Ex Parte Speck

Board of Patent Appeals and Interferences

Dec 11, 2002

09433988 (B.P.A.I. Dec. 11, 2002)

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not written for publication and is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL W. SPECK
__________
Appeal No. 2002-0357
Application 09/433,988
___________
ON BRIEF
___________
Before ABRAMS, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Michael W. Speck appeals from the final rejection of claims
1 through 40. Claims 41 through 47, the only other claims
pending in the application, stand withdrawn from consideration
pursuant to 37 CFR § 1.142(b).
THE INVENTION
The invention relates to “baseball/softball equipment bags,
and more particularly to bags adapted to hang from a fence”
Appeal No. 2002-0357
Application 09/433,988
2
(specification, page 1). Representative claim 1 reads as
follows:
1. A hanging baseball equipment bag comprising:
an elongated bag having a length, a top end and a bottom
end, a front, a back, a left side and a right side, said
elongated bag forming a non-rigid and flexible enclosure;
a fence clip for vertically hanging said elongated bag from
a chain link fence;
a substantially planar interior shelf positioned between
said top and bottom ends within said elongated bag, said interior
shelf is substantially horizontal when said elongated bag
vertically hangs from said fence clip in a substantially vertical
position;
an interior rear panel attached to the interior of said
elongated bag and oriented substantially parallel to said back,
said interior rear panel dividing said elongated bag into a front
compartment and a rear compartment, said front compartment
divided into an upper front compartment and a lower front
compartment by said interior shelf,
wherein said front compartment is located between said front
and said interior rear panel and said rear compartment is located
between said back and said interior rear panel;
first means for accessing said rear compartment in said top
end; and
means for substantially fully exposing said upper front
compartment from a frontal view of said elongated bag.
THE EVIDENCE
The items relied on by the examiner to support the final
rejection are:
Plough et al. (Plough) 4,301,898 Nov. 24, 1981
Gerch (Gerch ‘748) 4,805,748 Feb. 21, 1989
Gerch et al. (Gerch ‘154) 4,830,154 May 16, 1989
Shyr et al. (Shyr) 5,042,664 Aug. 27, 1991
Appeal No. 2002-0357
Application 09/433,988
1 The record indicates that the instant application is a
continuation of the Speck patents.
2 The information disclosure statement filed March 27, 2000
(Paper No. 4) indicates that the Mizuno item is from a 1993 sales
catalog and expressly admits it to be prior art.
3
Speck (Speck ‘529)1 5,588,529 Dec. 31, 1996
Speck (Speck ‘995)1 6,009,995 Jan. 4, 2000
Softball Sales 93, p. 35, Mizuno #MTB Bag (Mizuno)2
The items relied on by the appellant as evidence of non-
obviousness are:
The 37 CFR § 1.132 Declaration of Michael W. Speck made
of record on October 2, 2000 (Paper No. 7)
The 37 CFR § 1.132 Declaration of Jay Strange made of
record on October 2, 2000 (Paper No. 7)
THE REJECTIONS
Claims 1 through 40 stand rejected under the judicially
created doctrine of obviousness-type double patenting as claiming
obvious variations of the inventions set forth in claims 1
through 9 of the Speck ‘995 patent and claims 1 through 5 of the
Speck ‘529 patent.
Claims 1 through 13, 15 through 20 and 22 through 40 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mizuno in view of Shyr and any one of Gerch ‘748, Gerch ‘154 or
Plough.
Appeal No. 2002-0357
Application 09/433,988
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Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 11 and 13) and to the examiner’s answer (Paper
No. 12) for the respective positions of the appellant and the
examiner with regard to the merits of these rejections.
DISCUSSION
I. The obviousness-type double patenting rejections
We shall summarily sustain the standing obviousness-type
double patenting rejections of claims 1 through 40 based on Speck
‘995 and Speck ‘529, respectively, as the appellant, stating an
intention to file a curative terminal disclaimer (see page 2 in
the main brief), has not contested the merits thereof.
II. The 35 U.S.C. § 103(a) rejection
Mizuno, the examiner’s primary reference, discloses a bag
which the appellant characterizes as follows:
[t]he Mizuno #MTB bag . . . is a baseball
equipment bag having an elongated bag forming a non-
rigid, flexible enclosure, a rear compartment for
holding bats, a means for accessing the rear
compartment at the upper end of the bag, a large front
compartment for holding gloves, shoes, clothing, etc.,
a means for accessing the front compartment, and a
smaller compartment on the inside of the bag having a
zipper closure. The Mizuno #MTB bag also has handles
and shoulder straps for carrying. While it is not
clear whether the Mizuno #MTB bag includes a fence clip
for hanging, Appellant acknowledges that there were
prior art equipment bags with fence clips prior to
Appellant’s invention [main brief, pages 10 and 11].
Appeal No. 2002-0357
Application 09/433,988
5
Conceding that the Mizuno bag does not meet the limitations
in independent claims 1, 11, 13, 17, 20, 24 and 25 requiring an
interior shelf, the examiner nonetheless concludes that “it would
have been obvious to place shelves, such as that in Shyr et al.
into the Mizuno #MTB bag . . . which could be frameless as taught
by Gerch ‘748, Gerch et al.[‘154], or Plough et al., to help
organize the bag by separating it into individual compartments”
(answer, page 4). Gerch ‘748, Gerch ‘154 and Plough, cited as
being exemplary of frameless bags which hold their shape,
respectively disclose a sports duffel bag having an expandable
side pocket for receiving a tennis racket head, a general purpose
sports/travel bag, and a bag particularly designed to accommodate
police equipment. Shyr discloses a soft-sided sports locker bag
having a hinged door-like end wall and removable interior shelves
which divide the bag into separate compartments for sports shoes,
uniforms, baseball caps, sweat bands, sunglasses, and the like.
The appellant’s position that the foregoing reference
combination advanced by the examiner stems solely from
impermissible hindsight is well taken. In short, there is
nothing in Gerch ‘748, Gerch ‘154, Plough and/or Shyr, and
particularly in Shyr, which would have suggested incorporating
one or more interior shelves into the particular baseball
Appeal No. 2002-0357
Application 09/433,988
3 This being so, we find it unnecessary to delve into the
merits of the appellant’s declaration evidence of non-
obviousness.
6
equipment bag disclosed by Mizuno so as to respond to the shelf
limitations in independent claims 1, 11, 13, 17, 20, 24 and 25.
Hence, Mizuno, Gerch ‘748, Gerch ‘154, Plough and Shyr,
applied in the manner proposed by the examiner, fail to establish
a prima facie case of obviousness with respect to the subject
matter recited in independent claims 1, 11, 13, 17, 20, 24 and
25.3 Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1, 11, 13, 17, 20, 24 and 25, and
dependent claims 2 through 10, 12, 15, 16, 18, 19, 22, 23 and 26
through 40, as being unpatentable over Mizuno in view of Shyr and
any one of Gerch ‘748, Gerch ‘154 or Plough.
III. Matter for further consideration
Upon return of the application to the technology center, the
examiner should consider whether it would have been obvious to
one of ordinary skill in the art to add fence clips, admitted to
be prior art by the appellant, to the locker bag disclosed by
Shyr, and if so whether this prior art combination, considered in
conjunction with the appellant’s declaration evidence of non-
obviousness, warrants a 35 U.S.C. § 103(a) rejection of any of
the appealed claims.
Appeal No. 2002-0357
Application 09/433,988
7
SUMMARY
Since at least one rejection of each of claims 1 through 40
is sustained, the overall decision of the examiner to reject
these claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-0357
Application 09/433,988
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