Ex Parte DeIntinis

Board of Patent Appeals and Interferences

Nov 10, 2010

11514519 (B.P.A.I. Nov. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/514,519 08/31/2006 Mark J. DeIntinis MJD-101A 5594
7590 11/10/2010
Kenneth P. Glynn
24 Mine Street
Flemington, NJ 08822
EXAMINER
KELLEHER, WILLIAM J
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
11/10/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK J. DEINTINIS
____________

Appeal 2009-010046
Application 11/514,519
Technology Center 3600
____________

Before SALLY GARDNER LANE, Lead Administrative Patent Judge,
JAMESON LEE and SALLY C. MEDLEY, Administrative Patent Judges.

LEE, 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 2009-010046
Application 11/514,519

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STATEMENT OF THE CASE
This is a decision on appeal by an applicant (“DeInitnis”) under
35 U.S.C. § 134(a) from a rejection of claims 21-40 of Application
11/514,519. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection.

The Invention
Appellant DeIntinis’ invention is directed to an octagonally shaped and
weighted beach towel.
There are two independent claims 21 and 35. All other claims depend
ultimately on either claim 21 or claim 35.
Independent claim 21 is reproduced below:
21. A weighted octagonal beach towel, which
comprises:

a) a flexible base made of towel material, said flexible
base having a first side and a second side, said first side being
adapted to contact a beach surface, and said second side being
adapted to touch a body surface of at least one user, said
flexible base having a generally octagonal periphery with eight
major sides, each of said eight major sides having an elongated
sealed pocket adjacent its periphery; and,

b) eight separate rope segments, one of each being
contained within one of each of said elongated sealed pockets;

wherein the distance between opposing major sides is
within the range of about 5 feet to 7.5 feet;

whereby average human users can orientate thereon
without moving said beach towel. (Emphasis added.)

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Independent claim 35 is the same as claim 21, except that it specifies
each sealed pocket as a folded trapezoidal section of the base and notes that
the trapezoidal shape provides ease of formation of the towel.

Reference Relied on by the Examiner
Henning Pub. App. 2005/0113180 May 26, 2005
Buhyoff Patent 5,482,374 Jan. 9, 1996
Hall Patent 4,375,111 Mar. 1, 1983

The Rejections on Appeal

Claims 21-25, 28-31, and 35-40 stand finally rejected under 35 U.S.C.
§ 103 as unpatentable for obviousness over Henning.
Claims 26 and 27 stand finally rejected under 35 U.S.C. § 103 as
unpatentable for obviousness over Henning and Buhyoff.
Claims 32, 33, and 34 stand finally rejected under 35 U.S.C. § 103 as
unpatentable for obviousness over Henning and Hall.
DISCUSSION
The Obviousness Rejection of Claims
21-25, 28-31, and 35-40 over Henning

A. Findings of Fact
1. Henning describes that if the areas such as the first, second, and
third base areas and the batter’s box were to get too wet and slippery, the
baseball game may have to be stopped to protect the player. (Henning ¶ 5).
2. Henning describes that when rain begins during a baseball
game, such areas must be covered with a water barrier. (Henning ¶ 5).
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3. Henning discloses multiple octagonally shaped tarps for
covering the first, second, and third base area and the home plate area of a
baseball field to protect the areas from rain. (Henning Fig. 1; ¶ 40).
4. Henning describes that such tarps are made of water-resistant
and durable polymer material such as vinyl laminate polyester; polyethylene
sheet or woven polyethylene; a vinyl laminated or coated material.
(Henning ¶ 42).
5. Henning discloses that its tarps are weighted down along its
perimeter to act as a ballast to provide resistance to the tarp’s being moved
by rain or wind. (Henning ¶ 44).
6. Henning describes that the edges of its tarp may be folded over
to create a pocket to hold the weight and that the weight can be a linked
chain. (Henning ¶ 44).
7. Henning describes that weight 40 may be any suitable weight
such as a chain, pellets, sand, earth, rock, concrete, aggregate, polymer, or
even a second fabric. (Henning ¶ 44).
8. Henning describes that its weight receiving area may be
provided in any desired arrangement, such as in separate intervals and
separate pockets along the perimeter, one on each side. (Henning ¶ 45; Fig.
15).
9. Henning describes sealing the weight containing areas by use of
sewing, heat welding, or adhesives. (Henning ¶ 47).
B. Analysis
This rejection hinges on the propriety of the Examiner’s regarding
Henning’s water-resistant tarp as a beach towel made of “towel material.”
We agree with appellant DeIntinis that “towel material” must be generally
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water absorbent to a not-insubstantial degree, especially for a beach towel,
and Henning’s water-resistant tarp is not made of towel material and cannot
itself reasonably be regarded as a towel. Henning in fact teaches away from
using towel material to construct its tarps because the tarps are for the
express purpose of protecting the covered areas from rain (Henning, ¶ 5, 6
and 10) and are described as being made from water-resistant material.
(Henning, ¶ 42). It would not have been obvious to one with ordinary skill
to construct Henning’s water-resistant tarp covers from towel material.
We also disagree with the Examiner’s finding that the linked chains
used as a weight for Henning’s tarp can reasonably be regarded as a rope.
C. Conclusion
The rejection of claims 21-25, 28-31, and 35-40 under 35 U.S.C.
§ 103 as unpatentable over Henning cannot be sustained.
The Obviousness Rejection of
Claims 26 and 27 over Henning and Buhyoff

Claim 26 depends on claim 21 and specifies that the rope segments
are selected from the group consisting of synthetic cord, woven synthetic
cord, woven natural cord and combinations thereof. Claim 27 depends from
claim 26 and further specifies that the synthetic is selected from the group
consisting of nylon, polyester, vinyl, polyacrolate, and combinations thereof.
The Examiner relied on Buhyoff for its teaching of a nylon cord as a
weight. (Answer at 6).
Based on the rationale articulated by the Examiner, Buhyoff does not
make up for the deficiency of Henning as discussed above with regard to the
obviousness rejection of claim 21 over Henning alone. Accordingly, the
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rejection of claims 26 and 27 under 35 U.S.C. § 103 as unpatentable for
obviousness over Henning and Buhyoff cannot be sustained.
The Obviousness Rejection of
Claims 32-34 over Henning and Hall

Claim 32 depends on claim 21 and additionally recites a tote bag
having certain dimensions relating to the size of the beach towel. Each of
claims 33 and 34 depends from claim 32. Claim 33 adds an adjustable
shoulder strap to the tote bag and claim 34 adds an exterior compartment to
the tote bag.
The Examiner relied on Hall for its teaching of a tote bag with an
adjustable strap and an external compartment. (Answer at 6-7).
Based on the rationale articulated by the Examiner, Hall does not
make up for the deficiency of Henning as discussed above with regard to the
obviousness rejection of claim 21 over Henning alone. Accordingly, the
rejection of claims 32-34 under 35 U.S.C. § 103 as unpatentable for
obviousness over Henning and Hall cannot be sustained.
New Ground of Rejection
Claims 21-25, 29 and 31 are herein rejected under 35 U.S.C. § 103 as
unpatentable for obviousness over Henning and Buhyoff.
A. Findings of Fact
10. Buhyoff discloses an octagonally shaped beach towel.
(Buhyoff: Fig. 1; 2:9-10; 2:24-29; 2:31-33).
11. Buhyoff discloses eight cord casings along the perimeter of the
octagonal towel, and a draw cord threaded through the casings. (Buhyoff
2:34-37).
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12. Buhyoff discloses that for its beach towel the openings between
the cord casings permit the cord to be staked down with stakes. (Buhyoff
2:39-40).
13. Figure 1 of Buhyoff is reproduced below:

Figure 1 shows a plan view of Buhyoff’s beach towel.

B. Analysis
Buhyoff discloses a regular octagonally shaped beach towel.
(Buhyoff: Fig. 1; 2:9-10; 2:24-29; 2:32-33). A beach towel is inherently
made of flexible towel material. In any event, one with ordinary skill in the
beach towel art would have known that a beach towel can be made of
flexible towel material. A beach towel also inherently has a first side and a
second side where the first side is adapted to contact a beach surface and the
second side is adapted to contact a body surface of a user. In any event, one
with ordinary skill in the beach towel art would have known that a beach
towel should have a first side adapted to contact a beach surface and an
opposing second side adapted to contact a body surface of a user.
Claim 21 requires that the distance between opposing major sides of
the towel be about 5 feet to 7.5 feet. Buhyoff specifically describes a “six-
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foot model” and an “eight-foot model.” (Buhyoff 3:2-7). The six-foot
model is squarely within the claimed range of 5 feet to 7.5 feet. Even the
eight-foot model is “about” 5 to 7.5 feet. An average sized human user can
orient himself or herself on Buhyoff’s beach towel, either the six-foot or the
eight-foot model without need to reposition the towel, as is recited in claims
21 and 35.
With respect to claim 21, what Buhyoff does not disclose are eight
separate rope segments, one on each side of the octagonal perimeter of the
beach towel and contained within a sealed pocket, for use as weights to
secure the towel. Rather, Buhyoff discloses the use of cords along the
perimeter of the towel, which can be staked down. (Buhyoff 2:39-40).
Henning does not constitute nonanalogous art, because it is reasonably
pertinent to the problem with which appellant DeIntinis is concerned --
keeping a beach towel securely placed on a beach. Henning’s protective tarp
also needs to be secured from being blown away by the wind. (Henning
¶ 44). Henning describes the use of weights to provide wind resistance for
its tarp. (Henning ¶ 44). In light of Henning’s disclosure, one with ordinary
skill in the art would readily recognize that inclusion of weights in the beach
towel is also a viable means of providing wind resistance for a beach towel.
Henning’s tarp has a generally flat surface area the same as appellant
DeIntinis’ beach towel.
In one embodiment, Henning describes the use of eight separated
weights, each one contained in an elongated sealed tubular pocket along the
perimeter of a corresponding side of the octagonally shaped tarp. (Henning
Fig. 15; ¶ 45; ¶ 47). Figure 15 of Henning is reproduced below:
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Figure 15 shows an octagonal tarp with equal
sides and a pocket at the edge of each side

Henning describes that its weight can be made of another fabric or any
suitable material so long as it provides suitable ballast. (Henning ¶ 44). One
with ordinary skill in the art would readily recognize that formed fabric to be
contained in an elongated tubular pocket as that disclosed in Henning can be
a rope segment, because a rope is made of flexible fabric and is itself a good
fit within an elongated tubular pocket. Also, because a beach towel is of
relatively light weight, one with ordinary skill in the art would recognize that
rope segments may well be sufficient as ballast to provide wind resistance.
In light of Henning’s disclosure, it would have been obvious to one
with ordinary skill in the art to use an alternative means of securing
Buhyoff’s beach towel. Specifically, it would have been obvious to one
with ordinary skill in the art to replace the perimeter cord shown in Buhyoff
with eight separate sealed pockets, one on the outer perimeter of each side
and each containing a rope segment as ballast. It is true that with this
change the beach towel can no longer be drawn in to form a bag. However,
a prior art reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
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attempting to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
907 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). Thus, it is not necessary
to preserve the conversion-to-bag functionality of Buhyoff’s beach towel.
One with ordinary skill in the art would have known that the conversion-to-
bag functionality is not a necessary or required feature of a beach towel.
Claim 22 depends on claim 21 and recites that each of the eight major
sides of the towel are equal in length. As is shown above in Buhyoff’s
Figure 1, its beach towel is in the shape of a regular octagon with eight equal
sides.
Claim 23 depends on claim 21 and recites that the rope segments are
of equal length. It would have been obvious to one with ordinary skill in the
art that rope segments used as weights and placed in tubular pockets of equal
length would themselves be of equal length. As shown above in Henning’s
Figure 15, the tubular pockets are of generally equal length.
Claim 24 depends on claim 21 and recites that each rope segment has
a length equal to about 75% to about 90% of the length of each major side at
its periphery. As shown above in Henning’s Figure 15, the tubular pockets
at each peripheral side is within the range between 75% and 90% the length
of each side. Thus, it would have been obvious to one with ordinary skill in
the art that the rope segment contained in each tubular pocket would be
within the range of about 75% to about 90% of the length of each side.
Claim 25 depends from claim 21 and recites that each of the major
sides has a length of about 28 to about 36 inches. Buhyoff’s discloses a six-
foot model and an eight-foot model for its beach towel. A towel diameter
between six and eight feet would have been obvious to one with ordinary
skill in the art. Given a towel diameter between six and eight feet for a
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regular octagonally shaped beach towel, a side length between 28 and 36
inches would have been obvious to one with ordinary skill in the art.
Claim 29 depends on claim 21 and recites that the flexible base of the
beach towel includes a scenic print. One with ordinary skill in the beach
towel art would have known that it is common to have a scenic print on a
beach towel. Moreover, the scenic print is non-functional and can provide
no patentable distinction from a beach towel without a scenic print.
Claim 31 depends on claim 21 and recites that the towel’s flexible
base comprises a single unit member comprising substantially towel
material. One with ordinary skill in the art would have known that a beach
towel is commonly of single unit construction. Thus, it would have been
obvious to one with ordinary skill in the art that the flexible base of the
towel is a single unit made of towel material.
C. Conclusion
For the foregoing reasons, the subject matter of claims 21-25, 29 and
31 would have been obvious over the combined teachings of Buhyoff and
Henning. Claims 21-25, 29 and 31 are unpatentable under 35 U.S.C. § 103.
This new ground of rejection should not be interpreted as an
expression of allowable subject matter in the claims not covered by the new
ground of rejection. We express no view in that regard.
DECISION
The rejection of claims 21-25, 28-31, and 35-40 under 35 U.S.C.
§ 103 as unpatentable for obviousness over Henning is reversed.
The rejection of claims 26 and 27 under 35 U.S.C. § 103 as
unpatentable for obviousness over Henning and Buhyoff is reversed.
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The rejection of claims 32-34 under 35 U.S.C. § 103 as unpatentable
for obviousness over Henning and Hall is reversed.
Claims 21-25, 29 and 31 are herein rejected under 35 U.S.C. § 103 as
unpatentable for obviousness over Buhyoff and Henning.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This regulation states that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v).

REVERSED

NEW GROUND OF REJECTION

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Kenneth P. Glynn, Esq.
24 Mine Street
Flemington, New Jersey 08822