Ex Parte Agster et al

Board of Patent Appeals and Interferences

Jan 25, 2010

10901614 (B.P.A.I. Jan. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRIAN P. AGSTER and WILLIAM HENGLER
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Appeal 2009-007135
Application 10/901,614
Technology Center 3600
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Decided: 25 January 2010
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Before RICHARD TORCZON, SALLY GARDNER LANE and SALLY C.
MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
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A. STATEMENT OF THE CASE
Brian P. Agster and William Hengler (“Agster”), the real parties in
interest, seek review under 35 U.S.C. § 134(a) of a Final Rejection of claims
1-4, 8, 10, 13-15 and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
References Relied on by the Examiner
Deane 485,613 Nov. 8, 1892

Rejections on Appeal
The Examiner rejected claims 1-3, 8, 10, 13, 14 and 19 under
35 U.S.C. § 102(b) as anticipated by Deane. All claims in this group stand
or fall together. App. Br. 11-12; Reply Br. 5-6.
The Examiner rejected claims 4, 15, 20 and 21 as unpatentable under
35 U.S.C. § 103(a) over Deane. All claims in this group stand or fall
together. App. Br. 12-13; Reply Br. 6.
The Invention
Agster discloses, referring to Agster’s figure 1 reproduced below
[numbers from figure 1 inserted], a door prop device [10] including a block
member [100], a securing member [110] and a receiving channel [200].
Spec. 3-9.
Agster’s figure 1 is below:

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Figure 1 depicts a door prop device.
Claim 1, reproduced from the Claims Appendix of the Appeal Brief,
reads as follows:
A door prop device comprising:
a block member connected to a securing member;
a receiving channel formed intermediate the block
member and securing member, said receiving channel defined
by a first concave surface on said block member and an
oppositely facing separate, second concave surface on said
securing member wherein the receiving channel is operable to
engage, and substantially encase, a top portion of a hinge pin,
said first and second concave surfaces divided by two
oppositely positioned spaces.

App Br. 14, Claims App’x.
B. ISSUES
Has Agster shown that the Examiner incorrectly found that Deane
describes a block member connected to a securing member?
C. FINDINGS OF FACT
Agster’s Specification.
1. Agster describes, referring to Agster’s figure 1 reproduced above
[numbers from figure 1 inserted], a door prop device [10] comprising
a block member [100] and a securing member [110] contiguous with
the block member [100]. Spec. ¶ 0018.
2. Agster depicts, referring to Agster’s figures 2 and 3 reproduced
below, the block member [100] and securing member [110] of the
door prop device [10] as one integral piece.
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Agster’s figures 2 and 3 are below:

Figures 2 and 3 depict top views of the door prop device.
Deane
3. Deane describes, referring to Deane’s figure 3 reproduced below
[numbers from figure 3 inserted], a hinge-lock comprising a tubular
structure including a long slot [A] and two auxiliary slots [C]. Col. 1,
ll. 36-51.
Deane’s figure 3 is below:

Figure 3 depicts a hinge-lock.
D. PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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The broadest reasonable interpretation should be consistent with the
specification and consistent with the one that those skilled in the art would
reach. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969), In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999). However, “limitations are not to be
read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citation omitted).
E. ANALYSIS
Anticipation of Claims 1-3, 8, 10, 13, 14 and 19
Independent claim 1 is representative and recites: “[a] door prop
device comprising: a block member connected to a securing member . . . .”
App. Br. 14, Claims App’x.
The Examiner finds, referring to Deane’s figure 3 annotated by the
Examiner below, that Deane describes a block member connected to a
securing member. Ans. 3 and 5.
Deane’s figure 3, annotated by the Examiner, is below:

Figure 3 depicts a hinge-lock.
Agster argues that the Examiner has improperly construed Deane’s
continuous integral tube as the separate and discrete block and securing
members of the claimed invention. App. Br. 12; Reply Br. 5. Agster argues
that the claimed block member and securing member are clearly separate
and discrete elements as shown by the break lines in its figures 1 and 4.
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App. Br. 12; Reply Br. 5. In support of its arguments, Agster directs
attention to Dana Innovations v. Speakercraft, Inc., 107 F.3d 30, 1996 U.S.
LEXIS 30940 (Fed. Cir. 1996), for the holding that the sides of a continuous
structure are integral components and cannot be construed as discrete
separate components. App. Br. 12; Reply Br. 5.
First and foremost, claim 1 does not recite nor require that the block
member and securing member be separate and discrete elements.
Agster’s reliance on Dana Innovations is misplaced. Dana
Innovations is an unpublished, non-precedential opinion. We give greater
weight to published precedential opinions such as In re Morris. Cf. Id.
(holding that the claim language in the patent application requiring the
“compliance area” to be “integrally formed as a portion of” the housing does
not require the compliance area and housing to be fused together).
Moreover, Dana Innovations involved claim interpretation in the context of
patent infringement and patent invalidity. “It would be inconsistent with the
role assigned to the PTO in issuing a patent to require it to interpret claims in
the same manner as judges who, post-issuance, operate under the assumption
the patent is valid.” Morris, 127 F.3d at 1054.
During prosecution, claim terms are given their “broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.” Id. at
1054. However, “limitations are not to be read into the claims from the
specification.” Van Geuns, 988 F.2d at 1184.
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Agster does not direct us to objective evidence or an explicit
definition in its Specification that supports the argument that Agster’s claims
require that the “block member” and “securing member” be separate and
discrete elements. Moreover, we are unpersuaded by Agster’s argument
that its figures 1 and 4 demonstrate that the block member and securing
member are separate and discrete elements. Agster has not sufficiently
demonstrated that the lines in figures 1 and 4 are break lines showing two
distinct elements. Agster has not directed us to where in Agster’s
specification there is a description that supports Agster’s argument in that
regard. The lines seen in figures 1 and 4 could merely depict the shapes of
the block member [100] and securing member [110] and not necessarily
mean that the block member [100] and securing member [110] are separate
and discrete elements. Moreover, Agster’s figures 2 and 3 show the block
member and securing member as one integral piece.
The broadest reasonable meaning of a “block member” connected to a
“securing member” does not preclude two claim elements from being met by
one prior art element.
The Examiner’s finding that Deane describes a block member
connected to a securing member is reasonable, consistent with Agster’s
Specification, and consistent with the ordinary meaning of the terms as they
would be understood by one with ordinary skill in the art.
For all these reasons Agster has not shown the Examiner erred in
finding claims 1-3, 8, 10, 13, 14 and 19 anticipated by Deane.
Obviousness of Claims 4, 15, 20 and 21
Agster does not address the specific limitations of claims 4, 15, 20 and
21. App. Br. 12-13; Reply Br. 6. Rather, Agster makes the same arguments
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in connection with the obviousness rejection as it does in connection with
the anticipation rejection. We have already addressed and rejected such
arguments. For the same reasons as those discussed before addressing
claims 1-3, 8, 10, 13, 14 and 19, Agster has not shown the Examiner erred in
determining that claims 4, 15, 20 and 21 would have been obvious over
Deane.
F. CONCLUSION
Agster has not shown that the Examiner incorrectly found that Deane
describes a block member connected to a securing member.
G. ORDER
The decision of the Examiner rejecting claims 1-3, 8, 10, 13, 14 and
19 under 35 U.S.C. § 102(b) as anticipated by Deane is affirmed.
The decision of the Examiner rejecting claims 4, 15, 20 and 21 as
unpatentable under 35 U.S.C. § 103(a) over Deane 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).
AFFIRMED

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