Ex parte Ritchey

Board of Patent Appeals and Interferences

Aug 23, 1999

08612385 (B.P.A.I. Aug. 23, 1999)

Application for patent filed March 7, 1996.1
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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journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SHARON A. RITCHEY
________________
Appeal No. 99-0179
Application 08/612,3851
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge,
FRANKFORT and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Sharon A. Ritchey appeals from the final rejection of
claims 1 through 13 and 21, all of the claims pending in the
application. We reverse and enter a new ground of rejection.
Appeal No. 99-0179
Application 08/612,385
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The invention relates to “a stuffed toy having a sealable
opening that facilitates the addition and removal of stuffing
material” (specification, page 1). Claim 1 is illustrative
and reads as follows:
1. An apparatus for holding a quantity of stuffing
material, said apparatus comprising:
a pliable shell having a perimeter and an interior cavity
formed therein;
a seam partially formed around said perimeter of said
shell and displaced from said perimeter, said seam having
first and second ends configured to define an opening formed
within said shell, said opening providing access to said
interior cavity; and

means for releasably sealing said opening, said means for
sealing being coupled to said shell proximate said opening;
wherein
said first and second seam ends have an increased
displacement from said perimeter at said opening.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Schradermeier 2,591,379 Apr. 1, 1952
Gullace 4,950,194 Aug. 21, 1990
Claims 1 through 8 and 10 through 13 stand rejected under
35 U.S.C. § 102(b) as being anticipated by, and in the
alternative under 35 U.S.C. § 103(a) as being obvious over,
Schradermeier.
Appeal No. 99-0179
Application 08/612,385
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Claims 9 and 21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by, and in the alternative under 35
U.S.C. § 103(a) as being obvious over, Gullace.

Reference is made to the appellant’s brief (Paper No. 10)
and to the examiner’s answer (Paper No. 11) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
As indicated above, independent claim 1 recites an
apparatus for holding a quantity of stuffing material
comprising, inter alia, a pliable shell having a perimeter and
a seam partially formed around the perimeter and having first
and second ends configured to define an opening in the shell.
Claim 1 further defines the seam as being “displaced from said
perimeter,” with the first and second ends of the seam having
“an increased displacement from said perimeter at said
opening.” Claim 8, the other independent claim on appeal,
contains identical limitations. The appellant’s specification
discloses that this seam structure “reduces puckering and
kinking of shell 12 during assembly, packaging, and while
Appeal No. 99-0179
Application 08/612,385
To the extent that the examiner’s reliance on the2
Butterick reference on page 5 of the answer “in the interests
of showing what is well known in the art” is proper (see In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA
1970)), such reliance does nothing to cure the above noted
deficiencies of Schradermeier and Gullace.
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fabric toy 10 is displayed” (page 10).
Although both Schradermeier and Gullace disclose an
“apparatus” comprising a shell, seams and an opening, neither
teaches or would have suggested an “apparatus” having the
particular seam construction required by claims 1 and 8, i.e.,
a seam which is displaced from the perimeter of the apparatus
shell with its ends having an increased displacement from the
perimeter at the opening. The examiner’s findings and
conclusions to the contrary (see pages 4 and 5 in the answer)
are predicated on speculation, conjecture and unfounded
assumptions lacking any factual support in the applied
references.2
Accordingly, we shall not sustain any of the standing 35
U.S.C. § 102(b) or § 103(a) rejections of independent claims 1
and 8 or of dependent claims 2 through 7, 9 through 13 and 21.
The following rejection is entered pursuant to 37 CFR
Appeal No. 99-0179
Application 08/612,385
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§ 1.196(b).
Claims 1 and 8, and claims 2 through 7, 9 through 13 and
21 by virtue of their dependency therefrom, are rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter the
appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In determining whether this standard is met, the definiteness
of the language employed in the claims must be analyzed, not
in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would
be interpreted by one possessing the ordinary level of skill
in the pertinent art. Id. Under this analysis, claims which
appear to be indefinite on their face may become definite when
read in light of the specification disclosure or prior art
teachings. By the same token, claims which appear to be
definite on their face may take on an unreasonable degree of
uncertainty when read in light of the specification disclosure
Appeal No. 99-0179
Application 08/612,385
Although specification page 9 contains a statement that3
the first and second seam ends are formed with an increased
displacement from the perimeter of the “shell” at the opening
(see lines 25 through 27), this statement is at odds with the
rest of the relevant disclosure which mentions the “perimeter”
only in the context of the pattern.
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or prior art teachings. See In re Cohn, 438 F.2d 989, 993,
169 USPQ 95, 98 (CCPA 1971); and In re Moore, 439 F.2d 1232,
1235 n.2, 169 USPQ 236, 238 n.2 (CCPA 1971).
As discussed above, claims 1 and 8 recite an apparatus
wherein the seam is displaced from the perimeter of the shell,
with the first and second ends of the seam having an increased
displacement from the perimeter at the opening. Specification
pages 8 through 10 and Figures 3 and 4 of the appellant’s
disclosure indicate, however, that the seam is actually
displaced from the perimeter of the pattern used to make the
shell rather than from the perimeter of the shell itself. 3
Indeed, the appellant’s disclosure of the seam and the manner
in which it is made indicates that the seam is on, rather than
displaced from, the perimeter, i.e., the outer surface, of the
shell. This inconsistency between the disclosure and claims 1
and 8 renders the scope of the appealed claims indefinite.
In summary:
Appeal No. 99-0179
Application 08/612,385
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a) the decision of the examiner to reject claims 1
through 13 and 21 is reversed; and
b) a new rejection of claims 1 through 13 and 21 is
entered pursuant to 37 CFR § 1.196(b).
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
review.”
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
(§ 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
Appeal No. 99-0179
Application 08/612,385
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under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)

HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
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