Ex Parte Crilly

Patent Trial and Appeal Board

Apr 25, 2016

12162416 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/162,416 07/28/2008 Michael G. Crilly
90850 7590 04/25/2016
Law Offices of Michael Crilly
104 South York Road
Hatboro, PA 19040
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MC200804NP 1875
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
MAILDATE DELIVERY MODE
04/25/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL G. CRILLY
Appeal2014-002340
Application 12/162,416
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER M. KAISER, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Oral arguments were heard in this appeal on March 29, 2016.
We AFFIRM.
Appellant's invention is directed to a decorative door cover made of
fabric having two closed and two open sides stretch-fitted over and in
contact with the horizontal edges of a door (Spec. 1: 13-16; claim 1 ).
Claim 1 is illustrative:
1. A decorative door cover comprising a decorative sleeve-shaped
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Application 12/162,416
element being at least one stretchable knitted porous permeable fabric
sheet which conforms to a door so as to cover a front surface, a back surface,
a top side edge, and a bottom side edge along said door without obstructing
functionality of said door, said stretchable knitted porous permeable fabric
sheet being resilient along its length so as to contract after placement onto
said door, said stretchable knitted porous permeable fabric sheet allows a
liquid to pass there through.
Appellant appeals the following rejections:
1. Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1-13 and 15-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bullock (US 2003/0026940 Al, published Feb. 6,
2003) in view of Davidson (US 5,839,237, patented Nov. 24, 1998)
and Kahre (US 5,042,656, patented Aug. 27, 1991).
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bullock in view of Davidson and Kahre and Bryant (US 5,922,437,
patented July 13, 1999).
4. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bullock in view of Davidson, Kahre, and
Roccaforte (US 5,814,379, patented Sept. 29, 1998).
FINDINGS OF FACT AND ANALYSES
REJECTION (1 ): WRITTEN DESCRIPTION
Appellant's arguments focus on claim 1 only (App. Br. 12-16).
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The Examiner finds that the claim limitation "said stretchable knitted
porous permeable fabric sheet allows a liquid to pass there through" lacks
written descriptive support (Final Act. 9-10). The Examiner finds that
Appellant added the disputed claim limitation in an amendment dated July 3,
2012 (Final Act. 9). The Examiner finds that not all porous, permeable
fabric materials necessarily allow liquid to pass there through (Final Act.
10). The Examiner relies on Rock (US Patent 5,413,837 issued May 9,
1995) as "rebuttal evidence" that not all porous, permeable fabrics allow
liquids to pass there through (Ans. 12).
Appellant provides in the Evidence Appendix to the Appeal Brief
definitions of "knitted fabric", "porous" and "permeable" (Evidence App'x).
Appellant contends that the ordinary meaning of these terms describe that
the knitted, porous, permeable fabric recited in claim 1 is permeable to
liquids (App. Br. 12-13). Appellant argues that Rock uses a barrier layer to
impart selective permeability to the fabric, so that Rock does not evince that
fabric without a separate barrier layer is impermeable to liquid (App. Br.
15).
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F .2d 257, 263 (CCP A 197 6) ("[T]he PTO has the
initial burden of presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the invention
defined by the claims.").
As a basis for the rejection the Examiner finds that Rock demonstrates
that a fabric may be permeable to water vapor but impermeable to liquid
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water (Ans. 11 ). The Examiner finds that Appellant concedes that the
Specification lacks explicit written descriptive support for the claim
limitation that the fabric allows liquid to pass there through. Id. The
Examiner further finds that Appellant's evidence fails to show that "all knit
fabric materials necessarily allow liquid to pass there through." Id. The
Examiner finds that Rock demonstrates that not all stretchable knitted
porous permeable fabric necessarily allow liquid to pass there through (Ans.
12).
The Examiner, however, does not respond to Appellant's argument
that it is the barrier layer that affects the permeability of the fabric, not the
fabric itself. In other words, Appellant has proffered evidence that the
ordinary meaning of knitted fabric, porous and permeable permit liquid to
pass through the fabric. The Examiner does not offer other definitions of
these claim terms or provide further argument that would call into question
Appellant's evidence as to the meaning of these claims terms (Ans. 11-12).
Moreover, the Examiner's response to Appellant's argument regarding Rock
fails to address Appellant's contention that it is the barrier layer that affects
the permeability of Rock's fabric, not the fabric itself (Ans. 12). Indeed,
Rock's need for a barrier layer appears to support Appellant's contention
that without a barrier layer that is impermeable to liquid water coated onto
the fabric layers 11 and 13, the fabric would permit liquid water to pass there
through. The Examiner does not explain adequately why it is reasonable to
find that the added claim limitation lacks written descriptive support
especially in light of Appellant's evidence as to the ordinary meaning of the
relevant claim terms.
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On this record, the Examiner has not satisfied the initial burden of
establishing that the amended claim language lacks written descriptive
support. We are constrained to reverse the Examiner's§ 112, first
paragraph, rejection for lack of written description.
REJECTIONS (2) TO (4): § 103
Appellant's arguments focus on the subject matter of claim 1 only
(App. Br. 17-46). Dependent claims 2 to 20 will stand or fall with our
analysis regarding claim 1.
The Examiner's findings and conclusions regarding Bullock,
Davidson and Kahre with respect to the subject matter of claim 1 are located
on pages 4-7 of the Answer.
Appellant advances the following eight arguments against the
rejection: (1) Kahre explicitly excludes and teaches away from fabrics like
those in Bullock and Davidson in favor of paper or lightweight plastic (App.
Br. 18-25), (2) Bullock and Davidson teach away from a stretchable knitted
porous permeable fabric covering both sides of a door (App. Br. 26-32), (3)
the combination of Bullock and Davidson with Kahre is inappropriate and
impermissible because Kahre teaches away from porous, permeable
solutions (App. Br. 33-36), (4) Davidson cannot be combined with Kahre
because doing so would do violence to Kahre' s teachings because
Davidson's permeable cloth would not prevent paint from reaching the
covered door (App. Br. 36-39), (5) the application of Bullock's and
Davidson's porous permeable knitted fabric would have negated the
disposable feature of Kahre (App. Br. 39-40), (6) Bullock's and Davidson's
stretchable material is contrary to the non-stretchable feature required by
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Kahre (App. Br. 40-41), (7) Kahre's two-sided covering is contrary to the
one-side teaching required by Bullock and Davidson (App. Br. 42-43), and
(8) Kahre is non-analogous art (App. Br. 43-47).
Appellant's arguments (1 ), (3), ( 4), (5) and (6) all relate to whether it
would have been obvious to combine Bullock's and Davidson's stretchable,
porous, permeable knitted fabric material with Kahre. Appellant contends
that Kahre teaches away from using fabric instead teaching to use paper or
lightweight plastic to make the door cover (App. Br. 19). Kahre teaches that
the door cover may be made of "flexible material" arranged in mutually
superimposed disposition (Kahre, col. 2, 11. 12-13 ). Kahre further discloses
that the flexible layers "may" either be formed of paper or lightweight
plastic, such as polyethylene (Kahre, col. 2, 11. 13-15). Kahre discloses in
the background of the invention section of the patent that typical drop cloths
used for covering doors during painting are made of canvas or plastic, but
these drop cloths that do not conform to the door are bulky and do not cover
the door adequately (col. 1, 11. 25-34). Even though Kahre does not
explicitly include fabric within the list of materials that may be used to make
the envelope shaped door cover, Kahre' s teachings do not indicate that
flexible cloth or fabric material cannot be used to cover a door. Rather,
Kahre' s teaching, which uses the permissive language "may" to describe the
materials used to form the door cover, constitutes a mere preference for
using paper or lightweight plastic.
Appellant argues that Kahre teaches away from the porous fabric cloth
taught by the combination of Bullock and Davidson (App. Br. 23, 33-34, 37-
38). The Examiner's rejection is based upon using Kahre's envelope shape
for a door covering to form the fabric door covers of Bullock as modified by
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Davidson. In other words, the Examiner is not proposing to use Bullock's
fabric as modified by Davidson to make door covers to protect the door from
paint splatter as in Kahre. Rather, the Examiner proposes to use Kahre' s
envelope shape for the door cover to form the door cover of Bullock as
modified by Davidson in order to make it easier to attach the cover to the
door (Ans. 6, 14-15). KSR Int 'l Co. v. Teleflex Inc., 550 US 398, 420 (2007)
("Common sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.").
Appellant's arguments (2) and (7) are directed to whether Bullock and
Davidson teach away from covering both sides of a door. Appellant argues
that Bullock and Davidson only cover the front of the door, which Appellant
alleges teaches away from covering the front and back of the door.
Although Bullock and Davidson teach an embodiment that only covers one
side of the door with the stretchable fabric, the Examiner's rejection is based
upon Kahre' s teaching to use the envelope structure so that it is easier and
more convenient to mount the door cover on the door. Appellant does not
specifically contest the Examiner's reason for the modification. Moreover,
we do not find that Bullock or Davidson discourages covering both sides of
the door. Rather, Bullock and Davidson have one way to attach the door
cover to the door that uses bungee cords and other attachment means. Kahre
teaches the ability to cover the front and the back of the door using a
convenient envelope structure that improves upon the use of bungee cords
and other attaching means required by Bullock and Davidson. We find that
the prior art would have suggested the modification so that the door cover of
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Bullock as modified by Davidson covers the front and back of the door to
provide an easier installation that forgoes the tethers and bungee cords as
found by the Examiner.
Regarding Appellant's argument (6), Appellant contends that Kahre's
teaching that the envelope has an opening large enough to span the space of
the door from top to bottom teaches away from using Bullock's or
Davidson's stretchable fabric material (App. Br. 40). Kahre's teachings do
not discourage making Bullock's door cover as modified by Davidson to
have Kahre' s envelope structure to provide a more convenient to use door
cover. Kahre' s teaching regarding the opening of the envelope also does not
necessarily exclude using a material that is stretched so that the opening
spans the entire length of the door. Indeed, Bullock teaches that a
stretchable material provides an even more snug fit of the door covering to
the door (i-f 29), which would have been a benefit to Kahre' s door cover.
Appellant contends that the Examiner relied on impermissible
hindsight in determining that the teachings of Bullock, Davidson and Kahre
would have suggested the door cover of claim 1 (App. Br. 29). To the
contrary, we find that the Examiner has applied the teachings of the
references in making the combination. As noted supra, Kahre broadly
teaches using flexible material with only a preference for paper or
lightweight plastic. Kahre does not teach away or discourage the use of
fabric to make the two-sided door cover.
Regarding Appellant's argument ( 5), Kahre' s teaching that the door
covers are disposable does not necessarily teach away from using fabric.
Indeed, Kahre teaches that the paint splattered, used envelopes may be
bundled together and discarded (col. 5, 11. 52-59). Kahre's teaching that the
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envelopes may be discarded is permissive, not mandatory. For example, the
envelopes that are not paint splattered may be reused instead of being
discarded if so desired. Nevertheless, the Examiner's rejection is based
upon using Kahre' s envelope structure to make the fabric door covers of
Bullock as modified by Davidson.
Regarding Appellant's argument (8) directed to whether Kahre is
analogous art, we are not persuaded that the Examiner erred in finding that
Kahre is analogous art. Appellant contends that Kahre' s field of endeavor is
construction supplies, not Appellant's field of endeavor: decorative door
covers (App. Br. 43-44). The field of Appellant's endeavor is decorative
door covers. Kahre provides a door cover that covers and protects the door
and thus is the same field of endeavor. Appellant argues that Kahre is not
related to providing a decorative cover, but the Examiner finds that Kahre
may be considered decorative by some users (Ans. 18-19). In other words,
the saying "beauty is in the eye of the beholder" applies here too and that
one may find that Kahre' s door cover to be decorative. Appellant does not
specifically challenge this finding that one may find Kahre's door cover to
be decorative or aesthetically pleasing (Reply Br. 16-17). Rather, Appellant
merely restates the argument that Kahre is directed to construction supplies.
Id.
Moreover, Appellant argues that Appellant's problem to be solved
involves improving the appearance of the door via an ornamental product
while forgoing the functional protective attributes of the door cover (i.e., the
fabric is porous and permeable) (App. Br. 44). Page 4 of the Specification,
however, describes the problem to be solved as providing a "low-cost,
stretchable fabric covering which facilitates the decoration of both sides of
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the door without comprising [sic, compromising] the functionality of the
door and without the use of fasteners." Page 4 of the Specification further
discloses that "additionally, the related arts do not describe a single, fully-
integrated conformal sleeve-shaped device which is easily placed onto and
positioned about a door." In other words, Appellant's problem to be solved
includes providing a door cover that easily covers both sides of the door in
an easy fashion to decorate both surfaces of the door (Spec. 4:3-14).
Appellant's problem to be solved is not completely divorced of any
improvement to the functional attribute of providing ease of attachment of
the door cover to the door. Kahre' s envelope door cover structure provides
ease of attachment of the cover to the door. The problem addressed by
Kahre (ease of attachment of door cover) would have been reasonably
pertinent to Appellant's problem to be solved. We find that Kahre is
analogous art.
Appellant has not persuaded us that the Examiner reversibly erred in
concluding that the combined teachings of Bullock, Davidson, and Kahre
would have suggested making the fabric door covers of Bullock and
Davidson in the form of an envelope structure to provide a more convenient
and easy to use door cover. On this record and for the above reasons, we
affirm the Examiner's§ 103 rejections of claims 1-20.
DECISION
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). See 37 C.F.R.
§ 1.136(a).
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ORDER
AFFIRMED
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