This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 16-25 under 35 U.S.C. § 103, and also, under 37 CFR 1.196(b), rejecting claim 21 under 35 U.S.C. § 112, second paragraph, and claims 16-25 under both 35 U.S.C. § 102(b) and 35 U.S.C. § 102(b) combined with 103, in application serial No. 685,888, filed May 12, 1976, for "Sheeting of Plastics Material for the Manufacture of Strip-like Articles Such As Roller Blinds and Curtains, and Apparatus for Preparing Same," a continuation of application serial No. 479,133, filed June 13, 1974. We affirm.
Appellant has disclosed a selectable-width roller blind or curtain comprising a flexible plastic sheet such as polyvinyl chloride (PVC) 0.008 inch thick attached to a horizontal support means such as a roller. A series of peelable strips is formed along one or both of the vertical edges of the sheet by slitting it part way through. Allegedly, the consumer can easily narrow the sheet width to fit a window by tearing away the number of strips roughly equivalent to the perceived excess.
A stated novel feature in the present blind is the forming of the peelable strips by slits cut into but not through the sheet without substantially deforming or laterally displacing the plastic material. In the preferred embodiment, these slits are substantially invisible. The criticality of the preferred cuts is defined in claim 24 as no deeper than half and no shallower than one-twelfth of the sheet thickness and of a width not exceeding one-thousandth of an inch. Separation of a strip formed in the above manner supposedly results in a clean edge which has not been distorted.
Additional embodiments disclose the use of features designed to simplify the task of installing the blind. For example, the invisible slits or edges of the removable strips can be more readily located with the aid of indicator means such as tabs formed by cutting the material all the way through at
In addition to affirming the examiner's rejection under 35 U.S.C. § 103, the board made three new rejections.
(1) Dependent claim 21 was rejected under 35 U.S.C. § 112, second paragraph, as "indefinite." Specifically, claim 20, from which claim 21 depends, uses the expression "indicator means." Since the "tabs" of claim 21 were stated to be the only such disclosed means, the board held that dependent claim 21 did not further restrict or substantially differ from claim 20, citing 37 CFR 1.75(b) and (c).
(2) The board rejected claims 16-25 under 35 U.S.C. § 102(b) by reason of an "on-sale" bar. The following "Bulletin notice" of record, published in the United States June 19, 1972, was held by the board to clearly establish an offer of sale more than one year prior to appellant's parent application filing date of June 13, 1974:
Additional proof of an offer of sale was found by the board in correspondence between appellant and the Nesa International Corporation dated September 4, 1972. An enclosure accompanying this letter was said to set forth details about peelable window shades, and included both a sample and a price listing for the shades "F.O.B. Dublin."
Viewing these documents together, the board concluded that a commercially marketable, peelable shade was offered for sale in this country prior to the critical date of June 13, 1973. The "on-sale" provision of § 102(b) was held applicable. However, in ending this part of its opinion, the board noted that only peelable sheeting was offered in the notice. The difference between the claimed combinations of "support means" and sheeting or "a roller" and sheeting and the sheeting alone was dismissed as being "obvious within the purview of 35 U.S.C. 103." The board said, "Reduction to practice would require no more than the act of tacking the plastic sheeting material to a conventional roller."
(3) The board rejected claims 16-25 under 35 U.S.C. § 102(b)/103 for obviousness, treating the World Trade Bulletin notice, supra, as a "printed publication" under § 102(b). The board said:
The determinative issue before us is whether, on the facts of record, appellant
The fundamental principle which we discussed and applied in Foster is that an inventor is given a grace period of one year, within which to file his patent application in this country, after the occurrence of the events named in 35 U.S.C. § 102(b), which events are such as to make the invention claimed in the application available to the public in this country. Furthermore, as held in Foster, the principle, which is intended to prevent dilatory filing, applies not only to the precise matter disclosed by the events of § 102(b) but also to claimed inventions which would be obvious from the matter disclosed by the events in the sense of § 103, to those of ordinary skill in the art as of a date one year prior to the filing of the U.S. application.
The principle of Foster, which may be called a §§ 102(b)/103 rejection since it finds its statutory base in both of those sections, has been accepted in a number of judicial circuits including the courts of appeal of the Second,
Section 102(b) reads in its entirety:
It is the "on sale" provision which is most pertinent here. The World Trade Bulletin notice, supra, published more than one year before the filing date of appellant's parent application, expressly offered "supplies of P.V.C. window shades invisibly pre-slit to peel by hand to exact window widths." These were the window shades which appellant was commercially making and selling in Ireland. A window shade is something to be hung before a window and implies some kind of support. It is well known, and we can judicially notice, that curtain rods extending horizontally and spring shade rollers are the commonest supports for window shades. One of ordinary skill in the window shade art would immediately recognize the necessity of such a support for use in conjunction with the window shades which appellant offered to "supply" to the American market.
The Second Circuit Court of Appeals dealt with a similar "on sale" situation in Timely Products, note 2 supra. That case differed somewhat from this one in that the offer of sale which was accepted by the giving of an order was based on the display of samples, the patentee arguing that the articles alleged to be "on sale" did not come within § 102(b) because they were "not actually available for delivery until after the critical date." After reviewing the law extensively, the court stated its conclusions as follows (523 F.2d at 302, 187 USPQ at 267-68):
We agree with these principles. Appellant attempts to escape their application primarily by referring to two differences between the inventions of the appealed claims and the pre-slit shade material he offered to supply and thus put "on sale." The first difference is that most of his claims call for a horizontal support or, more specifically, a roller. The second is that three of the claims call for an "indicator means" or, more specifically, a tab, which is a small segment of shade material at a top or bottom end of a shade, lying between two slits. It is formed simply by extending the slit all the way through the material for a short distance so that the user can find the slits. The tab also gives him a piece of material to take hold of to start the peeling operation.
In accordance with the Foster principles that the obviousness of the claimed invention as a whole must be considered and that in doing so the article placed on sale must be treated as technical "prior art" under § 103, we must decide whether the differences in the claims, namely, the supports or the tabs, make the claimed invention unobvious.
As to the support means we conclude that, given the plastic sheet shade material denominated a "window shade," nothing could be more obvious than to attach it to a roller or other support.
As to the tabs, sometimes denominated "indicator means * * * for initiating peeling," we likewise consider it would have been obvious as of the critical date to render visible the invisible slits extending partially through the PVC material, at the same time producing "tabs" by extending the slits all the way through the material at one or both ends of the shade units.
For these reasons, the board's rejection of all claims under §§ 102(b)/103 is affirmed. We do not find it necessary to reach the other rejections.