Ex parte Nicholson

Board of Patent Appeals and Interferences

Sep 28, 2001

08838266 (B.P.A.I. Sep. 28, 2001)

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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JEROME NICHOLSON
________________
Appeal No. 2001-0154
Application 08/838,266
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ON BRIEF
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Before ABRAMS, STAAB 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 the claims
pending in the application.
Appeal No. 2001-0154
Application No. 08/838,266
2
The appellant’s invention is a bracket system capable of
selectively supporting a curtain rod and a mini-blind. An
understanding of the appealed subject matter can be derived
form a reading of exemplary claims 1, which appears in the
appendix to the appellant’s brief.
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bellinger 4,226,395 Oct. 07,
1980
Corcoran 5,505,418 Apr. 09, 1996
The rejections
Claims 1 through 6, and 9 through 15 stand rejected under
35 U.S.C. 102(b) as being clearly anticipated by Corcoran.
Claims 7 and 8 stand rejected under 35 U.S.C. 103 as
being unpatentable over Corcoran in view of Bellinger.
Claims 16 and 17 stand rejected under 35 U.S.C. 103 as
being unpatentable over Corcoran.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
Appeal No. 2001-0154
Application No. 08/838,266
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rejections, we make reference to the examiner’s answer (Paper
No. 18) for the complete reasoning in support of the
rejections, and to the appellant’s brief (Paper No. 15) 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.
We turn first to the examiner’s rejection of claims 1
through 6, and 9 through 15 under 35 USC 102(b) as being
anticipated by Corcoran. To support a rejection of a claim
under 35 U.S.C. § 102(b), it must be shown that each element
of the claim is found, either expressly described or under
principles of inherency, in a single prior art reference. See
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Appeal No. 2001-0154
Application No. 08/838,266
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It is the position of the examiner that:
Corcoran discloses a bracket system comprising a
bracket 2 with opposed channels having received
therein a curtain rod adapter including a plate 40
and a T-shaped rod receiving member 54 adapted to
receive a valance 60 which responds to a curtain rod
for the valence 60 supports a cloth covering.
[examiner’s answer at page 4].
Appellant argues that Corcoran does not disclose a bracket
having a curtain rod adaptor shaped to receive an end of a
curtain rod. The examiner responds:
Corcoran discloses the rod receiving member 54 as
supporting a valance which has curved ends 62,64
which are slid over the arms 56, 58 of the clip 54.
The valance is cloth covered for aesthetic purposes.
Inasmuch as the valance is disclosed as supporting a
cloth it fully functions as a curtain rod for
curtain rods support cloth coverings for various
purposes including that for aesthetics. [examiner’s
answer at page 5].
While it is true that the claims in a patent application
are to be given their broadest reasonable interpretation
consistent with the specification during the prosecution of a
patent application (see In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)) and limitations from a
pending application’s specification will not be read into the
claims (see Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d
2020, 2027
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Application No. 08/838,266
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(Fed. Cir. 1988), it is also well settled that terms in a
claim should be construed as those skilled in the art would
construe them (see Specialty Composites v. Cabot Corp., 558
F.2d 1008, 1016, 6 USPQ2d 1601 (CCPA 1977).
In the instant case, the examiner has expanded the
meaning of a curtain beyond the interpretation which would
have been given to the term by a person of ordinary skill in
the art. In this regard, in our view, a curtain extends at
least the full length of a window. The valance disclosed in
Corcoran does not extend the full length of the window. The
valance of Corcoran covers only the top of the window. As
such, the bracket disclosed in Corcoran does not have a
curtain rod adapter shaped to receive the end of a curtain rod
because Corcoran discloses a valance rod not a curtain rod.
Therefore, we will not sustain the examiner’s rejection of
claim 1 and claims 2 through 6 dependent thereon. We will
likewise not sustain the rejection as it is directed to claim
9 and claim 10 dependent thereon, and claim 11 and claim 12
through 15 dependent thereon, because claims 9 and 11 both
recites “a curtain rod . . . adapted to receive an end of a
curtain rod.”
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Application No. 08/838,266
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We turn next to the examiner’s rejection of claims 7
and 8 under 35 U.S.C. 103 as being unpatentable over Corcoran
in view of Bellinger. The examiner, recognizing that Corcoran
does not disclose the use of additional rod receiving members,
relies on Bellinger for disclosing a bracket system comprising
a plurality of rod receiving members. The examiner concludes
that to incorporate this teaching into the bracket system of
Corcoran for the purpose of supporting a plurality of curtains
so as to obtain an aesthetically pleasing appearance would
have been obvious to one of ordinary skill in the art.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
We agree with the appellant that the combined teachings
of the prior art do not suggest the provision of a bracket
Appeal No. 2001-0154
Application No. 08/838,266
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system with a chamber to receive a mini-blind and a curtain
rod adaptor sized and shaped to receive an end of a curtain
rod. Instead, it appears to us that the examiner relied
on hindsight in reaching his obviousness determination.
However, our reviewing court has said, "To imbue one of
ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record
convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which
only the inventor taught is used against its teacher." W. L.
Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). It is essential that "the
decision maker forget what he or she has been taught at trial
about the claimed invention and cast the mind back to the time
the invention was made . . . to occupy the mind of one skilled
in the art who is presented only with the references, and who
is normally guided by the then-accepted wisdom in the art."
As such, we will not sustain the examiner’s rejection of claim
7 and claim 8 dependent thereon.
We turn finally to the examiner’s rejection of claims 16
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and 17 under 35 U.S.C. 103 as being unpatentable over
Corcoran. We will not sustain this rejection because Corcoran
does not disclose or suggest a bracket having a curtain rod
adaptor sized and shaped to receive an end of a curtain rod as
is recited in claim 11 from which claims 16 and 17 depend.
The decision of the examiner is reversed.
REVERSED
NEAL. E. ABRAMS )
Administrative Patent Judge )
Appeal No. 2001-0154
Application No. 08/838,266
9
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
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