Ex Parte Nien

Board of Patent Appeals and Interferences

Mar 24, 2006

10460478 (B.P.A.I. Mar. 24, 2006)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MING NIEN
____________

Appeal No. 2006-0172
Application No. 10/460,478
____________

HEARD: February 22, 2006
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 through 9
and 13 through 15. As noted on page 2 of the brief, the rejection of claim 12 is “not
being appealed.” Claims 10 and 11, the only other claims remaining in the application,
stand allowed.

Appellant’s invention is directed to a venetian type blind window covering having
fabric slats (22) and light screening fabric flaps (26) attached to and suspended from
one or both edges of the slats to form a light screening face at one of the front and back
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sides of the slats. When the slats (22) are in their open position as seen, for example,
in Figures 1 through 3, the light screening fabric flaps (26) hang down and cover the
space between the slats thereby providing a light screening face (29) that “screens and
softens the light, producing a tender and pleasant lighting atmosphere in the room”
(specification, page 8). Independent claims 1 and 13 are representative of the subject
matter on appeal and a copy of those claims may be found in the “Claims Appendix”
attached to appellant’s brief.

The prior art references relied upon by the examiner in rejecting the claims on
appeal are:
Kandel 3,490,515 Jan. 20, 1970
Zorbas 5,829,506 Nov. 3, 1998

Claims 1 through 9 and 13 through 15 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zorbas in view
of Kandel.

Rather than attempt to reiterate the examiner's commentary with regard to the
above-noted rejection and the conflicting viewpoints advanced by appellant and the
examiner regarding the rejection, we make reference to the answer (mailed May 26,
2005) for the examiner's reasoning in support of the rejection, and to appellant’s brief
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Application No. 10/460,478

3
(filed March 9, 2005) and Reply Brief (filed July 28, 2005) for the arguments
thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.

Like the examiner, we note that Zorbas discloses a venetian type blind window
covering comprising a head rail or box (32), a bottom rail (52) arranged parallel to and
spaced below the head rail, a plurality of fabric slats (10) each having long front and
rear sides and two ribs (24) respectively embedded in the front and rear sides, ladder
tape sets (38, 39) connected to and supporting the slats, and a control unit (34, 36) for
operation by the user to lift and lower the bottom rail, and to move the front and rear
ladder tapes relative to one another to facilitate tilting of the slats. Zorbas does not
disclose any light screening fabric flaps suspended from the slats.
To address that aspect of the claimed subject matter the examiner turns to Kandel,
which patent discloses a venetian blind wherein each horizontal slat (10) is provided
with a detachably mounted “screening element” generally comprising a base (16) and a
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Application No. 10/460,478

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fringe (18) attached to the base. As can be seen in Figure 1, the fringe (18) hangs
across and covers the space between the slats and provides a screen when the slats
are in their open position to afford a degree of privacy, while at the same time permitting
ventilation through the blind and reducing or eliminating the glare of the direct sun.
Kandel also notes that the screening elements provide an attractive decorative effect
in both the open and closed positions of the blind. See, for example, the Abstract, col.
1, lines 35-40, column 1, lines 69-71, and column 3, lines 27-30. At column 2, lines 14-
17, it is expressly indicated that each screening element comprises a base (16) to the
outer edge of which are attached fringed strands (18) “which, if desired, may comprise
solid material rather than separated strands.” That passage goes on to note that both
the base and the strands may be made of a suitable fabric, plastic or other flexible
material.

In considering the combined teachings of Zorbas and Kandel, the examiner has
concluded that it would have been obvious to one of ordinary skill in the art at the time
of appellant’s invention to modify the fabric slats of the venetian blind of Zorbas by
providing them with screening elements like those of Kandel so as to secure the
benefits taught in Kandel, e.g., improved privacy when the slats are in their open
position, while at the same
time permitting ventilation through the blind and obscuring the
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glare of the direct sun. As for the particular requirement in appellant’s independent
claims 1 and 13 that the screening flaps be made of “mesh fabric through which light
may pass,” the examiner relies on the disclosure at column 2, lines 12-20 of Kandel,
urging that the patentee clearly contemplated an embodiment of the venetian blind
therein that utilized a solid fabric panel to define the “screening elements” instead of the
separated strand fringe arrangement seen in the drawings of the patent. The examiner
further concluded that the disclosure in Kandel of a “suitable fabric” for the screening
elements would have been suggestive to one of ordinary skill in the art of a “mesh
fabric.” We agree with the examiner.

Given the disclosure in Kandel that the screening elements attached to the blind
slats are intended to provide “a screen when the slats are in their open position while at
the same time permitting ventilation through the blind” (Abstract, emphasis added), and
that the screening elements (whether in the form of a fringe or the fabric panel
suggested at column 2, lines 14-17) “screens the openings between the slats to insure
privacy[.]” and “[a]t the same time... permits adequate ventilation and obscures the glare
of the direct sun” (col. 3, lines 27-30), we concur with the examiner that one of ordinary
skill in the art at the time of appellant’s invention would have immediately envisioned
some form of “mesh” fabric as being a “suitable fabric” from which to make the solid
material blind screening elements alluded to at column 2, lines 14-17 of Kandel. Only
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some form of “mesh” fabric would meet all of the requirements imposed by Kandel on
the screening elements, i.e., the need for providing some level of privacy, while at the
same time ensuring adequate ventilation through the blind and obscuring the glare of
the direct sun.

Contrary to appellant’s assertions in the brief (page 4), we find no basis to conclude
that one skilled in the art would have combined the teachings of Zorbas and Kandel to
arrive at a venetian type blind having a fringe on the fabric slats “which fringe does not
allow light to pass, but rather obscures the opening between the slats to afford privacy.”
In our view, such an arrangement is contrary to the clear teachings of Kandel and is
belied by the open nature of the fringe seen in Figures 1, 3 and 4 of the patent. We also
again note the disclosure in the Abstract and at column 3, lines 27-30 of the Kandel
patent that the fringe or “screening elements” provide a screen when the slats are in
their open position to afford a level of privacy, but nonetheless, at the same time permit
adequate ventilation through the blind and obscure the glare of the direct sun. There is
simply no disclosure or teaching in Kandel of a “screening element” that would not allow
light to pass, as appellant has argued in the brief.

Appellant’s further argument in the brief (page 5) that Zorbas does not teach or
suggest the limitation in claim 1 of the ribs in the slats being fastened to the ladders, is
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also not well founded. As the examiner has pointed out, and appellant has conceded,
Zorbas discloses and shows in Figures 2a and 2b that the fabric edges of the slats are
affixed to the ladders. Since the ribs (24) are carried in the pockets (14) on the edges of
the fabric slats, it follows that the ribs (24) are indirectly fastened to the ladder members
by the connection between the fabric slats and the ladder members. We do not see that
claim 1 requires any more. In addition, we direct attention to the portion of appellant’s
specification spanning pages 5 and 6, wherein it is expressly noted that “because the
connection between the ladder tapes and the ribs in the slats is of the known art not
within the scope of the claims of the present invention, no further detailed description in
this regard is necessary.”

In light of the foregoing, we will sustain the examiner’s rejection of independent
claims 1 and 13 under 35 U.S.C. § 103(a) based on the combined teachings of Zorbas
and Kandel. Given appellant’s lack of any argument for the separate patentability of
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dependent claims 2 through 8 and 14, we conclude that those claims will fall with their
respective independent claims1.

1 In the event of any further prosecution of the present application, we direct
attention to the admitted prior art seen in Figures 13 and 14 of the application and to the
description
thereof on pages 1 and 2 of the specification. It appears that the fabric sheets or flaps
(92) suspended from the slats of the venetian type blind of the admitted prior art are
similar to, if not identical to, those of the present invention, in that they are constructed
of a fabric which facilitates the passage of light and defines “a light screening face at the
front sides of the slats 91” (page 1, lines 24-25).

Concerning dependent claims 9 and 15, appellant argues that there is no teaching or
suggestion in Kandel to provide a rib
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in the second long side of the screening element or flap that extends from the slat, as
required in the claims on appeal. We agree with appellant and for that reason will not
sustain the examiner’s rejection of claims 9 and 15 under 35 U.S.C. § 103(a).

To summarize, the examiner’s rejection of claims 1 through 8, 13 and 14 under 35
U.S.C. § 103(a) relying on Zorbas and Kandel has been sustained, while the rejection of
claims 9 and 15 under 35 U.S.C. § 103(a) based on the same patents has not been
sustained. Thus, the decision of the examiner is affirmed-in-part.

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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
JENNIFER D. BAHR )
Administrative Patent Judge )

Appeal No. 2006-0172
Application No. 10/460,478

11
CRAWFORD, Administrative Patent Judge, Concurring-in-Part and Dissenting-in-Part.
I respectfully dissent as to the affirmance of the rejection of claims 1 through 8,
13 and 14. Claims 1 and 13, from which claims 2 through 8 and 14 depend each
requires that the light screening flap be made of a mesh fabric. In my view, flaps made
of mesh fabric are neither taught nor suggested by the prior art.
The examiner relies on Kandel for teaching or suggesting a mesh fabric and
states:
. . . Kandel '515 explicitly sets forth that the fringe may
comprise solid material rather than separated strands and
that the material may be made of a suitable fabric, plastic,
thin metal or other flexible material. This teaching clearly
encompasses mesh fabric which is a common fabric.
(emphasis added)[answer at page 4].

It is true that Kandel discloses that the strands depicted in Figure 1 may be
replaced by a solid fabric. However there is no teaching in Kandel that the solid fabric
comprises a mesh fabric.
In addition, it is my view that Kandel does not suggest a mesh fabric. While the
majority is correct that Kandel discloses that the strands themselves may be made of
any suitable fabric, Kandel neither discloses nor suggests anything concerning the type
of solid material that may replace the strands. Kandel only states that the strands may
be replaced by a solid material. As such, in my view the only suggestion for replacing
the strands with a mesh material stems from hindsight knowledge derived from the
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appellant's own disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C.
§ 103, is of course, impermissible, See, for example, W.L Gore and Assoc., Inc. V.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983). cert.
denied, 469 U.S. 851 (1984).
For the foregoing reasons, it is my view that the examiner's rejection of claims 1
through 8, 13 and 14 should not be sustained.

)BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES

Appeal No. 2006-0172
Application No. 10/460,478

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LYNN J. ALSTADT P.C. BUCHANAN INGERSOLL ONE OXFORD CENTRE FLOOR 301 GRANT STREET 20THITTSBURGH, PA 15219 P

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