Ex parte Schmidt

Board of Patent Appeals and Interferences

May 31, 2001

08624091 (B.P.A.I. May. 31, 2001)

The examiner has withdrawn the rejection under 35 U.S.C. § 112, first1
paragraph, set forth in the final rejection and, in light of the amendment of
Paper No. 13, is no longer relying on the teachings of the Melton patent in
rejecting the claim under 35 U.S.C. § 103(a) (answer, p. 2).
1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.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 MANFRED SCHMIDT
____________
Appeal No. 2000-1712
Application No. 08/624,091
____________
HEARD: May 22, 2001
____________
Before CALVERT, COHEN and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claim 17, the only claim pending in this application.
Claim 17 was amended subsequent to the final rejection (see
Paper Nos. 13 and 14).1
Appeal No. 2000-1712
Application No. 08/624,091
2
BACKGROUND
The appellant's invention relates to an extendible and
retractable blind in combination with a multiple-glazed
window. Claim 17, the only claim involved in this appeal,
reads as follows:
17. An extendible and retractable blind in
combination with a multiple-glazed window comprising
a multiple-glazed window having at least two
parallel spaced apart panes of glass hermetically
sealed to each other to define an interior space
between said panes of glass, a blind comprised of a
film having a plurality of spaced apart parallel
creases extending from one side edge of the film to
an opposite side edge of the film, a multi-sided
mandrel upon which said film is wound, support means
for rotatably supporting said mandrel within said
space between said panes of glass, electric motor
means mounted within said space and operatively
connected to said mandrel for rotating said mandrel,
wherein said film has a thickness between 0.01 and
0.05 mm and said creases are provided at interval[s]
of 7-20 mm.
According to appellant, a blind comprised of a film
having a thickness between 0.01 and 0.05 mm would not perform
satisfactorily without the creases. The creases lead to the
formation of a wave profile, which in turn forms a roll with a
cross-section similar in shape to a sprocket wheel and with
its own torque when the blind is wound up. Further, the wave
profile helps increase transverse stiffness and promotes the
Appeal No. 2000-1712
Application No. 08/624,091
We derive our understanding of this reference from an English language2
translation thereof, prepared by the Patent and Trademark Office, a copy of
which is appended hereto.
3
formation of a cushion of air between the blind and the glass,
which stops the blind from sticking to the pane of glass
(specification, p. 3).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Trippner et al. (Trippner) 4,944,341 Jul. 31,
1990
Henkenjohann (German document) 3045883 Aug. 7, 19822
Claim 17 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trippner in view of Henkenjohann.
Reference is made to the brief and reply brief (Paper
Nos. 19 and 21) and the answer (Paper No. 20) for the
respective positions of the appellant and the examiner with
regard to the merits of this rejection.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claim 17, to the applied Trippner and Henkenjohann references,
and to the respective positions articulated by the appellant
Appeal No. 2000-1712
Application No. 08/624,091
4
and the examiner. For the reasons which follow we cannot
sustain the examiner's rejection.
Trippner discloses an extendible and retractable light
guard device in the form of a shutter or a shade with a light
guard sheet or web 2 in the space 1a between two panes 1 of an
insulating glass window. The shutter 2 is wound around a
cylindrical winding roller 3 and is extendible and retractable
by an electric motor 3a also located between the panes.
Trippner's shutter is not wound around a multi-sided mandrel
and is not provided with creases, as called for in claim 17.
Additionally, in that Trippner is silent with regard to the
thickness of the shutter, Trippner provides no response for
the limitation in claim 17 that the blind comprise a film
having a thickness between 0.01 and 0.05 mm.
To overcome the above-noted deficiencies, the examiner
relies upon the teachings of Henkenjohann of a pleated blind.
According to the examiner, it would have been obvious to
modify the shade material and arbor (winding roller) of
Trippner to have a pleated shade and conforming arbor as
taught by Henkenjohann (answer, p. 3). According to the
examiner, "[t]he specific thickness and spacing of the pleats
Appeal No. 2000-1712
Application No. 08/624,091
5
are clearly obvious based on the particular application to the
Trippner et al structure and environment" (answer, pp. 3-4).
Henkenjohann discloses a blind system that is attached
just above or beneath a window frame 12. The blind system
includes a winding shaft 10 formed with teeth 14 for winding a
blind 13 formed with a corresponding zig-zag shape, with slats
defined by folds 19. The blind 13 can be made of metal or
plastic and has a thickness of approximately 0.1-0.3 mm, for
example, 0.2 mm (translation, pp. 3 and 7). The blind
protects against solar radiation and the entry of insects.
Even accepting the examiner's position that the combined
teachings of Trippner and Henkenjohann would have suggested to
one having ordinary skill in the art provision of creases or
pleats on the Trippner shutter as proposed by the examiner,
Trippner and Henkenjohann would not have suggested provision
of a blind comprising a film having a thickness between 0.01
and 0.05 mm and creases at intervals of 7-20 mm wound upon a
mandrel between window panes, as called for in claim 17. It
is, in fact, this combination of features which results in a
compact blind that can be accommodated, with its mandrel,
between panes of windows with double or triple glazing wherein
Appeal No. 2000-1712
Application No. 08/624,091
6
the available spacing is on the order of 16 to 22 mm and can
be unwound and wound up tidily and accurately without sticking
to the glass (specification, p. 2, lines 9-18; p. 3, lines 3-
14; p. 6, lines 12-17).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
The examiner asserts that the specific thickness of the
blind and spacing of the pleats (creases) would have been
obvious based on the particular application to the Trippner
structure and environment but has not provided any evidence or
rationale to support that assertion. In particular, we note
that Trippner does not specify the diameter of the winding
roll, the spacing between the panes of glass, or the length
Appeal No. 2000-1712
Application No. 08/624,091
Appellant has explained on page 8 of the brief why a thin film having3
the thickness recited in claim 17 would not operate in Trippner's arrangement
and thus would not have been considered suitable to one of ordinary skill in
the art without an appreciation of the benefits of creases in overcoming the
problems of thin films. The examiner has not responded with evidence that
such a solution would have been appreciated by one skilled in the art at the
time of appellant's invention.
7
and thickness of the shutter. Accordingly, it is not3
apparent to us how one having ordinary skill in the art would
have arrived at the particular dimensions recited in claim 17
in the absence of appellant's disclosure. Thus, the
examiner's determination that the particular film thickness
and crease spacings recited in appellant's claim 17 would have
been obvious appears to us to stem from a hindsight
reconstruction of appellant's device.
Accordingly, we cannot sustain the examiner's rejection.
Appeal No. 2000-1712
Application No. 08/624,091
8
CONCLUSION
To summarize, the decision of the examiner to reject
claim 17 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-1712
Application No. 08/624,091
9
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