Ex parte Rexroad et al.

Board of Patent Appeals and Interferences

Aug 18, 1999

08153623 (B.P.A.I. Aug. 18, 1999)

Application for patent filed November 17, 1993. 1
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN REXROAD and MERLE KINGHAM
____________
Appeal No. 96-3543
Application No. 08/153,6231
____________
HEARD: August 2, 1999
____________
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, 9-12 and 14-16, which constitute
all of the claims remaining of record in the application.
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Application No. 08/153,623
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The appellants’ invention is directed to a climbing net
that presents a diagonal stripe of contrasting color. The
claims on appeal have been reproduced in an appendix to the
Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Gullen 3,170,611 Feb. 23,
1965
Dilbey 4,000,344 Dec. 28,
1976
Lockney 5,328,310 Jul. 12,
1994
(filed Jan. 4, 1993)
THE REJECTIONS
Claims 1, 2, 4, 5, 7, 9 and 10 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dilbey in view of
Gullen.
Claims 3, 6, 11, 12 and 14-16 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dilbey in view of
Gullen and Lockney.
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The rejections are explained in the Paper No. 12 (the
final rejection).
OPINION
New Rejection Entered By The Board
We are mindful that the appellants are free to claim
their invention in broad terms, and that they are entitled to
the broadest reasonable interpretation of the claim language.
However, because a patentee has the right to exclude others
from making, using and selling the invention covered by the
patent, the public must be apprised of exactly what the patent
covers, so that those who would approach the area
circumscribed by the claims of a patent may more readily and
accurately determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance. It is
to this that the second paragraph of 35 U.S.C. § 112 is
directed (see In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA
1970)), and with regard to which we find the claims not to be
in compliance.
Therefore, pursuant to our authority under 37 C.F.R.
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§ 1.196(b), we enter the following new rejection:
Claims 1-7, 9-12 and 14-16 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite in that they fail
to particularly point out and distinctly claim the subject
matter which the appellants regard as the invention.
We begin by pointing out that in the second paragraph of
the body of claim 1, first, second, third and fourth border
“sections” are set forth, whereas in the remainder of the
claim what appears to be the same elements are recited as
border “portions.” This also appears in independent claims 9,
14 and 16. Furthermore, these same elements are labeled as
border “lengths” in claims 2 and 10, and merely as “borders”
in claim 5.
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The second problem of indefiniteness occurs in the third
paragraph of the body of claim 1, which sets forth a plurality
of weft members along one of the first, second, third and
fourth length portions of the border. This is followed by the
statement that the weft members are connected to “the involved
ones of said . . . length portions . . . of said border”
(emphasis added). There is no antecedent basis for the term
“involved ones,” and the meaning of this phrase thus is not
clear. This is repeated again in the fourth paragraph of the
claim with regard to the warp members (where it is recited as
being the involved “one”). The same situation occurs in
independent claims 9, 14 and 16.
Independent claims 1 and 9 contain an indefiniteness with
regard to understanding the limitations regarding the coloring
of certain of the elements. In each of these two claims it is
established that at least one of the weft members, and at
least one of the warp members, is “differently colored from
the remaining ones” of like kind. The final lines of each of
these claims also focus on the color of the weft and warp
elements, but what is meant there is unclear to us. The
language in question reads as follows:
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at least one of said weft and warp members being of
a different color displaying a diagonally directed
path along the net relative to the differently
colored ones of the warp and weft members.
The issue here is whether it is the intention of this
paragraph merely to refer back to and confirm what has been
recited in the previous paragraphs regarding the color of the
weft and warp members, adding only that it causes a diagonal
pattern to be presented, or to add the further limitation that
the selected one of the weft members is a different color than
the selected one of the warp members. We must confess that
our confusion is heightened by considering Figure 1 of the
colored version of the drawings that was attached to the
Brief, where the three colors used for the wefts are repeated
in the warps, and which thus would appear not to represent
that the selected weft cannot be the same color as the
selected warp.
A problem exists in independent claims 14 and 16 in the
paragraph that begins on line 38. Early in these claims it is
established that first and second corners define “a first
border section,” and so on through second, third and fourth
corners and second, third and fourth border sections. Weft
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and warp members connected to the border sections are then set
forth. The paragraph in issue states “the weft members being
connected at one end thereof along said first border length
[sic, section] and said warp members being connected at one
end thereof along said fourth border length.” The explanation
that follows relates the weft and warp members to one another
and to the other border sections. However, as one proceeds
through this paragraph, it would appear that the terms “weft”
and “warp” have been interchanged throughout, noting that line
51 states that “said first warp member is downwardly turned,”
when in fact it seems to be the first weft member that is
downwardly turned at this point. The Examiner’s Rejections Under 35 U.S.C. § 103
Notwithstanding the new rejection that we have entered
above, we find ourselves able to understand the invention to
the extent necessary to evaluate the examiner’s rejections of
the claims, and we have done so in the interest of judicial
economy. The test for obviousness is what the combined
teachings of the prior art would have suggested to one of
ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
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establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellants’ disclosure. See, for example,
Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Independent claims 1 and 9 stand rejected as being
unpatentable over Dilbey in view of Gullen. Among the
appellants’ arguments against this rejection is that neither
of these references teaches that at least one of the weft
members be differently colored from the remaining ones, and at
least one of the warp members be differently colored than the
remaining ones, as is required by both of these claims. The
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appellants point out that their invention is particularly
useful as a climbing net for children, and that the color
requirements of these claims taken in conjunction with the
manner in which the net is constructed result in a diagonally
oriented “lightening bolt” pattern of color which is very
attractive. The examiner acknowledges that this teaching is
lacking in the references, but takes the position that it
would have been obvious to form diagonally extending color
patterns “because the net would be more aesthetically pleasing
to the eye” (Answer, page 5).
We do not agree with the examiner. These claims set
forth a specific arrangement of weft and warp members which
constitute the net construction, and recite a color
requirement for one of the weft members and one of the warp
members which results in a particular pattern of color across
the net. From our perspective, the issue is not simply
whether using color in a net would have been obvious to one of
ordinary skill in the art, but is much more limited, that is,
whether incorporating it into the structure in the manner
recited in these claims would have been obvious. Based on the
evidence and argument the examiner has provided on the record,
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we think not. This being the case, we will not sustain the
rejection of independent claims 1 and 9 or, it follows, of
dependent claims 2, 4, 5, 7 and 10.
Dependent claims 3, 6, 11 and 12 stand rejected as being
unpatentable over the references cited against claims 1 and 9,
taken further with Lockney, which is added for its teaching of
forming a net of polypropylene. Be that as it may, Lockney
does not alleviate the problem discussed above with regard to
the color relationship between certain of the net members that
is established in the independent claims, and therefore we
also will not sustain the rejection of claims 3, 6, 11 and 12.
Independent claim 16 also stands rejected on the basis of
Dilbey, Gullen and Lockney. As was the case with claim 1,
this claim also requires that at least one of the weft and
warp members be of a different color, so as to display a
diagonally directed path along the net relative to the other
warp and weft members. As we explained above, it is our view
that the combined teachings of these references fail to render
this feature obvious and therefore, as was the case above,
fail to establish a prima facie case of obviousness with
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regard to the claim. This rejection therefore cannot be
sustained.
The combined teachings of Dilbey, Gullen and Lockney form
the basis for the examiner’s rejection of independent claim
14. This claim does not, however, include the limitations
regarding the color of the various members from which the net
is constructed, and for this reason we find ourselves in
agreement with the examiner that a prima facie case of
obviousness is established by the references. We begin our
analysis by noting that the Dilbey net is constructed in the
same fashion as is required by claim 14, that is, both weft
and warp members (in the terminology of the appellants) are so
disposed and oriented with respect to one another that each
weft member and each warp member forms at least one rung and
one rail of the net. While many of Dilbey’s figures
illustrate the net as having the weft and the warp members in
a diagonal relationship with the border member, in Figure 5
they are in the same relationship as is required by the claim,
except at the corner portions (54). Moreover, Gullen teaches
weft members and warp members that intersect the border member
perpendicularly. It is our opinion that it would have been
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obvious to one of ordinary skill in the art to orient the
various members of the net in the manner recited in claim 14,
in view of the disclosures in these two references. Making
the net members of elongate extruded multifilaments of
polypropylene also would have been obvious to one of ordinary
skill in the art, as is evidenced by Lockney (column 3, line
15). Finally, Dilbey states that the net “includes a border
cord 4 extending around its periphery” (column 5, lines 28-
29), and in Lockney the entire net, including the border
member, is fabricated of a single length of rope (column 3,
lines 15 and 16). We agree with the examiner that it would
have been obvious to make the border member of a continuous
length of material, in view of these teachings, and we further
view splicing the ends of the material together to be a
notoriously old and well-known manner of working with ropes
and the like, which would have been obvious to one of ordinary
skill in the art
In the final analysis, while we have carefully considered
all of the arguments presented by the appellants that are
applicable to the examiner’s rejection of claim 14, we
conclude that a prima facie case of obviousness has been
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established with regard to the subject matter thereof, and we
will sustain the rejection.
Claim 15 adds to claim 14 the color feature discussed
above with regard to claim 1 et al. As we explained there, we
find this to be lacking in the applied prior art, and we
therefore will not sustain the rejection of this claim.
SUMMARY
The examiner’s rejection of claims 1-7, 9-12, 15 and 16
under 35 U.S.C. § 103 is not sustained.
The examiner’s rejection of claim 14 under 35 U.S.C. §
103 is sustained.
Pursuant to 37 C.F.R. § 1.196(b), a new rejection of
claims 1-7, 9-12 and 14-16 has been entered under 35 U.S.C. §
112, second paragraph.
The decision of the examiner is affirmed-in-part.
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,
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122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
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 appellants,
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 appellants 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. §§
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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
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect 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.
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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, 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
bae
Appeal No. 96-3543
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Joseph A. Fischetti
Perman & Green
425 Post Road
Fairfield, CT 06430