Ex parte POZZO

Board of Patent Appeals and Interferences

Mar 26, 1998

08300567 (B.P.A.I. Mar. 26, 1998)

Application for patent filed September 6, 1994. According1
to appellant, the application is a division of Application
08/007,857, filed January 22, 1993, now U.S. Patent 5,348,157,
issued September 20, 1994.
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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHEL POZZO

_____________
Appeal No. 96-3610
Application 08/300,5671
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 96-3610
Application 08/300,567
The information specified here with respect to this2
document is taken from the examiner’s “NOTICE OF REFERENCES
CITED” form dated June 26, 1995, an attachment to Paper No. 9.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 23
and 24 and from the refusal of the examiner to allow claims 25
through 27, as amended (Paper No. 16) subsequent to a final
rejection (Paper No. 9). Claims 19 and 22, the only other claims
remaining in the application, stand allowed.
Appellant’s invention pertains to an inflatable cushion
for use in packaging items in a box. An understanding of the
invention can be derived from a reading of exemplary claim 23, a
copy of which appears in the APPENDIX to appellant’s amended
brief (Paper No. 23).
As evidence of obviousness, the examiner has applied
the documents listed below:
Ericson 3,332,415 Jul. 25, 1967
Giovanni 637,711 Sep., 1966 2
(Italy)
Appeal No. 96-3610
Application 08/300,567
3
The following rejections are before us for review.
Claims 23 through 27 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Giovanni in view of Ericson.
Claims 23 through 27 stand rejected under 35 U.S.C.
112, second paragraph, as being indefinite.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 24), while the complete statement of appellant’s
argument can be found in the amended brief (Paper No. 23).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied references, and
the respective viewpoints of appellant and the examiner. As a
Appeal No. 96-3610
Application 08/300,567
4
consequence of our review, we make the determinations which
follow.
The obviousness rejection
We must reverse this rejection under 35 U.S.C. § 103.
The examiner applies two documents as evidence in this
rejection. We shall focus entirely upon the reference denoted by
the name Giovanni. In the rejection (answer, page 4), it is
indicated that, as to this reference, “[f]igures were all that
were available to the examiner.” In the application file, we
find a document that is a single sheet with drawing Figures on
both sides thereof that appear to portray something referenced by
numerals that seem to correspond to what the examiner
characterizes in the rejection as the disclosure of the Giovanni
reference. The noted document in the file does not bear the
number (637,711) listed by the examiner on the aforementioned
“NOTICE OF REFERENCES CITED” form (attachment to Paper No. 9),
does not show the name Giovanni, and does not indicate a date of
Appeal No. 96-3610
Application 08/300,567
5
Sep., 1966 (9-1966). In the answer (page 6), the examiner points
out that a complete copy of this reference was not available.
This panel of the board obtained a copy of an Italian patent
No. 637,711 in the United States Patent and Trademark Office.
However, the document does not bear the name Giovanni, does not
show the drawing figures depicted in the reference relied upon
by the examiner that is referenced as the Giovanni document, and
does not bear a date of 9-1966.
The examiner acknowledges (answer, page 6) that
information relied upon in the rejection as evidence of
obviousness is predicated upon the “assumption” of what is
disclosed in the Giovanni document. It appears that the examiner
has not even been able to determine the name of the article
(title of the invention) portrayed in the so-called Giovanni
reference.
Based upon the examiner’s own acknowledgement, and our
perception as well, it can only be assumed or speculated upon as
to what the content of the Giovanni document, in fact, discloses.
This critical deficiency prevents this document, in its current
form, from satisfying the requirement that prior art must
Appeal No. 96-3610
Application 08/300,567
6
sufficiently describe an invention to have placed the public in
pos- session of it. See In re Donahue, 766 F.2d 531, 533, 226
USPQ 619, 621 (Fed. Cir. 1985).
We share the appellant’s point of view (amended brief,
page 6) to the effect that the Giovanni document, with its lack
of an indication as to even what the subject matter thereof
pertains to, is so deficient in its present form that it is not a
proper reference, i.e., proper evidence.
Thus, notwithstanding the teaching of Ericson, the
rejection of appellant’s claims under 35 U.S.C. § 103 must be
reversed based upon the stated deficiency of the Giovanni
document.
We also remand this application to the examiner to
further attempt to ascertain the correct identifying information
for the so-called Giovanni document, and to obtain a complete
copy thereof (and translation) so that it can be fairly assessed
by the examiner relative to any possible use thereof in
subsequent prior art rejections of appellant’s claims.
Appeal No. 96-3610
Application 08/300,567
7
The indefiniteness rejection
We reverse this rejection of appellant’s claims under
35 U.S.C. § 112, second paragraph.
We certainly appreciate from a reading of appellant’s
claims 23 and 25 the presence therein, both in the preamble and
throughout the body of the claim, reference to the box with which
the claimed inflatable cushion is to be used. However, appellant
acknowledges in the amended brief (page 11) that the claims
clearly state an inflatable cushion, with the references to the
use or function of the cushion in packaging items in a box being
simply to provide the environment in which the cushion is
intended to be used. We likewise understand from our reading of
claims 23 and 25 that these claims are broadly drawn to an
“inflatable cushion” per se; the recitation throughout the claims
of the inflatable cushion being for use in packaging items in a
box being but one possible intended use therefor. It is clear
that the examiner would likewise view the claims as definite with
the aforementioned interpretation thereof (answer, page 7). For
the above reasons, we determine that the claims are drawn to an
inflatable cushion per se and are definite.
Appeal No. 96-3610
Application 08/300,567
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In summary, this panel of the board has:
reversed the rejection of claims 23 through 27 under
35 U.S.C. § 103 as being unpatentable over Giovanni in view of
Ericson, and
reversed the rejection of claims 23 through 27 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Additionally, we have remanded the application to the
examiner for the purpose stated, supra.
The decision of the examiner is reversed.
This application, by virtue of its “special” status,
requires an immediate action, MPEP § 708.01(d).
REVERSED and REMANDED
Appeal No. 96-3610
Application 08/300,567
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-3610
Application 08/300,567
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