Ex parte Baculy

Board of Patent Appeals and Interferences

Apr 28, 2000

08787971 (B.P.A.I. Apr. 28, 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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ERIC J. BACULY
_____________
Appeal No. 1999-1758
Application 08/787,971
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT, and PATE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1-8, 10 and 24. Claims 9, 12-20, 25 and
26 are withdrawn from consideration as being drawn to a non-
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Application No. 08/787,971
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elected invention. Claims 11 and 21-23 have been canceled.
Appellant’s invention relates to an adaptor (22, 76) for
a beam or bar clamp assembly (10, 70). The adaptor (22, 76)
is for allowing a plurality of clamping fixtures (42, 43, 83,
84, 103, 104, 200, 202) to be interchangeably mounted using a
connector (34, 79) and a fastener bolt (53) to a plurality of
beam and bar clamp assemblies (10, 70) shown in Figures 1 and
7. The adaptor (22) includes fastener clips (24) with
tightening screws (36) for releasably engaging and gripping a
jaw (14) of a beam/bar clamp (10, 70) and a protective ledge
(38) for preventing the work piece from contacting the beam or
bar (12, 14) of the clamp assembly. A representative copy
reproduced from appellant’s brief of independent claims 1 and
24 is attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness are:
Periolat 1,498,638 Jun. 24, 1924
Durfee, Jr. 4,923,186 May 8, 1990
Nishimura 4,953,840 Sep. 4,
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1990
Nimtz 5,064,178 Nov. 12, 1991
Claims 1-8 and 10 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor at
the time the application was filed, had possession of the
claimed invention. According to the examiner “[t]he phrase
‘configured to releasably engage and grip at least two
adjacent or two opposing surfaces of a jaw of a beam clamp’ in
claim 1, lines 3-4 is new matter and is required to be
deleted.”
Claims 1-8 and 10 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Claims 1-4, 8 and 10 stand rejected under 35 U.S.C. § 103
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Application No. 08/787,971
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as being unpatentable over Durfee in view of Nimtz and
Periolat.
Claims 5-7 and 24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Durfee in view of Nimtz and Periolat
as applied to claims 1-4, 8 and 10 above, and further in view
of Nishimura.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the final
rejection (Paper No. 11, mailed February 4, 1998) and the
examiner’s answer (Paper No. 16, mailed December 8, 1998) for
the reasoning in support of the rejections, and to appellant’s
brief (Paper No. 15, received October 13, 1998) and
appellant’s reply brief (Paper No. 17, received February 17,
1999) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
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Application No. 08/787,971
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careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner.
We turn first to the examiner’s rejection of appealed
claims 1-8 and 10 under 35 U.S.C. § 112, first paragraph,
which rejection we understand to be based upon the written
description requirement of the first paragraph of § 112. In
general, the test for determining compliance with the written
description requirement of § 112, first paragraph, is whether
the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language under consideration.
Further, it is also well settled that the content of the
drawings may be considered in determining compliance with the
written description requirement. See Wang Laboratories Inc.
v. Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774
(Fed. Cir. 1993); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
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1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991); see also
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983).
Appellant sets forth (brief, page 4) that the claim
language that defines the adaptor as “configured to releasably
engage and grip at least two adjacent or two opposing surfaces
of a jaw of a beam clamp," which was added to claim 1, lines
3-4 in Paper
No. 7, finds support on page 6, lines 16-20 and is shown in
Figures 1 and 7 of the application which show how the adaptors
engage both adjacent and opposing surfaces of jaws of a beam
clamp. In the office action subsequent to Paper No. 7, the
examiner’s response, Paper No. 11, page 4, lines 8-11, was
that “such language is not herein found . . . or defined in
the descriptive portion of the specification.” Appellant
further argues in the Brief, pages 4-7, that if the adaptor is
configured to "engage and grip a vertical flange portion 30 of
jaws 14 and 16" (as set forth at page 6, lines 16-20 of the
original specification), the adaptor must necessarily "engage
and grip at least two adjacent or opposing surfaces of a jaw
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of a beam clamp" as set forth in amended claim 1. The
examiner responded to this argument in the answer, page 6, by
pointing out that the angular clips (24, 77) in the
embodiments shown in the Figures 1 and 7 “only engage the
vertical rear edge of flange 30 and appears to be incapable of
engaging any flange surface whatsoever." Appellant responded
(reply brief, pages 1-2) with the argument that the claim
language requires that the “adaptor” and not only the clips
(24, 77) be "configured to releasably engage and grip at least
two adjacent or two opposing surfaces of a jaw of a beam
clamp." Appellant further points out that the rear wall (28)
of the adaptor engages only the face of the jaw (14) and then
alleges that clips (24) engage “the edges (i.e., adjacent
surfaces) and/or rear surfaces (i.e., surfaces opposite the
face of the jaw) of the jaw.”
We understand from the specification, page 6, line 16-32
and drawings Figures 1 and 7, that the angled fastener clips
(24, 77) are angled starting at the rear edge of the block
(26) and are adjustably fastened to the block (26) with screws
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(36) to adjust the securing force of the clips (24, 77) to the
vertical flange portion (30) of jaws (14, 16). As is apparent
from Figures 1,
4-7 and 12 of the application drawings, in order to be able to
adjust the securing force of the clips (24, 77), the angled
face of the clips (24, 77) are in contact with the rear
vertical edge of the jaws (14, 16). Thus, we agree with the
examiner that the clips (24, 77) contact a rear vertical edge
of the flange portion (30) and do not contact a surface of the
jaws (14, 16). Accordingly, the adaptor (22) only contacts a
single surface of the vertical flange portion (30) of the jaw
and therefore we conclude that an adaptor configured to
releasably engage and grip "at least two adjacent or two
opposing surfaces of a jaw of a beam clamp" is not disclosed
in the instant application.
With respect to appellant’s arguments on page 5 of the
Brief, that the above rejection under section 112, first
paragraph, is both procedurally and substantively improper,
appellant argues that upon informing the examiner in Paper
No.7 of the location for support of the matter added to claim
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1, the examiner did not meet his initial burden of presenting
evidence or reasoning to explain why persons skilled in the
art would not recognize in the disclosure a description of the
invention described in the claims. Upon reviewing the Office
actions subsequent to the amendment of Paper No. 7 (the final
rejection, Paper No. 11 and the examiner’s answer, Paper No.
16), we do not agree with appellant’s assertion of
impropriety. The examiner provided evidence and reasoning in
Paper No. 11, pages 2 and 4, and expanded the explanation of
the evidence and reasoning in the examiner’s answer on page 6.
The evidence and reasoning provided by the examiner and not
disputed by appellant included the fact that the terms “two
adjacent surfaces” and “two opposing surfaces” are not defined
in the specification and that the angular clips (24) are shown
in the drawings as only engaging a vertical edge of the flange
(30) and not a surface of the flange. Even though the
examiner may not have articulated his position clearly enough
for appellant to understand, upon review of Papers No. 11 and
16, we note that the examiner did provide evidence and
reasoning as to why one of ordinary skill in the art would not
recognize in the originally filed disclosure a description of
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the invention now set forth in claims 1-8 and 10 on appeal.
Accordingly, we conclude that the rejection under section 112,
first paragraph, is procedurally and substantively proper.
With respect to appellant’s argument on the bottom of
page 6 of the brief, appellant argues that original claim 5
includes the language "first and second fastening clips which
are secured to the adaptor, the clips being configured to
engage opposite sides of a jaw of a beam clamp assembly" gives
basis from the original disclosure for the phrase "adaptor
configured to releasably engage and grip at least two adjacent
or two opposing surfaces of a jaw" set forth in claim 1. Upon
reviewing of claim 1 on appeal and original claim 5, we note
that claim 5 refers to "opposite sides of a jaw" and that
claim 1 refers to "at least two adjacent or two opposing
surfaces of a jaw." Since the "opposite sides" language of
claim 5 is clearly different from the "two adjacent or two
opposing surfaces" language of claim 1 and is also somewhat
ambiguous, we conclude that the structure defined in original
claim 5 is not sufficient to reasonably convey to one skilled
in the relevant art that the inventor, at the time the
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application was filed, had possession of the claimed invention
as defined in claim 1 on appeal.
Accordingly, we will sustain the examiner’s rejection of
claims 1-8 and 10 under 35 U.S.C. § 112, first paragraph.
Now we look to the rejection of claims 1-8 and 10 under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention.
Specifically, claim 1 includes the recitation "an adaptor
configured to releasably engage and grip at least two adjacent
or two opposing surfaces of a jaw of a beam clamp." The
examiner contends (answer, page 6) that there is no clear
description in the instant specification defining what is
being claimed and no reference characters in the drawings to
designate the adjacent or opposing surfaces as set forth in
claim 1 on appeal. The examiner further contends that the
angular clips 24 of appellant’s invention in fact engage no
surfaces of the jaw (14, 16). We agree with the appellant
(Reply Brief, page 3) that the exact wording of the claims is
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not required to be part of the specification. However, the
question under 35 U.S.C. § 112, second paragraph is whether
those having ordinary skill in the art are capable of
ascertaining the metes and bounds of the claimed subject
matter. Ascertaining the metes and bounds of the claims, one
of ordinary skill in the art has to ascertain the meaning of
the claim language in light of the specification. Therefore
the subject matter, i.e., structure, set forth in the claims
has to be ascertainable from subject matter disclosed in the
specification.
With this as our basis, we look to the specification to
ascertain what structure is being referred to by the phrase
"configured to releasably engage and grip at least two
adjacent or two opposing surfaces of a jaw of a beam clamp."
Appellant sets forth (reply brief, page 3) that one surface of
the jaw is engaged by the rear wall (28) of the adaptor (22)
and that the angular clips (24) engage a vertical rear edge of
the vertical flange portion (30) of the jaw. According to the
appellant (reply brief, page 3), since the angular clip (24)
engages a vertical rear edge of the jaw then the clip (24)
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engages a surface of the jaw, and that surface may be
considered to be opposite, adjacent or both to the face of the
jaw (14) which is engaged by the rear surface (28) of the
adaptor (22). As set forth above under the section 112, first
paragraph rejection, we understand each angular clip (24) to
engage a rear edge of the vertical flange portion (30) of the
jaw and not a surface of the jaw. In contrast to appellant’s
position, we note that the edge or corner of the vertical
flange portion (30) is a line where two surfaces meet and is
not a surface. Thus, contrary to the appellant's assertions
in the reply brief, the edge or corner may not be considered a
surface opposite, adjacent or both to the face of the jaw of
flange (30). Therefore, we conclude that the specification
does not disclose the subject matter set forth in claim 1,
lines 3-4 and that the claim language on its face is not
understandable, because we do not understand what surfaces of
the jaw are being defined. Accordingly, we will sustain the
rejection by the examiner of claims 1-8 and 10, under 35
U.S.C.
§ 112, second paragraph.
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Application No. 08/787,971
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In regards to the rejection of claims 1-4, 8 and 10 under
35 U.S.C. § 103 as being obvious over Durfee in view of Nimtz
and Periolat and the rejection of claims 5-7 under 35 U.S.C. §
103 as being obvious over Durfee in view of Nimtz and Periolat
and further in view of Nishimura. We emphasis again that
these claims contain unclear language which renders the
subject matter thereof indefinite for reasons stated supra as
part of the rejection of claims 1-8 and 10 under 35 U.S.C. §
112, second paragraph. Accordingly, we find that it is not
possible to apply the prior art relied upon by the examiner to
these claims in deciding the question of obviousness under 35
U.S.C. § 103 without resorting to considerable speculation and
conjecture as to the meaning of the questioned configuration
to releasably engage and grip at least two adjacent or two
opposing surfaces of a jaw of a beam clamp in the claims.
This being the case, we are constrained to reverse the
examiner’s rejection of claims 1-4, 8 and 10 under 35 U.S.C. §
103 in light of the holding in In re Steele, 305 F.2d 859,
862-63, 134 USPQ 292, 295 (CCPA 1962) and In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). We hasten to
add that this reversal of the examiner’s rejection is not
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Application No. 08/787,971
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based on the merits of the rejection, but on technical grounds
relating to the indefiniteness of the appealed claims.
Accordingly, we will not sustain the examiner’s rejection of
claims 1-8 and 10 under 35 U.S.C. § 103.
The last rejection for our consideration is that of
independent claim 24 under 35 U.S.C. § 103 as being obvious
over Durfee in view of Nimtz, Periolat and Nishimura. In
reviewing the examiner’s rejection, on pages 4 and 5 of the
answer, the examiner is of the view that Durfee shows a clamp
having a detachable jaw (adapter bloc) which includes a
protective ledge 21 (Figure 1 of Durfee). The examiner views
Nimtz as teaching a beam clamp (10) having protective ledges
(26, 28); Periolat as teaching a threaded bore in a jaw to
receive releasable work piece clamping fixtures; and Nishimura
as teaching an adjustable clip assembly (10) to attach an
adapter block to a jaw with a threaded fastener (9).
With respect to appellant’s arguments on pages 12-13 and
15 of the brief, we agree with appellant in that the teachings
of Durfee, Nimtz, Periolat and Nishimura are from diverse art
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areas and that combination of the references is questionable
at best. Moreover, even if the combination proposed by the
examiner were to be deemed proper, we agree with appellant’s
argument (brief, pages 11 and 13-15) that the combination of
Durfee, Nimtz, Periolat and Nishimura fails to teach an
adaptor configured to be secured to the jaw of a beam clamp
assembly, having a work piece engaging surface with a
protective ledge extending integrally therefrom and having a
connector for releasably attaching a work piece clamping
fixture to the adaptor as set forth in claim 24. Upon
reviewing Durfee, we note that Durfee includes an adapter
block or plate (20) with a connector (41, 36) for releasably
attaching a work piece clamping fixture (21) to the work piece
engaging surface (25) of the block or plate (20). Contrary to
the examiner’s position, the adaptor of Durfee does not also
include "a protective ledge which extends integrally from the
workpiece engaging surface" as required in appellant’s claim
24 on appeal. If the structure (21, 41, 36) of Durfee were to
be read as being a "protective ledge which extends integrally
from the work piece engaging surface of the adaptor block" as
in appellant’s claim 24, then the adaptor of Durfee would have
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no "connector on the adaptor block for releasably attaching a
workpiece changing fixtures to the adaptor block," as required
in claim 24. Accordingly, we agree with the appellant (brief,
pages 13-14) that even though both Durfee and Nimtz disclose
protective ledges, neither reference discloses a protective
ledge which extends integrally from the work piece engaging
surface of the adaptor block, (emphasis added) and a connector
for releasably attaching a work piece clamping fixture. In
light of the foregoing, we cannot sustain the examiner’s
rejection of claim 24 under 35 U.S.C. § 103.
CONCLUSION
In summary, the examiner’s decision to reject claims 1-8
and 10 under 35 U.S.C. § 112, first paragraph and second
paragraph, has been affirmed and the examiner’s decision to
reject claims
1-8, 10 and 24 under 35 U.S.C. § 103 has been reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1999-1758
Application No. 08/787,971
A-1
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
WILLIAM F. PATE III )
Administrative Patent Judge )
CEF:lmb
PRICE, HENEVELD, COOPER,
DEWITT & LITTON
695 KENMOOR S.E.
P.O. BOX 2567
GRAND RAPIDS, MI 49501
Appeal No. 1999-1758
Application No. 08/787,971
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CLAIM 1
1. An adaptor for interchangeably connecting any of a
plurality of clamping fixtures to a beam clamp assembly,
comprising:
an adaptor configured to releasably engage and grip at
least two adjacent or two opposing surfaces of a jaw of a beam
clamp and;
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Application No. 08/787,971
A-2
a connector on the adaptor for translationally fixing and
releasably attaching a workpiece clamping fixture to the
adaptor.
CLAIM 24
24. An adaptor for interchangeably connecting any of a
plurality of clamping fixtures to a beam clamp assembly,
comprising:
an adaptor block;
a fastener attached to the adaptor block for releasably
securing the adaptor block to a jaw of a beam clamp assembly;
a connector on the adaptor block for releasably attaching
a workpiece clamping fixture to the adaptor block;
the adaptor block including a workpiece-engaging surface
which faces toward an opposing second jaw of a beam clamp
assembly when the adaptor is secured to a first jaw of the
beam clamp assembly; and
a protective ledge which extends integrally from the
workpiece-engaging surface so that it is disposed adjacent to
a beam of a beam clamp assembly when the adaptor is mounted on
the beam clamp assembly, whereby the ledge is interposed
between a workpiece and the beam when a workpiece is engaged
by the workpiece-engaging surface of the adaptor mounted a jaw
of the beam clamp assembly, and whereby contact between the
workpiece and the beam is avoided.
Appeal No. 1999-1758
Application No. 08/787,971
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