Ex parte Shahid

Board of Patent Appeals and Interferences

Aug 16, 1999

08314829 (B.P.A.I. Aug. 16, 1999)

Application for patent filed September 29, 1994.1
In reviewing the claims we note (i) “said canopy means” in claims 5, 6 and 162
has no antecedent basis; (ii) “removably” in claims 7 and 17 apparently should be --
removable--; (iii) claims 14 and 15 are duplicates of claims 3 and 4, respectively. See
MPEP § 706.03(k).
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publication in a law journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM M. SHAHID
__________
Appeal No. 98-2261
Application 08/314,8291
___________
ON BRIEF
___________
Before CALVERT, McQUADE, and BAHR, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
18, all the claims in the application.
The claims on appeal are drawn to a reclining chair, and
are reproduced as Exhibit 1 of appellant’s brief .2
Appeal No. 98-2261
Application 08/314,829
This was a new ground of rejection made in the examiner’s answer.3
2
The prior art applied by the examiner is:
Craig 5,013,085 May 7, 1991
Baron 5,326,152 Jul. 5, 1994
DeMars 5,350,215 Sep. 27, 1994
Sinohuiz 5,356,107 Oct. 18, 1994
(filed Jul. 19, 1993)
The admitted prior art in appellant’s Declaration Under Rule
132 filed on August 15, 1996 (APA).
The appealed claims stand rejected under 35 U.S.C. § 103
on the following grounds:
(1) Claims 1 to 5, 14 and 15, unpatentable over DeMars in
view of Craig and Baron;
(2) Claims 7 to 13, 17 and 18, unpatentable over DeMars in
view of Craig, Baron and Sinohuiz;
(3) Claims 6 and 16, unpatentable over DeMars in view of
Craig, Baron and APA.3
Rejection (1)
Appellant argues as to this rejection that the subject
matter recited in claim 1 is patentable over DeMars in view of
Craig and Baron because:
Appeal No. 98-2261
Application 08/314,829
3
(a) there is no teaching or suggestion in DeMars of a towel
rack as recited in part (g) of claims 1 and 14; (b) Craig does
not teach or suggest a canopy formed of a member having ends
which
are pivotally connected to the frame through a connector; and
(c) it would not have been obvious from Baron to secure a
storage compartment to the foldable frame of the DeMars chair.
As for argument (a), the examiner takes the position that
the upper arm of DeMars’s frame 20 (to which bracket 64 is
attached) constitutes the towel rack as claimed. We agree.
While DeMars does not disclose or suggest that a towel may be
hung on the upper end of the frame, it is clearly capable of
being so used, and “[i]t is well settled that the recitation
of an intended new use for an old product does not make a
claim to that old product patentable”. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Appellant’s argument that the reference is destroyed by
modifying the reference is not well taken, since no
modification of DeMars is proposed. Also, the upper portion
of DeMars’s frame, on which the recited towel rack is
Appeal No. 98-2261
Application 08/314,829
4
readable, is coupled to the remainder of the frame, and thus
meets the language of part (g) of claims 1 and 14.
Appellant’s argument (b) is not understood, since the
ends of Craig’s canopy member 15 are clearly pivotally secured
to frame 13 by the connectors shown in Figs. 3 and 4 (col. 2,
lines 23 to 31). Contrary to appellant’s argument, claims 1
and 14 do
not require that the canopy be connected to the top of the
frame.
Although we are not persuaded by appellant’s arguments
(a) and (b), we agree with argument (c). The examiner relies
on Baron as teaching securement of storage compartments 30, 35
on the frame of a foldable chair. However, Baron’s storage
compartments are attached to a cover which is placed over the
chair, rather than to the frame of the chair itself. We do
not consider that in light of Baron’s disclosure one of
ordinary skill would have found it obvious to attach a storage
compartment to the frame of the DeMars chair in addition to
the compartments 76, 78 secured to the armrests. Although
Baron’s compartments may be said to be secured to the frame of
Appeal No. 98-2261
Application 08/314,829
5
the chair by means of the cover, it is not evident how a cover
as disclosed by Baron would be used with the chair of DeMars,
for the reasons stated by appellant on page 9 of the brief.
Accordingly, rejection (1) will not be sustained.
Rejections (2) and (3)
The additional prior art applied in these rejections,
namely, Sinohuiz and APA, does not supply the deficiency noted
above with regard to rejection (1), and therefore rejections
(2) and (3) will not be sustained.
Conclusion
The examiner’s decision to reject claims 1 to 18 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 98-2261
Application 08/314,829
6
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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