Ex Parte Zakarin

Board of Patent Appeals and Interferences

Aug 15, 2002

09208514 (B.P.A.I. Aug. 15, 2002)

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for publication and is not binding precedent of the Board.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 LAWRENCE J. ZAKARIN
____________
Appeal No. 2001-2656
Application No. 09/208,514
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-10
and 20, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/208,514
Page 2
1Our understanding of this foreign language document was obtained by means of a PTO
translation, a copy of which is enclosed.
BACKGROUND
The appellant's invention relates to a carrying bag. An understanding of the
invention can be derived from a reading of exemplary claim 1, which reads as follows:
1. A carrying bag including:
at least one storage compartment,
said at least one storage compartment being formed from a recess
defined in a first surface of said carrying bag, a material covering said
recess, and access means operatively associated with said material to
permit an article to be received in said recess and retained in said recess
by said material, said material being expandable into an expanded
configuration to accommodate a portion fo said article received in said
recess and extending beyond said first surface of said carrying bag, said
material being automatically retractable into a retracted configuration
substantially planar with said first surface of said carrying bag when said
article is removed from said recess.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Cunningham 3,321,120 May 23, 1967
Zakarin 5,950,895 Sep. 14, 1999
(filed Dec. 17, 1997)
British Patent Specification 607,133 Aug. 26, 1948
(Platts)
Danish Patent1 57,338 Mar. 4, 1940
(Pederson)
Claims 1-10 and 20 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as
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Application No. 09/208,514
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to reasonably convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Claims 1-10 and 20 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as
to enable one skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.
Claims 1-10 and 20 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Cunningham in view of Platts.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Cunningham in view of Platts and Pedersen.
Claims 1-10 stand rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-20 of Zakarin U.S. Patent
No. 5,950,895 in view of Cunningham and Platts.
Claim 20 stands rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-20 of Zakarin U.S. Patent
No. 5,950,895 in view of Cunningham, Platts and Pedersen.
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Application No. 09/208,514
Page 4
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. 19) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 18) and Reply Brief (Paper No. 20) 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.
The First Rejection Under The First Paragraph of Section 112
The first of the two rejections of claims 1-10 and 20 under the first paragraph of
Section 112 is that the “recess defined in a first surface” of the carrying bag was not
described in the specification in such a way as to reasonably convey that the inventor
had possession of the claimed invention at the time the application was filed. We do
not agree.
It is true that the phrase “recess defined in the first surface” is not present in the
specification as filed. However, as was pointed out by the appellant on page 8 of the
Brief, the test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
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Application No. 09/208,514
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2See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir.
1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
3See, for example, Webster’s New Collegiate Dictionary, 1973, page 964.
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 claim
language.2
Independent claims 1 and 20 are directed to a carrying bag including “at least
one storage compartment,” which is disclosed on page 7 of the specification as
“storage compartment 4.” The claims continue by stating that the storage compartment
is “formed from a recess defined in a first surface of said carrying bag.” In this regard,
page 7 of the specification informs one of ordinary skill in the art that a “storage
compartment 4 is defined on a portion of a rear surface 8 of the backpack.” The
common applicable definitions of “recess” being an indentation or an alcove,3 it is our
view that one of ordinary skill in the art would have appreciated that the “recess” as set
forth in claims 1 and 20 corresponds to the “storage compartment 4" described in the
specification. This interpretation is confirmed by the statement in the claim that the
recess is covered by the expandable material, which corresponds to the explanation on
page 8 of the specification that compartment 4 has a surface 6 of expandable material.
This rejection is not sustained.
The Second Rejection Under The First Paragraph of Section 112
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4The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by one possessing the ordinary
level of skill in the pertinent art. Id.
It is not clear whether this rejection of claims 1-10 and 20 is under the description
requirement, the enablement requirement, or both. In any event, as we found above,
the claimed “recess defined in a first surface” of the carrying bag is supported by
explanation in the specification, even though the words used in the claim are not
present there. This being the case, and on the basis of analogous reasoning, it is our
view that having understood from the specification and drawings that the claimed
recess corresponds to the disclosed storage compartment 4, one of ordinary skill in the
art clearly would have sufficient information to be enabled to make and use the
invention.
We therefore find that the claimed invention meets the description and
enablement requirements of Section 112, and we will not sustain this rejection.
The Rejection Under The Second Paragraph Of Section 112
It is the examiner’s position that it is unclear as to what the appellant intends as
the “recess defined in a first surface,” and therefore independent claims 1 and 20 and
those claims depending therefrom are indefinite.4 For the reasons expressed above
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5The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
with regard to the first paragraph rejections, it is our view that the metes and bounds of
claims 1 and 20 clearly are discernible to one of ordinary skill in the art, and therefore
this rejection is not sustained.
The Rejections Under Section 103
The first of these rejections is that the subject matter of claims 1-10 would have
been obvious to one of ordinary skill in the art in view of the combined teachings of
Cunningham and Platts.5 It is the examiner’s view that Cunningham discloses all of the
subject matter recited in claim 1 except for the requirement that the material covering
the recess be expandable, but that such a feature is taught by Platts and it would have
been obvious to one of ordinary skill in the art to modify the Cunningham carrying bag
“in order to provide adjustment means for the carrying bag to receive many objects”
(Answer, page 8).
The objective of the Cunningham invention is to provide a pack that is capable of
supporting a load “without sagging or bending” (column 1, line 31). To accomplish this,
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6In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Cunningham teaches dividing the pack into compartments by means of fabric webs or
partitions “made of the same durable material as the walls” of the pack and “sewed or
otherwise securely bonded to the front, rear and side walls of the pack” (column 2, lines
32-35), as is shown in Figure 4. Partition 27 is described as “acting as a tension
member to prevent spreading of the front and rear walls in the lower portion of the filled
pack (column 2, lines 67 and 68). The examiner considers the compartment bounded
by walls 26 and 27 in Cunningham to be the required “recess in a first surface of said
carrying bag.” Accepting this at face value, Cunningham fails to disclose “a material
covering said recess . . . [and] being expandable into an expanded configuration to
accommodate a portion of said article received in said recess and extending beyond
said first surface of said carrying bag,” as is required by claim 1.
The Platts reference is directed to a suitcase having at least portions made of
expandable material in order to allow it to stretch “in one or more directions
automatically as contents are added” (page 1, lines 35-37). As shown in Figures 2 and
4, stretchable material is used in the sidewalls.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so.6 We fail
to perceive any teaching, suggestion or incentive in either Cunningham or Platts which
would have led one of ordinary skill in the art to modify the Cunningham pack in the
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manner proposed by the examiner. To replace any portion of the Cunningham pack
with expandable material would appear to be undesirable because it would allow
portions of the pack to sag. Moreover, to install an expandable material around the
access (the zipper) on the outer surface of the compartment formed by partitions 26
and 27, which Cunningham has explained is of particular importance in his invention
(column 2, line 63 et seq.) would, from our perspective, clearly allow the pack to bend,
which would compromise the objectives of the invention (column 1, line 31). This
would, in our view, operate as a disincentive to one of ordinary skill in the art to modify
Cunningham in the manner proposed by the examiner, that is, would negate suggestion
to combine.
It therefore is our conclusion that the combined teachings of Cunningham and
Platts fail to establish a prima facie case of obviousness with regard to the subject
matter recited in independent claim 1, and we will not sustain the rejection of claim 1 or,
it follows, of dependent claims 2-10.
Claim 20 stands rejected as being unpatentable over Cunningham and Platts,
taken further in view of Pedersen. Claim 20 includes all of the limitations recited in
claim 1, plus the requirement that there be a compartment for storing headgear and
means for removably attaching it to a portion of the carrying bag. It is to the latter
limitation that Pedersen is directed. However, be that as it may, Pedersen does not
alleviate the problem we pointed out above with regard to combining the teachings of
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Cunningham and Platts in such a manner as to render the subject matter of claim 1
obvious. Therefore, as was the case with claim 1, the rejection of claim 20 cannot be
sustained.
The Double Patenting Rejections
Claims 1-10 stand rejected under the judicially created doctrine of obviousness-
type double patenting “over claims 1-20 of U.S. Patent No. 5,950,895 [Zakarin] in view
of Cunningham, and further in view of Platts,” and claim 20 “over claims 1-20 of U.S.
Patent No. 5,950,895 [Zakarin] in view of Cunningham, and further in view of Platts . . .
[and] Pedersen” (Answer, pages 6 and 7). At the outset, we note that the appellant
rightly has protested that the examiner has failed to explain these two rejections in the
manner required by Section 804 of the Manual of Patent Examining Procedure, in that
he has not compared with particularity the subject matter recited in each of the
appellant’s eleven claims with that which is recited in the claims of the ‘895 patent
(Brief, pages 13 and 14). Thus the appellant, and the Board, are left to their own
devices to speculate how the examiner would have constructed the rejection of each of
the twelve claims before us on appeal. This is unacceptable, and in the usual such
case would necessitate that the application be remanded to the examiner for statement
of the rejections in the manner required by the MPEP.
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However, in the interest of judicial economy, we nevertheless shall act on the
standing double patenting rejections of the two independent claims, for it immediately is
clear to us that they are not sustainable.
Zakarin’s independent claims 1, 13 and 17 recite a carrying bag (or backpack)
having first and second storage compartments, the latter of which is configured to
receive headwear. Zakarin claims 1, 13 and 17 fail to set forth the recess in the
surface of the bag covered by an expandable material to permit an article received
therein to extend beyond the surface, as required by the claims in the application. The
examiner relies upon the teachings of Cunningham to modify Zakarin by providing a
compartment with a recess, and then upon those of Platts for the further modifcation of
providing the claimed expandable material. Even assuming, arguendo, that it would
have been obvious to provide the Zakarin bag with a compartment formed from a
recess in a surface in view of the teachings of Cunningham, for the reasons set forth
above with regard to the Section 103 rejections it is our conclusion that it would not
have been obvious in view of the teachings of Platts to further modify the Zakarin bag in
such a manner as to meet the expandable material requirement of application claims 1
and 20. With regard to claim 20, consideration of the added teachings of Pedersen
would not overcome this problem.
We therefore will not sustain the double patenting rejections of claims 1 and 20,
or of dependent claims 2-10.
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CONCLUSION
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None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-2656
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MARK P. STONE
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