Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE HISAYOSHI OHSUMI
Appeal No. 90-2272
April 30, 1991
Application for Patent filed May 27, 1988, Serial No. 200,035. Improved Slat for Blinds.
Steven I. Weisburd et al. for appellant
Primary Examiner--David M. Purol
Pendegrass, Stoner and Frankfort
This is a decision on appeal from the final rejection of claims 2, 3, 4, 6 through 9 and 12 through 17, which are the only claims remaining in this application. [FN1]
Appellant's invention is directed to a laminated slat for blinds. The claimed subject matter on appeal is adequately illustrated by reference to claim 14, the only independent claim on appeal, which reads as follows:
14. An improved slat for blinds, said slat comprising:
an elongated core plate having first and second opposed main surfaces;
first and second wood intermediate layers located adjacent said first and second main surfaces, respectively; and
The references relied upon by the examiner are:
Dodge 2,068,977 Jan. 26, 1937
Goodman (PCT) WO 85/00849 Feb. 28, 1985
Claims 7 and 12 stand rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellant regards as the invention. As indicated by the examiner on page 3 of the answer, it is his position that
[t]hese claims are indefinite for they are alternate phrases which set forth a limitation covering more than one element. While applicant states that these claims are definite for they are Markush claims, it should be noted that this type of claim is employed when there is no commonly accepted generic expression which is commensurate in scope with the field which the applicant desires to cover, however, this is not the situation in the instant application.
Claims 2, 3, 4, 6 through 9 and 12 through 17 stand rejected under 35 U.S.C. 103 as being unpatentable over Goodman in view of Dodge. In the examiner's opinion, it would have been obvious to one having ordinary skill in the art at the time the invention was made "to provide the slat of Goodman with a core plate made of wood for the purpose of aesthetics, as taught by Dodge" (answer, page 4).
The full text of the examiner's rejections and rebuttal to the arguments presented by appellant appear in the answer on pages 3 through 7.
In response to the examiner's rejection under 35 U.S.C. 112, second paragraph, appellant contends that the examiner has an incorrect understanding regarding where and how Markush-type claims may be used. Appellant specifically refers to § 706.03(y) of the Manual of Patent Examining Procedure (MPEP) as support for his position that the Markush style of claiming may be used in mechanical cases and that a Markush-type claim should not be rejected merely because of the presence of a generic claim embracive thereof. As for the rejection of the appealed claims under 35 U.S.C. 103, appellant contends that "it is impossible to supplement the teachings of Goodman with the teachings of Dodge to arrive at the present invention" (brief, page 7). In particular, appellant urges that there is no suggestion anywhere in the references relied upon by the examiner to sandwich a core plate for a blind between a pair of wooden layers, with the wooden layers being in turn sandwiched between a pair of synthetic resin layers. In appellant's view the only motivation in the record for modifying Goodman in such a manner as to arrive at the presently claimed invention comes from appellant's own specification and teachings. We make reference to the main (pages 4 through 10) and reply briefs for the complete statement of appellant's position.
*2 As a preliminary matter, we find it necessary to address a dispute between appellant and the examiner as to whether the patentability of appellant's dependent claims 2, 3, 4, 6 through 9, 12, 13 and 15 through 17 stands or falls with the patentability of independent claim 14, from which they depend.
In the main brief (pages 3 and 4), appellant has provided a section entitled "Grouping of Claims," and indicated therein that for the purposes of the present appeal the claims of record may be considered in groups, as follows:
Consists of claims 7 and 12 and concerns the aforementioned rejection under 35 U.S.C. § 112.
Consists of claim 15 (reciting that the outermost resin layers are transparent) and concerns the rejection under 35 U.S.C. § 103.
Consists of claim 13 (reciting that the "side faces," i.e., the minor planes, of the slat are furred) and concerns the rejection under 35 U.S.C. § 103.
Consists of claim 4 (reciting that the slat is bent as in Fig. 2c) and concerns the rejection under 35 U.S.C. § 103.
Consists of claim 9 (reciting that the core plate is also made of wood) and concerns the rejection under 35 U.S.C. § 103.
Appellant also provided in the section of his main brief entitled "Argument," reasons as to why he considers the examiner's position with regard to the respective enumerated groups of claims to be in error, including pointing out specific limitations in the rejected claims which are asserted not to be described in the prior art relied upon in the rejection, and why the applied references, taken as a whole, do not suggest the claimed subject matter. See particularly pages 4 through 9 of the main brief.
In his answer (page 2), the examiner has indicated that
[t]he rejection of claims 2-4, 6-9, and 12-17 stand or fall together because appellant's brief does not include a statement that this grouping of claims does not stand or fall together. See 37 CFR 1.192(c)(5).
In the reply brief filed August 25, 1990, appellant contends that the examiner is "elevating form over substance" (reply brief, page 3) by implying that under the sub-heading "Grouping of Claims" an appellant must include the statement "this grouping of claims does not stand or fall together." Appellant urges that the examiner's position suggests that there is a "per se" rule requiring the recitation of the words "the claims do not stand or fall together." According to the appellant, "[t]here is no basis for the creation of such a per se rule in any reported decision or in the Legislative Rule History which pertains to 37 CFR 1.192."
*3 37 CFR 1.192(c)(5) is reproduced as follows:
(5) Grouping of claims. For each ground of rejection which appellant contests and which applies to more than one claim, it will be presumed that the rejected claims stand or fall together unless a statement is included that the rejected claims do not stand or fall together, and in the appropriate part or parts of the argument under subparagraph (c)(6) of this section appellant presents reasons as to why appellant considers the rejected claims to be separately patentable (emphasis ours).
A reading of this subsection of the rule makes it clear that an appellant is required to perform two affirmative acts in his brief in order to have the separate patentability of a plurality of claims subject to the same rejection considered. The appellant must (1) state that the claims do not stand or fall together and (2) present arguments as to why the claims subject to the same rejection are separately patentable. Where the appellant does neither, it is appropriate for the examiner and this board to rely upon the presumption created by the words of the rule and treat all claims as standing or falling together. Where, however, the appellant (i) omits the statement required by 37 CFR 1.192(c)(5) yet presents arguments in the argument section of his brief or (ii) includes the statement required by 37 CFR 1.192(c)(5) to the effect that one or more claims do not stand or fall with the rejection of other claims yet does not offer arguments in support in the argument section of the brief, it is imperative that the inconsistency apparent on the face of the brief be resolved. We are of the view that a brief evidencing either form of inconsistency on its face is not in compliance with 37 CFR 1.192.
An appellant's failure to file a brief fully complying with 37 CFR 1.192 is a matter within the examiner's jurisdiction as set forth in the Manual of Patent Examining Procedure, § 1206, page 1200-7 (Rev. 13, Nov. 1989), which we reproduce as follows:
REVIEW OF BRIEF BY EXAMINER
37 CFR 1.192(d) provides that if a brief is filed which does not comply with all the requirements of paragraph (c), the appellant will be notified of the reasons for non-compliance and given a one month time limit within which to file an amended brief. The appeal will be dismissed if the appellant does not timely file an amended brief, or files an amended brief which does not overcome all the reasons for non-compliance of which appellant was notified. An amended brief is timely if filed within the one month time limit or within any extension of the original period to file the brief.
The question of whether a brief complies with a rule is a matter within the jurisdiction of the examiner. Under 37 CFR 1.192(d), the appellant may file an amended brief to correct any deficiencies in the original brief. Moreover, if appellant disagrees with the examiner's holding of non-compliance, a petition under 37 CFR 1.181 may be filed.
*4 The brief in the present case, as is clear from our earlier discussion, is of the type in which the appellant omits the statement required by 37 CFR 1.192(c)(5) yet presents arguments in the argument section of his brief. It is therefore not in compliance with 37 CFR 1.192(c). Contrary to the position expressed by the appellant in his reply brief, the examiner is not elevating form over substance, but is instead merely applying the rule as written, by requiring appellant's brief to include under the appropriate headings both a statement that the claims do not stand or fall together and arguments as to why the claims are separately patentable, if appellant wishes to have the patentability of the claims in question separately determined.
Under these circumstances, we would ordinarily remand the application to the examiner to allow him to issue a notification of non-compliance under 37 CFR 1.192(d). [FN2] Because of the relative newness of the rule, [FN3] however, we will in this instance construe the record as a whole as being in compliance with 37 CFR 1.192(c)(5). In this regard, we note that the appellant has explicitly contested the rejection of dependent claims 4, 8, 9, 13 and 15 (Groups III through VII of appellant's main brief) separate and apart from the rejection of independent claim 14 and, in our view, thereby manifested his intention that these claims not stand or all together with the independent claim. As for dependent claims 2, 3, 6, 7, 12, 16 and 17, which were listed together with independent claim 14 in Group II of appellant's main brief and not argued separately, we believe that these claims must stand or fall with the independent claim.
Following this decision, we feel that there should be no instance in which a brief having either form of above-noted inconsistency reaches us unchallenged by the examiner under 37 CFR 1.192(d). Nevertheless in any instance where an examiner and an appellant engage in the sort of interchange which is present in this application, regardless of whether the examiner has held the brief to lack compliance with 37 CFR 1.192(c), the Board of Patent Appeals and Interferences will treat the matter as one within the jurisdiction of the examiner, necessitating that an appellant dissatisfied with the examiner's holding seek relief by way of petition under 37 CFR 1.181 rather than by way of appeal under 37 CFR 1.191. Note, In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA1971); In re Mindick, 371 F.2d 892, 152 USPQ 566 (CCPA1967). To this end we will remand any such application to the examiner to permit him to take appropriate action under 37 CFR 1.192(d).
*5 There is yet a further situation which requires elucidation. In this situation, (i) the appellant presents a brief having either form of inconsistency, (ii) the examiner invokes the presumption of 37 CFR 1.192(c)(5) that the claims stand or fall together without holding the brief to lack compliance with 37 CFR 1.192(c), and (iii) the appellant allows the examiner's invocation of the presumption to go unchallenged by petition under 37 CFR 1.181. In such a situation, we will simply decide the appeal and will decline to consider the patentability of the claims separately in reaching our decision.
We turn now to a consideration of the examiner's rejection of claims 7 and 12 under 35 U.S.C. 112, second paragraph, and of claims 2, 3, 4, 6 through 9 and 12 through 17 under 35 U.S.C. 103. Our review of these issues has included a careful consideration of appellant's specification and claims, the teachings of the applied references, and the respective contrary viewpoints of the appellant and the examiner. As a consequence of our review, we have come to the conclusion, for the reasons which follow, that the examiner's respective rejections of the appealed claims are not well founded.
With regard to the § 112, second paragraph rejection, we note that it is well settled that claims in an application must define the metes and bounds of the claimed invention with a reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA1976); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA1970). It is equally well settled, however, that the mere use of an alternative expression (e.g., a Markush expression) in a claim does not necessarily render a claim indefinite. See Ex parte Head, 214 USPQ 551 (Bd.App.1981) and In re Gaubert, 524 F.2d 1222, 187 USPQ 664 (CCPA1975). As indicated in In re Hammack, supra, 427 F.2d at 1382, 166 USPQ at 208, the purpose of the requirement stated in the second paragraph of 35 U.S.C. 112 is:
to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance.
In the present case we find that the alternative expressions criticized by the examiner are properly drafted Markush groups and do not render the boundaries of the claimed invention undeterminable. It is clear to us that the artisan reading appellant's claims 7 and 12 would not be confused as to what those claims, considered as a whole, would preclude others from doing in future enterprise. Accordingly, we conclude that the expressions used in claims 7 and 12 on appeal do not render these claims vague and indefinite under 35 U.S.C. 112, second paragraph.
*6 As for the examiner's concern about the presence of an accepted generic expression, namely "metal" in claim 6 and "wood" in claim 14, precluding use of the Markush-type language in claims 7 and 12, we find it sufficient to note that an applicant has a right to define what he regards as his invention as he chooses, so long as his definition is reasonably distinct, as required by 35 U.S.C. 112, second paragraph, and supported by an enabling disclosure, as required by the first paragraph of 35 U.S.C. 112. See In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA1980). See also MPEP § 706.03(y), wherein examiners are directed "not to reject a Markush-type claim merely because of the presence of a true genus claim embracive thereof."
For the above stated reasons, the examiner's rejection of claims 7 and 12 under 35 U.S.C. 112, second paragraph, will not be sustained.
We next address the examiner's rejection of the appealed claims under 35 U.S.C. 103. Goodman, the primary reference upon which the examiner relies, teaches a blind slat, seen best in Figure 7, that comprises an elongate core plate or slat member (34) having first and second opposed main surfaces and first and second laminates (40) adhered to the opposed main surfaces thereof. Each of the laminates (40) is disclosed as including a first layer (25) of a fabric material with spaces between the strands thereof through which light can pass and a second sheet-like layer (26) or (44) of light-transmitting material, which is either transparent or translucent, to which the first layer is fixedly attached. Goodman indicates that the layer (25) is preferably a non-woven or loosely-woven fabric or yarn material, and that the second layer (26) in Figure 3 or (44) in Figure 6 is preferably a plastic sheet or film, for example, a polyester film. The core plate (34) in Goodman is disclosed as being of aluminum or plastic such as PVC. The open spaces of the fabric layer and light-transmitting property of the second layer of the laminate (40) are important features of Goodman's blind slat. As indicated on page 12 of the Goodman reference,
[s]ince the strands of the laminate are spaced and the second layer is light-transmitting, preferably transparent, the surface quality of the slat member will affect the overall visual effect of the slat assembly. As a result, by selecting a particular slat member and a particular laminate, many slat assemblies of different appearances can easily be assembled.
Dodge discloses a laminated slat for a venetian blind which comprises a base or core plate (18) made of wood, a filler plate (20) also made of wood and a metal portion (16) formed around the filler plate and affixed to the core plate. The wood base plate in Dodge is painted or lacquered, while the metal portion presents a highly polished metal surface on the other side of the slat (page 1, column 1, lines 9 through 15). According to the patentee, the contrasting surfaces of the blind slat produce a highly pleasing and ornamental appearance. Dodge also indicates (page 2, column 2, lines 15 through 19) that due to the selection of materials and particular laminated construction, the blind slats therein do not have the usual rattling or clattering sound, but instead have a dead sound.
*7 While we might agree with the examiner that one skilled in the art would have found it obvious in light of the teachings in Dodge to make the core plate (34) of Goodman from wood, we fail to see how such a modification of the blind slat in Goodman would in any way be responsive to the appellant's claimed slat. Claim 14 defines a laminated slat which includes a core plate and "first and second wood intermediate layers" located adjacent the first and second main surfaces of the core plate, and first and second synthetic resin layers located adjacent the first and second wood intermediate layers. It is clear to us that the examiner's proposed modification of Goodman set forth on page 4 of the examiner's answer does not result in the claimed subject matter.
The examiner's somewhat different position found on page 6 of the answer, which, in essence, urges that "the gist" of the § 103 rejection was that it would have been obvious to provide wood layers on both sides of the core plate in Goodman, is in our view based on impermissible hindsight derived from appellant's own teachings and disclosure. Neither Goodman nor Dodge suggests the desirability, and thus the obviousness, of providing the core plate (34) in Goodman with a wood intermediate layer located on each side of the core plate. We see no reason to make the transparent or translucent layers (44) of the laminates (40) of the blind slat seen in Figure 7 of Goodman of wood as urged by the examiner. In our opinion, such a substitution would be antithetical to the desires and teachings of the Goodman reference, since Goodman clearly wants the intermediate layers (44) to be light-transmitting. We further note that the examiner's stated rejection appears to ignore the specific limitations set forth in dependent claims 4, 8, 13 and 15. While we need not particularly address these dependent claims, in light of our disposition of the examiner's rejection with regard to independent claim 14, we note our agreement with the appellant that the features recited therein do not appear to be shown or disclosed in the prior art relied upon by the examiner. Accordingly, we will not sustain the examiner's rejection of appealed claims 2, 3, 4, 6 through 9 and 12 through 17 under 35 U.S.C. 103.
The examiner's rejection of claims 7 and 12 under 35 U.S.C. 112, second paragraph, is not sustained.
The examiner's rejection of claims 2, 3, 4, 6 through 9 and 12 through 17 under 35 U.S.C. 103 is not sustained.
The decision of the examiner is reversed.
Saul I. Serota
Ian A. Calvert
Verlin R. Pendegrass
Bruce H. Stoner, Jr.
Charles E. Frankfort
FN1. We note that appellant's amendment filed after final rejection, on September 5, 1989, was refused entry by the examiner. See the advisory action mailed September 8, 1989 (paper No. 8). We also observe that while appellant's appeal brief (paper No. 11) correctly identifies the claims on appeal, appellant's notice of appeal filed October 2, 1989 (paper No. 10) incorrectly included claims 10 and 11 as being appealed, when, in fact, claims 10 and 11 were canceled by the amendment filed March 9, 1989 (paper No. 5). It is thus clear from the record of this application that only claims 2, 3, 4, 6 through 9 and 12 through 17 are presented for our consideration in this appeal.
FN2. 37 CFR 1.192(d) reads:
If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, the appellant will be notified of the reasons for non-compliance and provided with a period of one month within which to file an amended brief. If the appellant does not file an amended brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, the appeal will be dismissed. Any arguments or authorities not included in the brief may be refused consideration by the Board of Patent Appeals and Interferences.
FN3. 37 CFR 1.192(c)(5) applies to all ex parte appeals in which the notice of appeal under 37 CFR 1.191 was filed on or after September 12, 1988. See 53 F.R. 23728 (June 23, 1988), 1092 O.G. 27 (July 12, 1988).