Ex parte Adamski et al.

Board of Patent Appeals and Interferences

Apr 24, 2000

08300684 (B.P.A.I. Apr. 24, 2000)

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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ALFRED ADAMSKI
and BRIAN T. DOEPKER
________________
Appeal No. 1997-1314
Application 08/300,684
________________
ON BRIEF
________________
Before KRASS, BARRETT and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-1314
Application No. 08/300,684
We note the Examiner correctly indicates that claims 9-11 depend from claim 7, not claim 8.1
2
This is a decision on appeal from the final rejec-
tion of claims 1, 3 through 7, and 9 through 12, all of the
claims pending in this application.1
The invention relates to a cathode ray tube (CRT)
for color television, and more particularly to the bimetal
springs which support the aperture mask-frame assembly in the
face panel portion of the glass envelope of the CRT.
Representative independent claim 1 is reproduced as
follows:
1. A support spring for an aperture mask-frame
assembly in a cathode ray tube, the spring being an elongate
member of flat spring material comprising a base portion, a
body portion and an apertured portion, the base portion lying
in a first plane and the body and apertured portions lying in
a second plane, the first and second planes intersecting to
form an angle, characterized in that two raised spaced apart
ribs of spring material extend longitudinally along at least a
portion of the body portion of the spring.

The references relied on by the Examiner are as
follows:
Fukuzawa et al. (Fukuzawa) 4,335,329 Jun. 15,
1982
Appeal No. 1997-1314
Application No. 08/300,684
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Admitted Prior Art (APA)
Claims 7 and 10 stand rejected under 35 U.S.C. §
102(b) as being clearly anticipated by Fukuzawa.
Claims 1, 3 through 6, 9, 11 and 12 stand rejected
under 35 U.S.C. § 103 as being unpatentable over APA in view
of Fukuzawa.
Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the brief and the answer
for the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 7 and 10 are anticipated
under 35 U.S.C. § 102(b) by Fukuzawa. We also agree with the
Examiner that claims 1, 4 through 6, 11 and 12 are properly
rejected under 35 U.S.C. § 103. Thus, we will sustain the
rejection of these claims but we will reverse the rejection of
the remaining claims on appeal (claims 3 and 9) for the
reasons set forth infra.
Appeal No. 1997-1314
Application No. 08/300,684
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It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established only when a single prior art reference
discloses, expressly or under principles of inherency, each
and every element of a claimed invention." RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228
(1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983).
With respect to claims 7 and 10, the Examiner states
that Fukuzawa discloses the claimed support spring for a
cathode ray tube as shown in Figure 9. In Figure 9, element
30 is considered the base portion of the spring and elements
31e are considered the two raised ribs. (Answer-page 3.) We
also note that 31d depicts the body portion while 31c
represents the aperture portion.
Appeal No. 1997-1314
Application No. 08/300,684
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Appellants argue that Fukuzawa’s element 31 is a
metallic support member, thus rib members 31e are not present
on the body portion of the spring but on a support member
(answer-page 6). We note that element 31 contains several
“portions”. As noted supra, 31d depicts the body portion, and
it is clearly
illustrated in Figure 9 that rib members 31e are “present”
thereon.
Appellants argue that even if rib members 31e are
viewed as being on body portion 31d, the rib members 31e are
also on the apertured portion, which is not provided in the
claims (answer-page 6). We agree, ribs are not provided in
the claims for the apertured portion. However, this is not
fatal to the Examiner’s rejection since ribs are also not
excluded from being on the apertured portion by the claims.
Appellants further argue that ribs 31e of Fukuzawa
are not present on the surface of the body portion 31d, but
are only edges thereof (answer-page 6). We find no such
distinction recited in claim 7. Claim 7 recites “...support
Appeal No. 1997-1314
Application No. 08/300,684
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spring has two spaced apart raised ribs extending
longitudinally along at least part of the body portion.”
(Emphasis added.)
Thus we find that Fukuzawa clearly teaches
everything recited in claim 7. As to claim 10, which requires
that the ribs be “located near opposite longitudinal edges of
the spring,” we find this is clearly shown in Fukuzawa’s
Figure 9. Accordingly, we will sustain the Examiner’s 35
U.S.C. § 102(b) rejection of claims 7 and 10.
It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983).
Obviousness is a question of law based on findings of
underlying facts relating to the prior art, the skill of the
Appeal No. 1997-1314
Application No. 08/300,684
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artisan, and objective considerations. The teachings of the
references, their relatedness to the field of the applicant’s
endeavor, and the knowledge of persons of ordinary skill in
the field of the invention, are all relevant considerations.
See In re Oetiker, 977 F.2d at 1447, 24 USPQ2d at 1445-46; In
re Gorman, 933 F.2d at 986-87, 18 USPQ2d at 1888; In re young,
927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
With respect to claims 1 and 4, Appellants argue:
In addition, the device in Fig. 9, which
Examiner considers to be the support spring, does
not have the apertured portion 31c and the portion
31d (which Examiner considers to be the body
portion) to be present in a single plane as required
by the instant claims. (Answer-page 7.)

Although claim 1 does not recite “a single plane”,
we assume Appellants are referring to the following language
of claim 1:
the base portion lying in a first plane and the body
and apertured portions lying in a second plane, the
first and second planes intersecting to form an
angle...
Looking at Fukuzawa’s Figure 9 we see base portion
Appeal No. 1997-1314
Application No. 08/300,684
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30 lying in a plane, which as depicted, appears to be
coincident with the plane of the paper it appears on. With
this perspective in mind, we view elements 31c (apertured
portion) and 31d (body portion) as lying in one plane which is
perpendicular to the paper, and running vertically from top to
bottom of the paper. In other words, the left rib 31e,
although bent in an L shape, lyes in one plane, the same one
plane as described for 31c and 31d lying therein. Note that
rib 31e is attached to both apertured portion 31c and body
portion 31d. Thus, we find Fukuzawa meets the language of
claims 1 and 4 and we will sustain the 35 U.S.C. § 103
rejection of these claims. We note that APA is considered as
merely cumulative. Lack of novelty is the ultimate of
obviousness. See In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982).
With respect to claims 3 and 9, Appellants argue
that the references do not teach or suggest the ribs extending
partially into the base portion of the spring. (Brief-page
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Application No. 08/300,684
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7.)
The Examiner responds:
Fukuzawa et al was relied upon for its teaching of
using two raised ribs extending longitudinally along
two planar portions for the purpose of imparting
rigidity. In view of Fukuzawa et al’s teaching, the
combination as explained in the rejection above
would lead the ribs (i.e. when placed on applicant’s
prior art spring of Fig. 4) to extend partially into
the base portion of the spring as per claims 3 and
9. (Answer-page 7.)
We do not agree with the Examiner. The two planar
portions of Fukuzawa are the aperture and body portions, not
the base portion claimed by Appellants. APA does not teach or
suggest extending the ribs into the base portion. We see no
way to meet this claim limitation other than Appellants’ own
teaching. The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
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Application No. 08/300,684
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or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
Thus, we will not sustain the 35 U.S.C. § 103
rejection of claims 3 and 9.
Looking at claims 5, 6, 11 and 12, which recite
specific dimensions for the ribs, such as a width of about
0.15 inches and a height of about 0.025 inches, Appellants
argue the references provide no such dimensions, and that
those claimed “provides particularly good results.” (Brief-
page 8.)
The Examiner’s position is that the sizes recited
are not patentably significant since the Appellants’
disclosure fails to show such limitations solve any stated
problem or yield any unobvious advantage, and are a matter of
design alternatives. (Answer-pages 4 and 5.)
A claimed limitation is an obvious design choice
where such limitation presents no new or unexpected result and
solves no stated problem and would be an obvious matter of
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Application No. 08/300,684
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design choice within the skill of the art. In re Kuhle, 526
F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975). Determining the
optimal values of result effective variables would have been
obvious and ordinarily within the skill of the art. In re
Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Fukuzawa
teaches the use of ribs to “impart rigidity to the metallic
support member” (column 5, lines 45 and 46), just as
Appellants employ “strengthening ribs” (specification, page 7,
line 12). Since Fukuzawa supplies no indication as to the
dimensions of the ribs, one of ordinary skill in the art would
necessarily explore various design alternatives, as did
Appellants (Appellants’ graphs in Figures 6 and 7). Thus, we
find the dimensions recited in claims 5, 6, 11 and 12 to be
obvious over the teachings of Fukuzawa, and are derived from
the optimization of result effective variables. Accordingly,
we will sustain the Examiner’s 35 U.S.C. § 103 rejection of
claims 5, 6, 11 and 12.
In view of the foregoing, the decision of the
Examiner rejecting claims 7 and 10 under 35 U.S.C. § 102(b)
and claims 1, 4 through 6, 11, and 12 under 35 U.S.C. § 103 is
Appeal No. 1997-1314
Application No. 08/300,684
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affirmed; however, the decision of the Examiner rejecting
claims 3 and 9 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Errol A. Krass )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT )
Lee E. Barrett ) APPEALS
AND
Administrative Patent Judge )
)
) INTERFERENCES
)
Stuart N. Hecker )
Administrative Patent Judge )
Appeal No. 1997-1314
Application No. 08/300,684
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SH/dm
Corporate Patent Counsel
US Philips Corporation
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