Ex parte Bacon

Board of Patent Appeals and Interferences

Oct 26, 1998

08302168 (B.P.A.I. Oct. 26, 1998)

Application for patent filed September 8, 1994. 1
According to appellant, the application is a continuation of
Application 08/096,704, filed July 23, 1993, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BRUCE A. BACON
________________
Appeal No. 97-3998
Application 08/302,1681
________________
ON BRIEF
________________
Before PATE, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Bruce A. Bacon appeals from the final rejection of claims
16 through 18 and 21 through 29, all of the claims pending in
Appeal No. 97-3998
Application 08/302,168
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the application.
The invention relates to a method for marking a
longitudinal identification stripe on the external surface of
a strand of material such as tubing, wire or rope. Claim 16
is illustrative and reads as follows:
16. A method for marking a longitudinal stripe on an
external surface of a flexible strand of material, said method
comprising the steps of:
providing a reservoir;
providing said reservoir with a marking medium;
providing a nib which receives said marking medium from
said reservoir;
providing a guide and locating said guide in association
with said nib so as to position the external surface of said
flexible strand of material to be marked in a select
orientation against said nib when said flexible strand of
material is positioned against said nib;
positioning said flexible strand of material against said
guide with the external surface of said flexible strand of
material being in said select orientation against said nib;
and
drawing said flexible strand of material through said
guide while positioning said flexible strand of material
against said guide, thereby marking the external surface of
said flexible strand of material with a longitudinal stripe of
said marking medium.
The reference relied upon by the examiner as evidence of
Appeal No. 97-3998
Application 08/302,168
The term “said housing” as it appears in claims 22 and2
23 lacks a proper antecedent basis, an informality which is
deserving of correction in the event of further prosecution
before the examiner.
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anticipation is:
Pitts 4,770,557 Sept. 13, 1988
Claims 16 through 18 and 21 through 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Pitts.2
Reference is made to the appellant’s brief (Paper No. 10)
and to the examiner’s answer (Paper No. 11) for the respective
positions of the appellant and the examiner with regard to the
merits of this rejection.
Pitts discloses a device for marking the edge of a sheet
of paper with an ink or dye. As described by Pitts with
reference to Figures 1 and 2,
[a]s shown in FIG. 1, marker 100 includes a
barrel 102 which houses a fibrous, porous reservoir
104. Reservoir 104 is provided with a slit 106
exposed by opening 108 in barrel 102. In the
embodiment shown, opening 108 and slit 106 are
disposed proximate nib 110. As a result, a cap 112
covers opening 108 as well as nib 110.
In operation, a sheet, such as paper, is
Appeal No. 97-3998
Application 08/302,168
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inserted within opening 108, and slid within slit
106. The opposing side walls of slit 106 are in
mutual contact, whereby these side walls press
against both sides of the sheet when inserted. As
the sheet is inserted fully into 106, the sheet edge
will be marked. Drawing the sheet in either
direction produces continuous lengthwise markings.
An alternative embodiment of the invention can
be seen in FIG. 2. Marker 200 includes a barrel 252
which
houses four fibrous, porous members 254(a-d). Openings
256(a-d) are disposed to expose slits 258(a-d), which are
disposed proximate the end of barrel 252. In a preferred
embodiment, fibrous, porous members 254(a-d) are of
different colors. While four fibrous, porous members are
shown, it should be understood that any number of such
members may be used. Openings 256(a-d) and slits
25[8](a-d) may be disposed at different positions
relative to the end of barrel 252. This facilitates the
insertion of a sheet within the desired opening. To
easily distinguish between different colors or types of
marking material exposed by each of the openings 256(a-
d), the outer covering of the barrel 252 may be
appropriately marked, as by color coding. Marker 200 is
shown as a sealed container with a closure 260 disposed
at the end closest to openings 256(a-d). In this
embodiment there may additionally be a nib such as is
shown in FIG. 1. Moreover, a cap such as 112, may be
appropriately shaped to cover openings 256(a-d).
As can be seen in FIG. 1, nib 110 is provided
with a slit extending transverse to the axis of the
marker barrel 102. A sheet may be drawn through
this slit to mark in a similar manner as slit 106,
or 258(a-d) [column 2, lines 9 through 48].
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
Appeal No. 97-3998
Application 08/302,168
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inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). It is not necessary that
the reference teach what the subject application teaches, but
only that the claim read on something disclosed in the
reference, i.e., that all of the limitations in the claim be
found in or
fully met by the reference. Kalman v. Kimberly Clark Corp.,
713 F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
The appellant’s position on appeal is that the standing
35 U.S.C. § 102(b) rejection of claims 16 through 18 and 21
through 29 is unsound because Pitts does not meet the
limitations in independent claims 16 and 24 relating to the
steps of providing a guide, positioning a strand of material
against the guide and drawing the strand through the guide
while positioning the strand against the guide (see pages 4
through 12 in the brief). This argument is persuasive with
respect to claim 24, but not with respect to claim 16.
Appeal No. 97-3998
Application 08/302,168
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More particularly, Pitts’ provision of slits 106 or
258(a-d) meets the relatively broad guide-providing step
recited in claim 16. In this regard, Pitts’ slits constitute
guides to the same extent that the appellant’s notch 240 in
nib 230 constitutes a guide (see page 7 and Figure 2 of the
appellant’s disclosure). This being the case, Pitts’ steps of
inserting the edge of a sheet into the slit (wherein it
engages the slit side walls) and drawing it therethrough meet
the strand positioning and drawing steps recited in claim 16.
Thus, the appellant’s contention that the subject matter
recited in claim 16 is not anticipated by Pitts is not well
taken.
Claim 24, on the other hand, requires the guide to be in
a housing partially enclosing the marking element. The only
structures disclosed by Pitts which arguably correspond to
such a guide are the openings 108, 256(a-d) in barrel/housing
102, 252. There is no teaching in Pitts, however, that the
sheet being marked is ever positioned against these openings.
The examiner’s contention that the use of the Pitts
device would include, presumably under principles of
inherency, some contact between the sheet and the openings in
Appeal No. 97-3998
Application 08/302,168
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the barrel/housing (see page 5 in the answer) is not well
founded. Under principles of inherency, when a reference is
silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). As the court stated in In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA
1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ
665, 667 (CCPA 1939)):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that
a certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.]
If, however, the disclosure is sufficient to show that
the natural result flowing from the operation as taught
would result in the performance of the questioned
function, it seems to be well settled that the disclosure
should be regarded as sufficient.
Here, the examiner’s determination that the use of the Pitts
device would include contact between the sheet and the
openings in the housing is unduly speculative.
Thus, Pitts does not meet the particular limitations in
Appeal No. 97-3998
Application 08/302,168
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claim 24 requiring the steps of providing a housing having a
guide, positioning a strand of material against the guide and
drawing the strand through the guide while positioning the
strand against the guide.
In light of the foregoing, we shall sustain the standing
35 U.S.C. § 102(b) rejection of claim 16 as being anticipated
by Pitts. We also shall sustain the standing 35 U.S.C. §
102(b) rejection of dependent claims 17, 18 and 21 through 23
since the appellant has not challenged such with any
reasonable specificity, thereby allowing these claims to stand
or fall with parent claim 16 (see In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987)). We shall
not sustain, however, the standing 35 U.S.C. § 102(b)
rejection of claim 24, or of claims
25 through 29 which depend therefrom, as being anticipated by
Pitts.
Thus, the decision of the examiner to reject claims 16
through 18 and 21 through 29 is affirmed with respect to
claims 16 through 18 and 21 through 23, and reversed with
Appeal No. 97-3998
Application 08/302,168
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respect to claims 24 through 29.
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
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3998
Application 08/302,168
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Bruce Allen Bacon
9263 Sagebrush Trail
Littleton, CO 80124