Ex parte BERGER

Board of Patent Appeals and Interferences

Jul 29, 1998

08099090 (B.P.A.I. Jul. 29, 1998)

Application for patent filed July 7, 1993.1
1
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not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BARRY D. BERGER
_____________
Appeal No. 95-4134
Application 08/099,0901
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 16, all of the claims remaining
in the application. Claim 17 has been canceled.
Appellant's invention relates to "inserts for pad holders
Appeal No. 95-4134
Application 08/099,090
2
and the like, and in particular to inserts which can be placed
in a standard pad holder designed to hold a cardboard-backed
pad of paper without interfering with use of the pad and other
standard features of the pad holder" (specification, page 1).
More specifically, on page 2 of the specification, it is noted
that
"[t]here is a need for a pad holder insert which can
provide additional storage in a typical pad holder
so as to enable the user to store and carry
additional items in the pad holder without the need
to resort to a portfolio or briefcase. Such an
insert should prefer-ably be available in a number
of different configura-tions to hold a variety of
different items, such as computer diskettes, a
calculator, keys and coins, and so forth. It is
desirable that such an insert be easily inserted and
that it not interfere with the use of the pad of
paper, inside flap pocket, and other standard
features of the pad holder. It is also desirable
that such an insert be easily removable for those
times when it is not needed, or so that it can be
replaced with a different insert adapted to hold
different items as the user may desire.
Claim 1 is representative of the subject matter on appeal
and a copy of that claim may be found in the Appendix to
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Appeal No. 95-4134
Application 08/099,090
3
Loudon 2,732,842 Jan. 31, 1956
Bisberg 3,913,740 Oct. 21, 1975
Garnier Des. 241,381 Sep. 07, 1976
Ciarcia et al. (Ciarcia) 4,932,520 Jun. 12,
1990
Woodriff 5,031,772 Jul. 16, 1991
Claims 1 through 16 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 his invention.
In addition to the foregoing rejection, the appealed
claims stand rejected under 35 U.S.C. § 102 and § 103 as
follows:
a) claims 1, 3 and 4 under § 102(b) as being anticipated
by Bisberg;
b) claims 13 through 16 under § 103 as being unpatentable
over Bisberg;
c) claims 1, 2, 11 and 12 as being unpatentable over
Garnier in view of Ciarcia;
d) claims 1, 5 through 10 and 13 as being unpatentable
Appeal No. 95-4134
Application 08/099,090
4
over Woodriff in view of Ciarcia; and
e) claims 1, 2 and 14 through 16 as being unpatentable
over Loudon in view of Ciarcia.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by
the examiner and appellant regarding those rejections, we make
reference to the examiner's answer (Paper No. 9, mailed March
8, 1995) for the examiner's reasoning in support of the
rejections, and to appellant's brief (Paper No. 8, filed
January 30, 1995) and reply brief (Paper No. 11, filed May 1,
1995) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Appeal No. 95-4134
Application 08/099,090
5
We turn first to the examiner's rejection of appealed
claims 1 through 16 under 35 U.S.C. § 112, second paragraph.
After reviewing appellant's specification and independent
claim 1 in light thereof, and also in light of appellant's
arguments on pages 5 through 8 of the brief, it is our opinion
that the scope and content of the subject matter embraced by
appellant's claims on appeal is reasonably clear and definite,
and fulfills the requirement of 35 U.S.C. § 112, second
paragraph, that they provide those who would endeavor, in
future enterprise, to
approach the area circumscribed by the claims, with the
adequate notice demanded by due process of law, so that they
may more readily and accurately determine the boundaries of
protection involved and evaluate the possibility of
infringement and dominance. See, In re Hammack, 427 F.2d
1378, 166 USPQ 204 (CCPA 1970). These claims are clearly
directed to an insert (e.g., as seen at 10 in Figures 1 and 8
of the application drawings), which insert is, at least in
part, defined by having its tongue portion (42) dimensioned so
Appeal No. 95-4134
Application 08/099,090
6
as to be received in said conventional pad holder's
horizontally-oriented slit and by the capability of the
insert's holder means to conformably lie between the pad
holder's front and back covers when the pad holder is in its
closed position (e.g., as seen in Figures 2-6). Thus, the
claimed insert is defined by its ability to cooperate with
another structure, which other structure is not positively
recited in the claim, but is defined in the preamble of the
claim and inferentially set forth in the body of the claim.
In this regard, we note that there is nothing intrinsically
wrong in defining something by what it does rather than by
what it is. See, for example, In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981).
In our opinion, the examiner's criticism of appellant's
claim 1 goes to the breadth of the claim, which we view as
broadly defining the configuration and dimensions of the
insert, its tongue and its holder means in terms of their
capability of functioning in combination with a conventional
pad holder like that set forth in the preamble of appellant's
claim 1 and as described in appellant's specification at page
Appeal No. 95-4134
Application 08/099,090
7
4. It is well settled, however, that breadth alone is not to
be equated with indefiniteness and that 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 employed in the claim 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 this standard of evaluation is applied to
the language employed in claim 1 on appeal, we are of the
opinion that this claim sets out and circumscribes 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 1 through 16 under 35 U.S.C. § 112, second
paragraph.
Appeal No. 95-4134
Application 08/099,090
8
We next look to the examiner's prior art rejections of
the appealed claims, turning first to the rejection of claims
1, 3 and 4 under 35 U.S.C. § 102(b) as being anticipated by
Bisberg. After a careful assessment of appellant's claims 1, 3
and 4 and of the Bisberg reference, we must agree with
appellant that the protective sheet (44a), the partial opaque
mask (50) and the full opaque mask (52) pointed to by the
examiner in Bisberg are not the same as or equivalent to the
"holder means" required in appellant's claim 1 on appeal. In
accordance with 35 U.S.C. § 112, sixth paragraph, the
"holder means" in appellant's claim 1 is understood to be a
structure like that seen, for example, at (50) in appellant's
drawing Figures 7 through 14 and equivalents thereof. The one
common characteristic that each of the holder means seen in
appellant's above-noted drawing figures share is that they
include some form of pocket to accommodate, hold and store
articles. See file-cut flap pockets (52), zippered pocket
(56) and the pockets defined by the slits (54) of Figures 7
and 8; pockets (60, 62 and 64) of Figures 9 and 10; pockets
(66, 68)
Appeal No. 95-4134
Application 08/099,090
9
of Figures 11 and 12; and pockets (76, 78) of Figures 13 and
14.
Moreover, as indicated in the above-quoted portion of
appellant's originally filed specification (page 2), the
purpose of the insert of the present invention is to "provide
additional storage in a typical pad holder so as to enable the
user to store and carry additional items in the pad holder
without the need to resort to a portfolio or briefcase." In
this regard, it is further indicated on page 2 of the
specification, that the insert should be available in a number
of different configurations to hold a variety of different
items, such as computer diskettes, a calculator, keys and
coins, and so forth. Thus, we understand the "holder means"
set forth in appellant's independent claim 1 to require some
form of pocket or other structure which permits holding,
storing and carrying of an item (such as those noted above) in
the insert and in the pad holder when such insert is placed
therein.
Like appellant, we find no "holder means," as defined
above, in those portions of Bisberg's folder pointed to by the
Appeal No. 95-4134
Application 08/099,090
With respect to appellant's arguments in the brief and reply brief2
concerning the issue of non-analogous art in a rejection based on anticipation
under 35 U.S.C. § 102(b), we direct appellant's attention to the somewhat more
current precedent of the Court of Appeals for the Federal Circuit, the Court
10
examiner. While it is true that one might place a sheet of
paper in between
the protective sheet (44a) and the opaque masks (50b, 52b) of
Bisberg, assuming that the folder therein is then used in a
pad holder in the manner urged by the examiner, there is no
pocket or other structure to hold the paper in the insert as
is required in appellant's "holder means" of claim 1 on
appeal. Furthermore, while it is certainly possible, as urged
by the examiner, to staple or paper clip a sheet of paper to
the elements (44a, 50b, 52b) of Bisberg, such extraneous means
for holding a paper in place is not part of the structure of
the folder in Bisberg, nor of the "holding means" as required
in appellant's claim 1 on appeal. Thus, for these reasons,
the examiner's rejection of independent claim 1 and dependent
claims 3 and 4 under 35 U.S.C. § 102(b) based on Bisberg will
not be sustained.2
Appeal No. 95-4134
Application 08/099,090
of Customs and Patent Appeals, and the U.S. Claims Court as noted below. See,
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997),
Twin Disc, Inc. v. U.S., 231 USPQ 417, 424 (Cl. Ct. 1986); and In re Self, 671
F.2d 1344, 1350, 213 USPQ 1, 7 (CCPA 1982).
11
As for the examiner's rejection of claims 13 through 16
under § 103 as being unpatentable over Bisberg, we note that
these claims each ultimately depend from independent claim 1,
and
thus include all the limitations thereof. Accordingly, it
follows from our determinations above that these dependent
claims would not have been obvious to one of ordinary skill in
the art based on the teachings of Bisberg alone, since Bisberg
has no "holder means" like that required in independent claim
1 on appeal, and certainly no teaching or suggestion of such a
"holder means" that also includes a book as set forth in
dependent claim 13 and the claims which depend therefrom.
Accordingly, we will not sustain the examiner's rejection of
dependent claims 13 through 16 under 35 U.S.C. § 103.
We next consider the examiner's rejections under § 103
wherein Garnier, Woodriff and Loudon are the primary
Appeal No. 95-4134
Application 08/099,090
12
references that are each then combined with Ciarcia. Like
appellant, we are of the view that Garnier, Woodriff and
Loudon are not properly combinable with Ciarcia in the manner
urged by the examiner. In our opinion, the only possible
reason that one of ordinary skill in the art would have
considered the combination of Garnier, Woodriff or Loudon with
Ciarcia as posited by the examiner is based on hindsight
derived from appellant's own disclosure and not from any
teachings or suggestions found in the applied references
themselves. Like appellant (brief, pages 13-20),
absent the disclosure of the present application, we do not
consider that one of ordinary skill in the art would have been
motivated to modify the combined checkbook wallet and
electronic calculator of Garnier, the computer disk housing
device of Woodriff, or the binder of Loudon so as to provide
these separate and distinct items with a horizontally hinged
tongue positioned and related to a vertically-oriented hinged
holder means therein in the manner required in appellant's
claims on appeal, based on the teachings of Ciarcia. For this
reason, the examiner's rejections under 35 U.S.C. § 103
Appeal No. 95-4134
Application 08/099,090
13
(identified above as rejections c), d) and e)) will not be
sustained.
To summarize our decision, we note that 1) the examiner's
rejection of claims 1 through 16 under 35 U.S.C. § 112, second
paragraph, has not been sustained, 2) the examiner's rejection
of claims 1, 3 and 4 under 35 U.S.C. § 102(b) relying on
Bisberg has not been sustained, 3) the rejection of appealed
claims 13 through 16 under 35 U.S.C. §103 relying on Bisberg
alone has not
been sustained, 4) the rejection of claims 1, 2, 11 and 12
under 35 U.S.C. §103 relying on Garnier and Ciarcia has not
been
sustained, 5) the rejection of claims 1, 5 through 10 and 13
under 35 U.S.C. § 103 based on Woodriff and Ciarcia has not
been
sustained, and 6) the rejection of claims 1, 2 and 14 through
16 under 35 U.S.C. § 103 relying on Loudon and Ciarcia has
also not been sustained.
As should be apparent from the foregoing, the decision of
Appeal No. 95-4134
Application 08/099,090
14
the examiner rejecting the claims of the present application
is, accordingly, reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-4134
Application 08/099,090
15
Seidel, Gonda, Lavorgna & Monaco
Two Penn Center Plaza
Suite 1800
Philadelphia, PA 19102