Ex Parte Spiegel

Board of Patent Appeals and Interferences

Jul 21, 2005

10144987 (B.P.A.I. Jul. 21, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte H. JAY SPIEGEL
____________
Appeal No. 2005-0489
Application No. 10/144,987
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HEARD: MAY 18, 2005
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Before PATE, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 28-32.
Claims 1-3, 8-11, 13, 16, 18, 20-23, 25 and 26 have been indicated as allowable and
claim 33 stands objected to as depending from a rejected claim. No other claims are
pending in this application.
We REVERSE and REMAND.
Appeal No. 2005-0489
Application No. 10/144,987
Page 2
BACKGROUND
The appellant's invention relates to a flag holder for reducing fraying of a flag.
The flag holder utilizes a lower fitting mounted on the flagpole with a lower mounting
permitting free movement of the lower fitting along the length of the flagpole toward the
upper fitting. Further understanding of the invention may be obtained from a reading of
independent claim 28, which is reproduced infra in the opinion section of this decision.
The Prior Art
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Hall 433,124 Jul. 29, 1890
Rohrbaugh 1,360,584 Nov. 30, 1920
Dobbins 5,697,321 Dec. 16, 1997
Fisher et al. (Fisher) Des. 427,108 Jun. 27, 2000
The Rejections
The following rejections are before us for review.
Claim 28 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Fisher in view of Rohrbaugh.
Claims 29 and 31 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Fisher in view of Rohrbaugh and Hall.
Claims 30 and 32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Fisher in view of Rohrbaugh and Dobbins.
Appeal No. 2005-0489
Application No. 10/144,987
Page 3
1 The appeal brief was originally filed on August 12, 2003. A duplicate copy of the appeal brief
was filed on November 4, 2003.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
for the examiner's complete reasoning in support of the rejections and to the brief1 and
reply brief for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 28, the only independent claim before us on appeal, reads as follows:
28. In a moving vehicle, the improvement comprising a flag
holder, comprising:
a) an upper fitting and a lower fitting, each including
coupling means for coupling to a separate attachment
location on a leading edge of a flag, banner or pennant;
b) a flagpole mounted on said vehicle and having a
body, an axis of elongation and a length;
c) said upper fitting mounted on said flagpole with an
upper mounting, said upper mounting precluding said upper
fitting from moving along said axis of elongation of said
flagpole;
d) said lower fitting being mounted on said flagpole
body with a lower mounting permitting free movement of said
lower fitting along said length of said flagpole toward said
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Application No. 10/144,987
Page 4
upper fitting, said lower mounting substantially precluding
said lower fitting from lateral movement with respect to said
axis of elongation, such lateral movement being limited by
slight spacing between said lower mounting and said body,
said slight spacing provided solely to facilitate said free
movement;
e) whereby, when said upper and lower fittings are
coupled to separate attachment locations on said flag,
banner or pennant, and said vehicle is moving, relative wind
speed above a desired threshold with respect to said
flagpole causes said lower fitting to move up said flagpole
toward said upper fitting, thereby causing said flag, banner
or pennant to adopt a non-planar elongated U-shaped
configuration reducing snapping of a trailing edge thereof
remote from said flagpole.
Fisher merely discloses an ornamental design for a flag holder for vehicles,
without providing any details as to the mounting of the flag thereon. Rohrbaugh
discloses an endless flag halyard entrained around the pulley 2 at the top of a flag mast
1, the halyard provided with an upper flag attaching means 4, including a tubular part 5
through which the halyard may be threaded and in which the halyard is secured against
relative movement by means of set screws 6 and further including a snap hook
construction 7 adapted to engage the ring 8 in the upper corner of the flag, and a lower
flag attaching means which consists of an elongated body member 9 to one end of
which an enlarged ring 10 is integrally secured and to the other end of which a snap
hook 11 is integrally secured. According to Rohrbaugh,
[t]he ring 10 is of a diameter which is materially greater than
the diameter of the halyard with which it is intended to be
Appeal No. 2005-0489
Application No. 10/144,987
Page 5
used so that it may be free to loosely slide up and down on
the halyard and also free to move transversely relatively to
the halyard.
When a flag is connected to its halyard according to
my invention there is no possibility of its being frayed,
whipped or torn because when the wind strikes it, the ring 10
of the fastener 9 is free to and will slide up an down on the
halyard and thereby permit the flag to spill the wind and at
the same time retain sufficient wind pressure to maintain it in
extended position. Ordinary wind pressure will be taken care
of by the relative transverse movement of the ring 10 while
greater pressure will be taken care of by this transverse
movement of the ring 10 plus the flexibility of the halyard
[page 1, lines 82-103].
In rejecting claim 28, the examiner’s position is that it would have been obvious
to one of ordinary skill in the art at the time of appellant’s invention to modify Fisher’s
flag holder for vehicles “so as to include movement of the lower fitting towards the upper
fitting, as taught by Rohrbaugh, so as to provide a means for eliminating the whipping,
fraying and tearing of the flag (column 1, lines 33-34) during striking of the wind”
(answer, page 5). With respect to the limitation in claim 28 “said lower mounting
substantially precluding said lower fitting from lateral movement with respect to the axis
of elongation,” the examiner contends that “the amount of movement due to the slight
spacing from the axis of elongation of Rohrbaugh (Fig. 4, Rohrbaugh) is comparable to
the amount of movement due [to] slight spacing from the axis of elongation of the
applicant’s invention (Fig. 4, applicant’s drawings)” (answer, page 9).
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Application No. 10/144,987
Page 6
The applicant argues, and we agree, that Rohrbaugh relies in part on the
flexibility of the halyard to handle wind pressure and, thus, would not have suggested
mounting a flag, even via a lower mounting which permits movement up and down in
the direction of the axis of elongation of the flag pole, directly to the flagpole (or flag
holder) of Fisher, rather than to a halyard. Moreover, in light of Rohrbaugh’s expressed
objective to size the ring 10 with a materially greater diameter than that of the halyard
so that it is free to slide loosely up and down on the halyard and also free to move
transversely relatively to the halyard to take up wind pressure, Rohrbaugh cannot
reasonably be considered to teach or suggest a “lower mounting substantially
precluding said lower fitting from lateral movement with respect to said axis of
elongation, such lateral movement being limited by slight spacing between the lower
mounting and said body, said slight spacing provided solely to facilitate said free
movement” as called for in claim 28. It follows that we cannot sustain the examiner’s
rejection of claim 28 as being unpatentable over Fisher in view of Rohrbaugh.
The examiner’s application of Hall and Dobbins in rejecting the dependent claims
provides no cure for the deficiency of the combination of Fisher and Rohrbaugh
discussed above. We therefore also cannot sustain the rejections of claims 29 and 31
as being unpatentable over Fisher in view of Rohrbaugh and Hall and claims 30 and 32
as being unpatentable over Fisher in view of Rohrbaugh and Dobbins.
Appeal No. 2005-0489
Application No. 10/144,987
Page 7
REMAND TO THE EXAMINER
This application is remanded to the examiner, pursuant to our authority under 37
CFR § 41.50(a), to consider whether the present application, as originally filed, provides
written descriptive support for the subject matter of claims 28-32 in compliance with the
first paragraph of 35 U.S.C. § 112.
The description requirement found in the first paragraph of 35 U.S.C. 1l2 is
separate from the enablement requirement of that provision. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed. Cir. 1991) and In
re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434 U.S.
1064, 197 USPQ 271 (1978). Moreover, as the court stated in In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claimed
language. The content of the drawings may also be
considered in determining compliance with the written
description requirement. (citations omitted)
Although the claimed invention does not necessarily have to be expressed in ipsis
verbus in order to satisfy the description requirement (see In re Wertheim, 541 F.2d
257, 265, 191 USPQ 90, 98 (CCPA 1976)), it is nonetheless necessary that the
disclosed apparatus inherently perform the functions now claimed (note In re Smythe,
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Application No. 10/144,987
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480 F.2d 1376, 1383, 178 USPQ 279, 284 (CCPA 1973)). The fact that one skilled in
the art might realize from reading a disclosure that something is possible is not a
sufficient indication to that person that the something is a part of an appellant's
disclosure. See Barker, 559 F.2d at 593, 194 USPQ at 474. Precisely how close the
original description must come to comply with the description requirement must be
deter-mined on a case-by-case basis. The primary consideration is factual and
depends on the nature of the invention and the amount of knowledge imparted to those
skilled in the art by the disclosure. See Vas-Cath Inc. v. Mahurkar, 935 F.2d at
1561-63, 19 USPQ2d at 1115-17.
We note, at the outset, that claims 28-32 are not original claims. Each of these
claims recites “said lower mounting substantially precluding said lower fitting from lateral
movement with respect to said axis of elongation, such lateral movement being limited
by slight spacing between said lower mounting and said body, said slight spacing
provided solely to facilitate said free movement.” The appellant’s specification discloses
that “[t]he lower fitting may freely reciprocate with respect to the flagpole and, if desired,
may rotate with respect thereto” (page 4). The specification also states, on page 6, that
[i]n one embodiment of the present invention, the lower
fitting has a fixed diameter opening therethrough sized to
allow easy sliding along the flagpole. In another
embodiment, the lower fitting consists of a known clamping
mechanism which is placed about the flagpole in a manner
not contemplated by that mechanism, to wit, so that the
lower fitting loosely fits about the flagpole without clamping it
to allow easy sliding.
Appeal No. 2005-0489
Application No. 10/144,987
Page 9
Further, on page 8, in describing the embodiment of Figures 1-4, the appellant’s
specification discloses that the lower fitting includes a sleeve 21 “having an internal
passageway 23 having dimensions permitting it to easily slide up and down over the
outer periphery of the shaft 2.” In the embodiment illustrated in Figure 5, the appellant
discloses an alternative construction of the lower fitting comprising a clamping
mechanism 33 which includes two legs 35, 37 having facing teeth 39, 41. On pages 9
and 10, the appellant’s specification states:
As the clamping mechanism 33 is designed, it is intended
that the legs 35 and 37 be squeezed together until the
surfaces 43 and 45 tightly clamp about the periphery of a
shaft preventing any rotation or reciprocation with respect
thereto. As the clamping mechanism 33 is used in
accordance with the teachings of the present invention, it is
oriented as shown in Figure 5 with the surfaces 43 and 45
clearly spaced away from the periphery of the shaft 2 so that
the fitting 30 may freely reciprocate up and down the shaft in
accordance with the teachings of the present invention.
The appellant’s specification does not expressly teach that the lower mounting
substantially precludes the lower fitting from lateral movement with respect to the axis of
elongation, such lateral movement being limited by slight spacing between said lower
mounting and said body, the slight spacing being provided solely to facilitate free
movement of the lower fitting along the length of the flagpole, as recited in claims 28-32.
In the portions cited above, the specification refers to dimensions permitting easy
sliding, a loosely fitting lower fitting, and surfaces of a clamping mechanism “clearly
spaced” from the periphery of the shaft. We question whether this disclosure, even
coupled with the illustrations in Figures 1-3 and 5, is sufficient to convey to one of
Appeal No. 2005-0489
Application No. 10/144,987
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ordinary skill in the art that the disclosed lower fitting structure inherently precludes
lateral movement of the lower fitting with respect to the axis of elongation of the shaft so
as to provide written description support for the cited claim limitations in compliance with
35 U.S.C. § 112, first paragraph.
CONCLUSION
To summarize, the decision of the examiner to reject claims 28-32 under 35
U.S.C. § 103 is reversed and the application is remanded to the examiner for
consideration of whether claims 28-32 have written descriptive support in the application
as originally filed, as explained above.
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Application No. 10/144,987
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED AND REMANDED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2005-0489
Application No. 10/144,987
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H. Jay Spiegel
P.O. Box 444
Mount Vernon, VA 22121