Ex parte QUANDT

Board of Patent Appeals and Interferences

Nov 12, 1999

08562816 (B.P.A.I. Nov. 12, 1999)

Application for patent filed November 27, 1995. 1
Paper No. 14, April 3, 1998.2
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journal and (2) is not binding precedent of the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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARY M. QUANDT
____________
Appeal No. 1999-2364
Application No. 08/562,8161
____________
ON BRIEF
____________
Before CALVERT, MCQUADE, and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to2
19 and 21, all the claims remaining in the application.
Appeal No. 1999-2364
Application No. 08/562,816
In claim 5, line 4, we note that there should be a3
comma before "from," and "the" should be --said--.
2
The appealed claims are drawn to a bed liner in
combination with a mattress, box spring, bed board, cot or
hammock (claims 1 to 10), or to a bed liner per se (claims 11
to 19 and 21), and are reproduced in the new appendix
submitted by appellant on September 22, 1999 (Paper No. 23).3
The references applied in the final rejection are:
North 2,525,713 Oct. 10,
1950
Chapuis 3,541,620 Nov. 24,
1970
Young 3,842,454 Oct. 22,
1974
Schuetze 4,413,368 Nov. 8,
1983
Hoss et al. (Hoss) 4,924,543 May 15,
1990
Gershman, Self-Adhering Nylon Tapes, 168 A.M.A. Journal No.7
(Oct. 18, 1958) (Gershman)
Claims 1 to 19 and 21 stand finally rejected on the
following grounds:
(1) Claims 1, 5 and 7, anticipated by North, under 35 U.S.C.
§ 102(b);
(2) Claims 2, 3, 10, 18 and 19, unpatentable over North in
view of Schuetze and Hoss, under 35 U.S.C. § 103(a);
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(3) Claim 4, unpatentable over North in view of Schuetze, Hoss
and Gershman, under 35 U.S.C. § 103(a);
(4) Claims 6, 9, 13 to 15 and 17, unpatentable over North in
view of Young, under 35 U.S.C. § 103(a);
(5) Claims 8 and 12, unpatentable over North in view of
Gershman, under 35 U.S.C. § 103(a);
(6) Claim 16, unpatentable over North in view of Young,
Schuetze, Hoss and Gershman, under 35 U.S.C. § 103(a);
(7) Claim 21, unpatentable over North in view of Schuetze,
Hoss and Young, under 35 U.S.C. § 103(a).
(8) Claims 11 and 12, unpatentable over Chapuis, under 35
U.S.C. § 103(a).
Rejection (1)
In order to anticipate claim 1, North must disclose every
limitation of that claim, either explicitly or inherently. In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997). Appellant first argues that the width of North’s
bottom sheet 1 is not "at least about 50% greater" than the
width of top sheet 2, as claimed. North does not disclose any
specific dimensions, but from measuring the sheets shown in
Fig. 3, appellant calculates that the bottom sheet is 41%
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Application No. 08/562,816
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wider than the top sheet (reply brief, p. 3). The examiner
contends that this is "about 50%."
It is unnecessary to decide this issue, because we agree
with appellant’s further argument that North does not disclose
a releasable connection between the top and bottom sheets
which, as recited in claim 1, "extend[s] from said top edge of
said top sheet toward said bottom edge thereof." In North,
the only disclosed releasable connection between the top and
bottom sheets is in the form of ribbons 15 and 16. These
ribbons do not extend from the top edge of the top sheet 2, as
required by claim 1, but
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rather are located part of the way down the side of the top
sheet at fold line 13, leaving the upper end 14 of the top
sheet free to be folded back at line 13.
Although not argued by appellant, we note that North also
does not meet the requirement of claim 1 that there be "a
first connection between said top and bottom sheets along
substantially the entire length of said first side edge of
said top sheet," because the connection (seam 3) between
North’s top and bottom sheets is not along "substantially the
entire length" of a side edge of top sheet 2.
We therefore will not sustain rejection (1) of claim 1,
nor, it follows, of dependent claims 5 and 7.
Rejection (2)
With regard to claims 2, 3 and 10, the Schuetze and Hoss
references do not render obvious the above-noted differences
between parent claim 1 and North’s disclosure. Rejection (2)
therefore will not be sustained as to those claims.
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Rejection (2) also will not be sustained as to claim 18,
and claim 19 dependent thereon, because neither North,
Schuetze nor Hoss teaches or suggests the use of "a plurality
of spaced, in line snap fasteners" as recited in claim 18.
Rejection (3)
Since the secondary references applied in this rejection
do not render obvious the differences between parent claim 1
and the disclosure of North noted in the discussion of
rejection (1), supra, rejection (3) will not be sustained.
Rejection (4)
This rejection will not be sustained as to claims 6 and
9, for the same reason as stated in the foregoing paragraph
concerning rejection (3).
Independent claim 13 recites, inter alia, that portions
of the bottom sheet top face and top sheet bottom face
"comprise sweatshirt fleece." The examiner states the basis
of this rejection on page 5 of the final rejection as:
North fails to discloses the top sheet
having a bottom face comprised of fleece.
Young discloses a top sheet 12 having a
bottom face comprised of a soft plush
fabric such as wool or cotton (col. 3 lines
19-24). It would have been obvious to
place the fabric surface as taught by Young
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7
on the bottom face of the top sheet of
North in order to provide a comfortable
contact surface that is easily
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8
cleaned. The fabric taught by Young is
considered an equivalent to the applicant’s
"sweatshirt fleece" since it is well known
that fleece is defined as either a fabric
such as a coat of wool or a fabric with a
soft deep pile.
In considering this rejection, we do not find in Young
(which discloses a sleeping bag for dogs and other domestic
animals) any disclosure of a "soft plush fabric," the
examiner’s statement to the contrary notwithstanding. Col. 3,
lines 19 to 24 of Young, to which the examiner refers, reads:
The fabric used for the upper and lower
covers should be selected for ease in
cleaning or washing and resistent [sic] to
stain. Other than meeting those
requirements, any fabric including cotton,
wool, synthetic or canvas and the like may
be utilized.
According to the examiner, supra, the fabric disclosed by
Young is an equivalent of sweatshirt fleece, but it is not
clear how the examiner arrives at this conclusion, or why,
even if correct, it would have been obvious to employ
sweatshirt fleece as or on North’s sheets. There being no
disclosure in the applied references of sweatshirt fleece or
its use for such a purpose, the rejection of claims 13 to 15
and 17 will not be sustained.
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Application No. 08/562,816
Since claim 12 depends from claim 11, it is not clear4
why claim 11 was not included in this rejection.
10
Rejection (5)
This rejection will not be sustained as to claim 8 for
the same reason as stated in the previous paragraph concerning
rejection (3).
As for claim 12 , parent claim 11 requires, inter alia,4
that the top sheet have a width and length substantially the
same as the bottom sheet, and be connected to the bottom sheet
adjacent the bottom edge of the top sheet. In North, on the
other hand, the bottom sheet 1 is wider than the top sheet 2,
and the bottom edge of top sheet 2 is not connected to bottom
sheet 1. Thus, contrary to the examiner’s statement on page 4
of the final rejection, North does not disclose "all of the
appellant’s claimed limitations except for the second
releasable connection comprising a zipper."
Since there is no teaching or suggestion in Gershman
which would have motivated one of ordinary skill to modify the
North bed liner to meet the above-noted differences between
North and parent claim 11, rejection (5) of claim 12 will not
be sustained.
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12
Rejection (6)
This rejection will not be sustained, since Gershman does
not supply the deficiency noted in the rejection of claim 13,
supra (under rejection (4)).
Rejection (7)
This rejection will likewise not be sustained inasmuch as
the rejection of parent claim 18 will not be sustained (under
rejection (2), supra), and Young does not supply the
deficiency noted as to that rejection.
Rejection (8)
Of particular interest in this rejection is the
arrangement shown in Fig. 2 of Chapuis, where a sleeping bag
has been formed by folding the fabric of Fig.1, with layer 4
on the outside (col. 2, lines 42 and 46); thus, there is a
fold down the right hand edge of the bag, producing a top
fabric sheet and a bottom fabric sheet of the same width and
length, connected at the right side edge. While not described
in the specification, Chapuis appears to show in Fig. 2, as
appellant states on page 8 of the brief, "a zipper extending
along the bottom, [left] side, and top thereof." Since the
zipper is shown as closed along the bottom of the bag,
Appeal No. 1999-2364
Application No. 08/562,816
In re Rose states that the size of an article "is not5
ordinarily a matter of invention" (220 F.2d at 463, 105 USPQ
at 240).
13
(most of) the left side of the bag, and open at the top of the
bag, Chapuis’ Fig. 2 meets the recitations of claim 11 that
the top sheet and bottom sheet are connected at their bottom
and side edges and unconnected at their top edges.
Claim 11 recites that the bottom sheet has "a width of
about 50-75 inches, [and] a length of about 80-90 inches."
Chapuis does not disclose any dimensions, but the examiner
asserts that "[a] change in size is generally recognized as
being within the level of ordinary skill in the art," citing
In re Rose, 220 F.2d 459, 463, 105 USPQ 237, 240 (CCPA 1955)5
(answer, p.7).
Appellant contends on page 9 of the brief that "There is
absolutely no reason why one of ordinary skill in the art
would provide the dimensions set forth in claim 11 in Chapius
[sic]." We disagree. The sleeping bag shown in Fig. 2 of
Chapuis would obviously have to be of sufficient height and
width to comfortably accommodate the user. If the user were
taller than six feet, for example, in our view the bag would
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be made sufficiently long to accommodate the user’s height,
which would take it into the claimed 80 to 90 inch range.
Similarly, the top
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Application No. 08/562,816
Under the circumstances of this case, our conclusion6
that claims 1 to 10, 13 to 19 and 21 do not comply with § 112,
second paragraph, does not preclude our consideration on the
merits of the rejections of those claims as unpatentable over
prior art. Ct. Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd.
Pat. App. & Int. 1993).
15
and bottom sheets would have to be wide enough to allow a user
to lie between them, and, particularly in order to encompass
large sized persons, it would have been obvious to make a bag
having a width of at least about 50 inches.
For the foregoing reasons we conclude that claim 11 is
unpatentable over Chapuis under § 103.
On the other hand, we find nothing in Chapuis which would
suggest to one of ordinary skill that the Fig. 2 sleeping bag
be provided with a "zippered generally central access seam . .
. extending less than 50% the length of said bottom sheet," as
required by claim 12. We will accordingly sustain the
rejection of claim 11, but not of claim 12.
Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 1 to 10, 13 to 19 and
21 are rejected for failing to comply with 35 U.S.C. § 112,
second paragraph, for the following reasons.6
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Application No. 08/562,816
16
(A) Claim 1, line 5, "said bottom fabric" has no antecedent
basis. Also, in lines 5 and 6, it appears that something has
been omitted from the phrase "said bottom fabric . . .
hammock," which is incomplete as it stands.
(B) Claim 13, line 5, the expression "a third width" is
unclear, because no second width is recited. Also, "said
bottom sheet top face first portion" in line 10 has no
antecedent basis.
(C) Claim 18, line 10, "said bottom sheet" (two occurrences)
has no antecedent basis.
Conclusion
The examiner’s decision to reject claims 1 to 19 and 21
is reversed as to all of said claims except claim 11, as to
which it is affirmed. Claims 1 to 10, 13 to 19 and 21 are
rejected pursuant to 37 CFR § 1.196(b).
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) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that
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"[a] new ground of rejection shall not be considered final for
purposes of judicial review."
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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. . . .
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 avoid termination of proceedings (37
CFR § 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. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
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incident to the limited prosecution, the affirmed rejection is
overcome.
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If the appellant elects prosecution before the examiner
and this does 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 request
for rehearing thereof.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
SLD
Appeal No. 1999-2364
Application No. 08/562,816
21
Nixon and Vanderhye
1100 North Glebe Road
8th Floor
Arlington, VA 22201-4714
Shereece
Appeal No. 1999-2364
Application No. 08/562,816
APJ CALVERT
APJ MCQUADE
APJ NASE
AFFIRMED-IN-PART; 196(B)
Prepared: August 8, 2000