Ex parte Mackley

Board of Patent Appeals and Interferences

Nov 24, 1998

08405385 (B.P.A.I. Nov. 24, 1998)

Application for patent filed March 15, 1995. According1
to the appellant, the application is a continuation of
Application 08/191,114, filed February 3, 1994, now abandoned.
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journal and (2) is not binding precedent of the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 MARY B. MACKLEY
____________
Appeal No. 97-0771
Application No. 08/405,3851
____________
ON BRIEF
____________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 15-21, all the claims currently pending in the
application.
Appeal No. 97-0771
Application No. 08/405,385
2
Appellant’s invention pertains to a shorts type garment
for providing protection from environmental elements.
Independent claim 15, a copy of which is found in the appendix
to appellant’s brief, is illustrative of the appealed subject
matter.
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 103 are:
Guithues 2,446,326 Aug. 3,
1948
Finlay 4,310,929 Jan. 19,
1982
Boll 4,894,869 Jan.
23, 1990
Claims 15-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Finlay in view of Boll. Claim 21
stands similarly rejected with further reliance on Guithues.
It is the examiner’s foundation position that Finlay
discloses all the structure called for in claim 15, except for
the outer and inner panels not being made of the materials
claimed. The examiner contends, however, that it would have
been obvious to one of ordinary skill in the art in view of
the teachings of Boll "to modify the Finlay garment to
incorporate the material layers as claimed to protect the
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Application No. 08/405,385
3
wearer from cold, moist surfaces during outdoor activity"
(answer, page 3), and thereby arrive at the subject matter of
claim 15.
Appellant argues that there is no suggestion in the
applied references for combining them in the manner proposed
by the examiner. In addition, appellant argues that Finlay
does not disclose the closure devices called for in the last
paragraph of claim 15, such that even if Finlay were modified
in the manner proposed, the subject matter of claim 15 would
not result.
Independent claim 15, the sole independent claim on
appeal, calls for a garment comprising inner and outer panels
joined together by a crotch portion to define a front primary
flap and a rear primary flap. The outer panel is made of a
material which forms a barrier against moisture penetration,
and the inner panel is made of a lining material. In the last
paragraph, claim 15 further calls for a pair of closure
devices than can be repeatedly closed and opened
for joining [the] left side of said front primary
flap to [the] left side of said rear primary flap
over the left hip and waist areas of the wearer and
for joining [the] right side of said primary flap to
Appeal No. 97-0771
Application No. 08/405,385
4
[the] right side of said rear primary flap over the
right hip and waist areas of the wearer.
Finlay, the examiner’s primary reference, is directed to
wraparound reversible running shorts. The Finlay garment
comprises first and second panels secured together in facing
relationship to form an hourglass shape when laid out flat.
See Figure 4. In use, the narrow part of the hourglass shape
becomes the crotch portion and the upper and lower edges
become the waist band of the shorts garment. Pile and hook
fasteners 34, 35 are provided at the ends of the upper and
lower edges where the edges meet the sides of the hourglass
shape to hold the waist band together. Although not expressly
stated, it reasonably appears that the curved sides to the
hourglass shape are of sufficient extent so that, in use, they
overlap to avoid undue exposure of the wearer’s hip area.
Boll is directed to a protective under garment. The Boll
under garment comprises waist and leg bands, and a rear panel
having a waterproof outer surface and an absorptive inner
surface. An objective of Boll is to provide comfort, dryness
and warmth to a wearer engaged in outdoor activity that may
include sitting on cold and damp ground. Boll indicates that
Appeal No. 97-0771
Application No. 08/405,385
It is questionable whether that latter modification would2
result in the subject matter of claim 15.
5
prior art waterproof trousers and the like lack adequate
ventilation and therefore may become too hot and restrictive
(column 1, lines 58-60; column 2, lines 8-10). To overcome
this alleged deficiency of the prior art, Boll’s garment is
"open faced" (i.e., without a front panel) to provide adequate
ventilation and prevent overheating. See column 2, lines 8-10
and lines 56-58.
We take up first for consideration the examiner’s
determination that it would have been obvious to modify
Finlay’s garment in view of Boll to provide material layers as
claimed. It is not clear precisely how the examiner intends
to "incorporate" the teachings of Boll into Finlay’s garment.
Presumably, the examiner intends to make one or the other of
the panels 4, 6 of Finlay of material that forms a moisture
barrier, while making the other one of the panels as a lining
material. Alternatively, it may be that the examiner intends
to modify Finlay by incorporating material that forms a
moisture barrier into only the rear primary flap portion of
one or both of Finlay’s panels 4, 6. In any event,2
Appeal No. 97-0771
Application No. 08/405,385
6
regardless of the modification intended, the examiner’s
position is not well taken.
Finlay’s shorts garment is "particularly . . . suited for
runners or joggers" (column 1, lines 5-6). As such, the
artisan would reasonably presume that it would be advantageous
to use fabric in the construction of Finlay’s garment that
provides for a certain amount of breathability. Turning to
Boll, based on the teaching thereof that prior art waterproof
garments lack adequate ventilation and that the way to
alleviate this problem is to provide an "open faced" garment,
it is our view that one of ordinary skill in the art would
consider Boll’s waterproof material to be ill suited for use
in the construction of Finlay’s garment because it would make
Finlay’s running shorts hot and uncomfortable to a runner or
jogger. Accordingly, we agree with appellant that it would
not have been obvious to one of ordinary skill in the art to
modify Finlay by incorporating into one of the panels thereof
a material which forms a barrier against moisture penetration,
as proposed by the examiner, in view of the teachings of Boll.
This constitutes a first reason necessitating reversal of the
examiner’s rejection of claims 15-20.
Appeal No. 97-0771
Application No. 08/405,385
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The closure devices called for in the last paragraph of
claim 15 are described as joining the left and right sides of
the front primary flap to the respective left and right sides
of the rear primary flap over the waist and hip areas of the
wearer. While is true that claims are to be given their
broadest reasonable interpretation in proceeding before the
PTO, this interpretation must be consistent with the
specification and construed as those of ordinary skill in the
art would construe them. See In re Bond, 910 F.2d 831, 833,
15 USPQ2d 1566, 1567 (Fed. Cir. 1990); Specialty Composites v.
Cabot Corp., 845 F.2d 981, 986, 6 USPQ2d 1601, 1604 (Fed. Cir.
1988) and In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(Fed. Cir. 1983). Here, we believe one of ordinary skill in
the art would interpret the closure device language of claim
15 as requiring the closure devices to extend a substantial
distance along the sides of the primary flaps in order to join
the front and rear primary flaps over both the waist area and
the hip area of the wearer, as now claimed. While we
appreciate that the closure fasteners 34, 35 of Finlay located
in the corners of the hourglass shape may be said to extend,
Appeal No. 97-0771
Application No. 08/405,385
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at least to some extent, along the sides of the front and rear
primary panel, it is our view, based on the above
interpretation, that this circumstance does not justify a
finding that the closure fasteners 34, 35 of Finlay satisfy
the closure device limitation of claim 15. The examiner’s
determination to the contrary is based on an unreasonable
interpretation of the claim language, in our view. In that
Boll does not overcome this deficiency of Finlay, we conclude,
as did appellant, that even if Finlay were modified in the
manner proposed by the examiner the subject matter of claim 15
would not result. This constitutes a second reason
necessitating reversal of the examiner’s rejection of claims
15-20.
In light of the foregoing, we will not sustain the
standing § 103 rejection of claims 15-20 as being unpatentable
over Finlay in view of Boll. We have also reviewed the
Guithues reference additionally relied upon by the examiner in
the rejection of dependent claim 21 but find nothing therein
that makes up for the deficiencies of Finlay and Boll
discussed above. Accordingly, we also will not sustain the
standing § 103 rejection of claim 21.
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Application No. 08/405,385
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The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-0771
Application No. 08/405,385
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LJS/sld
Appeal No. 97-0771
Application No. 08/405,385
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Steven C. Schnedler
Carter & Schnedler, P.A.
56 Central Avenue, Suite 103
P.O. Box 2985
Asheville, NC 28802