Ex parte Okonsky

Board of Patent Appeals and Interferences

Dec 10, 1999

08828375 (B.P.A.I. Dec. 10, 1999)

Application for patent filed March 28, 1997. According to the1
appellant, the application is a continuation of Application No. 08/391,546,
filed February 21, 1995, now abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TERESA M. OKONSKY
____________
Appeal No. 1999-0636
Application No. 08/828,3751
____________
ON BRIEF
____________
Before COHEN, FRANKFORT and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 7 through 10, 16, 18, 20, 21 and 24
through 28. Claims 26 and 27 were amended (see Paper No. 20
and Paper No. 21) after the final rejection. Claims 1 through
Appeal No. 1999-0636
Application No. 08/828,375
5, 22 and 23, the only other claims remaining in the
application, have been indicated as allowable by the examiner.
Appeal No. 1999-0636 Page 3
Application No. 08/828,375
The copy of claim 20 in the appendix is an inaccurate reproduction of2
the claim of record in that, in line 4, "than" should be "that."
BACKGROUND
The appellant's invention relates to an expandable
partition kit or gate assembly which is adapted to be mounted,
in one embodiment, into a wall or, in another embodiment, onto
a finished wall. The assembly includes a housing for storing
the expandable gate in collapsed form. The expandable gate
may be in the form of an accordion gate (2), as illustrated in
Figures 1, 2 and 5 or a rollable netting/fabric/material
stored on a spool within the housing, as illustrated in
Figures 6 through 8. A copy of the claims on appeal is
contained in the appendix to the appellant's brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Martinek 1,882,331 Oct. 11, 1932
La Mell et al. (La Mell) 4,160,972 Jul. 10,
1979
Johnston 4,821,786 Apr. 18, 1989
A reference made of record by this panel of the Board is:
Christison 2,455,112 Nov. 30, 1948
The following rejections are before us for review.
Appeal No. 1999-0636 Page 4
Application No. 08/828,375
1. Claims 16, 18, 20, 21, 24 and 26 through 28 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Martinek.
2. Claims 7, 8, 10 and 25 stand rejected under 35 U.S.C. §
103 as being unpatentable over Martinek in view of La Mell.
3. Claims 9 and 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Johnston in view of La Mell.
Reference is made to the brief (Paper No. 19) and the
answer (Paper No. 22) for the respective positions of the
appellant and the examiner with regard to the merits of these
rejections.
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 anticipation rejection
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Application No. 08/828,375
While the reference numeral 11 as shown in Figures 2 and 6 appears to3
be directed at this structure, the reference numeral 11 in Figures 1 and 3
appears to be directed more to the recess or cavity disposed within the shell-
like structure.
Turning first to the examiner's rejection of independent
claim 20 as being anticipated by Martinek, the examiner finds
that
Martinek discloses an expandable partition
comprising a housing means 11, an expandable stiff
partition 16,17,18,19, and a panel means 44.
Inasmuch as the links 18 are secured by pivots 19 to
the vertical bars 17 which are in turn secured to
the housing, the claim recitation "said partition
being pivotably secured to said housing means" is
fully met [answer, page 3].
Appellant argues, inter alia, that (1) "pocket 11" is not
a "housing means" as recited in claim 20 (brief, page 10) and
(2) the Martinek gate (16) is not "pivotably secured to said
housing means" as required by the claim (brief, pages 10
through 12).
As to the appellant's first argument, we find that
Martinek's Figures 1 through 3 and 6 clearly illustrate a
shell-like structure attached to the wall (10) to line at3
least the upper and side faces of the recess in the wall.
That this structure is distinct from the wall itself is
Appeal No. 1999-0636 Page 6
Application No. 08/828,375
evident from the different cross-hatching used by Martinek.
Notwithstanding that Martinek does not refer to this structure
as a "housing" or "housing means," we agree with the examiner
that this shell-like structure responds to the "housing means"
limitation of claim 20.
We do, however, agree with the appellant's second
argument that the gate (16) of Martinek is not "pivotably
secured to said housing means." While we appreciate that flat
bars (18) of Martinek's gate are pivotably mounted to vertical
bars (17) of the gate so as to permit folding and expansion of
the gate, we note that the pivotable securement of portions of
the gate to other portions of the gate does not meet the claim
limitation that the gate be pivotably secured to "said housing
means." Based on our review of Martinek, it appears that the
gate (16) is fixedly (not pivotably) secured at one end (end
bar 24) relative to the shell-like structure via a frame (12)
and fixed member
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Application No. 08/828,375
Anticipation under 35 U.S.C. § 102 is established only when a4
single prior art reference discloses, either expressly or under the principles
of inherency, each and every element of a claimed invention. See RCA Corp. V.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984).
(26). Therefore, we have determined that Martinek does not
anticipate the subject matter of claim 20 or claims 16, 18, 24
and 26 through 28 which depend from claim 20.4
Accordingly, we reverse the examiner's decision to reject
claims 20, 16, 18, 24 and 26 through 28 under 35 U.S.C. §
102(b) as being anticipated by Martinek.
Turning next to the examiner's 35 U.S.C. § 102(b)
rejection of claim 21, Martinek discloses a "housing means"
(the shell-like structure as discussed above and incorporated
herein), the outermost edge surface of the "housing means"
forming a plane, and an expandable partition (gate 16) stored
within the "housing means." The gate (16) is expandable well
beyond, or to the right of in Figure 1, the outermost edge
surface of the shell-like "housing means." Therefore, from
our viewpoint, the gate is expandable "about" an arbitrary
axis (e.g., the axis running through the sixth vertical bar 17
from the left) located to the right of (beyond) the outermost
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Application No. 08/828,375
It is well settled that the particular feature or fact upon which an5
applicant predicates patentability must not only be disclosed in the
specification but also brought out in the claims. See In re Richards, 187
F.2d 643, 645, 89 USPQ 64, 66 (CCPA 1951).
surface of the "housing means" and to the left of the right
end of the gate (16) in Figure 1.
Therefore, while we have carefully considered the
appellant's argument on pages 14 and 15 of the brief, we do
not find it persuasive. To the extent that the appellant's
argument is that the Martinek gate does not pivot in addition
to expanding linearly, we emphasize that claim 21 does not
recite any pivoting or pivotable securement of the gate.
Accordingly, such a feature cannot be relied upon for
patentability of claim 21.5
Accordingly, we shall sustain the examiner's rejection of
claim 21.
The obviousness rejections
Martinek discloses an expandable gate assembly comprising
a "housing means" (the shell-like structure as discussed above
and incorporated herein) and an expandable gate (16) stored in
the "housing means." With regard to claim 25, Martinek lacks
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Application No. 08/828,375
a teaching that the gate has a height "less than approximately
50 inches" and "an alarm activated by movement of said gate."
Regarding the height of the gate, the examiner's position
is that the specific height of the gate is not seen as
constituting a patentable distinction because one having
ordinary skill in the art would have readily recognized such a
dimensional decision as a matter of design engineering choice
(answer, pages 3 and 4). The appellant, on the other hand,
asserts that "[t]here is no reason to believe that anyone
would be motivated to reduce the size of MARTINEK to less than
approx. 50 inches" (brief, page 16). We agree with the
examiner.
One of ordinary skill in the art reading the Martinek
disclosure would have understood that the disclosed gate
assembly is intended to form a retractable barrier across an
opening and would have appreciated that the dimensions of the
gate must be determined by the particular opening sought to be
closed. Further, we find absolutely no teaching or suggestion
by Martinek that the disclosed gate is suitable only for
openings of 50 inches or more in height. Moreover, the
appellant has not alleged or shown that the claimed height
Appeal No. 1999-0636 Page 10
Application No. 08/828,375
See In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).6
solves any stated problem. Accordingly, we agree with the
examiner that the particular height of the gate would have
been an obvious matter of design choice within the skill of
the art.6
The examiner contends that it would have been obvious to
incorporate an audible alarm on the Martinek gate to detect
unauthorized movement of the gate, in view of the teaching by
La Mell to provide an alarm on a barrier (answer, page 3).
The appellant argues on pages 15 through 17 of the brief that
the combined teachings of Martinek and La Mell would not have
suggested provision of an alarm on the Martinek gate because
(1) Martinek is designed to prevent movement and block passage
and thus does not need an alarm and (2) the alarm of La Mell
is adapted (by the incorporation of a delay circuit) for use
with freely movable barrier members and thus would not have
suggested provision of an alarm on the rigid gate assembly of
Martinek.
The appellant's first argument is not well taken. While
we appreciate that the Martinek gate is provided with a wide
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Application No. 08/828,375
steel tape (33) as a reinforcing member at the top of the gate
to assure rigidity and ease of operation of the gate and
eliminate side-sway (page 1, lines 1-9), one of ordinary skill
in the art reading the disclosure of Martinek would have
understood that no gate is completely impenetrable or tamper-
proof and would have recognized the merits of an alarm system
to indicate unauthorized tampering or movement of the gate.
The appellant's second argument is directed to the fact
that the La Mell alarm system is specifically adapted for use
on Venetian blinds or similar window barriers which are
subject to harmless movement as the result of wind
disturbances. The La Mell system comprises a magnet (42) on
the window sill (18) and a reed switch (40) mounted on a lower
rail (26) of the Venetian blind (10) which senses the
proximity of the magnet (42) thereto. When the blind is moved
relative to the window frame, the reed switch (40) is moved
out of proximity to the magnet (42), thereby causing the reed
switch to change states. The disclosed improvement in the La
Mell system is an alarm circuit (44), discussed in detail in
column 6, line 39, to column 7, line 9, which permits
actuation of the alarm generating device (54) only after the
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Application No. 08/828,375
reed switch has been out of proximity with the magnet for a
predetermined period of time. The alarm circuit is designed
to prevent false alarms caused by wind disturbances of the
blind while warning of a more sustained movement of the blind
caused by an intruder. The appellant's argument is, in
effect, that such a delay to prevent false alarms would have
been unnecessary or undesirable on the relatively rigid gate
of Martinek.
We have carefully considered this argument, but we do not
find it persuasive. La Mell clearly teaches the desirability
of providing an alarm on a movable barrier positioned in an
opening to detect movement of the barrier by intruders seeking
access to the opening. While it may be true that a delay
circuit in the alarm system would not have been considered by
one of ordinary skill in the art to be desirable for all gates
in all situations, we find the teaching of La Mell sufficient
to have suggested broadly the provision on the Martinek gate
of an alarm, even if not the particular alarm system disclosed
by La Mell, activated
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Application No. 08/828,375
by movement of the gate to warn of actual or attempted
unauthorized access to the opening sought to be closed by the
gate.
Accordingly, we shall sustain the examiner's 35 U.S.C. §
103 rejection of claim 25 as being unpatentable over Martinek
in view of La Mell. As the appellant has conceded that the
additional limitations recited in claims 7 and 8 which depend
from claim 25 are disclosed by Martinek (see brief, page 17),
it follows that we shall also sustain the examiner's rejection
of these claims under 35 U.S.C. § 103 as unpatentable over
Martinek in view of La Mell.
As to claim 10, we find that the "housing means" of
Martinek, as perhaps best illustrated in Figures 1, 3 and 6,
is mounted on the structure (10), which is disclosed by
Martinek as being "a wall, jamb, partition or other surface"
(page 1, lines 46 and 47). We consider the wall or other
surface (10) to be a "finished surface" as claimed.
Accordingly, we shall also sustain the examiner's rejection of
claim 10 under 35 U.S.C. § 103 as being unpatentable over
Martinek in view of La Mell.
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Application No. 08/828,375
Turning finally to the examiner's rejection of claims 25
and 9 under 35 U.S.C. § 103 as being unpatentable over
Johnston in view of La Mell, Johnston discloses a closure
structure for closing a doorway comprising a housing means
(box-like enclosure 17) and a reel or spool of closure
material (18) bordered at one end by a stabilizing member (19)
provided with supporting wheels (24) at the upper end thereof
adapted to travel in a guide means (23) of a track hanger (22)
mounted to the top of the doorway. The closure material (18)
is disclosed as being screen cloth, vinyl "or other plastic
suitable for storm door usage" (column 1, lines 58-62). The
box-like enclosure (17) is mounted to the door jamb (12) and a
strip (37) of magnetic material is mounted to the other door
jamb (13). As explained in column 2, lines 41-50, the
magnetic material enables the jamb (13) to releasably maintain
the closure in the closed position, such that application of a
sufficiently hard force will cause the closure to disengage
from the magnetic material and automatically retract to
protect the closure whereas mere high winds will not cause the
closure to retract.
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Application No. 08/828,375
In rejecting claims 25 and 9, the examiner recognizes
that Johnston does not disclose a closure height of "less than
approximately 50 inches" or an alarm as required by the
claims. However, the examiner asserts that the specific
height of the gate is merely an obvious matter of design
choice and that it would have been obvious to provide an alarm
on the Johnston closure in view of the teachings of La Mell.
As to the height of the closure, we agree with the
examiner that the particular dimensions of the closure would
have been an obvious matter of design choice within the skill
of the art. As noted above, the appellant has not alleged or
shown that the claimed height solves any stated problem. One
of ordinary skill in the art having read the Johnston
disclosure would have selected dimensions appropriate for the
particular doorway or other opening sought to be closed.
We have considered the appellant's arguments bridging
pages 18 and 19 of the brief that La Mell would not have
suggested providing an alarm, activated by movement of the
closure material, on the Johnston closure structure, but we do
not find them persuasive. La Mell clearly teaches the
desirability of providing an alarm on a movable barrier
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Application No. 08/828,375
A "gate" is "a movable framework or solid structure, esp. one that7
swings on hinges, controlling entrance or exit through an opening in a fence
or wall" (Webster's New World Dictionary, Third College Edition (Simon &
Schuster, Inc. 1988)).
positioned in an opening to detect movement of the barrier by
intruders seeking access to the opening. While it may be true
that a delay circuit in the alarm system would not have been
considered by one of ordinary skill in the art to be desirable
for all closures in all situations, we find the teaching of La
Mell sufficient to have at least suggested broadly the
provision on the Johnston closure of an alarm, even if not the
particular alarm system disclosed by La Mell, activated by
movement of the closure to warn of actual or attempted
unauthorized access to the opening sought to be closed by the
closure structure.
With regard to claim 9, which depends from claim 25, the
appellant further argues that Johnston "teaches away from the
material as being functional as a gate in that the mechanism
immediately retracts the material to protect it when the
closure has applied force acting on it" (brief, page 19). We
see nothing in this protective retractability feature which
precludes its function as a "gate" as claimed.7
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Application No. 08/828,375
For the foregoing reasons, we shall sustain the
examiner's rejection of claims 25 and 9 under 35 U.S.C. § 103
as being unpatentable over Johnston in view of La Mell.
REMAND TO THE EXAMINER
We remand the application to the examiner for
consideration of the following issues:
(1) Do claims 2, 3, 5, 7, 8, 10, 16, 18, 20-24 and 26-28
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention, as required by
the first paragraph of 35 U.S.C. § 112? In particular:
(a) Would one of ordinary skill in the art reading the
appellant's disclosure understand what is meant by "said
partition being pivotably secured to said housing means such
that it is expandable at an acute angle to said axis" as
recited in claim 20 (and incorporated by all claims depending
therefrom)?
(b) Is the recitation in claims 2, 3, 5, 7, 8, 10, 18,
22, 23, 27 and 28 (and incorporated by all claims depending
from these claims) that the housing means is "installed,"
"mounted" or "in engagement with" a wall or a finished surface
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Application No. 08/828,375
commensurate in scope with the preambles of these claims,
which recite an "expandable partition kit" or "expandable gate
assembly"? The kit or assembly as disclosed would not appear
to us to include the wall or wall surface.
(c) Would one of ordinary skill in the art understand
what is meant by the language "expandable about an axis" as
recited in claim 21?
(2) Is the subject matter of claims 7-10, 16, 18, 20 and 24-
28 supported by the appellant's original disclosure, as filed
on February 21, 1995 as Application No. 08/391,546, in
compliance with the written description requirement of the
first paragraph of 35 U.S.C. § 112? In particular:
(a) Is the limitation "expandable at an acute angle" in
claim 20 (and incorporated by all claims depending therefrom)
adequately supported in the appellant's original disclosure?
(b) Does the appellant's original disclosure provide
adequate support for the gate height of "less than
approximately 50 inches" recited in claim 25 (and incorporated
by all claims depending therefrom)?
(3) Does Christison (U.S. Patent No. 2,455,112, issued
November 30, 1948) anticipate the subject matter of any of the
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Application No. 08/828,375
claims on appeal? Christison discloses an extensible guard
(comprising vertical members 16-18 and links 19) slidably
supported by means of U bolts (29) fitting about a plurality
of disposed rods (28) secured within a cabinet (31) mounted to
a wall (30). With particular reference to claim 20, as noted
in column 2, lines 16-19, the U bolts are bent to permit
pivotal movement of the entire guard about the rods (28).
This application, by virtue of its "special" status,
requires immediate action. Manual of Patent Examining
Procedure (MPEP) § 708.01 (7th ed., July 1998). Further, it
is important that the Board of Appeals and Interferences be
informed promptly of any action affecting the status of the
appeal.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 20, 16, 18, 21, 24 and 26 through 28 under 35 U.S.C. §
102(b) is affirmed as to claim 21 but reversed as to claims
20, 16, 18, 24 and 26 through 28. The decision of the
examiner to reject claims 25, 7, 8 and 10 under 35 U.S.C. §
103 as being unpatentable over Martinek in view of La Mell and
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Application No. 08/828,375
claims 25 and 9 under 35 U.S.C. § 103 as being unpatentable
over Johnston in view of La Mell is affirmed. Additionally,
the application is remanded to the examiner for consideration
of the issues noted above.
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a remand. 37 CFR
§ 1.196(e) provides that
Whenever a decision of the Board of Patent Appeals and
Interferences includes or allows a remand, that 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 from the date of the
original decision . . . .
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
rejections are overcome. If the proceedings before the
examiner does not result in allowance of the application,
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Application No. 08/828,375
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejections, including any timely
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).
AFFIRMED-IN-PART and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0636 Page 22
Application No. 08/828,375
Teresa M. Okonsky
P.O. Box 15241
Arlington, VA 22215