Ex Parte Mattson

Board of Patent Appeals and Interferences

Jan 25, 2005

10074154 (B.P.A.I. Jan. 25, 2005)

The opinion in support of the decision being entered today was not written for publication and is
not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BRIAN M. MATTSON
_______________
Appeal No. 2005-0121
Application No. 10/074,154
_______________
ON BRIEF
_______________
Before FRANKFORT, MCQUADE, and NASE, Administrative Patent Judge.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Brian M. Mattson originally took this appeal from the final rejection of claims 1 through
7, all of the claims pending in the application. As the examiner has since withdrawn the only
rejection of claim 2, the appeal as to this claim is hereby dismissed, leaving for review the
standing rejections of claims 1 and 3 through 7. Presumably, claim 2 now stands objected to as
depending from a rejected base claim.
Appeal No. 2005-0121
Application No. 10/074,154
2
THE INVENTION
The invention relates to “a securable mousepad having a hidden writing surface as well
as a method of using the same” (specification, page 1). Representative claims 1 and 5 read as
follows:
1. An apparatus for storing information, the apparatus comprising:
a mousepad having an opaque top layer;
a surface on which the information is written wherein the surface is situated below the
opaque top layer of the mousepad in a first position wherein the surface has a planar area
substantially equal in size to a planar area of the opaque top layer; and
a tray that slides to a second position to expose the surface on which the information is
written from under the opaque top layer of the mousepad.
5. A method for using a mousepad and for storing information, the method comprising
the steps of:
providing a mousepad having an opaque top layer and a surface on which the information
is written below the opaque top layer of the mousepad in a first position wherein the opaque top
layer has a surface area substantially equal in size to a surface area of the surface on which the
information is written; and
providing a tray that slides between the first position and a second position wherein the
second position exposes the surface on which the information is written from under the opaque
top layer of the surface on which the information is written.
THE REJECTIONS
Claims 1 and 3 through 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over U.S. Patent No. 5,692,815 to Murphy.
Claims 1 and 3 through 7 also stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1 through 10, 12 through 14 and 17 of
Appeal No. 2005-0121
Application No. 10/074,154
1 The record indicates that the instant application is a continuation-in-part of Application
No. 09/572,214.
2 Appended to the main brief as Exhibit B are copies of claims 1 through 10, 12 through
14 and 17 in Application No. 09/572,214. The examiner has not disputed the accuracy of these
copies.
3
co-pending Application No. 09/572,214 in view of Murphy.1
Attention is directed to the main and reply briefs (Paper Nos. 10 and 13) and the answer
(Paper No. 12) for the respective positions of the appellant and the examiner regarding the merits
of these rejections.2
DISCUSSION
I. The 35 U.S.C. § 103(a) rejection of claims 1 and 3 through 7 as being unpatentable over
Murphy
Murphy discloses a mouse pad and item holder 10 comprising a base 12 having a top
surface which includes a mouse tracking area 20, a bottom surface 22, a plurality of sides 15, 16,
17 and 18, and a hollow interior 24. The hollow interior defines a plurality of compartments
accessible through openings 28, 30, 32 and 34 in the sides. The compartments may hold any
number of useful items either directly or via drawers. One such drawer embodies a slidable tray
38 for Post-it® notes or other types of paper 40.
As implicitly conceded by the examiner, Murphy does not meet the limitations in
independent claims 1 and 5 requiring the surface on which information is written to have a
planar or surface area substantially equal in size to the planar or surface area of the opaque top
layer. Figures 1 and 3 show that Murphy’s surface on which information is written (paper 40)
Appeal No. 2005-0121
Application No. 10/074,154
4
has a planar or surface area substantially smaller in size than the planar or surface area of
Murphy’s opaque top layer (mouse tracking area 20). The examiner nonetheless submits that
Murphy [suggests] the number of compartments could be any (therefore could be
just one, see column 2 lines 60-61 and column 3 lines 33-36). Hence, it would
have been obvious for one of ordinary skill in the art at the time of the invention
to use only one tray with an area substantially equal to the area of the top surface
when only [the] storage tray for the notepad is needed by the user so as to
increase the storage area for the notepad or other paper, simplify the
manufacturing process and therefore reduce the cost. It has been held to be
within the general skill of a worker in the art to make plural parts unitary as a
matter of obvious engineering choice [answer, page 6; also see page 7 in the
answer].
Murphy, however, would not have suggested modifying the mouse pad and item holder
disclosed therein so as to have only one compartment and tray. The portions of the Murphy
disclosure cited by the examiner simply do not support a conclusion to the contrary. Instead,
Murphy actually touts the benefits of a mouse pad and item holder having a plurality of
compartments for holding a variety of different items. Moreover, even if the artisan would have
found it obvious to provide the Murphy mouse pad and holder with only a single compartment
and tray which holds paper, the reference provides no suggestion to size such tray and paper so
as to result in a surface on which information is written having a planar or surface area
substantially equal in size to the planar or surface area of the opaque top layer.
Hence, Murphy does not justify the examiner’s conclusion that the differences between
the subject matter recited in claims 1 and 5 and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having ordinary
Appeal No. 2005-0121
Application No. 10/074,154
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skill in the art.
Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
independent claims 1 and 5, and dependent claims 3, 4, 6 and 7, as being unpatentable over
Murphy.
II. The provisional obviousness-type double patenting rejection of claims 1 and 3 through 7 over
claims 1 through 10, 12 through 14 and 17 of co-pending Application No. 09/572,214 in view of
Murphy
This rejection is unsound on its face due to the examiner’s failure to analyze each of the
rejected claims vis-a-vis individual ones of the co-pending claims of Application No.
09/572,214.
On a more substantive level, in explaining the rejection the examiner seems to have
confused the subject matter recited in the rejected claims with that recited in the claims of
Application No. 09/572,214 (see the sentence bridging pages 3 and 4 in the answer). Suffice to
say, however, that none of the claims in Application No. 09/572,214 contains limitations
corresponding to those in rejected independent claims 1 and 5 relating to the tray and to the
substantially equal planar or surface area sizes. The examiner’s reliance on Murphy to overcome
these deficiencies is ill founded for the reasons discussed above in connection with the § 103(a)
rejection.
Consequently, we also shall not sustain the standing provisional obviousness-type double
patenting rejection of claims 1 and 3 through 7 over claims 1 through 10, 12 through 14 and 17
of co-pending Application No. 09/572,214 in view of Murphy.
Appeal No. 2005-0121
Application No. 10/074,154
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SUMMARY
The decision of the examiner to reject claims 1 and 3 through 7 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEAL AND
Administrative Patent Judge ) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-0121
Application No. 10/074,154
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