Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE R. CLARK SCHIER
Appeal No. 90-2555
April 30, 1991
Application for Patent filed February 22, 1988, Serial No. 07/158,799. Poster Hanging Device.
Douglas W. Sprinkle for appellant
Primary Examiner--Paul J. Hirsch
Pendegrass, Stoner and Frankfort
This is a decision on appeal from the final rejection of claims 1 through 9 and 11, all of the claims pending in the application. Editorial amendments were made to claim 5 subsequent to the final rejection.
The application disclosure is directed to a device for hanging a flexible sheet, such as a poster, on a wall.
Claim 1, the sole independent claim on appeal, defines the invention as follows:
1. A device for mounting a flexible sheet, said flexible sheet having at least three spaced apart corners, said apparatus comprising:
a plurality of corner pieces, each corner piece having a recess,
means for securing one corner piece to each corner of the sheet so that each corner piece is immovable with respect to its associated corner of the flexible sheet and so that the recess on each corner piece faces towards a center of the flexible sheet,
a plurality of elongated struts, said struts being separate from and unattached to said corner pieces,
means for attaching one end of each strut to said center support,
wherein the other end of each strut rests within the recess of one of said corner pieces, and
wherein said struts are dimensioned so that said struts exert an outward force on said corner pieces to thereby maintain the flexible sheet in a flat condition.
The references of record relied on by the examiner are:
Abel et al (Abel) 4,373,279 Feb. 15, 1983
Brown 4,426,800 Jan. 24, 1984
Claims 1 through 9 and 11 stand rejected under 35 USC § 103 as being unpatentable over Brown in view of Abel. In the final rejection the examiner stated (paragraph numbers omitted):
Brown discloses a support structure for a flexible sheet with brackets 15 secured to the corners of the sheet. Elongate strut members 16 are disposed in an X-configuration across the back of the sign, with their ends removably disposed in a recess formed in the corner brackets. No center support to which the strut members are secured is shown.
Abel shows a frame support device with a central plate 12 to which four arms 13 are attached. The arms 13 consist of an inner channel 14 which is slidably disposed in an outer channel 15. The length of arms 13 is thereby adjustable by a pin 21 placed in mating apertures located in the channel members 14, 15. Different size frames can thus be supported. It would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the support device of Brown to replace the struts with four adjustable arms secured to a center support as shown by Abel, should one have wished to use the device for various size signs. To glue the bracket and sheet together rather than bolt them together would have been an obvious matter of choice because no new or unobvious result is produced, as the strut receiving recess is still provided. As to the claimed 0-rings, this performs a function not unlike the previously described adjustable structure of Abel, and thus would have been an obvious matter of choice.
*2 Initially we note that there is a dispute between the examiner and the appellant as to whether the patentability of the dependent claims stands or falls with the patentability of parent claim 1.
The examiner has repeatedly informed the appellant that the appellant has failed to include in his brief the statement that the claims do not stand or fall together as required by 37 CFR § 1.192(c)(5) [FN1] in those instances where an appellant wishes to have the patentability of the claims considered separately.
In the communication mailed August 24, 1989 (given an application paper no. 9), the examiner, acting pursuant to 37 CFR § 1.192(d) [FN2], notified the appellant that the brief was defective for failing to comply with 37 CFR § 1.192(c)(7) in that the claims were not presented as an appendix to the brief and required the filing of "a new complete brief." The examiner additionally observed that,
The rejection of claims 1 - 9 and 11 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).
The examiner did not hold the brief non-complying on this point but instead invoked the presumption created by the terms of 37 CFR § 1.192(c)(5).
In response, the appellant submitted a copy of the original brief with the claims attached as an appendix and, in a cover letter attached to the brief (appellant's communication received September 14, 1989, and given application paper no. 10), argued that 37 CFR § 1.192(c)(5) "alternatively permits the appellant to make arguments directed to the various dependent claims." This cover letter included the following paragraph:
Consequently, contrary to that asserted by the Patent Examiner, claims 1 through 9 and 11 do not stand or fall together.
The examiner, in his answer mailed January 2, 1990 (application paper no. 11), again stated that claims 1 through 9 and 11 stand or fall together because of the appellant's failure to state that the claims do not stand or fall together as required by 37 CFR § 1.192(c)(5).
The appellant filed a reply brief (application paper no. 12) on January 16, 1990, arguing that page 8, first paragraph, of the brief includes an argument for certain dependent claims that constructively constitutes a statement that the claims do not stand or fall together.
This was followed by a supplemental examiner's answer mailed February 9, 1991 (application paper no. 13), again informing the appellant that claims 1 through 9 and 11 would stand or fall together because the appellant's brief did not include a statement that the claims did not stand or fall together as required by 37 CFR § 1.192(c)(5).
*3 It is apparent to us that 37 CFR § 1.192(c)(5) requires the appellant 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 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, which we reproduce as follows:
37 CFR § 1.192(d) provides that if a brief is filed which does not comply with all the requirements of paragraph (c), the applicant 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 filed 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.
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). 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). [FN3] Because of the relative newness of the rule [FN4], 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 examiner has incorporated by reference the statement of the rejection of claims 1 through 9 and 11 under 35 USC § 103 as it appeared in the final rejection and, in the final rejection, the examiner has discussed limitations appearing in the dependent claims. Furthermore, the appellant has clearly contested the rejection of dependent claims 2 through 6 in the brief and has stated in the cover letter to the corrected brief that claims 1 through 9 and 11 do not stand or fall together.
*4 Following this decision, there should be no instance in which a brief having either form of inconsistency described previously 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).
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.
Turning to the rejection of claims 1 through 9 and 11 under 35 USC § 103, we note that the appellant presents no separate arguments as to the patentability of dependent claims 7, 8, 9 and 11. Accordingly, these claims will stand or fall on the limitations of parent claim 1. In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525 (Fed.Cir.1987).
With respect to the rejection of claim 1 under 35 USC § 103, it is the appellant's contention that neither Brown nor Abel suggest struts that are dimensioned so as to exert an outward force on corner pieces in order to keep a flexible sheet in a flat condition. The appellant further asserts that there is no motivation, other than hindsight, to combine the teachings of Brown and Abel.
We will sustain the rejection of claim 1, and claims 7, 8, 9 and 11 dependent thereon, under 35 USC § 103. It is reasonably clear to us that the teachings of Brown suggest a strut structure that is dimensioned so as to maintain sufficient tension on the corners of a flexible sheet in order that the sheet be maintained in a flat condition. The Brown patent discusses the problems of prior art signs at column 1, lines 50 through 64 and discusses the appearance of prior art signs having "a wrinkled or limp appearance" at the sign corners in lines 59 through 62. The corner and strut structure of Brown is designed "to maintain the flexible sign material in the desired flat configuration as the sign is supported in the message displaying configuration by the frame members", column 2, lines 27, 28 and 29. As the examiner has implicitly noted, the claimed subject matter of claim 1 differs from the structure of Brown with regard to a center support with struts attached to the center support. We find that the apparatus of Abel includes a center support 12 with adjustable struts in the form of telescoping members 13 and 14 attached to the center support. The purpose of the adjustable struts is to not only prevent a picture frame from warping but to straighten a frame that is warped by "applying a slow even pressure", note column 1, lines 23 through 27 of the Abel patent. Accordingly, contrary to the appellant's assertion, the Abel patent expressly teaches and suggests a strut structure that exerts an outward force on the corners of a framed device. In our opinion, it would have been prima facie obvious from the teachings of Abel to modify the device of Brown by substituting for the strut structure of Brown a center support plate with length-adjustable struts attached thereto at one end and engaging the corner pieces at the other end. The motivation for making this substitution in the Brown device is the self-evident advantage of having adjustable struts to accommodate variations in sizes of signs so that each sign can be maintained in a flat condition.
*5 We will also sustain the rejection of claims 2 and 3 under 35 USC § 103.
With respect to claim 2, the above-mentioned modification of the Brown device would result in a structure that corresponds to the subject matter recited therein.
With respect to claim 3, the appellant urges that there is no suggestion of telescoping tubes in the combined teachings of Brown and Abel. We note, however, each of the struts of Abel includes a channel shaped inner segment 14 that telescopes within channel shaped outer segment 15. If the channel shaped segments 14 and 15 are not broadly construed to be tubes, then forming such segments as tubes by enclosing the open sides of the channel segments would have been, in our opinion, an arbitrary and obvious matter of choice, solving no stated problem and producing no unexpected results. Note, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA1975).
We do agree with the appellant, however, that the resilient ring locking means, recited in claims 4 and 5, and the loop attaching means, recited in claim 6, are not taught or suggested by the combined teachings of Brown and Abel. The structure recited in claims 4, 5 and 6 is clearly not shown in the applied references and the examiner has offered no convincing line of reasoning as to why such structure would have been obvious. We are forced to conclude that the examiner has failed to establish a prima facie case for obviousness for the subject matter recited in claims 4, 5 and 6.
Accordingly, we will not sustain the rejection of claims 4, 5 and 6 under 35 USC § 103.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
Saul I. Serota
Ian A. Calvert
Verlin R. Pendegrass
Bruce H. Stoner, Jr.
Charles E. Frankfort
FN1. 37 CFR § 1.192(c)(5) reads:
(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.
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. We again point out that the brief was not held to be non-complying on the basis of failing to include a statement under 37 CFR § 1.192(c)(5); accordingly, dismissal of the appeal at this point would be inconsistent with the second sentence of § 1.192(d).
FN4. 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).
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