Ex Parte Hirshberg

Board of Patent Appeals and Interferences

Jan 15, 2004

09745762 (B.P.A.I. Jan. 15, 2004)

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not written for publication and is not binding precedent of the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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JONATHAN SCOTT HIRSHBERG
__________
Appeal No. 2004-0061
Application 09/745,762
___________
ON BRIEF
___________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 23 through 35, all of the claims remaining in
this application. Claims 1 through 22 have been canceled.
Appeal No. 2004-0061
Application 09/745,762
2
Appellant’s invention relates to a bag for carrying articles
and, more particularly, to a bag used to carry sports items such
as sports clothing, athletic shoes, and related items used during
an athletic event. On page 3 of the specification, appellant
summarizes the invention as follows:
[t]he present invention is a sports bag which is
defined to include any carrying bag such as a duffel bag,
backpack, gym bag or other bag which is used to carry
articles such as sports equipment, a thermos, sports
clothing, etc., which includes a mat which is conveniently
stored inside the sports bag when not in use and can be
removed through an opening in the sports bag to permit the
mat to be extended transverse to the sports bag so that it
provides a flat surface on which the user may rest or place
articles. The rollout mat can be permanently affixed to the
sports bag or it can be removably affixed and attached by
means of fasteners such as male and female mating hook and
loop fasteners, snaps, etc.
On page 7 of the specification, appellant more particularly
notes that a preferred option of the invention is to house the
rollout mat (40) seen in Figures 1, 2 and 4 of the application
drawings within a separate interior compartment (50) within the
interior (14) of the sports bag (10) so that the rollout mat is
segregated from the rest of the interior of the sports bag. One
possible segregating means (52) is illustrated in Figure 4 and
comprises a flexible wall sewn into portions of the interior
surface (8) of the sports bag (10) to create the interior
Appeal No. 2004-0061
Application 09/745,762
1 While the examiner has also listed U.S. Patent No.
4,154,323 to Sneider, on page 3 of the answer, as being “relied
upon in the rejection of claims under appeal,” we note that such
patent is not included in the statement of any rejection on
appeal, or pointed to in the body of any such rejection. The
answer itself, on page 7, expressly notes that the Sneider patent
is “used for a cited reference but not for prior art in the
rejection.” Thus, we will not look to the Sneider patent in our
deliberations in this appeal. In that regard, as pointed out by
the Court in In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970), where a reference is relied upon to support
a rejection, whether or not in a minor capacity, there would
appear to be no excuse for not positively including the reference
in the statement of the rejection.
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compartment (50) within which the rollout mat (40) is housed.
Access to the interior compartment (50) and the rollout mat
therein is provided by a separate opening (6) in a wall of the
bag which is created by opening means (36), which may be a
zipper.
Independent claims 23 and 29 are representative of the
subject matter on appeal and a copy of those claims may be found
in the Appendix to appellant’s brief (Paper No. 7).
The sole prior art reference of record relied upon by the
examiner in rejecting the appealed claims1 is:
Shreim 2 061 712 May 20, 1981
(Published UK Patent Application)
Appeal No. 2004-0061
Application 09/745,762
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Claims 23 through 35 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim that which appellant regards as
the invention. In the examiner’s view, the claims on appeal are
indefinite because it is unclear in independent claims 23 and 29
how the second interior compartment can be retained within the
first large interior compartment “while the second compartment be
sharing a portion of the interior surface of the large
compartment and divided by a dividing wall” (answer, page 4).
Claims 23 through 35 also stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shreim.
Rather than reiterate the examiner's full commentary
regarding the above-noted rejections and the conflicting
viewpoints advanced by the examiner and appellant regarding the
rejections, we make reference to the examiner's answer (Paper No.
8, mailed January 13, 2003) for the examiner's reasoning in
support of the rejections, and to appellant’s brief (Paper No. 7,
filed October 24, 2002) and reply brief (Paper No. 9, filed March
12, 2003) for the arguments thereagainst.
Appeal No. 2004-0061
Application 09/745,762
5
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art Shreim reference, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations which
follow.
We turn first to the examiner's rejection of the appealed
claims under 35 U.S.C. § 112, second paragraph. After reviewing
appellant’s specification, drawing Figures 1 through 4, and the
claims on appeal in light thereof, and also in light of
appellant’s arguments in their brief (pages 11-12) and reply
brief, it is our opinion that the scope and content of the
subject matter embraced by appellant’s claims on appeal are
reasonably clear and definite, and fulfill the requirements of
35 U.S.C. § 112, second paragraph. In our view, the examiner's
criticism of the language used in appellant’s claims on appeal is
misplaced. In determining whether a claim sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity, the definiteness of the language
Appeal No. 2004-0061
Application 09/745,762
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employed in the claim(s) 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.
See In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194
n.17 (CCPA 1977). When that standard of evaluation is applied to
the language employed in the claims before us on appeal, we are
of the opinion that those claims set out and circumscribe a
particular area with a reasonable degree of precision and
particularity.
Given the foregoing, we will not sustain the examiner's
rejection of appellant's claims 23 through 35 under 35 U.S.C.
§ 112, second paragraph.
We next look to the examiner's prior art rejection of claims
23 through 35 under § 103(a) as being unpatentable over Shreim.
After a careful assessment of appellants’ independent claims 23
and 29 and of the Shreim reference, we must agree with
appellant’s position as set forth in the brief (pages 12-16) and
in the reply brief, that Shreim does not disclose a second
interior compartment carved out of and retained within a first
Appeal No. 2004-0061
Application 09/745,762
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large interior compartment of the bag (2) therein and divided
therefrom by an interior dividing wall, with the second interior
compartment sharing a portion of the interior surface of the
first large interior compartment and having a second opening in
the exterior surface of the bag leading only to said second
interior compartment, whereby the mat may be rolled into said
second interior compartment and retained therein and segregated
from the remainder of the first large interior compartment.
Shreim describes the flap (14) therein as being “attached to
the lower edge of the side 16 of the bag” (page 1, lines 75-84)
and the sheets (20, 22), in a storage position, as laying against
“the side of the bag” (page 1, lines 30-32). Thus, it is clear
to us that the compartment defined between the side (16) of the
bag in Shreim and the flap (14) attached thereto for storing the
sheets (20, 22) would have been viewed by one of ordinary skill
in the art as being an exterior compartment added on to an
exterior surface of the bag, and clearly distinguishable from
appellant’s “second interior compartment” carved out of and
Appeal No. 2004-0061
Application 09/745,762
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retained within a first large interior compartment of the bag and
divided therefrom by an interior dividing wall which segregates
the second compartment from the remainder of the first large
interior compartment.
As for the examiner’s further position that the detachable
absorbent sheet (22) in Shreim, identified by the examiner as
corresponding to the rollable mat of appellant’s claims on
appeal, can be formed of the same PVC material as the exterior of
the bag “since it has been held to be within the general skill of
a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious
design choice,” and the position that it would have been obvious
to one having ordinary skill in the art to make sheet/mat (22) of
Shreim “being permanently affixed as claimed, since it has been
held that constructing a formerly integral structure in various
elements involves only routine skill in the art,” we find such
positions to be untenable and entirely contrary to the clear
teachings in the Shreim reference (page 1, lines 97-110)
concerning the detachable, absorbent fabric sheet (22). In our
Appeal No. 2004-0061
Application 09/745,762
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opinion, the examiner’s positions here represent a classic case
of hindsight reconstruction after having viewed appellant’s
disclosure and claims.
In light of the foregoing, we must refuse to sustain the
examiner’s rejection of claims 23 through 35 under § 103(a) as
being unpatentable over Shreim.
To summarize our decision, we note that 1) the examiner's
rejection of claims 23 through 35 under 35 U.S.C. § 112, second
paragraph, has not been sustained, and 2) the examiner's
rejection of claims 23 through 35 under § 103(a) as being
Appeal No. 2004-0061
Application 09/745,762
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unpatentable over Shreim has not been sustained. Thus, the
decision of the examiner rejecting claims 23 through 35 of the
present application is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-0061
Application 09/745,762
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