Ex Parte Bohlen

Board of Patent Appeals and Interferences

Sep 30, 2010

11172010 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JORG BOHLEN
__________

Appeal 2009-008057
Application 11/172,010
Technology Center 3600
__________

Before SALLY G. LANE, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008057
Application 11/172,010

2
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Hunter
Douglas Industries B.V. (Hunter), under 35 U.S.C. § 134(a), from a final
rejection of claims 1-12, the only claims on appeal. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Ikle U.S. 7,093,643 B2 Aug. 22, 2006
Hoffman U.S. 5,647,421 July 15, 1997
Murray U.S. 5,117,892 June 2, 1992
Bibeau U.S. 4,649,981 Mar. 17, 1987
Eckels U.S. 4,419,982 Dec. 13, 1983
Wirthman U.S. 2,325,992 Aug. 3, 1943

The Invention
The invention relates to a frame section of a black-out window blind
assembly (Spec. 1:10-12); in particular, a side frame section having a
channel into which a light-absorbing insert is placed.
Claim 1 is illustrative of the claimed invention and is reproduced
below (emphasis added):

1. A frame section of a frame for a black-out blind assembly
supporting a black-out blind moveable within the frame between open
and closed positions, the frame section having:
inner and outer walls extending from a side wall so as to form a
channel section defining a recess for receiving part of a black-out
blind; and
Appeal 2009-008057
Application 11/172,010

3
a light absorbing substantially non-reflective insert
positioned within the recess of the channel section adjacent the
inner, outer and side walls. (Br. Claims App’x 14.)

Hunter’s Figure 3 (reproduced below) illustrates side frame section 10
containing a light absorbing insert 30.

Hunter’s Figure 3 depicts an upper head rail and a
lower side frame 10 configured with channel 26 and insert 30.

The Rejection on Appeal
The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) as being
unpatentable over Murray in view of Eckels. (Ans. 3-5.)

B. ISSUE
1. Would one of ordinary skill in the art have positioned a light-
absorbing insert within a roll-up window blind channel where it was known
in the art that light travels around the side of the blind?

C. FINDINGS OF FACT
1. Hunter acknowledges that it is well-known in the art to provide black-
out blinds for architectural openings. (Spec. 1:15.)
Appeal 2009-008057
Application 11/172,010

4
2. Hunter also acknowledges that it was known in the art that light can
be reflected within a black-out blind frame such that light travels around the
side edges of the blind. (Br. 5.)
3. Murray teaches a roll shade having an insert where the roll shade
obstructs light passing through a window. (Murray col. 1, ll. 11-16 and col.
2, ll. 34-47.)
4. As depicted in Murray’s Figure 4 depicted below, Murray teaches that
its roll shade 3 can be positioned within a groove 12 of a side frame channel
10. (Murray col. 2, ll. 41-52 and col. 2, ll. 65 to col. 3, l. 7.)

Figure 4 above depicts a roll shade in a side frame channel.

Appeal 2009-008057
Application 11/172,010

5
5. Murray’s Figure 2, shown below, depicts a strip 11 of resilient sheet
material inserted into channel 10 and positioned to seal against the sides of
the shade extending within the channel. (Murray col. 2, l. 45 to col. 3, l. 7.)

Figure 2 above depicts an insert for a window blind shade.

6. Eckels teaches a flexible film material for window openings that can
be used to form a heat-insulating shield where the flexible film is formed
with light-absorbing materials. (Eckels, Abstract and col. 7, ll. 40-43.)

D. PRINCIPLES OF LAW
‘[A]ny need or problem known in the field of endeavor at the time of
invention . . . can provide a reason for combining elements in the manner
claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). In
particular, the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416.

E. ANALYSIS
The Examiner rejected claims 1-12 as obvious in view of Murray and
Eckels. (Ans. 3-5.) The Examiner contended that Murray discloses a frame
Appeal 2009-008057
Application 11/172,010

6
section for a black-out blind assembly that supports a movable black-out
blind/rolled sheet therein. (Ans. 3.) Murray’s frame section has channel
walls defining a recess for receiving part of the blind and an insert is
positioned within this channel recess adjacent these channel walls. (Ans. 3.)
Regarding the movable rolled sheet, Murray specifically references sheet
material designed “to obstruct light passing through the window.” (Murray
col. 1, ll. 12-16.) Eckels was cited by the Examiner as teaching the utility of
a light-absorbing, non-reflective material. (Ans. 3 citing Eckels col. 7, ll. 40-
46.) Consistent with Murray’s teaching of a light-obstructing blind, the
Examiner concluded that it would have been obvious to one skilled in the art
to provide the window shade assembly of Murray with an insert made of the
light-absorbing material of Eckels in order to prevent stray light from being
reflected around the sides of the blind. (Ans. 5.)
Hunter contended that both Murray and Eckels have different
purposes and that neither pertains to black-out blinds. (Br. 5-6.) Hunter
asserts that Murray does not disclose that its shade and insert be constructed
of black-out material since Murray’s system could equally employ
translucent material (Br. 6-7) and further that Eckels has nothing to do with
providing a light-absorbing insert (Br. 8-9).
Hunter argued each of claims 1-12 separately, albeit with similar
arguments.

1. Hunter Claim 1
Independent claim 1 was rejected over Murray in view of Eckels as
discussed above. (Ans. 3.) Hunter specifically contended that independent
claim 1 is “simply not shown or suggested in the prior art” and that while
Appeal 2009-008057
Application 11/172,010

7
Murray discloses an insert in a channel, there is nothing in Murray to
suggest that it “could or should” be made of a light-absorbing material. (Br.
9-10.) Eckels, Hunter asserts, says nothing about providing a light-
absorbing, non-reflective insert around the edges of a blind material. (Br.
10.)
Murray teaches that it was known in the art to employ inserts with
light-obstructing blinds. One skilled in the art was aware of the problem of
light seepage. As Murray teaches that a purpose of its blind is to obstruct
light, one skilled in the art had reason to employ a light-obstructing insert in
combination with Murray’s light-obstructing blind.
Hunter is correct that while Murray describes its blinds as “light-
obstructing”, Murray does not actually state that its blinds are “black-out”
blinds. The criterion for obviousness, however, is what a reference would
have meant to a person of ordinary skill in the field of the invention. In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). On this record, the Examiner
has established that one skilled in the art at the time of the invention had
reason to use a “black-out” blind as Murray’s “light-obstructing” blind in
order to prevent light from entering through a window opening. The
Examiner has also established that it was known in the art to employ inserts
for light-obstructing blinds and that such inserts are used to prevent the flow
of heat into a room and that materials, such as those of Eckels’, were known
as suitable to absorb light (radiant energy) passing through a window
opening. Accordingly, the Examiner has established that Hunter’s claim 1
reflects a combination of familiar window blind components (channel,
inserts and light-absorbing materials) combined according to known
Appeal 2009-008057
Application 11/172,010

8
methods (selecting appropriate shade and insert material) to yield a
predictable result (black-out blind with no light seepage around the edges).
We address Hunter’s additional arguments with respect to claims 2-12
below. We do not reiterate those arguments for claims 2-12 that have been
addressed above, e.g., the obviousness of using a light-absorbing material
for Murray’s window channel insert.

2. Hunter Claims 2-11
Dependent claim 2 specifies that the insert is a sheet form that is
deformed to extend from a first edge around the inside of a channel to a
second edge. Dependent claims 3-6 recite specific channel supports for
retaining the insert. Dependent claims 7 and 8 address the resiliency and
material used to form the insert and the insert’s retention within the channel.
Dependent claim 9 requires the shade edge slide along the channel; claim 10
requires the frame section be arranged to receive a roll sheet; and claim 11
requires the frame section have supports at two ends of the frame section for
supporting a rolled sheet.
The Examiner rejected claims 2-11 contending that the specifically
claimed features of claims 2-11 are generally disclosed by Murray and
Eckels and that the differences between the specifically claimed
configurations and those described by Murray and Eckels would have been
obvious to one skilled in the art. (Ans. 3-5). Hunter disagrees and contends
that the specific configurations recited in claims 2-11 are not shown by the
prior art. (Br. 10-12.) Hunter however, does not specifically contend that
one skilled in the art would find the configurations unobvious. For example,
Hunter’s contention, with respect to claim 2, is provided below:
Appeal 2009-008057
Application 11/172,010

9
Claim 2 is dependent upon claim 1 and is therefore felt to
be allowable for the same reasons, but further defines the insert
as being a sheet having first and second generally parallel edges
with the sheet being deformed so as to extend from the first
edge adjacent the inner wall around the inside of the channel
section to the second edge adjacent the outer wall. This
configuration of an insert is not shown or suggested in the prior
art with the only reference of even general interest being the
reference to Murray, but the insert in Murray is not light
absorbing and substantially non-reflective, nor does it have first
and second edges that extend from the inner wall of the channel
section to the outer wall. Rather, the edges of the insert in
Murray are contiguous with each other at a centered location
between inner and outer walls of a channel.

(Br. 10).
We agree with Hunter that Murray and Eckels do not describe the
specific configurations of claims 2-11. Yet, it is not necessary for an
obviousness determination to find precise teachings in the prior art directed
to specific subject matter claimed because inferences and creative steps that
a person of ordinary skill in the art would employ can be taken into account.
KSR, 550 U.S. at 418. For example, with respect to claim 2, Murray teaches
that it was known in the art to construct an insert of resilient sheet material
and to deform that strip to fit it within a channel and one skilled in the art
would have readily determined the optimum shapes to absorb heat/light in
the channel. Similarly, as to claims 3-11, Hunter has not demonstrated that
these dependent claims recite anything other than predictable variations of
known light-obstructing blind components. We hold that claims 2-11 would
have been obvious to one skilled in the art at the time of the invention and
affirm the Examiner’s rejection of claims 2-11 over Murray in view of
Eckels.
Appeal 2009-008057
Application 11/172,010

10

3. Hunter Claim 12
Independent claim 12 is directed to a black-out blind assembly rather
than a frame section for a black-out blind assembly as in claim 1. Claim 12
recites identical elements as in claim 1 and adds a new claim element that
the black-out blind be “moveable within the frame.” (Br. Claims App’x 15.)
This claim was rejected by the Examiner over Murray in view of Eckels.
(Ans. 3.) Hunter asserted that this combination is not shown in the prior art
and especially not a light-absorbing, substantially non-reflective insert
positioned, as claimed. For the reasons presented above, with respect to
claim 1, we likewise affirm the Examiner’s rejection of claim 12.

F. CONCLUSIONS OF LAW
1. One of ordinary skill in the art would have positioned a light-
absorbing insert within a roll-up window blind channel, as it was known in
the art that light travels around the side of the blind.

G. ORDER
The rejection of claims 1-12 under 35 U.S.C. § 103(a) as unpatentable
over Murray and Eckels is affirmed.

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

Appeal 2009-008057
Application 11/172,010

11

bim

cc:
DORSEY & WHITNEY, LLP
INTELLECTUAL PROPERTY DEPARTMENT
370 SEVENTEENTH STREET
SUITE 4700
DENVER, CO 80202-5647