Ex parte Barton

Board of Patent Appeals and Interferences

Sep 22, 1999

08246804 (B.P.A.I. Sep. 22, 1999)

Application for patent filed May 20, 1994. According to appellant, this application is a continuation1
of application 08/119,954, filed September 10, 1993, now abandoned, which application is a division
of application 07/745,548 (‘548 application), filed August 15, 1991, now abandoned. A prior panel of
this board issued a decision in Appeal No. 93-1853 on August 23, 1993, in the ‘548 application
(Paper No. 17).
See specification, pages 34-40, and the amendment of May 20, 1994 (Paper No. 3). .2
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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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BRUCE G. BARTON, JR.
______________
Appeal No. 1996-1266
Application 08/246,8041
_______________
HEARD: September 13, 1999
_______________
Before GARRIS, WARREN and KRATZ, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 17 through 30, all of the claims in the application.2
We have carefully considered the record before us, and based thereon, find that we cannot
Appeal No. 1996-1266
Application 08/246,804
The references relied on by the examiner with respect to the grounds of rejection are listed at page 23
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
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sustain the rejection of claims 17 and 19 through 30 under 35 U.S.C. § 103 over Stolz or the rejection
of claim 18 under 35 U.S.C. § 103 over Stolz as applied to claims 17 and 18 through 30, and further in
view of Barton.3
The dispositive issue in this appeal is the construction to be made of the phrase “modular, one
piece, passage unit” in the preamble of claim 17, and the last clause thereof: “the main shell, the front
unit closure wall, the mounting means, the rear unit closure wall, and the interlocking means all
constituting a single, one piece integral unit” (emphasis supplied). Similar language appears in claim
26. The examiner has focused on the term “integral” and has taken the position that the term “‘integral’
may be construed broadly to encompass parts rigidly secured together” citing, inter alia, In re Larson,
340 F.2d 965, 967-68, 144 USPQ 347, 349 (CCPA 1965), In re Hotte, 475 F.2d 644, 647, 177
USPQ 326, 328 (CCPA 1973), In re Kohno, 391 F.2d 959, 157 USPQ 275 (CCPA 1968)
(answer, pages 5 and 6). Appellant submits that the authority relied on by the examiner “expressly
distinguishes ‘integral’ from the far more restrictive ‘one piece’ requirement of the claims on appeal”
(reply brief, paragraph bridging pages 1-2). Based on the record before us, we agree with appellant.
It is well settled that the terms of the appealed claims must be given the broadest reasonable
interpretation consistent with appellant's specification as it would be interpreted by one of ordinary skill
in this art. In re Morris, 127 F.3d 1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997);
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find that one of
ordinary skill in this art would have reasonably determined from appellant’s specification (e.g., page 6,
lines 12-14, and Figs. 2 and 6) that that the phrases “modular, one piece, passage unit” and “single,
one piece integral unit” should be reasonably interpreted as denoting a “one piece” unit and not a
number of individual pieces integrated into a “unit.” Morris, 127 F.3d at 1055-56, 44 USPQ2d at
1029; compare Hotte, supra.
Accordingly, in comparing the appealed claims as we have construed them above with Stolz,
Appeal No. 1996-1266
Application 08/246,804
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we are in further agreement with appellant that the claimed “modular, one piece, passage unit” does
“not ‘integrate’ the complex parts of the substantially different device of Stolz” as was the case with the
rigid construction in Larson, supra, and In re Fridolph, 309 F.2d 509, 135 USPQ 319
(CCPA 1962) (reply brief, page 2; see also principal brief, pages 7-8). Indeed, the difficulty that we
have with the examiner’s contention that “it would have been obvious . . . to have provided the integral
parts in a one-piece construction . . . by conventional blow molding,” apparently of “plates 13, 18 [that]
are integral with cylinder 11” (answer, pages 6-7; see also page 5), is that such a modification would
violate the requirement in Stolz that “sleeve 11 . . . may be made of any elastic material such as rubber
or a composition product” so that the “sleeve” can be removed after the concrete has set (page 1,
second col., lines 33-35, and page 2; emphasis supplied). Thus, it is inescapable that the motivation
relied upon by the examiner to modify the device of Stolz in order to arrive at the “modular, one piece,
passage unit” of the appealed claims arises solely from the description of appellant’s invention in his
specification and not from some teaching or suggestion that Stolz would have conveyed to one of
ordinary skill in this art. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1996-1266
Application 08/246,804
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PETER F. KRATZ )
Administrative Patent Judge )
Mr. Bruce G. Barton, Jr.
Three 60 Corporation
1201 Fendt Drive
Howello, MI 48843