Ex parte Malmborg

Board of Patent Appeals and Interferences

Sep 10, 1998

08561463 (B.P.A.I. Sep. 10, 1998)

Application for patent filed November 21, 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not binding precedent of the Board.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. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PATTI MALMBORG
_____________
Appeal No. 98-0353
Application 08/561,4631
______________
ON BRIEF
_______________
Before CALVERT, McQUADE and STAAB, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
5. Claims 6 to 14, the other claims in the application, stand
withdrawn from consideration under 37 CFR 1.142(b) as being
directed to a nonelected invention.
Appeal No. 98-0353
Application 08/561,463
2
The claims in issue are drawn to a spout cleaning device,
and are reproduced in appellant's brief.
The references applied in the final rejection are:
Clift 2,065,886 Dec. 29,
1936
Jacobsen 2,715,745 Aug. 23,
1955
Shumway et al. (Shumway) 5,214,820 Jun.
01, 1993
Claims 1 to 5 stand finally rejected on the following
grounds:
(1) Failure to comply with 35 USC § 112, second
paragraph;
(2) Unpatentable over Clift in view of Shumway and
Jacobsen, under 35 USC § 103.
Rejection (1)
The examiner considers the claims to be indefinite for
the following reasons (answer, pages 3 and 4):
In claim 1, the phrase "exhibiting opposing broad
sides and opposing narrow sides thereon" is
confusing with respect to what sides are opposing
which sides when it is not clear how many sides are
being defined when such is not positively recited,
Appeal No. 98-0353
Application 08/561,463
3
thereby rendering the claim indefinite where the
scope of the claim cannot be determined.
Specifically, it [is] not clear whether there are
two broad sides opposed to one another along with
two narrow sides opposed to one another, or a broad
side opposed to a narrow side, thereby rendering the
claim confusing as set forth above. In claim 4, it
is not clear in which direction the curvature is
defined on the hard edge thereby rendering the
claim indefinite, where it is not clear if the
curvature is along a longitudinal direction of the
hard edge or the curvature is perpendicular to the
longitudinal direction thereby forming a rounded
edge.
The test for compliance with the second paragraph of 35
USC § 112 is "whether the claim language, when read by a
person of ordinary skill in the art in light of the
specification, describes the subject matter with sufficient
precision that the bounds of the claimed subject matter are
distinct." In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471,
476 (CCPA 1975). Considering first the language of claim 1,
we do not find the confusion asserted by the examiner. Since
the claim recites "opposing broad sides" and "opposing narrow
sides" (both plural), it is evident that more than one of each
kind of side is being claimed. This is further brought out
when the dictionary definition of "opposing" cited on page 9
Appeal No. 98-0353
Application 08/561,463
4
of the brief is considered. In fact, appellant acknowledges
on page 10 of the brief that, with regard to the opposing
sides limitations, "[s]ince the tip member must be planar and
consistent with Applicant's disclosure, only one geometry, a
regular elongated quadrilateral, fits these constraints."
Turning to claim 4, we do not find any indefiniteness.
While the curvature may be broadly recited, breadth of a claim
is not to be equated with indefiniteness. See MPEP § 2173.04.
Accordingly, we consider the bounds of the subject matter
recited in claims 1 to 5 to be distinct, and will not sustain
rejection (1).
Rejection (2)
Clift discloses a kitchen utensil which is of the same
general shape as that claimed by appellant. The blade A of
the utensil is disclosed as "flexible and made of rubber or a
suitable rubber composition" (p. 1, col. 2, lines 52 to 54),
the utensil being used "for scraping purposes in the cleaning
of pots, pans, dishes, and similar articles" (p. 1, col. 1,
lines 1 to 3). The blade has straight scraping edges 10 and
11 on each side. Shumway discloses a dish scrubber having a
round body 14 of foam material 15, there being radial grooves
Appeal No. 98-0353
Application 08/561,463
5
20 in the foam to form teeth 26 having cutting edges 21.
According to col. 2, lines 63 to 66 of the patent:
The circumferentially located cutting edges 21 and
heels 30 of the teeth 26 contact the internal
cylindrical walls of the cavity 32 [in the item of
dishware being cleaned] to provide sponge contact
cleansing action.
Jacobsen discloses a sponge for washing windows. Along one or
two corner edges there is a hard edge to serve as a squeegee.
The examiner takes the position that (answer, page 5):
It would have been obvious to one skilled in the art
to modify the blade member in Clift by using a
foamed rubber as a cleaning member as disclosed in
Shumway to achieve the benefits of sponge rubber.
Also (id., page 6):
It would have been obvious to one skilled in the art
to modify the cutting edge in Clift as modified
above by providing a solid edge to create a squeegee
effect for use in cleaning as suggested by Jacobsen
as such would enhance the cleaning abilities of the
Clift apparatus.
After fully considering the record in light of the
arguments presented in appellant's brief and the examiner's
answer, we conclude that this rejection is not well taken.
The utensil disclosed by Clift is a dish scraper, and although
Appeal No. 98-0353
Application 08/561,463
6
the blade is disclosed as being made of "rubber or a suitable
rubber compound", we do not believe that one of ordinary skill
would consider sponge rubber to be "suitable", because the
Clift utensil would then be unable to be used for its
disclosed purpose, i.e., scraping. Shumway does not provide
any suggestion or motivation to substitute sponge rubber,
because according to Shumway, the sponge provides "sponge
contact cleansing action", not scraping, and the teeth 26 do
not scrape, but rather collapse into the grooves 20 when the
handle is rotated (col. 3, lines 6 to 9). In order for the
Clift utensil to be usable for scraping, the rubber of which
it is made, while flexible, would have be stiff enough to
perform that function, and not a soft material like sponge
rubber. One of ordinary skill would not modify the Clift
utensil to make it unsuitable for its intended purpose. Cf.
Ex parte Rosenfeld, 130 USPQ 113, 115 (Bd. Apps. 1961).
The Jacobsen reference does not overcome the deficiencies
in the combination of Clift and Shumway disclosure above,
since it also provides no suggestion or motivation for making
a scraper out of sponge rubber, without which there would be
Appeal No. 98-0353
Application 08/561,463
7
no reason to go further and incorporate a hard edge. Any
suggestions to make the modifications to the Clift utensil
proposed by the examiner would appear to be based on
impermissible hindsight gleaned from appellant's own
disclosure, rather than from the knowledge in the art.
Rejection (2) will therefore not be sustained.
Conclusion
The examiner's decision to reject claims 1 to 5 under 35
USC § 112, second paragraph, and 35 USC § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 98-0353
Application 08/561,463
8
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