Ex Parte Gusdorf

Board of Patent Appeals and Interferences

Jan 21, 2009

11080885 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL L. GUSDORF
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Appeal 2008-5013
Application 11/080,885
Technology Center 1700
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Decided: January 21, 2009
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Before CHARLES F. WARREN, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6, and 7. Claim 5, which is the only other
pending claim, stands withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-5013
Application 11/080,885

The Invention
The Appellant claims a liner for a locker. Claim 1 is illustrative:
1. A liner for a locker provided for lining the interior back and
adjacent sides of a locker, comprising:

a continuous flexible elongated sheet, having a generally rectangular
shape where the length of said shape exceeds the width, an obverse face and
a reverse face opposite said obverse face, indicia printed upon said obverse
face;

said sheet having one or more scores parallel to the length of said
sheet, said scores dividing said sheet into two or more panels, wherein one
panel folds upon another panel; and

said sheet having one or more regularly spaced perforations
perpendicular to the length of said sheet.

The References
Kano US 6,214,453 B1 Apr. 10, 2001
Lamming US 2002/0038745 A1 Apr. 4, 2002

The Rejections
The claims stand rejected as follows: claims 1 and 6 under
35 U.S.C. § 102(b) over Lamming, and claims 2, 4, and 7 under
35 U.S.C. § 103 over Lamming in view of Kano.
OPINION
We affirm the Examiner’s rejections.
Rejection of claims 1 and 6 under
35 U.S.C. § 102(b) over Lamming

“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
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art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1255-56 (Fed. Cir. 1989).
Issue
Has the Appellant has shown reversible error in the Examiner’s
determination that Lamming discloses, expressly or inherently, each element
of claims 1 and 6?
Findings of Fact
Lamming discloses a resilient liner for a soft-shell bag (¶ 0013). The
liner serves as a barrier to protect the shell’s construction materials from the
contents of the bag (¶ 0012). The liner is attached to the bag by a removable
attachment which can be a temporary adhesive (¶ 0039). In the embodiment
relied upon by the Examiner (Ans. 3-4), the liner is cut from a flat sheet of
plastic to form a cutshape (501) having a liner base (503) and, on each side
and end of the liner base, a liner perimeter wall (505) (¶ 0044; Fig. 4). The
liner base and walls are separated by score lines (521) whereat the cutshape
is bent into a three-dimensional trough shape for placement into the bag’s
shell (¶ 0044; Figs. 2, 4).
Analysis
The Appellant argues that “[t]he entire perimeter of the [Appellant’s]
center panel is not enclosed by other panels, as in Laming” (Br. 8).
The Appellant’s claims 1 and 6 do not require that the center panel is
not enclosed by other panels. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982). Claim 1 requires a continuous flexible elongated sheet having scores
that divide the sheet into two or more panels. Claim 6 requires an elongated
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flexible continuous sheet having strips (panels) for application to the sides
and back of a locker.
During patent prosecution, claims are to be given their broadest
reasonable interpretation consistent with the specification, as the claim
language would have been read by one of ordinary skill in the art in view of
the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). It is proper to use the
specification to interpret what the Appellants mean by a word or phrase in
the claim. See In re Morris, 127 F.3d 1048, 1053-56 (Fed. Cir. 1997).
The Appellant’s Specification does not define “continuous”. Hence,
we use the ordinary meaning of that term, which is “marked by
uninterrupted extension in space, time or sequence”.1 Lamming’s resilient
cutshape is uninterrupted in space from one of its ends to the other end
(Fig. 4) and, therefore, is continuous. The cutshape has the score lines (521)
required by the Appellant’s claim 1, and the strips (505) required by the
Appellant’s claim 6 (¶ 0044; Fig. 4).
The Appellant argues that “[i]t is just not seen how the rigid box like
liner of Lamming anticipates the three panel flexible decoration for a locker,
as shown in FIG. 1 of the drawings, and its manner of application into the
locker, to provide for a decorative covering therein, for the benefit of the
student, etc.” (Br. 8).
The Appellant’s claims 1 and 6 are not limited to three panels, do not
require that the liner is decorative, do not require any manner of application
into a locker, and do not require benefit to a student . See Self, 671 F.2d at

1 Webster’s New Collegiate Dictionary 246 (G. & C. Merriam 1973).
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1348. Lamming’s liner, when folded as shown in Figure 2, can be placed in
a locker sized such that the liner fits snugly and functions as a liner for the
locker.
The Appellant argues that “the cut shape of Lamming is assembled to
provide stiffness and a rectangular form to its soft sided bag” (Br. 8), and
that the Appellant’s liner “does not provide any form of stiffness, or even a
form, to a metal locker.” See id.
The Appellant’s claims 1 and 6 do not require that the liner does not
provide stiffness or form to a metal locker. See Self, 671 F.2d at 1348.
Regardless, Lamming’s resilient liner (¶ 0013) would not provide stiffness
or form to a metal locker.
The Appellant argues that “the cut shape of Lamming stiffens a bag
while a sheet of the present invention decorates a locker” (Br. 8).
The Appellant’s claims 1 and 6 do not require that the liner decorates
a locker. See Self, 671 F.2d at 1348. Regardless, one who likes the
appearance of Lamming’s liner may consider it decorative as a locker liner.
The Appellant argues that “the stiffened liner of Lamming is just not
analogous art that does not suggest or provide a commercial need relating to
the usage of a flexible material as decoration for a locker” (Br. 8-9).
The Appellant’s claims 1 and 6 do not require that the liner is
decorative or that a commercial need is provided. See Self, 671 F.2d at
1348. Also, Lamming’s liner is resilient rather than stiffened (¶ 0013). As
for the argument regarding analogous art, the test of whether a reference is
from an analogous art is first, whether it is within the field of the inventor’s
endeavor, and second, if it is not, whether it is reasonably pertinent to the
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particular problem with which the inventor was involved. See In re Wood,
599 F.2d 1032, 1036 (CCPA 1979). A reference is reasonably pertinent if,
even though it may be in a different field of endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering the inventor’s problem. See In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The question of whether a
reference is analogous art is irrelevant to anticipation. See In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997). Regardless, because Lamming’s liner
is suitable for lining an enclosure having, like a locker, a wall adjacent to
four other walls, Lamming would have commended itself to the Appellant’s
attention in considering the Appellant’s problem. Hence, Lamming is
analogous art.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Lamming discloses, expressly or inherently, each element
of claims 1 and 6.
Rejection of claims 2, 4, and 7 under 35 U.S.C. § 103
over Lamming in view of Kano
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, the inventions claimed in the
Appellant’s claims 2, 4 and 7?
Findings of Fact
Kano discloses “a decorative sheet which is affixed to an exterior wall
surface for decorative and protective purposes” (col. 1, ll. 10-12). The
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decorative sheet comprises a flexible nonwoven fabric (2) having a rear
surface covered by a pressure sensitive adhesive layer (5) which is covered
by a releasable (peelable) layer (6) (col. 2, ll. 45-57; col. 3, ll. 32-40).
Analysis
The Appellant argues that the Appellant’s liner is for use interiorly
within a locker, whereas Kano’s sheet is for covering the exterior of a
building and is not designed for being cut, folded and used to line a locker
(Br. 9-10).
The Examiner relies upon Lamming, not Kano, for a locker liner
(Ans. 3-4). The Examiner merely relies upon Kano for a reason to provide
Lamming’s temporary adhesive (¶ 0039) with a removable backing (Ans. 5).
The Appellant states that “[i]t is just not seen how one skilled in the
art would be lead [sic] to believe that Kano could be used to modify the soft
shell bag and removable liner of Lamming” (Br. 10).
As pointed out by the Examiner (Ans. 5), Kano would have led one of
ordinary skill in the art, through no more than ordinary creativity, to place a
removable backing over Lamming’s temporary adhesive (¶ 0039) to protect
it prior to adhering the liner to a surface. See KSR Int’l. Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007) (A prima facie case of obviousness can be
established by showing “an apparent reason to combine the known elements
in the fashion claimed”).
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
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obvious, to one of ordinary skill in the art, the inventions claimed in the
Appellant’s claims 2, 4 and 7.
DECISION/ORDER
The rejections of claims 1 and 6 under 35 U.S.C. § 102(b) over
Lamming, and claims 2, 4, and 7 under 35 U.S.C. § 103 over Lamming in
view of Kano are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cam

PAUL M. DENK
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