Ex parte Rasel

Board of Patent Appeals and Interferences

Dec 17, 1998

08579639 (B.P.A.I. Dec. 17, 1998)

Application for patent filed December 27, 1995. 1
According to appellant, this application is a continuation of
Application 08/252,862 filed June 2, 1994, 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journal and (2) is not binding precedent of the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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HEINZ RASEL
____________
Appeal No. 98-0384
Application No. 08/579,6391
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Heinz Rasel (the appellant) appeals from the final
rejection of claims 2, 8, 13, 17, 18 and 20. Claims 3-6, 9-12
and 15 have been indicated as being allowable subject to the
Appeal No. 98-0384
Application No. 08/579,639
Amended effective December 1, 1997. 2
2
requirement that they be rewritten to include all the subject
matter of the claims from which they depend. Claim 21, the
only other claim remaining in the application, stands allowed.
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), we will enter a new2
rejection of claims 2-6, 8-13, 15, 17, 18 and 20.
The appellant's invention pertains to packaging for a
strip of photosensitive material. Independent claim 20 is
further illustrative of the appealed subject matter and a copy
thereof may be found in the appendix to the brief.
The references relied on by the examiner are:
Weaver 1,260,491 Mar. 26,
1918
Pomeroy et al. (Pomeroy) 2,797,804 Jul.
2, 1957
Syracuse et al. (Syracuse) 4,148,395 Apr. 10,
1979
Takahashi et al. (Takahashi) 5,222,601 Jun.
29, 1993
Claims 2, 8, 13 and 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over Syracuse in view of Takahashi,
Weaver and Pomeroy.
Appeal No. 98-0384
Application No. 08/579,639
3
Claims 17 and 18 are rejected under 35 U.S.C. § 103 over
the references as applied to claims 2, 8, 13 and 20 above, and
further in view of the "conventional use of perforations."
The rejections are explained on pages 3 and 4 of the
answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 2-
7 of the brief and pages 5-8 of the answer.
OPINION
For reasons stated infra in our new rejection under the
provisions of 37 CFR 1.196(b), we are of the opinion that
claims 2-6, 8-13, 15, 17, 18 and 20 fail to satisfy the
requirements of 35 U.S.C. § 112, second paragraph. We note
that normally a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it is
patentable over the prior art since to do so would of
necessity require speculation with regard to the metes and
bounds of the claimed subject matter. See In re Steele, 305
F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Appeal No. 98-0384
Application No. 08/579,639
4
Nevertheless, in this instance, in an effort to avoid
piecemeal appellate review (see Ex parte Saceman, 27 USPQ2d
1472, 1474 (Bd. Pat. App. & Int. 1993) and Ex parte Ionescu,
222 USPQ 537, 540 (Bd. App. 1984)) we make the following
interpretations of the terminology appearing in the claims for
the purpose of reaching the rejections based on prior art. In
independent claim 20, lines 15-19, (as it appears in the
appendix to the brief) we interpret "curved overhanging edge
portions . . . curving towards the essentially flat end faces"
to be:
-- overhanging edge portions attached to the outer
axial edge portions, the overhanging edge portions
extending beyond the width of the strip and adapted
to be deflected along a curved path towards the
essentially flat end faces; --.
Turning to the rejections of claims 2, 8, 13, 17, 18 and
20 under 35 U.S.C. § 103, both of these rejections are
bottomed on the examiner's position that:
Syracuse shows a package comprising a roll of
photosensitive material (10), an opaque cover sheet
(14), a core (12), and opaque end cap covers (18 and
20) substantially as claimed except for the exact
width of the cover sheet and the exact end caps.
Takahashi '601 teaches making a cover sheet wider
than the width of the roll of material and to
overlap the cover sheet edges with the edges of the
Appeal No. 98-0384
Application No. 08/579,639
5
flexible end covers (figure 28) and teaches
providing a hub (18) inserted into a core (11).
Weaver teaches providing a sealing disk (3) with a
hub-shaped section (5) and a flexible section (8) as
an end cap. Pomeroy teaches providing end caps
comprising a hub-shaped section (3) with a sealing
disk (2) on a photosensitive material package. It
would have been obvious to provide a wider cover and
fold over the edges and to provide a hub as taught
by Takahashi '601, and to provide a sealing disk as
taught by Weaver and/or Pomeroy in the end caps of
the package of Syracuse to provide secure edges and
to increase protection of the ends of the material
even when a portion of the material has been
dispensed.
In reference to the "curved overhanging edge
portions", when the cover of Syracuse are [sic, is]
rolled around the roll of photosensitive material
the edges are inherently curved. [Answer, pages 3
and 4.]
We will not support the examiner's position. It is well
settled that it is the teachings of the prior art taken as a
whole which must provide the motivation or suggestion to
combine the references. See Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988) and Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985). Here, absent the
appellant's own disclosure, we can think of no reason why one
of ordinary skill in this art would have been motivated to
Appeal No. 98-0384
Application No. 08/579,639
6
combine the teachings of Syracuse, Takahashi, Weaver and
Pomeroy in the manner that the examiner has proposed. With
respect to Syracuse and Takahashi, the examiner apparently is
proposing to extract from the teachings of Takahashi the
feature of a cover sheet (which has overhanging portions that
are adapted to be curved downwardly towards the flat end faces
of the coiled strip of photosensitive material as illustrated
by Takahashi in Fig. 28) and incorporate this feature into the
packaging of Syracuse, while at the same time retaining
Syracuse's "end cap covers" or flexible sections 18 and 20.
The examiner, however, may not pick and choose from any one
reference only so much of it as will support a given position,
to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of
ordinary skill in the art. See Bausch & Lomb, Inc., v.
Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 448, 230 USPQ 416,
419 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) and In
re Kamm, 452 F.2d 1052, 1057, 172 USPQ 298, 301-02 (CCPA
1972). Here, Syracuse and Takahashi simply teach alternative
ways of covering the flat end faces of a coiled photosensitive
Appeal No. 98-0384
Application No. 08/579,639
7
strip. On the one hand, Syracuse teaches that the flat end
faces should be covered by flexible sections 18 and 20. On
the other hand, Takahashi teaches the covering of the flat end
faces by providing the cover sheet 13 (which covers the outer
circumference of the coiled photosensitive strip) with lateral
extending or overhanging portions 15 which are folded across
the essentially flat end faces in such a manner that the end
faces are completely covered. There is simply nothing in the
combined teachings of Syracuse and Takahashi which would
fairly suggest providing the packaging of Syracuse with
overhanging portions 15 as illustrated by Takahashi in Fig. 28
for the purpose of covering the flat end faces and, at the
same time, retaining the flexible sections 18, 20 which
Syracuse teaches should be used for this same purpose.
As to the examiner's position that it would have been
obvious to provide a sealing disk "as taught by Weaver and/or
Pomeroy" in the end caps of the package of Syracuse, Pomeroy
once again teaches another alternative way of covering the
flat end faces of coiled photosensitive material. To this
end, Pomeroy provides a cover member 2 which is secured to the
flat end faces of coiled photosensitive material by means of
Appeal No. 98-0384
Application No. 08/579,639
8
an adhesive layer 12. There is simply nothing in the combined
teachings Syracuse and Pomeroy which would suggest providing
the packaging of Syracuse with a cover member or "sealing
disk" for the flat end faces as taught by Pomeroy and at the
same time retain the flexible sections 18 and 20 which
Syracuse teaches should be used for this same purpose. While
the examiner has also relied on the teachings of Weaver for a
sealing disk, Weaver merely teaches the provision of a wooden
member 3 which is used to protect the ends of paper rolls
during shipping. However, this wooden member performs no
sealing function and cannot, in our view, be fairly construed
to teach a "sealing disk" as claimed.
From our perspective, the examiner has impermissibly
relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. This being the case, we will not
sustain the rejections under 35 U.S.C. § 103 of claims 2, 8,
13 and 20 based on the combined teachings of Syracuse,
Takahashi, Weaver and Pomeroy and claims 17 and 18 based on
the combined teachings of Syracuse, Takahashi, Weaver, Pomeroy
and the "conventional use of perforations."
Appeal No. 98-0384
Application No. 08/579,639
9
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection:
Claims 2-6, 8-13, 15, 17, 18 and 20 are rejected under 35
U.S.C. 112, second paragraph. In order to satisfy the re-
quirements of the second paragraph of §112, a claim must
accurately define the invention in the technical sense. See
In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492-93
(CCPA 1973). Here, the claims are directed to packaging for a
strip of photosensitive material (which is to be coiled), as
distinguished from a completed package containing such a
coiled strip. That is, the claims on appeal define the pack-
aging in an undeformed or "flattened" state before the coiled
strip is wrapped or enclosed (e.g., independent claim 6 sets
forth a cover sheet "for" being wound on the roll outer cir-
cumferential surface and flexible sections "for" covering the
essentially flat end faces). This being the case, the cover
sheet does not have edge portions which are curved as set
forth in lines 15-19 of independent claim 6. Instead, these
portions are merely adapted to be deflected in a curved con-
Appeal No. 98-0384
Application No. 08/579,639
10
figuration when the packaging is actually used to enclose the
coiled strip of photosensitive material.
In summary:
The rejections of claims 2, 8, 13, 17, 18 and 20 under 35
U.S.C. § 103 are reversed.
A new rejection of claims 2-6, 8-13, 15, 17, 18 and 20
under 35 U.S.C. 112, second paragraph, has been made.
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, “A new ground of rejection
shall not be considered final for purposes of judicial re-
view.”
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
Appeal No. 98-0384
Application No. 08/579,639
-11-
ground of rejection to 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. . . .
REVERSED
37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 98-0384
Application No. 08/579,639
-12-
JMM/jlb
Appeal No. 98-0384
Application No. 08/579,639
-13-
Alfred W. Breiner
115 North Henry Street
P.O. Box 19290
Alexandria, VA 22320-0290