Ex parte BAIL

Board of Patent Appeals and Interferences

Mar 27, 2000

08586919 (B.P.A.I. Mar. 27, 2000)

According to the appellant, the application is the1
national stage application of PCT/DE94/00872, filed July 27,
1994.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUNTHER BAIL
____________
Appeal No. 2000-0007
Application No. 08/586,9191
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 13 to 17 and 19 to 25. Claim 18 has been
objected to as depending from a non-allowed claim. Claim 26
has been allowed. Claims 1 to 12 have been canceled.
Appeal No. 2000-0007 Page 2
Application No. 08/586,919
We REVERSE.
BACKGROUND
The appellant's invention relates to a system consisting
of an automotive vehicle, preferably a golf caddy, and a
transmitter (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Pirre 3,742,507 June 26,
1973
Ohba 3,856,104 Dec.
24, 1974
Suyama 4,023,178 May 10,
1977
Farque 4,109,186 Aug. 22,
1978
Matsuzaki et al. 5,611,406 Mar. 18,
1997
(Matsuzaki) (filed July 11, 1995)
Claims 13 to 17, 20 and 25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Suyama.
Appeal No. 2000-0007 Page 3
Application No. 08/586,919
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Suyama in view of Matsuzaki.
Claims 13 to 15, 17, 20 and 24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Pirre in view of
Suyama.
Claim 23 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pirre in view of Suyama as applied to claim
13 above, and further in view of Ohba.
Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pirre in view of Suyama as applied to claim
13 above, and further in view of Farque.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 9, mailed November 24, 1998) and the answer (Paper No. 12,
mailed July 7, 1999) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 11,
Appeal No. 2000-0007 Page 4
Application No. 08/586,919
filed March 18, 1999) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
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. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 13 to 17, 20
and 25 under 35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Appeal No. 2000-0007 Page 5
Application No. 08/586,919
The omission of the word "means" is deserving of2
correction by the appellant.
Claim 13, the sole independent claim on appeal, reads as
follows:
An automotive vehicle and control comprising a
transmitter means for sending high frequency and
ultrasonic signals to the vehicle, a drive means for said
vehicle, a control means for said vehicle, a high
frequency position finder means on said vehicle for
determining the direction of the transmitter means at a
distance exceeding a predetermined distance from said
transmitter means through said high frequency signals,
and an ultrasonic position finder means for determining
the direction and distance of the transmitter means
through said ultrasonic signals from said transmitter
[means ] when the vehicle is within said predetermined2
distance.
The appellant argues (brief, pp. 7-8) that Suyama does
not anticipate claim 13 since Suyama does not teach (1) "a
transmitter means for sending both high frequency and
ultrasonic signals to the vehicle," and (2) "a position finder
means for determining the direction and distance of a remote
transmitter carried by an individual through ultrasonic
signals (rather than originating from the vehicle) when the
vehicle is within a predetermined distance."
Appeal No. 2000-0007 Page 6
Application No. 08/586,919
The examiner's response to the appellant's argument
(answer, pp. 6-7) is that
[i]t is inherent to one having ordinary skill in the art
that the ultra-sonic anti-collision Suyama teaches
determines direction and distance. Suyama's transmitter
is equivalent to the claimed transmitter means in claim
13. Suyama's direction sensor and ultrasonic circuit are
equivalent to Appellant's ultrasonic finder means. . . .
In claim 13, all the "means for" language are function
limitations, not structural elements. The broad language
of the Appellant's claim are functionally equivalent to
the structure shown by Suyama.
Suyama discloses a radio-controlled vehicle (e.g., a golf
cart) having a steering motor, a drive motor, a drive
mechanism, and a direction sensor for receiving an RF signal
from a remote station (e.g., a golfer) to actuate the drive
motor and to control the steering motor to direct the vehicle
to the station. Also, an ultra-sonic anti-collision circuit
for preventing the vehicle from colliding with any obstacle
lying in the way of its travel is provided on the vehicle. As
shown in Figure 1, the vehicle includes, inter alia, a
non-directional antenna 10 to receive a radio frequency signal
transmitted by a transmitter carried by an operator of the
vehicle which is in a remote position from the vehicle, and a
Appeal No. 2000-0007 Page 7
Application No. 08/586,919
The inquiry as to whether a reference anticipates a3
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
directional antenna 10' also to receive the RF signal; a
direction sensor 12 in which a phase difference between
signals from the respective antennae is detected; a vehicle
drive mechanism 16; and an ultrasonic anti-collision circuit
14. The ultrasonic anti-collision circuit 14 includes an
ultrasonic wave sending vibrator 64 and a vibrator 65 for
receiving ultrasonic echo.
After reviewing claim 13 and the teaching of Suyama, it
is our determination that contrary to the position of the
examiner claim 13 is not readable on Suyama for the following3
reasons. First, the claimed "transmitter means for sending
high frequency and ultrasonic signals to the vehicle" is not
readable on the transmitter means disclosed by Suyama. In
that regard, the ultrasonic transmitter of Suyama (i.e.,
Appeal No. 2000-0007 Page 8
Application No. 08/586,919
ultrasonic wave sending vibrator 64) transmits ultrasonic
signal from the vehicle rather than to the vehicle. Second,
the claimed "ultrasonic position finder means for determining
the direction and distance of the transmitter means through
said ultrasonic signals from said transmitter [means] when the
vehicle is within said predetermined distance" is not readable
on the ultrasonic anti-collision circuit 14 disclosed by
Suyama. In that regard, the ultrasonic anti-collision circuit
14 of Suyama does not determine the direction and distance of
the transmitter means since his ultrasonic transmitter (i.e.,
ultrasonic wave sending vibrator 64) is on the vehicle rather
than being remote from the vehicle.
Since all the limitations of claim 13 are not found in
Suyama for the reasons set forth above, the decision of the
examiner to reject claim 13, and claims 14 to 17, 20 and 25
dependent thereon, under 35 U.S.C. § 102(b) as being
anticipated by Suyama is reversed.
Appeal No. 2000-0007 Page 9
Application No. 08/586,919
The obviousness rejections
We will not sustain the rejection of claims 13 to 15, 17
and 19 to 24 under 35 U.S.C. § 103.
Claims 21 and 22
We agree with the appellant's argument (brief, p. 10)
that even if it would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to have modified Suyama to include a pair a ultrasonic
receiving means as taught by Matsuzaki, the combination still
would not have arrived at the claimed combination. In that
regard, the examiner's proposed modification of Suyama would
not have made up for the deficiencies of Suyama with respect
to the anticipation rejection of claim 13 discussed above.
Moreover, we agree with the appellant's argument (brief, p. 9)
that Matsuzaki is not prior art to the present application.
The examiner's response to this argument (answer, p. 7) is
that Matsuzaki "is prior art to the application under 35
U.S.C. 103(a)." However, the examiner did not furnish any
reasoning or rationale why Matsuzaki is prior art. The
international filing date (i.e., July 27, 1994) is the
Appeal No. 2000-0007 Page 10
Application No. 08/586,919
See Manual of Patent Examining Procedure (MPEP) §4
1895.01.
critical date for determining whether or not a particular
reference is available as prior art against the application. 4
Since the filing date of Matsuzaki (i.e., July 11, 1995) is
subsequent to the international filing date (i.e., July 27,
1994) of this national stage application, we are unable to
establish Matsuzaki as prior art under any section of 35
U.S.C. § 102.
For the reasons set forth above, the decision of the
examiner to reject claims 21 and 22 under 35 U.S.C. § 103 is
reversed.
Claims 13 to 15, 17, 20 and 24
The examiner determined (answer, pp. 4-5) that "Pirre
fails to show an ultra-sonic device" and that based upon the
teachings of Suyama of an ultra-sonic anti-collision device,
it would have been obvious at the time the invention was made
to a person having ordinary skill in the art "to modify the
cart of Pirre to include the ultra-sonic device."
Appeal No. 2000-0007 Page 11
Application No. 08/586,919
We agree with the appellant's argument (brief, pp. 10-13)
that even if it would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to have modified Pirre to include ultra-sonic anti-
collision device as taught by Suyama, the combination still
would not have arrived at the claimed combination. In that
regard, the examiner's proposed modification of Pirre would
not have provided either (1) the claimed "transmitter means
for sending high frequency and ultrasonic signals to the
vehicle" or (2) the claimed "ultrasonic position finder means
for determining the direction and distance of the transmitter
means through said ultrasonic signals from said transmitter
[means] when the vehicle is within said predetermined
distance" for the reasons discussed above with respect to the
anticipation rejection of claim 13.
For the reasons set forth above, the decision of the
examiner to reject claims 13 to 15, 17, 20 and 24 under 35
U.S.C. § 103 is reversed.
Claims 19 and 23
Appeal No. 2000-0007 Page 12
Application No. 08/586,919
We have also reviewed the Farque and Ohba references
additionally applied in the rejection of claims 19 and 23 but
find nothing therein which makes up for the deficiencies of
Pirre and Suyama discussed above. Accordingly, the decision
of the examiner to reject claims 19 and 23 under 35 U.S.C. §
103 is also reversed.
Appeal No. 2000-0007 Page 13
Application No. 08/586,919
CONCLUSION
To summarize, the decision of the examiner to reject
claims 13 to 17 and 19 to 25 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0007 Page 14
Application No. 08/586,919
RUSSELL W. PYLE
JUETTNER PYLE LLOYD & PIONTEK
221 N LASALLE STREET SUITE 850
CHICAGO, IL 60601
Appeal No. 2000-0007 Page 15
Application No. 08/586,919
JVN/dl