Ex parte NIEMIER

Board of Patent Appeals and Interferences

Aug 25, 1998

08557436 (B.P.A.I. Aug. 25, 1998)

Application for patent filed November 14, 1995. According to1
appellant, this application is a continuation-in-part of application no.
29/020,506, filed March 25, 1994, which was a continuation-in-part of
application no. 29/011,308, filed August 2, 1993.
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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TIMOTHY A. NIEMIER
_____________
Appeal No. 98-0964
Application 08/557,4361
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge,
FRANKFORT and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 23 through 34, which are all of the claims
Appeal No. 98-0964
Application 08/557,436
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remaining in this application. Claims 1 through 22 have been
canceled.
Appellant’s invention is directed to a sit-on-top kayak
that allows three people to sit in a cockpit area which
heretofore was capable of accommodating only two people. The
embodiment of the invention as seen in Figures 14 through 20
of the application drawings is that to which claims 23 through
34 on appeal appears to be drawn. A copy of representative
claim 23, as it appears in the Appendix to appellant’s brief,
is attached to this decision.
The sole reference relied upon by the examiner in
rejections of the claims on appeal is:
Niemier Des. 377,473 Jan. 21, 1997
(Filed Mar. 25, 1994)
Claims 23 through 34 stand rejected under 35 U.S.C. §
102(b) as being anticipated by “Applicant’s own invention as
depicted in figures 14-20 of the present application, on sale
since approximately April 1994" (answer, page 5). In
explaining this rejection, the examiner has pointed to the
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statements made by appellant in the paper filed December 5,
1996 (Paper No. 5, page 8) wherein it is indicated that “a
sit-on-top kayak substantially as depicted in FIGS. 14-20 of
the present application was placed on sale by the Applicant in
approximately April 1994.” In
maintaining this rejection, the examiner has determined that
appellant is not entitled to benefit under 35 U.S.C. § 120 of
the filing date of March 25, 1994 associated with appellant’s
earlier filed application SN 29/020,506 which matured into
Design Patent No. 377,473 (issued January 21, 1997), and has
thus accorded the subject matter of the present utility
application only the filing date of the present application
(i.e., November 14, 1995), thereby making the sales of the
embodiment seen in Figures 14-20 of the present application
made by appellant “in approximately April 1994" a bar under 35
U.S.C. § 102(b).
Claims 23 through 34 stand additionally rejected under
the judicially created doctrine of double patenting over the
Appeal No. 98-0964
Application 08/557,436
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claim of appellant’s prior U.S. Design Patent No. 377,473
“since the claims, if allowed, would improperly extend the
‘right to exclude’ already granted in the patent” (answer,
page 4). According to the examiner,
“[t]he subject matter claimed in the instant
applica-tion is fully disclosed in the patent and is
covered by the patent since the patent and the
application are claiming common subject matter, as
follows: a distinctive configuration for a kayak.
Furthermore, there is no apparent reason why
applicant was prevented from presenting claims
corresponding to
those of the instant application during prosecution
of the application which matured into a patent. In
re Schneller, 397 F.2d 350, 158 USPQ 210(CCPA 1968).
See also MPEP § 804. (answer page 4)
Claims 23 through 34 also stand rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over the claim of appellant’s
prior U.S. Design Patent No. 377,473. In this regard, it is
the examiner’s position that
[a]lthough the conflicting claims are not identical,
they are not patentably distinct from each other
because one of ordinary skill in the art at the time
of the invention would have sit and placed his/her
feet as claimed in the kayak of Des. 377,473.
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Application 08/557,436
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Re "hatch surface", such fails to positively recite
a hatch per se, merely a surface, and therefore
fails to define over the claim of Des. 377,473. The
surface between the seats of Des. 377,473 can be
seen as having straight line cross hatching running
in different directions in different views, thereby
illustrating a planar surface. (answer page 4)
Reference is made to the examiner's answer (Paper No. 12,
mailed October 27, 1997) for the examiner's reasoning in
support of the above-noted rejections. Appellant’s arguments
there-against are found in the brief (Paper No. 11, filed July
28, 1997).
OPINION
In reaching our conclusions on the issues raised in this
appeal, we have carefully considered appellant’s specification
and claims, the applied reference, and the respective
viewpoints advanced by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
As to the examiner's rejection of the claims on appeal
under 35 U.S.C. § 102(b), the examiner has determined that the
present utility application contains all of the utilitarian
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Application 08/557,436
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features not covered by the design patent, and more
specifically that there is nothing in the ‘506 application
which matured into the design patent to clearly indicate the
presence of aft, middle and forward seating surfaces, a
footwell associated with each of the seating surfaces, or
first and second hatch surfaces, as now set forth in
independent claim 23 of the present utility application. In
the examiner’s opinion, viewing the ‘506 application in a
vacuum, it is unclear exactly what utilitarian features have
been shown therein.
Appellant urges that the examiner’s rejection of the
appealed claims under 35 U.S.C. § 102(b) is in error because
the
present application claims priority from and is entitled to
the filing date of design application SN 29/020,506 (now the
‘473 design patent) which antedates the April 1994 sale of the
invention and clearly describes the now claimed invention “in
writing” as required by 35 U.S.C. § 112, first paragraph. The
present utility application is denominated a "continuation-in-
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part" of the ‘506 design application.
After considering all of the evidence before us, it is
our conclusion that the examiner correctly denied appellant
the benefit of the earlier filing date of the ‘506 design
patent application and properly rejected claims 23 through 34
before us on appeal on the basis of the prior sale of the
invention as acknowledged by appellant to have occurred in
April 1994, more than one year prior to the November 14, 1995
filing date of the present utility application. With regard
to appellant’s argument concerning the asserted benefit of an
earlier effective filing date for the present application
under 35 U.S.C. § 120, we note that an express prerequisite in
the statute for such benefit is that the invention as now
claimed must be disclosed in the earlier application "in the
manner provided by the first
paragraph of section 112 of this title." As appellant has
noted on pages 5 and 6 of the brief (Paper No. 11), the test
for sufficiency of disclosure of support in a parent
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Application 08/557,436
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application with regard to the written description requirement
of the first paragraph of 35 U.S.C. § 112 is whether the
disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter. See, e.g., In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983) and Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991). In this regard, and in
accordance with the Court’s determination in Vas-Cath, we
agree with appellant that the drawings of a design application
may provide an adequate written description for the claims of
a subsequently filed utility application.
In the present case, however, even if we might agree with
appellant that an artisan would have clearly understood that
Figures 14 and 16 of the ‘506 design application depict the
arrangement of seating and footwells in a sit-on-top kayak as
set forth in claim 23 on appeal, we find nothing in Mr.
Niemier’s
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declaration (Exhibit I of the brief) or appellant’s arguments
which specifically addresses the “first and second hatch
surfaces” set forth in claim 23. We note that the
specification of the present utility application (page 8)
describes the kayak (10) as comprising
“first, second, and third hatch surfaces 54, 56 and
58. Hatches formed in these surfaces 54, 56 and 58
allow access to the interior of the kayak 10, and
hatch covers 60, 62 and 64 may be employed to cover
the hatches to keep the interior of the kayak 10
dry.”
While it is true that Figures 14 and 16 of the ‘506 design
application show three spaced cylindrical projections
extending slightly above the seating deck area, we see nothing
in the ‘506 design application which would convey to the
artisan that such projections are anything other than
ornamental features of the water craft therein, that is,
merely ornamental cylindrical projections.
Moreover, even if we assume that one of ordinary skill in
the art may have possibly construed such projections to be
hatch covers or surfaces thereof, we note that this
possibility alone is not a sufficient indication to that
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Application 08/557,436
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person that such hatches
were in fact part of appellant’s invention at the time of
filing of the ‘506 design application. See, e.g., In re
Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied, 434 U.S. 1064 (1978) and also Lockwood v.
American Airlines Inc., 107, F.3d 1565, 1571-1572, 41 USPQ2d
1961, 1966 (Fed Cir. 1997), wherein the Court indicated that
“Entitlement to a filing date does not extend to subject
matter which is not disclosed, but would be obvious
over what is expressly disclosed” and that

"It is not sufficient for purposes of the written
description requirement of § 112 that the disclosure,
when combined with the knowledge in the art, would
lead one to speculate as to modifications that the
inventor might have envisioned, but failed to
disclose."
In light of the foregoing, we are convinced that the
disclosure or “written description” of the ‘506 design
application is insufficient to satisfy the written description
requirement of § 112, first paragraph, with regard to the
invention as now claimed in claims 23 through 34 of the
present utility application, and accordingly that the present
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Application 08/557,436
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utility application is not entitled under 35 U.S.C. § 120 to
benefit of the earlier filing date of the ‘506 design
application. The fact that some of the elements of the
presently claimed subject matter
have support in the earlier filed design application does not
alter this determination, because as to given claimed subject
matter, such as that set forth in independent claim 23 on
appeal, only one effective filing date is applicable. See In
re van Langenhoven, 458 F.2d 132, 137, 173 USPQ 426, 429 (CCPA
1972).
Since appellant has not otherwise contested the examiner's
rejection of claims 23 through 34 under 35 U.S.C. § 102(b), we
sustain the examiner's rejection of those claims on the basis of
the prior sale of the invention which appellant concedes
occurred in April 1994.
Turning next to the examiner's rejection of claims 23
through 34 under the judicially created doctrine of double
patenting over the claim of appellant’s prior U.S. Design Patent
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Application 08/557,436
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No. 377,473 “since the claims, if allowed, would improperly
extend the ‘right to exclude’ already granted in the patent”
(answer, page 4), we note that the examiner has taken the
position that the subject matter in the instant application “is
fully disclosed in the patent and is covered by the patent since
the patent and the application are claiming common subject
matter.” As is apparent from our
determination above regarding benefit under 35 U.S.C. § 120 and
our discussion of “written description” in the ‘506 design
patent application under § 112, first paragraph, the examiner’s
stated position here is factually inconsistent with his own and
our earlier determinations and is therefore in error. Since the
design patent does not disclose or claim the first and second
“hatch surfaces” required in independent claim 23 on appeal, it
follows that the present application and the design patent are
not “claiming common subject matter” and that the subject matter
in the instant application is not “fully disclosed in the
patent,” as the examiner urges. In addition, we note that the
examiner’s reliance on In re Schneller (answer, page 4) is
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Application 08/557,436
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entirely inapposite in this design-utility double patenting
rejection, since the claims of the utility application clearly
could not have been presented in the design application. Thus,
we will not sustain the examiner’s rejection of claims 23
through 34 on this basis.
The last of the examiner’s rejections for our review is
that of claims 23 through 34 under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over the claim of U.S. Design Patent No. 377,473.
In this instance it
appears that the examiner has attempted to read the first and
second “hatch surfaces” in claim 23 on appeal as merely
surfaces, thereby giving no weight to the specific description
of the surfaces in the claim as “hatch surfaces.” While we agree
that the design patent does show (in Figs. 14 and 16) a planar
surface on each of the three raised cylindrical projections on
the seating deck of the water craft therein, we do not agree
with the examiner’s failure to accord the “hatch surfaces”
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Application 08/557,436
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limitation in claim 23 on appeal appropriate weight when making
his obviousness determination. The fact that appellant has
expressly defined the structures in claim 23 as “hatch surfaces”
can not be simply ignored by the examiner, or dismissed as of no
moment. Accordingly, the examiner's rejection of claims 23
through 34 based on the judicially created doctrine of
obviousness-type double patenting will not be sustained.
Given that one of the three rejections posited by the
examiner, i.e., the examiner’s § 102(b) rejection of claims 23
through 34, has been sustained, it follows that the decision of
the examiner to reject claims 23 through 34 on appeal is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
Appeal No. 98-0964
Application 08/557,436
15
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-0964
Application 08/557,436
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Micheal R. Schacht
Hughes, Multer & Schacht
1720 Iowa Street
Bellingham, WA 98226