Ex Parte Wilfer

Board of Patent Appeals and Interferences

May 25, 2004

09713353 (B.P.A.I. May. 25, 2004)

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for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS-PETER WILFER
____________
Appeal No. 2004-0603
Application No. 09/713,353
____________
ON BRIEF
____________
Before ABRAMS, NASE 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 12 and
14-22, which are all of the claims pending in this application. Claims 12, 15 and 17
were amended subsequent to the final rejection (see Paper Nos. 10 and 11) and claim
13 was canceled.
We AFFIRM-IN-PART.
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Application No. 09/713,353
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1 We derive our understanding of the Fiedler and Miyako references from the translations,
provided by the USPTO, copies of which have been mailed to appellant (see page 3 of the answer, Paper
No. 15). The Miyako reference was referred to by the examiner and appellant as “Nobuhide.”
2 Claim 15 had been rejected in the final rejection (Paper No. 9) as being unpatentable over
Fiedler in view of Miyako, Ekman and Richards (U.S. Pat. No. 4,237,341). In light of the amendment
(Paper No. 10) filed subsequent to the final rejection, the rejection has been changed to reflect the
amendment to claim 15.
BACKGROUND
The appellant’s invention relates to a case for musical instruments comprising a
shell, a device for carrying the case and attachable to the shell, such as shoulder belts
and handles, and an element for receiving a communication device provided on the
device for carrying the case (specification, pages 1 and 2). Representative claims 12
and 19 are reproduced, infra, in the opinion section of this decision.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Ekman et al. (Ekman) 4,764,962 Aug. 16, 1988
Gormley et al. (Gormley) 5,711,469 Jan. 27, 1998
Fowles et al. (Fowles) 6,123,240 Sep. 26, 2000
(filed Oct. 20, 1998)
Fiedler EP 756,266 Jul. 30, 1997
Miyako et al. (Miyako) 9-154618 Jun. 17, 19971
(Japanese patent publication)
The following rejections are before us for review.
Claims 12, 14, 152 and 17-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fiedler in view of Miyako and Ekman.
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Application No. 09/713,353
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Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Fiedler in view of Miyako, Ekman and Fowles.
Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Fiedler in view of Miyako, Ekman and Gormley.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 20) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 14 and 16) 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.
We turn our attention first to claim 19, which reads as follows:
19. A case for musical instruments, comprising a shell;
means for carrying the case and attached to the shell; and
means provided on the carrying means for receiving a
communication device, wherein the receiving means
comprises a closable pocket having an insertion opening.
Fiedler discloses a box 1 for holding a musical instrument and straps 3, 4
connected via a hook buckle 20 with straps 10, 11 worn by the person carrying the box
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as illustrated in Figure 1. As best seen in Figures 1 and 2, the upper ends of straps 3, 4
are attached to the box at an upper portion thereof, the upper ends of straps 10, 11 are
attached to the box at an intermediate portion thereof and the lower ends of straps 3, 4
are attached to a lower portion of the box, with the hook buckle 20 resting on the
person’s shoulder so that it may take up a shoulder bag (see Figure 1 and page 11 of
the translation). The examiner concedes that Fiedler lacks “means provided on the
carrying means for receiving a communication device, wherein the receiving means
comprises a closable pocket having an insertion opening,” as called for in claim 19.
Miyako discloses a carrying case for a mobile telephone or the like designed for
attachment either to a belt (Figures 1 and 6) worn on slacks or to a “backpack or other
shoulder applying belt” (translation, page 8), as illustrated in Figures 5(C) and 7. The
carrying case has an upper opening which is closable by a narrow covering piece 2,
with openings on either side thereof for passage of, for example, an antenna
(translation, page 15).
Miyako, with its teaching of attaching a carrying case for a mobile telephone,
cassette tape recorder, camera, binoculars or the like (translation, page 10) to the
shoulder straps of, for example, a backpack, would have provided ample motivation to
one of ordinary skill in the art at the time of appellant’s invention to attach such a
carrying case to one of the straps 3, 4, 9, 10 of Fiedler’s musical instrument holding box
to attain the self-evident advantage of convenience in carrying the mobile telephone or
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the like device, thereby arriving at the subject matter of claim 19, either with or without
the additional teachings of Ekman.
Ekman further evidences that it was well known at the time of appellant’s
invention to attach a pouch 18, with a cover 18b, to shoulder straps for storage of a
Walkman-type radio or cassette recorder. Thus, in view of the combined teachings of
Fiedler, Miyako and Ekman, it would have been obvious to one of ordinary skill in the
art to provide on one of the shoulder straps 3, 4, 9, 10 of Fiedler, a carrying case or
pouch of the type taught by Miyako or Ekman to store a mobile telephone, cassette
recorder or the like device conveniently to arrive at appellant’s invention as recited in
claim 19.
Appellant argues on page 11 of the brief that none of Fiedler, Miyako and Ekman
“discloses or suggests providing a closable pocket on carrying means for a case for
musical instruments or any other case for that matter.” We do not find this argument
persuasive. First, Miyako does disclose providing a closable pocket on the shoulder
strap of a backpack, which is, in our opinion, a case. Moreover, nonobviousness
cannot be established by attacking the references individually when, as in the instant
case, the rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
For the foregoing reasons, we conclude that the combined teachings of Fiedler,
Miyako and Ekman are sufficient to have suggested the subject matter of claim 19.
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3 See 37 CFR § 1.192(c)(7) and In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
Thus, we shall sustain the rejection of claim 19, as well as dependent claims 20 and 21
which appellant has grouped with claim 19 (brief, page 5), as being unpatentable over
Fiedler in view of Miyako and Ekman.3 We shall also sustain the rejection of dependent
claim 22 as being unpatentable over Fiedler in view of Miyako, Ekman and Gormley
since the appellant has not challenged such with any reasonable specificity (See In re
Nielson, 816 F.2d 1567, 1572, 2USPQ2d 1525, 1528 (Fed. Cir. 1987)) and in fact has
indicated that claim 22 stands or falls with claim 19 (brief, page 5).
We turn our attention next to independent claim 12, which reads as follows:
12. A case for musical instruments, comprising a shell;
means for carrying the case and attached to the shell; and
means permanently attached to the carrying means for
receiving a communication device,
[w]herein the carrying means comprises two shoulder
belts, and wherein the receiving means is permanently
attached to one of the shoulder belts on an outer side of the
one of the shoulder belts.
None of the references, Fiedler, Miyako and Ekman, relied upon by the examiner
in rejecting claim 12 teaches or suggests a permanent attachment of a receiving means
to a shoulder belt. We find no such teaching, in particular, in Ekman, the reference
alluded to by the examiner on page 4 of the answer as teaching a permanent
attachment of a means for receiving an audio device to a carrying means. While
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4 The examiner’s characterization of such an attachment as permanent is certainly reasonable,
especially in light of appellant’s disclosure on page 7, in lines 4 and 5, of the present specification.
Ekman discloses securement of the pouch 18 to strips 30 by stitching,4 the straps 22,
24, which correspond to the claimed “carrying means”, are simply placed within loops
defined by the strips 30 and thus are not permanently secured thereto. See the last
paragraph of column 2 of Ekman. Accordingly, the pouch 18 cannot reasonably be
considered to be permanently attached to the straps 22, 24.
In light of the foregoing, the combined teachings of Fiedler, Miyako and Ekman
would not have suggested permanent attachment of a receiving means to one of the
shoulder belts of Fiedler’s device to arrive at the subject matter of claim 12. It thus
follows that we cannot sustain the rejection of claim 12, or claims 14, 15, 17 and 18
which depend therefrom, as being unpatentable over Fiedler in view of Miyako and
Ekman. Inasmuch as Fowles, relied upon by the examiner for its teaching of a
protection foil (electromagnetic shield 54) in a pouch for a communication device
(pager), likewise fails to teach that which is lacking in the combination of Fiedler,
Miyako and Ekman, we also cannot sustain the rejection of dependent claim 16 as
being unpatentable over Fiedler in view of Miyako, Ekman and Fowles.
CONCLUSION
To summarize, the decision of the examiner to reject claims 12 and 14-22 under
35 U.S.C. § 103 is affirmed as to claims 19-22 and reversed as to claims 12 and 14-18.
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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).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/vsh
Appeal No. 2004-0603
Application No. 09/713,353
Page 9
DAVID TOREN, ESQ.
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