Ex parte Monaco

Board of Patent Appeals and Interferences

Feb 5, 1999

08540193 (B.P.A.I. Feb. 5, 1999)

Application for patent filed October 6, 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not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN A. MONACO
__________
Appeal No. 98-1036
Application 08/540,1931
___________
ON BRIEF
___________
Before MEISTER, McQUADE, and NASE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
John A. Monaco appeals from the final rejection of
claims 1 through 14 and 21 through 26, all of the claims
pending in the application. We affirm-in-part.
Appeal No. 98-1036
Application 08/540,193
2
The invention relates to a baseboard support form for
attaching carpeting to a wall. Claims 1 and 8 are
illustrative and read as follows:
1. A baseboard support form, for use with a carpet strip,
a wall and a floor, the floor having a layer of carpet
thereon, comprising:
a) a form body, said form body having a solid inner core,
said form body also having a front, a back, a top and a
bottom, said top having a means for bending said carpet strip
over the top of said form body, said form body also having a
means for receiving and securing said carpet strip in said
form body, said form body also having a curved lower surface
permitting said carpet strip to be curved thereunder, thereby
securing said carpet strip between said form body and said
floor; and

b) a means for securing said form body to said wall.
8. A baseboard support form system, for use with a
carpet strip, a wall and a floor, the floor having a layer of
carpet thereon, comprising:
a) a form body, made of bendable material, said form body
including a face side, and a back side, and a curved upper
surface for supporting said carpet strip, said curved upper
surface having a generally semi-circular form, thereby
permitting said carpet strip to be bent thereover;
b) a groove formed in said back side to receive said
carpet strip, thereby removably securing said carpet strip
therein;
c) a curved lower surface permitting said carpet strip to
Appeal No. 98-1036
Application 08/540,193
3
be curved thereunder, thereby securing said carpet strip
between said form body and said floor; and
d) a means for securing said form body to said wall.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Mapes 2,506,030 May 2, 1950
Habrant 4,058,946 Nov. 22, 1977
Schafer et al. (Schafer) 4,730,432 Mar. 15,
1988
The appealed claims stand rejected as follows:
a) claims 4 through 7 and 11 through 14 under 35 U.S.C.
§ 112, first paragraph;
b) claims 1, 21, 22, 25 and 26 under 35 U.S.C. § 102(b)
as being anticipated by Mapes;
c) claims 23 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Mapes;
d) claims 8 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Schafer;
e) claims 2 and 3 under 35 U.S.C. § 103(a) as being
unpatentable over Mapes;
Appeal No. 98-1036
Application 08/540,193
In the final rejection (Paper No. 4), the examiner2
applied Mapes or Schafer as alternatives to support the 35
U.S.C. § 103(a) rejections of claims 2, 3 and 9. The
examiner has since withdrawn Schafer from the rejection of
claims 2 and 3 and Mapes from the rejection of claim 9 (see
pages 6 and 7 in the answer, Paper No. 9).
4
f) claim 9 under 35 U.S.C. § 103(a) as being unpatentable
over Schafer; and 2
g) claims 4 through 7 under 35 U.S.C. § 103(a) as being
unpatentable over Mapes in view of Habrant; and
h) claims 11 through 14 under 35 U.S.C. § 103(a) as being
unpatentable over Schafer in view of Habrant.
Reference is made to the appellant's brief (Paper No. 8) and
to the examiner's answer (Paper No. 9) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection of claims
4 through 7 and 11 through 14 rests on the examiner's
determination that the appellant's specification is non-
enabling with respect to the limitations in these claims
Appeal No. 98-1036
Application 08/540,193
5
relating to the means for extending the baseboard support form
or support form system around inside and outside corners of a
wall (see pages 3, 4 and 8 in the answer).
The dispositive issue with regard to enablement is
whether the appellant's disclosure, considering the level of
ordinary skill in the art as of the date of the appellant's
application, would have enabled a person of such skill to make
and use the appellant's invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). In calling into question the
enablement of the appellant's disclosure, the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. Id.
In the present case, the appellant's specification (see
pages 6 and 7) indicates that the claim limitations in
question read on elements 40, 50, 70 and 71. The examiner has
not cogently explained, nor is it apparent, why the
appellant's rather straightforward disclosure of these
elements would not have enabled a person having ordinary skill
in the art to make and use a baseboard support form or support
form system including same. Thus, the examiner has failed to
Appeal No. 98-1036
Application 08/540,193
6
meet his burden of advancing acceptable reasoning inconsistent
with enablement.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, rejection of claims 4 through 7 and 11
through 14.
With regard to the standing 35 U.S.C. § 102(b) rejection,
Mapes discloses a number of different molding strips or base
shoes which can be easily attached to and removed from a wall.
Generally speaking, these base shoes are elongated wooden
strips having a quarter-round shape. In the embodiment
illustrated in Figure 4, the base shoe 22 includes rear and
bottom grooves forming a rib 23 which is adapted to be grasped
by spring clips 24 and 25 extending from a metallic anchor
strip member 26 mounted on a base board 10.
Anticipation is established when a single prior art
reference discloses, expressly or under principles of
inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). It is not necessary that the
Appeal No. 98-1036
Application 08/540,193
7
reference teach what the subject application teaches, but only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
The examiner's finding (see page 4 in the answer) that
Mapes' base shoe 22 and its anchor strip spring clips 25 meet,
expressly or under principles of inherency, each and every
element of the invention set forth in claim 1 is well taken.
In this regard, base shoe 22 constitutes a body having a solid
inner core and a front, back, top and bottom. The curvature
at the top of the shoe and the groove at the rear provide full
response under principles of inherency to the recitations of
the means for bending a carpet strip over the top of the body
and the means for receiving and securing the carpet strip in
the body, respectively. The shoe 22 also has a curved lower
surface which is inherently capable of permitting a carpet
strip to be curved thereunder. Anchor strip 26 and its spring
clips 25 constitute means for securing the body to a wall.
The appellant's position that the examiner has improperly
Appeal No. 98-1036
Application 08/540,193
8
combined the various base shoe embodiments disclosed by Mapes
to
support the anticipation rejection of claim 1 (see pages 11
through 13 in the brief) is not persuasive. Although the
examiner's explanation of the manner in which Mapes is applied
to
support the rejection could have been clearer, it reasonably
indicates that the examiner considers claim 1 to be
anticipated by Mapes' Figure 4 embodiment.
Accordingly, we shall sustain the standing 35 U.S.C.
§ 102(b) rejection of claim 1 as being anticipated by Mapes.
In the brief, the appellant states that "[f]or purposes
of this appeal, claims 1-7 and 21-25 stand together as one
group and claims 8-14 stand together as a second group. These
groupings apply to all issues related to the specific claims"
(page 6). In this light, we also shall sustain the standing
35 U.S.C. § 102(b) and 35 U.S.C. § 103 rejections of claims 2
through 7 and 21 through 26 which depend from, and stand or
fall with, claim 1.
Appeal No. 98-1036
Application 08/540,193
9
We shall not sustain, however, the standing 35 U.S.C. §
103 rejections of claim 8 or of claims 9 through 14 which
depend therefrom.
Claim 8 recites a baseboard support form system
comprising, inter alia, a form body which includes a curved
lower surface permitting the carpet strip to be curved
thereunder. Although Schafer discloses a molding track 10
which constitutes a
baseboard support form, this reference does not teach, and
would not have suggested, a molding track having a curved
lower surface as required by claim 8. The examiner's
contention that the bottom 13 of the Schafer track is the
"functional equivalent" of a curved lower surface (answer,
page 5), even if true, is simply of no moment. Expedients
which are functionally equivalent to each other are not
necessarily obvious in view of one another. In re Scott, 323
F.2d 1016, 1019, 139 USPQ 297, 299 (CCPA 1963).
Habrant, applied in combination with Schafer in the 35 U.S.C.
§ 103 rejection of dependent claims 11 through 14, fails to
Appeal No. 98-1036
Application 08/540,193
10
cure this deficiency in Schafer.
In summary and for the above reasons, the decision of the
examiner to reject claims 1 through 14 and 21 through 26 is
affirmed with respect to claims 1 through 7 and 21 through 26
and reversed with respect to claims 8 through 14.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
Appeal No. 98-1036
Application 08/540,193
11
AFFIRMED-IN-PART
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/pgg
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