Ex parte MORRIS

Board of Patent Appeals and Interferences

Sep 29, 2000

08766862 (B.P.A.I. Sep. 29, 2000)

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publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHANNON S. MORRIS
____________
Appeal No. 2000-0293
Application No. 08/766,862
____________
ON BRIEF
____________
Before FRANKFORT, GONZALES, and CRAWFORD, Administrative Patent Judges
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 17, which are all of the claims pending
in this application.
The appellant's invention relates to a jewelry organizer. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which appears in the appendix to the appellant's
brief.
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Application No. 08/766,862
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The prior art
The prior art references of record relied upon by the examiner
in rejecting the appealed claims are:
Martire Jr. 2,878,932 Mar. 24, 1959
Coon 4,632,351 Dec. 30, 1986
Gatt 4,944,398 Jul. 31, 1990
Grusin 5,040,681 Aug. 20, 1991
The rejections
Claims 1 through 17 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which appellant
regards as the invention.
Claims 1, 2, 4 through 8, and 12 through 17 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Martire in view of
Gatt and Grusin.
Claims 3 and 9 through 11 stand rejected under 35 U.S.C. §
103 as being unpatentable over Martire, Gatt and Grusin as applied to
claims 2 and 8 above, and further in view of Coon.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 12, mailed June
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Application No. 08/766,862
Page 3
2, 1999) for the examiner's complete reasoning in support of the
rejections, and to the appellant's brief (Paper No. 11, filed
March 10, 1999) and reply brief (Paper No. 13, filed August 4,
1999) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to the appellant's specification and claims, to the
applied prior art references, and to the respective positions
articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The examiner has rejected claims 1 through 17 under 35 U.S.C. §
112, second paragraph. The second paragraph of 35 U.S.C. § 112
requires claims to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re Johnson, 558
F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always in light of the
teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art. Id.
Appeal No. 2000-0293
Application No. 08/766,862
Page 4
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in the
manner of expression and the aptness of terms is permitted even
though the claim language is not as precise as the examiner might
desire. If the scope of the invention sought to be patented cannot
be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112,
second paragraph, is appropriate.
As noted by the Court in In re Swinehart, 439 F.2d 210, 212-
13, 160 USPQ 226, 229 (CCPA 1971), a claim may not be rejected solely
because of the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we analyze the specific rejections
under 35 U.S.C. § 112, second paragraph, made by the examiner of the
claims on appeal. The examiner states that:
Regarding claims 1, 8 and 14, the phrase “such
as” renders the claims indefinite because it is
unclear whether the limitations following the
phrase are part of the claimed invention. . .
In claim 2, the phrase “plate-like” is
Appeal No. 2000-0293
Application No. 08/766,862
Page 5
indefinite because it is not clear as to what
structure is encompassed or excluded by such
term “like”. [examiner’s answer at page 4].
The specification teaches that the jewelry organizer of the
invention has an upper surface 12 for storing and displaying several
types of jewelry (Specification at page 1). The specification
indicates that the jewelry that is stored in the organizer may be
necklaces, earrings, watches, bracelets and rings (Specification at
page 3). We agree with the appellant that a person of ordinary skill
in the art would have understood the term “such as” in claims 1, 8
and 14 to indicate examples of the types of jewelry that can be
stored in the organizer. As such, in our view, the scope of claims
1, 8, and 14 can be determined with a reasonable degree of certainty.
Therefore, we will not sustain the examiner’s rejection of
claims 1, and 4 through 17 as being indefinite under 35 U.S.C. §
112, second paragraph.
In regard to the language “plate-like structure” in claim 2, we
are of the opinion that the scope of the claimed subject matter
cannot be determined from this language with a reasonable degree of
certainty. Specifically, it is not clear whether this language
refers to dinner plate structure, flat rectangular plate structure,
picnic plate structure which includes compartments or some other
Appeal No. 2000-0293
Application No. 08/766,862
Page 6
plate structure. As such, we agree with the examiner that the
language of claim 2 does not satisfy the requirements of 35 U.S.C. §
112, second paragraph.
Therefore, we will sustain the examiner’s rejection under 35
U.S.C. § 112, second paragraph, of claim 2 and claim 3 dependent
thereon.
We turn next to the examiner’s rejection of claims 1, 2, 4
through 8 and 12 through 17 as being unpatentable under 35 U.S.C. §
103 over Martire in view of Gatt and Grusin. The examiner has relied
on Martire for teaching the invention substantially as claimed except
that Martire does not disclose a knob protruding upward from the
upper surface. The examiner relies on Gatt and Grusin for teaching a
knob protruding upward from the upper surface. The examiner
concludes:
It would have been obvious to one having
ordinary skill in the art in view of Gatt and
Grusin to modify the organizer of Martire ‘932
so the knob is protruded upwardly from the
upper surface with a recess formed in the lower
surface of the body to facilitate stacking, and
better securing the trays within the stack
during shipping or storage. [examiner’s answer
at page 6]
Appellant argues that the Martire tray already has means for
stacking the trays in that Martire discloses a substantially planar
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Application No. 08/766,862
Page 7
surface 4 with an upturned peripheral edge portion 6 that permits the
trays to be stacked on top of one another. As such, appellant argues
that it would have been pointless to consider adding a knob in the
upper surface of the Martire tray for purposes of stacking.
We agree with the appellant that there would be no motivation
to include a knob in the upper surface of the Martire tray as taught
by Gatt and Grusin to facilitate stacking because the Martire tray is
already stackable (See Col. 3, lines 58 to 61). In addition, we note
that Martire teaches that one of the advantages of the tray therein
disclosed is its flexibility to be used as a standard tray and not be
rigidly limited to the relative positions of the food receptacles on
the tray (Col. 2, lines 11 to 14). As such, in our view, a person of
ordinary skill in the art would not be motivated to modify the
Martire tray so as to have a knob in its upper surface, because such
modification would reduce the ability of the tray to be used as a
standard tray and limit the positions in which the food receptacles
could be placed on the tray.
Therefore, we will not sustain the examiner’s rejection of
claims 1, 2, 4 through 8 and 12 through 17 under 35 U.S.C. § 103 as
being unpatentable over the teachings of Martire, Gatt and Grusin.
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Application No. 08/766,862
Page 8
We turn now to the examiner’s rejection of claims 3 and 9
through 11 under 35 U.S.C. § 103 as being unpatentable over Martire,
Gatt and Grusin and further in view of Coon. We have examined the
disclosure of Coon and find that Coon does not cure
the deficiencies discussed above for the combination of Martire, Gatt
and Grusin. Therefore, we will not sustain this rejection.
New ground of rejection
Under the authority of 37 CFR § 1.196(b), this panel of the
board introduces the following new ground of rejection.
Claims 1 and 8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Grusin. Grusin discloses a body 18 having an upper
surface and a lower surface. A knob 30 protrudes upwardly from the
upper surface. At least one compartment 34 defined by an elongated
channel surrounding the knob is formed in the upper surface. A
substantially flat outer rim (upper surface 32 and/or rib 38,40)
surrounds the periphery of compartment 34. A recess is formed in the
lower surface of body 18 wherein the recess and knob provide means
for stackable configuration (See Col. 3, lines 26-29).
Remand to the Examiner
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Application No. 08/766,862
Page 9
This application is remanded to the Primary Examiner for
consideration of the patentability of claims 2 through 7 and 9
through 17 in view of the teachings of Grusin alone or in combination
with other relevant prior art references.
In summary:
(1) The examiner’s rejection of claims 1 and 4 through 17 under
35 U.S.C. § 112, second paragraph, is not sustained.
(2) The examiner’s rejection of claims 2 and 3 under 35 U.S.C.
§ 112, second paragraph, is sustained.
(3) The examiner’s rejection of claims 1, 2, 4 through 8, and
12 through 17 under 35 U.S.C. § 103 as being unpatentable over
Martire in view of Gatt and Grusin is not sustained.
(4) The examiner’s rejection of claims 3 and 9 through 11 under
35 U.S.C. § 103 as being unpatentable over Martire, Gatt and Grusin
and further in view of Coon is not sustained.
(5) Claims 1 and 8 are rejected pursuant to our authority under
37 CFR § 1.196(b).
(6) The application is remanded to the examiner.
Appeal No. 2000-0293
Application No. 08/766,862
Page 10
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b) and a remand pursuant to 37 CFR §
1.196(e).
37 CFR § 1.196(b) provides that, "[a] new ground of rejection
shall not be considered final for purposes of judicial review."
37 CFR § 1.196(e) provides that:
[w]henever a decision of the Board of Patent
Appeals and Interferences includes or allows a
remand, the decision shall not be considered a
final decision. When appropriate, upon
conclusion of proceedings on remand before the
examiner, the Board of Patent Appeals and
Interferences may enter an order otherwise
making its decision final.
Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within
two months form the date of the original decision. . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to
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Application No. 08/766,862
Page 11
avoid termination of proceedings (§ 1.197(c)) as to the rejected
claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded
to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a mere
incident to the limited proceedings, the affirmed rejection is
overcome. If the proceedings before the examiner do not result in
allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and
Interferences for final action on the affirmed rejection, including
any timely filed request for rehearing thereof.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
Appeal No. 2000-0293
Application No. 08/766,862
Page 12
AFFIRMED-IN-PART AND REMANDED
37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN F. GONZALES ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC:pgg
Gary A. Clark
Sheppard Mullin Richter & Hampton
333 South Hope Street 48th Floor
Los Angeles, CA 90071-1448