Ex parte Schurman

Board of Patent Appeals and Interferences

Jul 30, 1999

08162372 (B.P.A.I. Jul. 30, 1999)

Application for patent filed December 7, 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journal and (2) is not binding precedent of the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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER T. SCHURMAN
____________
Appeal No. 95-5048
Application No. 08/162,3721
____________
ON BRIEF
____________
Before CAROFF, METZ, and HANLON, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-5048
Application No. 08/162,372
Claims 4-7 were also finally rejected. However,2
claims 4 and 5 were canceled in an amendment filed under 37
CFR § 1.116 (Paper No. 6) entered by the examiner, and claims
6 and 7 were canceled in an AMENDMENT AFTER APPEAL (Paper No.
11) also entered by the examiner (see Supplemental Examiner's
Answer, p.2).
Claim 1 was amended in the AMENDMENT AFTER APPEAL3
(Paper No. 11) referred to in footnote 2 above.
2
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1 and 8-15, all of the claims pending in2
the
application. The claims on appeal are directed to a blow
molded article. Claim 1 is illustrative of the subject matter
on appeal and reads as follows:3
1. A blow molded article comprising:
a blow molded, hollow, double walled article having an
inner wall and an outer wall substantially parallel to each
other and forming a space therebetween, and a connecting wall
connecting the inner and outer walls and running substantially
perpendicular to the inner and outer walls;
wherein said inner wall has an inner wall face including
an edge portion thereof adjacent the connecting wall and a
central portion adjacent the edge portion;
at least one essentially U-shaped opening in the inner
wall face, said opening being a cut portion of the central
portion having components thereof essentially perpendicular to
each other, providing access to the space between the inner
and outer walls and forming at least one flap member integral
Appeal No. 95-5048
Application No. 08/162,372
In the "Response to argument" (Answer, pp.5-6), the4
examiner mentions four additional references. As stated in In
re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA
1970), "[w]here a reference is relied on to support a
rejection, whether or not in a 'minor capacity,' there would
appear to be no excuse for not positively including the
reference in the statement of the rejection." Since these
four references have not been included in the statement of the
rejection, we have not considered them in reaching our
decision.
3
with said connecting wall, wherein said flap member is movable
towards and away from said outer wall to form a movable
separating member spaced from the outer wall, said movable
flap member being integrally connected to said edge portion
along one side of said flap member by a hinge-like connection
permitting movement of the flap towards and away from the
outer wall;
wherein said at least one opening in the inner wall face
is in the central portion, wherein the flap member is integral
with said edge portion; and
wherein said article includes a cover member and a base
member complementary to each other and hinged together along a
hinge portion wherein said flap member is situated on the
cover member and wherein said flap member is integral with
said edge portion solely adjacent said hinge portion.
The references relied upon by the examiner are:4
Schurman et al. (Schurman) 3,795,265 Mar. 5, 1974
Byrns (Byrns) 4,611,713 Sep. 16, 1986
The following rejections are at issue in this appeal:
Appeal No. 95-5048
Application No. 08/162,372
4
(1) Claims 1 and 8-15 are rejected under 35 U.S.C. § 103
as being unpatentable over Schurman;
(2) Claims 1 and 8-15 are rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Schurman and
Byrns;
(3) Claims 1 and 8-15 are rejected under 35 U.S.C. §
112, first paragraph, as containing new matter; and
(4) Claims 1 and 8-15 are rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
Rejection under 35 U.S.C. § 112, first paragraph
Claims 1 and 8-15 are rejected under 35 U.S.C. § 112,
first paragraph, as containing new matter. According to the
examiner, the phrase "said edge portion solely adjacent said
hinge portion" in claim 1 is not supported in the
specification as originally filed (Supplemental Examiner's
Answer, p.6). Appellant relies on Figures 1 and 4 to
establish that the specification, as originally filed,
provides support for the invention now claimed. See Vas-Cath
Appeal No. 95-5048
Application No. 08/162,372
The specification has also been objected to under 355
U.S.C. § 112, first paragraph, as failing to provide support
for the phrase "said edge portion solely adjacent said hinge
portion" (see Supplemental Examiner's Answer, p.6). This
objection appears to be moot in view of the reversal of the
rejection of claims 1 and 8-15 under 35 U.S.C. § 112, first
paragraph.
5
Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118
(Fed. Cir. 1991) ("drawings alone may provide a 'written
description' of an invention as required by § 112"). We agree
with appellant that Figures 1 and 4 "unambiguously show the
connection solely adjacent the hinge portion" (Reply to
Supplemental Examiner's Answer, p.4). Therefore, the
rejection under 35 U.S.C. § 112, first paragraph, is
reversed.5
Rejection under 35 U.S.C. § 112, second paragraph
Claims 1 and 8-15 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention. Specifically
(Supplemental Examiner's Answer, p.6):
The recitation of "hinge-like" is unclear
to the Examiner's [sic, Examiner] because
the phrase hinge-like does not clearly
Appeal No. 95-5048
Application No. 08/162,372
6
recite the physical and/or structural
properties "like" a hinge that the
Appellant intends to claim.
We disagree. Claim 1 further defines the term "hinge-
like" as a "connection permitting movement of the flap towards
and away from the outer wall." Therefore, one having ordinary
skill in the art would have understood the term "hinge-like"
as it is used in claim 1 as requiring a connection which
permits movement of the flap towards and away from the outer
wall. The rejection under 35 U.S.C. § 112, second paragraph,
is reversed.
Rejections under 35 U.S.C. § 103
Claims 1 and 8-15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Schurman, either alone or in
combination with Byrns. The examiner sets forth the grounds
of rejection of claims 1 and 8-15 under 35 U.S.C. § 103 based
on Schurman alone at pages 3 through 4 of the Answer.
Specifically, the examiner recognizes (Answer, p.3):
Schurman et al. discloses a blow molded
article that is double walled having inner
and outer walls and a space therebetween, a
connecting wall between the inner and outer
walls running substantially perpendicular
(see Abstract). The inner wall has an
Appeal No. 95-5048
Application No. 08/162,372
7
inner wall face including an edge portion
adjacent the connecting wall, a central
portion adjacent the edge portion (see col.
3, lines 59-65). The article includes
cover and base members hinged together
along a hinge portion (see col. 4, lines
45-46).
However, the examiner has failed to address the additional
limitation in claim 1 of "at least one essentially U-shaped
opening in the inner wall face . . . forming at least one flap
member integral with said connecting wall, wherein said flap
member is movable towards and away from said outer wall . . .
."
The examiner bears the initial burden of presenting a
prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A
rejection based on 35 U.S.C. § 103 is premised on the "subject
matter as a whole." Having failed to explain how Schurman
either describes or renders obvious this additional limitation
in claim 1, the examiner has failed to establish how Schurman
renders the claimed "subject matter as a whole" obvious under
35 U.S.C. § 103, and therefore, has failed to satisfy his
initial burden of presenting a prima facie case of
Appeal No. 95-5048
Application No. 08/162,372
8
unpatentability. For this reason, the rejection of claim 1
under 35 U.S.C. § 103 as being unpatentable over Schurman
alone is reversed.
Claims 1 and 8-15 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Schurman and Byrns.
Byrns discloses a container for carrying a portable tool. The
container has a hinged cover formed of a double wall
construction and is configured to hold a rotary saw blade.
The innermost wall of the double wall construction is provided
with a raised portion of generally U-shape (see Figure 2, item
26). According to the examiner, the raised portion is made of
a plastic material which suggests that it is movable
(Supplemental Examiner's Answer, p.5). To the extent that the
examiner thus characterizes the raised portion as a movable
flap member, the raised portion is more correctly defined as a
"pocket" by virtue of its connection to three sides of the
cover. This "pocket" fails to meet the limitations of the
flap member in claim 1. See claim 1 ("wherein said flap
member is integral with said edge portion solely adjacent said
hinge portion"); see also Reply Brief, p.3. Therefore, the
Appeal No. 95-5048
Application No. 08/162,372
9
rejection of claim 1 under 35 U.S.C. § 103 as being
unpatentable over the combination of Schurman and Byrns is
also reversed.
Claims 8-15 are dependent on claim 1. Since the
rejections of claim 1 under 35 U.S.C. § 103 as being
unpatentable over Schurman, both alone and in combination with
Byrns, have been reversed, the rejections of claims 8-15 under
35 U.S.C. § 103 as being unpatentable over Schurman, both
alone and in combination with Byrns, are also reversed. See
37 CFR § 1.75(c) ("Claims in dependent form shall be construed
Appeal No. 95-5048
Application No. 08/162,372
10
to include all the limitations of the claim incorporated by
reference into the dependent claim.").
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANDREW H. METZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
lp
Appeal No. 95-5048
Application No. 08/162,372
11
BACHMAN & LAPOINTE
SUITE 1201
900 CHAPEL STREET
NEW HAVEN, CT 06510-2802
Leticia
Appeal No. 95-5048
Application No. 08/162,372
APJ HANLON
APJ CAROFF
APJ METZ
DECISION:
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: July 27, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT