Ex parte Allsopp

Board of Patent Appeals and Interferences

Mar 6, 1998

08278335 (B.P.A.I. Mar. 6, 1998)

Application for patent filed July 21, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERALD A. R. ALLSOPP
________________
Appeal No. 97-1979
Application 08/278,3351
________________
ON BRIEF
________________
Before MEISTER, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 14
through 20, 22 and 23. Claim 21, the only other claim pending
in the application, currently has no rejection applied against
Appeal No. 97-1979
Application 08/278,335
The indication on page 3 in the examiner’s answer (Paper2
No. 12) that claim 21 stands rejected is inconsistent with the
advisory letter and apparently is the result of an inadvertent
oversight on the part of the examiner.
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it (see the advisory letter dated June 11, 1996, Paper No. 9).
Presumably, claim 21 stands objected to as depending from a
rejected base claim.2
The invention relates to “an aerodynamically sound,
lighter than air kite/balloon unit” (specification, page 2).
Claim 14 is illustrative and reads as follows:
14. In the combination of a lighter-than-air balloon and
a kite, the improvement comprising means fixedly securing a
forward portion of said kite to an underside of said balloon
against movement of said portion of the kite relative to said
underside of the balloon.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Astle 2,208,786 Jul. 23, 1940
Babbidge 3,791,611 Feb. 12, 1974
Holland, Jr. (Holland) 4,216,929 Aug. 12, 1980
The appealed claims stand rejected as follows:
a) claims 14, 15 and 23 under 35 U.S.C. § 102(b) as being
anticipated by Astle;
b) claims 16 and 22 under 35 U.S.C. § 103 as being
unpatentable over Astle in view of Holland; and
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Application 08/278,335
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c) claims 17 through 20 under 35 U.S.C. § 103 as being
unpatentable over Astle in view of Babbidge.
Reference is made to the appellant’s main and reply
briefs (Paper Nos. 11 and 13) and to the examiner’s final
rejection and answer (Paper Nos. 7 and 12) for the respective
positions of the appellant and the examiner with regard to the
propriety of these rejections.
Astle, the reference common to all of the rejections,
discloses a kite “having an inflatable tube extending
circumferentially about its marginal edge and within which air
under pressure may be placed to aid in the lifting of the kite
while flying the same” (page 1, column 1, lines 3 through 7).
The body of the kite consists of a rubber sheet 5 having the
inflatable tube 6 secured thereto by vulcanizing or the like
(see page 1, column 1, lines 33 through 40). The kite also
includes an inflatable tail 15 or 17 attached to the sheet by
a string 14. With regard to the standing 35 U.S.C. §
102(b) rejection of claims 14, 15 and 23, anticipation is
established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every
Appeal No. 97-1979
Application 08/278,335
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element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984).
Independent claim 14 recites a combination which includes
a “lighter-than-air balloon.” According to the examiner, this
limitation is met by Astle’s inflatable tube 6 in that “since
tube 6 aids in the lifting of the kite, . . . it must be, by
definition, lighter-than-air” (answer, page 3). Although
Astle’s inflatable tube 6 reasonably can be viewed as a
balloon, the mere fact that it aids in lifting the kite does
not necessarily mean that it is lighter-than-air. For
example, the tube 6 might aid in lifting the kite due to its
shape and/or structural relationship with the body of the
kite. Moreover, Astle expressly discloses that the tube 6 is
filled with air. Thus, the examiner’s finding that the tube 6
constitutes a lighter-than-air balloon as recited in claim 14
is not well founded. Furthermore, our review of the Astle
reference indicates that it does not disclose any other
structure which meets the balloon limitations in claim 14.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claim 14, or of claims 15 and 23 which
Appeal No. 97-1979
Application 08/278,335
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depend therefrom, as being anticipated by Astle.
Nor shall we sustain the standing 35 U.S.C. § 103
rejection of claims 16 and 22, which depend from claim 14, as
being unpatentable over Astle in view of Holland.
The examiner cites Holland for its teachings that kites
can be provided with depending keels to attain desired
aerodynamic characteristics and that the various components of
a kite can be secured together by adhesive tape (see, for
example, column 8, lines 26 and 27; and column 10, lines 35
through 37). In short, these teachings do not overcome the
above noted deficiencies of Astle with respect to the subject
matter recited in parent claim 14.
We shall sustain, however, the standing 35 U.S.C. § 103
rejection of claims 17 through 20, which depend from claim 14,
as being unpatentable over Astle in view of Babbidge.
Babbidge discloses a lighter-than-air kite 10 filled with
a pressurized gas such as helium to lift the kite in the
absence of sufficient wind. The body of the kite is designed
to have enhanced thermal insulation and gas retention
properties. To this end, the “fabric” of the kite is an
envelope 11 made of
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a thin plastic film 12 preferably of polyester
[e.g., “Mylar”] because of its dimensional
stability, adaptability to metallizing, availability
in thin gauges (as low as one-half mil or less),
ageing-resistance, and, for its weight, its
relatively high tensile strength, resistance to
snagging and ripping, and low permeability to light-
density gases. . . . Irrespective of the chemical
composition of the core 12, however, it is provided,
on the surface which forms the interior of the
envelope 11, with a metallizing coating 13,
preferably (and now easily obtainable) a “thin film”
of aluminum conventionally formed by depositing a
vapor of aluminum upon the film core 12 in an ultra-
high vacuum [column 2, lines 30 through 48].
The test for obviousness is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In the present case and notwithstanding
the arguments to the contrary advanced by the appellant, the
combined teachings of Astle and Babbidge would have provided
the artisan with ample suggestion or motivation (1) to modify
the Astle device by making its inflatable tube or balloon 6
lighter-than-air in order to augment its intended lifting
function and (2) to implement this modification by employing
Babbidge’s helium-filled, metal-coated plastic envelope
construction to gain the above noted benefits of same. As so
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modified, the Astle device would meet all of the limitations
in claims 17, 18 and 20 which have been argued by the
appellant.
As for the ellipsoidal balloon shape recited in claim 19,
the record does not support the appellant’s contention that
this particular shape contributes to an aerodynamically sound
kite/balloon unit (see page 5 in the main brief). To the
contrary, the specification in the instant application
indicates that the appellant’s aim is “to allow the use of
light cheap mass-produced disposable balloons that are easily
available and economical” (page 2) and that “[m]any shapes,
types and sizes of balloon could be used” (page 2). In this
light and since the record fails to establish that the
ellipsoidal balloon shape recited in claim 19 solves a stated
problem or presents a new or unexpected result, such shape
would have been an obvious matter of design choice within the
skill of the art (see In re Kuhle, 526 F.2d 553, 555, 188 USPQ
7, 8-9 (CCPA 1975)).
The following new rejections are entered pursuant to 37
CFR § 1.196(b).
Claims 15 and 16 are rejected under 35 U.S.C. § 112,
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Application 08/278,335
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second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellant regards as
the invention.
The 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 determining whether this standard is met, 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.
Claims 15 and 16 recite, respectively, that the balloon
has an extending nose portion and a depending keel. These
recitations are unclear and confusing when read in light of
the underlying disclosure which indicates that it is the kite,
not the balloon, which includes the extending nose portion and
depending keel (see, for example, page 2 in the
specification).
Appeal No. 97-1979
Application 08/278,335
For purposes of this rejection, we have read the word3
“balloon” in claims 15 and 16 as if it were --kite--.
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Claims 14 through 16, 21 and 23 are rejected under 35
U.S.C. § 103 as being unpatentable over Astle in view of
Babbidge and Holland. 3
The device disclosed by Astle meets all of the
limitations in these claims except for the one in independent
claim 14 requiring the balloon to be lighter-than-air, the one
in dependent claim 16 requiring a depending keel, the one in
dependent claim 21 defining the securing means recited in
parent claim 14 to comprise strips of adhesive tape, and
arguably the one in claim 14 setting forth the securing means
in mean-plus-function format. For the reasons discussed
above, it would have been obvious to one of ordinary skill in
the art in view of Babbidge to modify the Astle device by
making its inflatable tube or balloon component 6 lighter-
than-air in order to enhance its desired lifting function. It
also would have been obvious to one of ordinary skill in the
art in view of Holland to further modify the Astle device by
providing its kite body component 5 with a depending keel to
attain desired aerodynamic characteristics and to secure the
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kite body component 5 to the tube or balloon component 6 with
strips of adhesive tape to facilitate the assembly of the
device. In this light, the differences between the subject
matter recited in claims 14 through 16, 21 and 23 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.
In summary:
a) the decision of the examiner to reject claims 14
through 20, 22 and 23 is affirmed with respect to claims 17
through 20 and reversed with respect to claims 14 through 16,
22 and 23; and
b) new rejections of claims 14 through 16, 21 and 23 are
entered pursuant to 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, 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. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
Appeal No. 97-1979
Application 08/278,335
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of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
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 (37
CFR § 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. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
Appeal No. 97-1979
Application 08/278,335
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incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for reconsideration thereof.
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; 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1979
Application 08/278,335
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