unanticipated benefits to spinal alignment, sciatica and neurological
health is not found to be persuasive because evidence of unexpected results
are relevant only to obviousness, not anticipation. See Cohesive
Technologies, Inc. v. Waters, 543 F.3d 1351, 1364 (Fed. Cir. 2008)
(“[O]bviousness requires analysis of secondary considerations of
nonobviousness, while secondary considerations are not an element of a
claim of anticipation.”)
SUMMARY
The Examiner’s anticipation rejection is supported by the
preponderance of the evidence of record, and we therefore affirm the
rejection of claim 12 under 35 U.S.C. § 102. However, we reverse the
rejection of claim 12 under 35 U.S.C. § 112, first paragraph.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
lp
NILS PETER MICKELSON
228 WATERMAN ROAD
BUXTON ME 04093-3718

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