Ex Parte Carter

Board of Patent Appeals and Interferences

Feb 27, 2009

10370813 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NANCY LEE CARTER
__________

Appeal 2008-5682
Application 10/370,813
Technology Center 3700
__________

Decided:1 February 27, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5682
Application 10/370,813

This is an appeal under 35 U.S.C. § 134 involving claims to a carrying
case that can be rolled up for portability. The Examiner rejected one claim
as anticipated and four remaining claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The invention is a portable carrying case. (Spec. 1:2-4.) The case is
described as adapted to provide easy access to office items, cosmetics, and
the like. (Id.)
Claims 1 and 14-17, which are all the pending claims, are on appeal.
The Examiner rejected the claims as follows:
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Williams (US
5,325,991, issued Jul. 5, 1994);
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Roegner (US
5,779,033, issued Jul. 14, 1998);
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Lindsay et al.
(US 5,121,833, issued Jun. 16, 1992);
• claims 14, 15 and 17 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Roegner and Lindsay; and
• claim 16 under 35 U.S.C. § 103(a) as obvious over the combined
teachings of Roegner, Lindsay and Noriega et al.2 (US 5,505,356, issued
Apr. 9, 1996).

2 A patent issued to LeSage is listed in the statement of rejection.
However, the Examiner indicates that LeSage was included inadvertently as
a carry over from an earlier Office action, and that LeSage is no longer
relied on for evidence. (Ans. 9.) Citations are to the Supplemental
Examiner’s Answer mailed Aug. 30, 2007.
2
Appeal 2008-5682
Application 10/370,813

Appellant argues claims 14, 15, and 17 together as a group; and we
designate claim 14 as representative for claims 15 and 17. 37 C.F.R.
§ 41.37(c)(1)(vii). Claims 1 and 14-16 read as follows:
1. A rollable portable carrying case adapted to provide easy access to a
plurality of items, comprising:

(a) the portable carrying case having a base and a holding
mechanism;
(b) the holding mechanism being secured to the base;
(c) the holding mechanism being adapted to removably receive at
least one article;
(d) the at least one article being adapted to fit within the portable
carrying case;
(e) the portable carrying case having a closing means in order to
contain the at least one article for transport;
(f) the holding mechanism being adapted to removably receive a
securing means, the securing means being mounted on a single
member of the group consisting of the at least one article in
order to removably position the at least one article on the
holding mechanism;
(g) the portable carrying case being openable in order to provide
access to the at least one article for transport;
(h) the portable carrying case being closable in order to contain the
at least one article for transport;
(i) the base being formed of a flexible material;
(j) the holding mechanism being formed of a flexible material;
(k) the holding mechanism forming part of a hook and loop
assembly;
(1) the flexible material being adapted for a rolled closure;
(m) the closing means being a closure device being mounted on the
base; and
(n) the closure device being adapted to hold the flexible material in
a rolled storage position.

14. A portable carrying case adapted to provide easy access to a plurality
of items, comprising:
3
Appeal 2008-5682
Application 10/370,813

(a) the portable carrying case having a base and a holding
mechanism;
(b) the holding mechanism being secured to the base;
(c) the holding mechanism being adapted to removably receive at
least one article;
(d) the at least one article being adapted to fit within the portable
carrying case;
(e) the portable carrying case having a closing means in order to
contain the at least one article for transport;
(f) the holding mechanism being adapted to removably receive a
securing means, the securing means being mounted on a single
member of the group consisting of the at least one article in
order to removably position the at least one article on the
holding mechanism;
(g) the portable carrying case being openable in order to provide
access to the at least one article for transport;
(h) the portable carrying case being closable in order to contain the
at least one article for transport;
(i) the base being a rollable material;
(j) the holding mechanism being a hook portion of a hook and loop
assembly; and
(k) the securing means being a loop portion of a hook and loop
assembly.

15. The portable carrying case of Claim 14 further comprising:

(a) a closure device being mounted on the flexible material;
(b) a mirror being mounted on the flexible material;
(c) the flexible material having at least one of the holding
mechanism thereon;
(d) the holding mechanism being adapted to receive at least one
fixing device;
(e) a fixing device from the at least one fixing device being secured
to at least one item selected from the group of at least one piece
of office equipment and at least one cosmetic element; and
(f) the fixing device providing storage and accessibility for the at
least one item.

4
Appeal 2008-5682
Application 10/370,813

16. The portable carrying case of Claim 15 further comprising the holding
mechanism being continuous.

ANTICIPATION
The Anticipation Issue
The Examiner’s position is that each of Williams, Roegner, and
Lindsay independently disclosed the invention Appellant claims. (Ans. 3-4.)
Appellant contends that each of the earlier patents the Examiner cited
is “nonanalogous.” (App. Br. 18, 19, 21.) Further, each of the three patents
is said to lack one or more features of claim 1. Williams’ drink holder is not
equivalent to Appellant’s device holding cosmetics or office items, and does
not serve Appellant’s purpose; Williams’ device does not hold an item at a
specific desired position; and Williams’ device doesn’t secure a plurality of
items. (App. Br. 17-19.) Roegner’s device is foldable but not rollable.
(App. Br. 19.) Lindsay “does not disclose a rollable device for storing items
secured thereto therein.” (App. Br. 20.)
The issues with respect to this rejection are:
• is “nonanalogous” art a consideration under § 102;
• did Williams disclose every limitation of claim 1;
• did Roegner disclose every limitation of claim 1; and
• did Lindsay disclose every limitation of claim 1?
Findings of Fact
1. Williams disclosed a portable, rollable carrying case/base defined by
an insulating blanket 12 of flexible sponge material. (Col. 4, ll. 34-
37.)
5
Appeal 2008-5682
Application 10/370,813

2. Williams used hook and loop fasteners to hold and position an L-
shaped back 10, i.e., an item, on the blanket 12. (Col. 4, ll. 40-54.)
3. Williams used hook and loop fasteners as closing means 32 and 34,
adapted for a rolled closure. (Fig. 3; col. 4, l. 64 – col. 5, l. 13.)
4. Roegner disclosed a jewelry carrying case with multiple pockets.
(Col. 1, ll. 10-14.)
5. Roegner’s case was constructed of “a pliable material, such as leather,
vinyl, or any of the suitable woven materials, now widely used for suit
cases and the like.” (Col. 2, ll. 10-13.)
6. Roegner’s primary support panel 10 used hook and loop fasteners 22-
28 to receive multiple pockets 30, 32, 34, i.e., items. (Col. 2, ll. 23-
36.)
7. Roegner’s primary support panel could be “rolled or folded” over the
pocket assemblies. (Col. 2, ll. 38-44.)
8. Roegner’s pocket assemblies were made of fabric material. (Col. 2, ll.
58-61.)
9. Roegner used hook and loop fasteners 86, 88 adapted for a rolled
closure. (Col. 3, ll. 56-59.)
10. Lindsay disclosed a jewelry display and travel case 10 that included a
front piece 12 defining a base of flexible material. (Col. 3, ll. 54-62.)
11. Lindsay used hook and loop (aka hook and pile) fasteners to position
and hold a mirror 20, and a timepiece 18 on the device. (Col. 2, ll. 52-
57; col. 3, ll. 65-68.)
12. Lindsay used a closure device mounted on the base, adapted to hold
the flexible material in a rolled storage position. (Col. 4, ll. 56-66.)
6
Appeal 2008-5682
Application 10/370,813

Principles of Law Relating to Anticipation
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed
publication . . . more than one year prior to the date of the
application for patent in the United States.

35 U.S.C. § 102(b).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.
Anticipation is an issue of fact, and the question whether a claim limitation
is inherent in a prior art reference is a factual issue.” In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).

Analysis of the Anticipation Issues
We first consider Appellant’s argument that the Williams, Roegner
and Lindsay patents disclose nonanalogous devices. This argument is not
relevant to § 102. The question is whether each reference discloses a device
having every element recited in the claims. Schreiber, 128 F.3d at 1478 (“A
reference may be from an entirely different field of endeavor than that of the
claimed invention or may be directed to an entirely different problem from
the one addressed by the inventor, yet the reference will still anticipate if it
explicitly or inherently discloses every limitation recited in the claims.”).

The Rejection over Williams
Appellant argues that Williams’ drink holder does not serve
Appellant’s purpose; that Appellant’s cosmetics or office items are not
equivalent to Williams’ drink container; that Williams lacks any device to
7
Appeal 2008-5682
Application 10/370,813

hold the item at a specific location within the sleeve; and that each item used
in Appellant’s holder has a device to position the item at a desired position.
(App. Br. 17-18.) These arguments are not persuasive because claim 1 does
not include limitations to cosmetic or office items, to a specific location, or
to an item having a device to position the item at a desired position.
Appellant also argues that Williams is not adapted to serve as a
portable carrying case, that no second item is securable in Williams’ device,
and that Williams’ structure is insufficient to secure a plurality of articles.
(App. Br. 18.) Williams disclosed a portable carrying case. See Figs. 4 and
9, which showed the device carried in a vehicle (Williams, col. 3, ll. 52-54),
and on a person (id. at col. 4, ll. 3-5). As to “plurality,” the claim preamble
and the body of the claim are inconsistent. 3 The preamble recites “plurality
of items,” which means two or more items. However, the body of the claim
only requires a holder adapted to “receive at least one article.” Williams’
holder received at least one article, a drink container, and therefore
anticipated the limitation “at least one article” in the body of claim 1. (Fig.
4.) Williams’ holder also received a second item, support 10, and thus
anticipated “plurality” in the claim preamble. (FF2.)

The Rejection over Roegner
According to Appellant, Roegner’s jewelry carrying case is foldable,
not rollable, and one would be “hard pressed” to attach Roegner’s jewelry to

3 The inconsistency between the preamble and the body of the claim makes
the claim ambiguous. Because we affirm the rejections over prior art, it is
unnecessary to add a rejection under 35 U.S.C. § 112, second paragraph.
8
Appeal 2008-5682
Application 10/370,813

the hook and loop securements in Claim 1. (App. Br. 19.) We find that
although Roegner disclosed that foldable embodiments were preferred,
Roegner also disclosed rollable embodiments. (FF7.) Roegner disclosed a
rollable support panel with hook and loop securements for attaching
removable pockets. (FF6.) Appellant’s broad claim term “article” reads on
Roegner’s removable envelope-like pockets, into which jewelry can be
placed.
Roegner’s primary support panel was preferably constructed of a
pliable material, such as leather, vinyl, or any suitable woven material, such
as used for suit cases. (FF5.) Roegner attached pockets to the support panel,
and the pockets correspond to “articles for transport” in claim 1. (FF6.) The
envelope-like pockets are attached to the primary support panel with hook
and loop fasteners. (Id.) Although Roegner’s primary support panel “is also
preferably provided with a stiffener panel,” (Roegner, col. 2, ll. 35-38),
Roegner’s embodiments without the preferred stiffener panel remained
rollable. Roegner taught that the primary support panel can be “rolled or
folded” over the pocket assemblies. (FF7.) The pockets are made of the
same pliable material as the primary support panel. (FF8.) Thus, Roegner’s
entire carrying case, with pockets in place, was rollable. Roegner’s
disclosure of an embodiment without the preferred stiffening panel
anticipates Appellant’s claim. Application of Watanabe, 315 F.2d 924, 927
(CCPA 1963) (“A disclosure of a composition of matter in a reference may
be anticipatory even though the reference indicates that such composition is
not preferred or even that it is unsatisfactory for the intended purpose”); see
also Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361
9
Appeal 2008-5682
Application 10/370,813

(Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the
invention, the reference then disparages it.”).

The Rejection over Lindsay
According to Appellant, Lindsay “does not disclose a rollable device
for storing items secured thereto therein” (App. Br. 20), and Lindsay’s
device does not accomplish what Appellant’s structure does (App. Br. 21).
Appellant is mistaken. Lindsay’s patent is entitled “Jewelry Display
and Travel Device.” Lindsay explains: “When the invention is rolled up
and securely fastened with its contents inside, the pressure formed by the
sandwiching material and padding, as well as the friction caused by the two
coated inner surfaces, prevents loss and damage of its contents during
transport.” (Lindsay, col. 3, ll. 23-27). Lindsay’s device is equipped with a
“hook and loop attached mirror,” and a “hook and loop attached . . .
timepiece,” which are both removable. (FF11.)

10
Appeal 2008-5682
Application 10/370,813

OBVIOUSNESS
Further Findings of Fact
13. Noriega disclosed a rollable article holder for carrying a number of
articles. (Fig. 1.)
14. Noriega taught attaching continuous hook-pile and loop-pile fastener
material to the holder for the purpose of carrying implements. (Col. 2,
ll. 4-19.)
15. Noriega preferred VELCRO® hook-pile and loop-pile fasteners.
(Col. 1, ll. 58-60.)
16. Continuous hook and loop fasteners allow the user more freedom for
plural article placement.

Principles of Law Relating to Obviousness
A patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.

35 U.S.C. § 103(a).
Obviousness is a question of law based on fact findings. The scope
and content of the prior art are determined; differences between the prior art
and the claims at issue are ascertained; the level of skill in the art is resolved;
and objective record evidence of nonobviousness is considered. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). Against that background, the
obviousness or nonobviousness of the subject matter is determined. Id.; In
re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006).
11
Appeal 2008-5682
Application 10/370,813

Analysis of the Obviousness Issues
Claim 14
Claim 14 requires the holding mechanism on a portable carrying case
base to be the hook portion of a hook and loop assembly, and requires the
securing means on the article to be the loop portion. The Examiner’s
position is that whether the hook portion of a hook and loop fastener pair is
placed on Roegner’s panel or on the pocket to be mounted on the panel,
there is no change in function. The placement for the complementary hook
and loop fasteners that Roegner and Lindsay taught involved only routine
skill and would have been obvious. (Ans. 5.)
Appellant argues that Roegner and Lindsay “do not disclose a rollable
device for storing items,” “[t]he combination is not workable, there is no
motivation to induce one to make the combination and the combination
would still have to be modified to fill appellants mold.” (App. Br. 21-22.)
It should first be noted that independent claim 14 does not define a
rollable device. The claim defines “[a] portable carrying case . . .
comprising . . . (i) the base being a rollable material . . . .” Roegner and
Lindsay each disclosed a rollable device for storing items, each of which had
a base made from rollable material. (FF5; FF10.) Appellant’s general
denial is unpersuasive because Appellant doesn’t identify any specific errors
in the Examiner’s rejection. Likewise, Appellant’s general objections to the
Examiner’s prima facie case of obviousness lack particulars, and we
conclude Appellant has not rebutted the prima facie case. Instructions in
both prior art patents were to use hook and loop fasteners. (FF6; FF11.)
The complementary structure of the two parts in a hook and loop pair means
12
Appeal 2008-5682
Application 10/370,813

that to follow the prior art teachings, one of skill in the art would have to
place the hook part on one object and the loop part on the other object to be
fastened. That choice was within the skill of an ordinary artisan following
Roegner or Lindsay’s instructions. Appellant offers no evidence of any
unexpected result for putting the hook part on the holding mechanism and
the loop part on the securing means.
Appellant quotes the Diversitech case as saying “[t]he problem
confronted by the inventor must be considered in determining whether it
would have been obvious to combine references in order to solve that
problem.” (App. Br. 22.) We find that the Examiner in fact considered the
problem the inventor faced, and we are not persuaded of Examiner error.
However, we also note that “[i]n determining whether the subject matter of a
patent is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1741-42 (2007).

Claim 16
Claim 16 requires that the carrying case holding mechanism secured
to the base is “continuous.” Noriega disclosed continuous hook and loop
fastener material for carrying plural articles. (FF14.) The Examiner found
that “continuous fastening material would allow the user more freedom in
making placement of plural articles.” (Ans. 6.) The Examiner concluded
that it would have been obvious to make Roegner’s hook and loop fastener
mechanisms continuous to allow more freedom placing numerous articles.
(Id.)
13
Appeal 2008-5682
Application 10/370,813

Appellant argues that the cited references “do not disclose a rollable
device for storing items.” (App. Br. 22.) Appellant is mistaken. Roegner,
Lindsay and Noriega each disclose a rollable, portable carrying device.
Further, claim 16 is not limited to a rollable device. Instead, claim 16
defines a “portable carrying case,” that comprises a component “(i) the base
being a rollable material.” (Claim 14.)
Appellant argues that “Noriega teaches a lumbar support - not a
handheld rollable tote,” and that Noriega is “nonanalogous.” (App. Br. 23.)
First, claim 16 is not limited to a “handheld” tote, and Noriega’s Fig. 1
shows that the lumbar support is also a “rollable” carrier. Second, Noriega’s
patent was entitled “Detachable Article Holders,” and it taught a rollable
carrying device for tools and other implements. (FF14.)
Two criteria have evolved for determining whether prior art is
analogous:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.

In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). Noriega’s disclosure
meets both criteria for analogous art. See also In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (a reference
describing a folding bed found analogous to appellant’s folding treadmill).
Finally, Appellant argues that the Examiner cannot show motivation
for “any such ambiguously proposed combination.” (App. Br. 27.) To the
contrary, the Examiner’s finding was specific: continuous fasteners
14
Appeal 2008-5682
Application 10/370,813

suggested the advantage of freedom for placing multiple attachments.
(FF16.) Appellant has not addressed the correctness of that finding. We
find the Examiner’s reasoning persuasive.

CONCLUSIONS OF LAW
• Williams, Roegner, and Lindsay each disclosed all the elements of
Appellant’s rollable, portable carrying case;
• given that Roegner and Lindsay both taught using hook and loop
fasteners on carriers, it would have been obvious to one of ordinary
skill in the art at the time of Appellant’s invention to put the hook part
on a “holding mechanism” and the loop part on a “securing means” of
a carrier; and
• given that Noriega taught using a continuous hook and loop fastening
means, it would have been obvious to use a similar continuous
fastening means on Roegner’s or Lindsay’s carrier to have the
advantage of increased freedom of placement for the items being
carried.

SUMMARY
We affirm the rejections of
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Williams;
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Roegner;
• claim 1 under 35 U.S.C. § 102(b) as anticipated by Lindsay;
• claim 14 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Roegner and Lindsay; and
15
Appeal 2008-5682
Application 10/370,813

• claim 16 under 35 U.S.C. § 103(a) as obvious over the combined
teachings of Roegner, Lindsay, and Noriega.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

MATHEW R. P. PERRONE, JR.
210 SOUTH MAIN STREET
ALGONGUIN IL 60102-2639
16