Ex parte Sturm et al.

Board of Patent Appeals and Interferences

Dec 12, 1997

07999422 (B.P.A.I. Dec. 12, 1997)

Application for reissue patent filed December 31, 1992. 1
According to the appellants, the application is a reissue of
U.S. Patent No. 4,981,095 (Application No. 07/470,974, filed
January 26, 1990), which was a continuation of Application No.
07/321,720, filed March 10, 1989, now U.S. Patent No.
4,901,661.
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journal and (2) is not binding precedent of the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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LILLIAN P. STURM and KURT D. SALOMON
____________
Appeal No. 97-3187
Application No. 07/999,4221
____________
HEARD: September 16, 1997
____________
Before CALVERT, COHEN, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's final rejection
(Paper No. 18, mailed November 13, 1995) of claims 1 through 6
Appeal No. 97-3187
Application No. 07/999,422
2
which are all of the claims pending in this application.
However, the appellants on page 4 of their brief (Paper No.
25, filed November 8, 1996) have withdrawn the appeal on
claims 3 and 4. Accordingly, the appeal as to claims 3 and 4
is dismissed, leaving only claims 1, 2, 5 and 6 for our
consideration.
We REVERSE and enter a new ground of rejection pursuant
to
37 CFR § 1.196(b).
BACKGROUND
The appellant's invention relates to a decorative ribbon
and a method of securing a wire filament along an edge of a
fabric ribbon. Copies of claims 1, 2, 5 and 6 are attached to
this decision.
Application No. 07/321,720
Application No. 07/321,720 was filed by the appellants on
March 10, 1989 with claims 1 through 13. Claims 1 through 6
were directed to a decorative edge-reinforced ribbon. Claims
Appeal No. 97-3187
Application No. 07/999,422
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7 through 12 were directed to a method of securing a wire
along an edge of a fabric ribbon. Claim 13 was directed to a
stitching machine for producing a decorative wired ribbon.
The examiner required restriction (see Paper No. 5,
mailed July 18, 1989) between Group I (claims 1 through 12)
and Group II (claim 13). The appellants elected Group I and
canceled claim 13 (see Paper No. 6, filed August 21, 1989).
The examiner then allowed claims 1 through 12 (see Paper
No. 7, mailed September 5, 1989).
The appellants submitted an amendment and petition under
Rule 312 (37 CFR § 1.312) (see Paper No. 10, filed September
26, 1989). The amendment presented proposed claims 14 and 15
and the appellants stated on page 3 of the petition that the
proposed claims were "intended to ensure that the applicant is
adequately protected against infringers -- two of which have
already been discovered." Proposed claim 14 was directed to a
decorative ribbon. Proposed claim 14 differed from allowed
claim 1 in that it did not require the wire filament to be
Appeal No. 97-3187
Application No. 07/999,422
4
disposed within the fold of the lateral folded edge. Proposed
claim 15 was directed to a method of securing a wire filament
along an edge of a fabric ribbon. Proposed claim 15 differed
from allowed claim 7 in the language used in the stitching
step.
The amendment under Rule 312 was disapproved (see Paper
No. 11, mailed November 11, 1989). The reason stated for not
entering the amendment was that proposed claim 14 would not be
patentable over the newly cited patent to Stevens (U.S. Patent
No. 1,657,184).
The appellants paid the issue fee on December 7, 1989
and this application issued as U.S. Patent No. 4,901,661 on
February 20, 1990.
Application No. 07/470,974
Application No. 07/470,974 was filed by the appellants on
January 26, 1990 as a 37 CFR § 1.60 continuation of
Application No. 07/321,720 (the parent application). Claims 1
through 13 from the parent application were canceled and new
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Application No. 07/999,422
5
claims 14 and 15 were added (see Paper No. 3, filed January
26, 1990). New claim 14 was directed to a decorative ribbon.
New claim 14 differed from proposed claim 14 in the parent
application in that it required a folded edge. New claim 15
was directed to a method of securing a wire filament along an
edge of a fabric ribbon. New claim 15 is identical to
proposed claim 15 in the parent application.
The examiner required restriction (see Paper No. 5,
mailed June 13, 1990) between Group I (claim 14) and Group II
(claim 15). The examiner stated the inventions were distinct
because
Group I and Group II are related as process of making and
product made. The inventions are distinct if either or
both of the following can be shown: (1) that the process
as claimed can be used to make another and materially
different product or (2) that the product as claimed can
be made by another and materially different process.
(MPEP 806.05(f)).
In the instant case, the ribbon of claim 14 need not be
folded around the wire filament, as required by claim 15.
The appellants' response to the restriction requirement
(see Paper No. 6, filed July 3, 1990) amended claim 14 so that
Appeal No. 97-3187
Application No. 07/999,422
6
it is consistent with claim 15 and elected amended claim 14.
In this response the appellants stated
Claim 14 now requires the wire to be within the folded
edge, not merely proximate thereto. As a result, the
ribbon of claim 14, as amended, is folded around the wire
filament, as required by claim 15. In view of this
amendment, the examiner is respectfully requested to
withdraw the restriction requirement.
The examiner then allowed claims 14 and 15 (see Paper No.
7, mailed July 31, 1990). The examiner stated that
In view of the amendment to claim 14, claims 14 and 15
are no longer considered to be distinct inventions. Thus
the restriction requirement of the first office action is
withdrawn.
The appellants paid the issue fee on October 25, 1990 and
this application issued as U.S. Patent No. 4,981,095 on
January 1, 1991.
Application No. 07/999,422
Application No. 07/999,422 was filed with claims 1
through 6 by the appellants on December 31, 1992 as a reissue
application for U.S. Patent No. 4,981,095. Claims 1 and 2
were the original patent claims (i.e., amended claim 14 and
Appeal No. 97-3187
Application No. 07/999,422
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claim 15 from Application No. 07/470,974). Claims 3 and 4
were broader claims directed to a decorative ribbon. Claims 5
and 6 were broader claims directed to a method of securing a
wire along an edge of a web of fabric ribbon. Claims 3
through 6 were broader than claims 1 and 2 since they were not
limited to the ribbon fabric being folded around the wire
filament.
The reissue declaration of Lillian P. Sturm (the reissue
declaration) filed with this application avers that
the patentees failed to appreciate and recognize that the
claims as presented unduly limit the claimed ribbon and
the method of manufacturing the ribbon to only the
embodiment wherein the ribbon fabric is specifically
folded around the wire filament . . . the above errors
arose because the patentees and counsel, throughout the
prosection of the application that matured into the '095
patent, focused only on the claims encompassing the
embodiment of the invention wherein a fold is provided
for surrounding the wire filament. Specific attention
was not directed to claiming the embodiment disclosed
wherein the fold is absent and the wire filament is
simply positioned along the edge of the web of ribbon
material and surrounded by the binding and trim filaments
[pp. 2-3].
The examiner finally rejected claims 1 through 6 (see
Paper No. 18, mailed November 13, 1995) under 35 U.S.C. § 251
Appeal No. 97-3187
Application No. 07/999,422
As noted above, the appellants have withdrawn claims 3-2
4.
8
as the appellants' failure to timely file a divisional
application was not considered to be error causing the patent
granted on the elected claims to be partially inoperative by
reason of claiming less than they had a right to claim.2
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the 35 U.S.C. §
251 rejection, we make reference to the final rejection and
the examiner's answer (Paper No. 26, mailed February 28, 1997)
for the examiner's complete reasoning in support of the
rejection, and to the appellants' brief for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the respective positions articulated
by the appellants and the examiner. As a consequence of our
review, we will not sustain the examiner's rejection under 35
U.S.C.
Appeal No. 97-3187
Application No. 07/999,422
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§ 251 for the following reasons.
The issue presented by the examiner and the appellants is
whether the "divisional doctrine" set forth in In re Orita,
550 F.2d 1277, 193 USPQ 145 (CCPA 1977) is applicable in this
application. The "divisional doctrine" declares that where
the PTO issues a restriction requirement and the applicant
responds by canceling claims to the nonelected invention, and
then the applicant fails to file a divisional application with
the canceled claims, the applicant is deemed to have
acquiesced in the restriction and is estopped from obtaining
by reissue the subject matter of the canceled claims. Orita,
550 F.2d at 1280, 193 USPQ at 148. This "divisional doctrine"
has been strictly construed against reissue applicants
claiming "error" in failing to file a divisional application
after a restriction requirement. Even if the applicant's
representative misunderstood the applicant's instructions,
this does not constitute "error" within the meaning of 35
U.S.C. § 251. See In re Weiler, 790 F.2d 1576, 1582, 229 USPQ
673, 677 (Fed. Cir. 1986). "Section 251 is not a panacea
designed to cure every mistake which might be committed by an
Appeal No. 97-3187
Application No. 07/999,422
10
applicant or his attorney." Orita, 550 F.2d at 1281, 193
USPQ at 149. On the other hand, Section 251 is a remedial
statute that is to be interpreted liberally. Weiler, 790 F.2d
at 1579, 229 USPQ at 675. "Although attorney error is not an
open invitation to reissue every case in which it may appear .
. . the purpose of the reissue statute is to avoid forfeiture
of substantive rights due to error made without intent to
deceive." Scripps Clinic & Research Found. v. Genentech,
Inc., 927 F.2d 1565, 1575, 18 USPQ2d 1001, 1009 (Fed. Cir.
1991).
The "divisional doctrine" set forth in Orita does not
apply to the facts of this case. In that regard, we note that
method claims 5 and 6 were never subject to a restriction
requirement. The restriction requirement made in Application
No. 07/470,974 was between a process of making and product
made. Thus, there never was a determination by the PTO that
the subject matter of claims 1 and 2 was restrictable from the
subject matter of claims 5 and 6 (i.e., that the subject
matter of claims 1 and 2 defines an independent and distinct
invention from the subject matter of claims 5 and 6).
Appeal No. 97-3187
Application No. 07/999,422
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Furthermore, it is our opinion that it is inappropriate to
extend the "divisional doctrine" set forth in Orita to cover
the facts of this case.
For the reasons stated above, we do sustain the
examiner's rejection of claims 1, 2, 5 and 6 under 35 U.S.C. §
251.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection:
Claims 1, 2, 5 and 6 are rejected for obviousness-type
double patenting over claims 1, 3 and 7 from U.S. Patent No.
4,901,661, for the reasons explained below.
In this case, the proper test for obviousness-type double
patenting is the "one-way" test set forth in In re Goodman,
11 F.3d 1046, 1053, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993),
since the appellants chose to file a continuation (i.e.,
Application No. 07/470,974) and seek issuance of the allowed
claims in Application No. 07/321,720 by payment of the issue
Appeal No. 97-3187
Application No. 07/999,422
12
fee after notification of the examiner's refusal to enter the
appellants' amendment under Rule 312 (Paper No. 10, filed
September 26, 1989). Under the "one-way" test for
obviousness-type double patenting, we must determine whether
the pending claims 1, 2, 5 and 6 define merely an obvious
variation of claims 1, 3 and 7 from U.S. Patent No. 4,901,661.
Pending claim 1
A comparison of pending claim 1 and claim 1 from U.S.
Patent No. 4,901,661 reveals that both are directed to a
decorative ribbon comprising (1) a web of ribbon material a
folded edge, (2) a wire filament disposed along and within the
folded edge; and (3) stitch means for securing the folded edge
of the web to the wire filament, wherein the stitch means
includes a trim filament substantially covering the edge and
the wire filament from view and a binding filament passing
through the web of ribbon material and around the trim
filament to secure the wire filament and the trim filament to
the folded edge. However, this comparison also reveals that
pending claim 1 recites the following features that claim 1
from U.S. Patent No. 4,901,661 does not recite: (1) the web
Appeal No. 97-3187
Application No. 07/999,422
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has two faces, and (2) the binding filament and the trim
filament being of different constructions.
With respect to the web having two faces, it is our
opinion that such a limitation is inherently present in the
web recited in claim 1 from U.S. Patent No. 4,901,661.

With respect to the binding filament and the trim
filament being of different constructions, we note that claim
3 from U.S. Patent No. 4,901,661 recites that the trim
filament is of metallic thread and the binding filament is a
solid monofilament.
It is our opinion that claim 3 from U.S. Patent No.
4,901,661 can be equated to a species of the invention, while
pending claim 1 can be equated to a genus of the invention.
However, the generic invention of pending claim 1 is
"anticipated" by the species of the patented invention (i.e.,
claim 3 from U.S. Patent No. 4,901,661). See Goodman,
11 F.3d at 1053, 29 USPQ2d at 2016. Thus, without a terminal
disclaimer, the species claims preclude issuance of the
Appeal No. 97-3187
Application No. 07/999,422
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generic claims as in In re Van Ornum, 686 F.2d 937, 944, 214
USPQ 761, 767 (CCPA 1982) and In re Schneller, 397 F.2d 350,
354, 158 USPQ 210, 214 (CCPA 1968).
Pending claim 2
A comparison of pending claim 2 and claim 7 from U.S.
Patent No. 4,901,661 reveals that both are directed to a
method of securing a wire along an edge of a fabric ribbon,
comprising the steps of (1) positioning a wire filament
adjacent to and in parallel contact with the edge; (2) folding
the edge of the ribbon around the wire filament, such that at
least some of the circumference of the wire filament is
coextensive with and covered by the ribbon, thereby creating a
sleeve of fabric for engaging the wire filament; and (3)
stitching the wire filament to the edge using at least two
additional filaments, such that the wire filament is in tight
engagement with the edge, said stitching step including, in a
single continuous operation, passing a trim filament at least
partially around the edge and the wire filament, said trim
filament covering substantially all of the wire filament from
view, and passing a binding filament through the ribbon and
Appeal No. 97-3187
Application No. 07/999,422
15
around the edge, the trim filament and the wire filament,
thereby securing the wire filament to the edge.
This comparison also reveals that pending claim 2 recites
the step of passing a binding filament through the ribbon
proximate the edge which claim 7 from U.S. Patent No.
4,901,661 does not recite.
It is our opinion that it would have been obvious to one
of ordinary skill in the art to pass the binding filament of
claim 7 from U.S. Patent No. 4,901,661 through the ribbon
proximate the edge in order to reduce the amount of binding
filament needed to secure the wire filament to the edge.
Pending claim 5
A comparison of pending claim 5 and claim 7 from U.S.
Patent No. 4,901,661 reveals that both are directed to a
method of securing a wire along an edge of a fabric ribbon,
comprising the steps of (1) positioning a wire filament
adjacent to and in parallel contact with the edge; and (2)
stitching the wire filament to the edge using at least two
Appeal No. 97-3187
Application No. 07/999,422
16
additional filaments, such that the wire filament is in tight
engagement with the ribbon, said stitching step including, in
a single continuous operation, passing a trim filament around
the edge and the wire filament, said trim filament covering
substantially all of the wire filament from view, and passing
a binding filament through the ribbon and around the wire
filament, thereby securing the wire filament to the ribbon.
This comparison also reveals that pending claim 5 does
not recite the step of folding the edge of the ribbon around
the wire filament as recited in claim 7 from U.S. Patent No.
4,901,661.
It is our opinion that claim 7 from U.S. Patent No.
4,901,661 can be equated to a species of the invention, while
pending claim 5 can be equated to a genus of the invention.
However, as pointed out with respect to pending claim 1 above,
the generic invention of pending claim 5 is "anticipated" by
the species of the patented invention (i.e., claim 7 from U.S.
Patent No. 4,901,661). See Goodman, supra. Thus, without a
terminal disclaimer, the species claims preclude issuance of
Appeal No. 97-3187
Application No. 07/999,422
17
the generic claims as in In re Van Ornum, supra and In re
Schneller, supra.
Pending claim 6
Pending dependent claim 6 adds the limitation to parent
claim 5 that the wire filament is positioned along the bottom
face of the web.
It is our opinion that it would have been obvious to one
of ordinary skill in the art to position the wire filament of
claim 7 from U.S. Patent No. 4,901,661 on the bottom face of
the ribbon since the placement of the wire filament on either
the top or bottom face of the ribbon is a matter of designer's
choice since claimed relationship does not solve a stated
problem or yield an unexpected result. See In re Kuhle, 526
F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 5 and 6 under 35 U.S.C. § 251 is reversed; and a
new rejection of claims 1, 2, 5 and 6 for obviousness-type
Appeal No. 97-3187
Application No. 07/999,422
18
double patenting has been added pursuant to provisions of 37
CFR
§ 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-3187
Application No. 07/999,422
19
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3187
Application No. 07/999,422
20
ROBERT C. PODWIL
REED SMITH SHAW & MCCLAY
2500 ONE LIBERTY PLACE
PHILADELPHIA , PA 19103-7301
Appeal No. 97-3187
Application No. 07/999,422
1
APPENDIX
Claims 1, 3 and 7 from U.S. Patent No. 4,901,661
1. A decorative edge-reinforced ribbon comprising:
a web of ribbon material having a lateral folded edge;
a wire filament disposed along and within the fold of
said edge; and
stitch means for securing the folded edge of the web
around said wire filament, said means including a trim
filament passing through the ribbon material and positioned
substantially around the wire filament and the folded edge,
thereby substantially covering the edge and the wire filament
from view, and a binding filament passing through the ribbon
material and around the wire filament, the folded edge and the
trim filament, thereby securing the wire filament and the trim
filament to the folded edge.
3. A ribbon according to claim 1, wherein the wire filament
is of galvanized steel, the trim filament is of metallic
thread, and the binding filament is a solid monofilament.
7. A method of securing a wire along an edge of a fabric
ribbon, comprising the steps of:
Appeal No. 97-3187
Application No. 07/999,422
2
positioning a wire filament adjacent to and in parallel
contact with said edge;
folding the edge of the ribbon around the wire filament,
such that at least some of the circumference of the wire
filament is coextensive with and covered by the ribbon,
thereby creating a sleeve of fabric for engaging the wire
filament; and
stitching said wire filament to said edge using at least
two additional filaments, such that the wire filament is in
tight engagement with the edge, said stitching step including,
in a single continuous operation, passing a trim filament
through the ribbon and around the edge and the wire filament,
said trim filament covering substantially all of the wire
filament from view, and passing a binding filament through the
ribbon and around the edge, the trim filament and the wire
filament, thereby securing the wire filament to the edge.
Appeal No. 97-3187
Application No. 07/999,422
3
Claims 1 and 2 from U.S. Patent No. 4,981,095 and from
Application No. 07/999,422

1. A decorative ribbon comprising:
a web of ribbon material having two faces and a folded
edge
therebetween;
a wire filament disposed along and within said edge; and
stitch means for securing the edge of the web to said
wire filament, said stitch means including a trim filament,
said trim filament substantially covering the edge and the
wire filament from view from at least one said face, and a
binding filament passing through said web proximate to said
edge and interlocking with the trim filament to secure the
wire filament and the trim filament to the edge, said binding
filament and trim filament being of different constructions.
2. A method of securing a wire filament along an edge of a
fabric ribbon, comprising the steps of:
positioning a wire filament adjacent to and in parallel
contact with said edge;
folding the edge of the ribbon around the wire filament
such that at least some of the circumference of the wire
filament is coextensive with and covered by the ribbon,
thereby creating a sleeve of fabric for engaging the wire
filament; and
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Application No. 07/999,422
4
stitching said wire filament to said edge using at least
two additional filaments, such that the wire filament is in
tight engagement with the edge, said stitching step including,
in a single continuous operation, passing a trim filament at
least partially around the edge and the wire filament, said
trim filament covering substantially all of the wire filament
from view from at least one face of the ribbon, and passing a
binding filament through the ribbon proximate the edge, and
intermingling said binding filament with the trim filament and
the wire filament to secure the wire filament to the edge.
Appeal No. 97-3187
Application No. 07/999,422
5
Claims 5 and 6 from Application No. 07/999,422
5. A method of securing a wire filament along an edge of a
web of fabric ribbon having top and bottom faces and at least
a first edge therealong, said method comprising the steps of:
positioning a wire filament along said web of fabric in
parallel relationship with and adjacent to said first edge of
said web; and
stitching said wire filament to said fabric web using at
least two additional filaments, such that said wire filament
is in tight engagement with of [sic] said web, said stitching
step including, in a single continuous operation:
passing a binding filament through said web and around
said wire filament to secure said wire filament against said
web, and interlocking a trim filament with said binding
filament along said web such that said trim filament
substantially covers said wire filament and said edge from
view along at least one of said faces.
6. A method as claimed in claim 5, wherein said wire
filament is positioned along said bottom face of said web.
APPEAL NO. 97-3187 - JUDGE NASE
APPLICATION NO. 07/999,422
APJ NASE
APJ COHEN
APJ CALVERT
DECISION: REVERSED; 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 26 Sep 97
1st Rev. 09 Dec 97
FINAL TYPED: