Ex parte Stanfield

Board of Patent Appeals and Interferences

Apr 30, 2001

09227903 (B.P.A.I. Apr. 30, 2001)

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not written for publication and is not binding precedent of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. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES STANFIELD
_____________
Appeal No. 2000-2008
Application No. 09/227,903
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
11, all the claims in the application.
The involved invention concerns an aid for teaching
children and the handicapped how to tie a bow in a shoelace.
The subject matter in issue is defined by claims 1 to 11,
Appeal No. 2000-2008
Application No. 09/227,903
2
which are reproduced in the appendix of appellant's brief.
The references applied in the final rejection are:
Bonfigli 4,017,984 Apr. 19,
1977
Stanfield 5,897,323 Apr.
27, 1999
Claims 1 to 11 stand finally rejected on the following
grounds:
(1) Anticipated by Bonfigli, under 35 U.S.C. § 102(b);
(2) Obviousness-type double patenting, over claims 1, 3 and 4
of the Stanfield patent.
Rejection (1) - Anticipation
First considering this rejection with regard to the
recitations of claim 1, the examiner finds that Bonfigli
discloses apparatus for teaching, inter alia, how to tie a
bow, having a plate 12 with first shoe markings, second shoe
markings representing a loop (Fig. 3), a shoelace mount
consisting of flaps 14, 16 (which have holes 34), and a hold-
down consisting of tab 46, which is spaced from the shoelace
mount.
In order to anticipate a claim, a prior art reference
must disclose every limitation of the claimed invention,
Appeal No. 2000-2008
Application No. 09/227,903
3
either explicitly or inherently. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Appellant
argues that claim 1 is not anticipated, because Bonfigli's
hold-down tab 46 cannot "be operated by a child to temporarily
press a location along said shoelace which has been laid in a
loop on said second shoe marking, against said upper surface,"
as recited in claim 1. The examiner's position seems to be
that this recitation does not differentiate the claimed
apparatus from the structure disclosed by Bonfigli because it
is a recitation of how the claimed apparatus is intended to be
employed (answer, page 5). However, we do not agree that the
quoted claim language is merely a recitation of the intended
use or function of the apparatus, but rather consider that it
imports a structural limitation into the claim. As disclosed
in appellant's specification at page 4, lines 19 to 21, and
shown in Fig. 2, the hold-down 42 lies along the loop marking
40 or slightly beyond it, holding a location 44 along the
corresponding shoelace loop 36 to the shoe device 12. Giving
the claim recitation in question its broadest reasonable
interpretation in light of this disclosure (see In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997)),
Appeal No. 2000-2008
Application No. 09/227,903
We note that "said location" in line 8 of the claim has1
no antecedent basis. In the interest of avoiding piecemeal
appellate review, we will construe this term as --a location--
, but it should be corrected in the event of further
prosecution.
4
it is evident that it requires that the hold-down be so
positioned as to enable it to be pressed upon a location along
the portion of the shoelace which has been laid in a loop on
the second shoe marking. Since Bonfigli's hold-down tab 46 is
not located in a position to enable it to be pressed upon a
location along the shoelace loop which has been laid on the
second shoe marking 44, as shown in Fig. 4a, Bonfigli does not
anticipate claim 1.
We therefore will not sustain rejection (1) as to claim
1, or as to claims 2 to 5 dependent thereon.
Claim 6 reads:1
6. A shoe device comprising:
a plate which has front and rear portions and upper and
lower surfaces, with said upper surface of said plate marked
along said front portion to represent the front of a shoe;
said plate has means for holding a middle portion of a
shoelace that has opposite end portions;
said plate has a cutout forming a tab that is spaced from
said means for holding a middle portion to hold down [a]
location along one of said shoelace end portions to said
Appeal No. 2000-2008
Application No. 09/227,903
5
plate.
The examiner reads the claimed "means for holding" on
flaps 14, 16 of Bonfigli, and the claimed tab on Bonfigli's
tab 46. Appellant argues that Bonfigli "does not have a tab
spaced from the means for holding a middle portion of the
shoelace, in order to hold-down a looped end portion of the
shoelace" (brief, page 5). This argument is not persuasive
because Bonfigli's tab 46 clearly is spaced from flaps 14 and
16. Also, claim 6 (unlike claim 1) does not require that the
tab hold down a looped portion of the shoelace, but only that
it "hold down said [sic: a, per footnote 1, supra] location
along one of said shoelace end portions;" Bonfigli's tab 46
meets this limitation in that it holds down a location along
the shoelace portion to the left of center dot 24b (in Fig.
8).
Thus, claim 6 is anticipated by Bonfigli.
Claim 7 is also anticipated by Bonfigli. Appellant's
only argument as to this claim is that Bonfigli's plate (12)
"does not have a rounded front end, but only rounded markings"
(brief, page 5). However, as the examiner points out,
Bonfigli discloses that the outline of the "shoe" "may be
Appeal No. 2000-2008
Application No. 09/227,903
6
formed from a sheet from which the side flaps 14 and 16 are
made and adhered to the panel 12" (col. 1, lines 58 to 60).
Such a sheet constitutes a "plate" as broadly recited, there
being no requirement in the claim that the "plate" be of any
particular stiffness. Bonfigli also meets claims 8 and 9,
since flaps 14, 16, which contain holes 34, are made from the
sheet ("plate"), according to the above-quoted disclosure.
Claims 10 and 11 each recite a hold-down (claim 10) or
tab (claim 11) which is spaced from the holes in flaps 14 and
16. Claims 10 and 11 further require that the hold-down is
"for holding down an end portion of said shoelace that
projects from said holes" (claim 10) or "to hold down a second
location which lies along one of said shoelace ends that
projects from one of said holes" (claim 11). The tab 46 of
Bonfigli meets these limitations because it would be capable
of holding down a location on one of the shoelaces that
project from holes 34. For example, considering Fig. 8 of
Bonfigli, the end of the shoelace projecting from the hole in
tab 14b could be brought over and placed under the tab 46.
While the Bonfigli device is not described as being intended
to be used in this manner, the disclosed structure meets
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Application No. 09/227,903
7
claims 10 and 11 because it is capable of such use. It 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, supra. Cf. In re Casey, 370
F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967).
Accordingly, rejection (1) of claims 6 to 11 will be
sustained.
Rejection (2)-Double Patenting
On page 2 of the final rejection and page 4 of the
answer, the examiner's statement of this rejection is:
Claims 1-11 are rejected under the judicially
created doctrine of obviousness-type double
patenting as being unpatentable over claims 1, 3,
and 4 of U.S. Patent No. 5,897,323. Although the
conflicting claims are not identical, they are not
patentably distinct from each other because they
derive from the same disclosure, contain slight
variations on the same limitations, and could have
been claimed in the original application.
This statement is not sufficient to enable this Board to
determine whether or not the rejection should be sustained.
Therefore, pursuant to 37 CFR § 1.196(a), this case is
remanded to the examiner to amplify the basis of the
rejection. In so doing, the examiner should, for each of
claims 1 to 11, (1) compare that claim with the single claim
Appeal No. 2000-2008
Application No. 09/227,903
8
of the patent to which that claim most closely corresponds;
(2) determine the differences between that application claim
and the patent claim; and (3) in light of those differences,
determine whether the application claim is an obvious
variation of the patent claim, and if so, explain why. See
MPEP § 804, part II B.
We note that on page 8 of the brief appellant requests a
decision "as to . . . which claims would require a terminal
disclaimer." However, a terminal disclaimer under 37 CFR
§ 1.321(a), second sentence, does not apply to individual
claims, but rather to all claims in any patent to be issued.
See MPEP
§§ 804.02 and 1490.
Conclusion
The examiner's decision to reject claims 1 to 11 under
35 U.S.C. § 102(b) is reversed as to claims 1 to 5, and
affirmed as to claims 6 to 11. The application is remanded to
the examiner with regard to the double patenting rejection.
Since this decision includes a remand, it shall not be
considered a final decision. See 37 CFR § 1.196(e) and MPEP
§§ 1211 and 1213.
Appeal No. 2000-2008
Application No. 09/227,903
9
This application, by virtue of its "special" status,
requires an immediate action, M.P.E.P 708.01(d). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART and REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. MCQUADE )
Administrative Patent Judge )
IAC:lbg
LEON D. ROSEN
FREILICH, HORNBAKER & ROSEN
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