Ex parte Beasley

Board of Patent Appeals and Interferences

Jan 3, 2000

08055382 (B.P.A.I. Jan. 3, 2000)

Application for patent filed May 3, 1993.1
An amendment (Paper No. 19) filed subsequent to the2
final rejection has been entered. See the advisory letter
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not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte REX W. BEASLEY
__________
Appeal No. 1997-1812
Application 08/055,3821
___________
ON BRIEF
___________
Before ABRAMS, STAAB and GONZALES, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3-5, 7, 8, 11-20, 23-27, 30-33, 35 and
36. Claims 6, 9, 10, 21, 22, 28 and 29 have been allowed. 2
Appeal No. 1997-1812
Application 08/055,382
mailed July 3, 1996 (Paper No. 20).
2
Claim 34, the only other claim remaining in the application,
has been indicated by the examiner as being allowable if
rewritten in independent form to include all the limitations
of the base claim from which it depends and any intervening
claim. Claim 2 has been canceled.
Appellant’s invention pertains to a turntable for
installation into a building. The turntable comprises a
plurality of modular pie-shaped panel units cooperatively
assembled to define a rotatable floor surface of circular
shape. Independent claim 1, a copy of which is found in an
appendix to appellant’s brief, is illustrative of the appealed
subject matter.
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 are:
Coffey 1,772,858 Aug. 12, 1930
Chatard 3,941,146 Mar. 2, 1976
Funke 4,191,437 Mar. 4, 1980
Wertz 5,245,929 Sep. 21, 1993
Appeal No. 1997-1812
Application 08/055,382
This is the only rejection of independent claim 35,3
notwithstanding that claim 36, which now depends from claim
35, continues to be rejected under 35 U.S.C. § 103 (see
rejection (f) infra).
All reference to “final rejection” in this opinion4
denote the final rejection mailed January 23, 1996 (Paper No.
14).
3
The following rejections are before us for review:
a) claim 35, rejected under 35 U.S.C. § 112, first
paragraph, as being based on a disclosure that does not comply
with the enablement requirement found in that paragraph;3
b) claim 36, rejected under 35 U.S.C. § 112, fourth
paragraph, “as being of improper dependent form for failing to
further limit the subject matter of a previous claim” (final
rejection , page 2);4
c) claims 1, 3, 5, 11, 16-18, 20, 23 and 30, rejected
under 35 U.S.C. § 102(b), as being anticipated by Coffey;
d) claims 4, 12, 14, 19, 24, 32 and 33, rejected under 35
U.S.C. § 103, as being unpatentable over Coffey;
Appeal No. 1997-1812
Application 08/055,382
4
e) claims 7 and 8, rejected under 35 U.S.C. § 103, as
being unpatentable over Coffey in view of Chatard;
f) claims 13, 25-27 and 36, rejected under 35 U.S.C. §
103, as being unpatentable over Coffey in view of Funke; and
g) claims 15 and 31, rejected under 35 U.S.C. § 103, as
being unpatentable over Coffey in view of Wertz.
The § 112, 1st paragraph, rejection of claim 35
Claim 35 calls for means for interconnecting the pie-
shaped panel units that “permit[] flex movement of said
adjacent pair of panel units along said radial line of
separation therebetween.” The examiner contends (answer, page
5; emphasis in original) that “lines 28-34 on page 3 of the
specification disclose ‘the individual panel units are rigid
yet flex along the lines of separation’. . . . It is unclear
how . . . a rigid panel unit can flex.” The examiner further
contends (answer, page 6) that
[d]rawing figure 4 combined with the disclosure on
page 9 infer that the beams 34 are fixed
(nonmovable/nondetachable) in the groove of the
wheel bracket. If adjacent beams 34 are fixed to
each other, how can the panel unit flex? Appellant
has not provide[d] adequate disclosure for this
Appeal No. 1997-1812
Application 08/055,382
5
feature.
We will not sustain this rejection. Like appellant, we
think the examiner has misconstrued the term “fixing”
appearing on page 9, line 25, of the specification. Page 9,
lines 22-27 of appellant’s specification states that the wheel
brackets are “for securely fixing the adjacent beams 34 with
respect to each other, while permitting some relative flex
between the connected units”
(emphasis added). That is, the wheel brackets constitute a
joint between the panels “for securely fixing” (i.e.,
capturing or holding) adjacent panel relative to one another,
while permitting a limited amount of flex between the panel
units along the radial lines of separation. The specification
in effect instructs the skilled artisan to design the joint so
that it is robust enough to hold the panel units together, yet
supple enough to permit some flex at the joint line
therebetween. The skilled artisan would have no trouble, in
our view, in fabricating such a joint. In this regard,
compliance with the first paragraph of § 112 is adjudged from
Appeal No. 1997-1812
Application 08/055,382
6
the perspective of the person skilled in the pertinent art (In
re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1973))
and an inventor need not explain every detail since he is
speaking to those skilled in the art (In re Howarth, 654 F.2d
103, 105, 210 USPQ 689, 691 (CCPA 1981)).
The § 112, 4th paragraph, rejection of claim 36
The examiner contends (final rejection, page 2) that
claim 36 merely restates paragraph 2 of claim 25, and does not
further limit the subject matter of that claim.
In that the dependency of claim 36 has been changed from
claim 25 to claim 35 by the amendment filed subsequent to the
final rejection, and in that claim 36 does not restate any
limitations found in claim 35 from which it now depends, the
reason for the examiner’s § 112, fourth paragraph, rejection
of claim 36 no longer exists. Accordingly, this rejection
will not be sustained.
The § 102 rejection based on Coffey
Appeal No. 1997-1812
Application 08/055,382
7
For a reference to anticipate a claim, each and every
element of the rejected claim must be found either expressly
described or under the principles of inherency in the applied
reference. See, inter alia, RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). It follows that the absence from the reference of any
element of the claim negates anticipation of that claim by the
reference. Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986), cert. denied,
479 U.S. 1034 (1987).
Independent claim 1 is directed to a turntable comprising
a plurality of modular generally pie-shaped panel units
adapted for assembly to cooperatively define a rotatable floor
of generally
circular shape, wherein the panel units are separated from
adjacent panel units along radial lines of separation, and
means for interconnecting each adjacent pair of panel units
along the radial line of separation therebetween, said means
comprising at least one wheel unit including a wheel bracket
Appeal No. 1997-1812
Application 08/055,382
8
connected to the adjacent pair of panel units. Claim 1
further sets forth that
the adjacent pair of panel units is incapable of disassembly
when the wheel unit is connected thereto. Independent claim
18 and 30 contain similar limitations.
Coffey pertains to a turntable comprising a skeletal
framework of beams 14-17 to which a plurality of generally
pie-shaped plates 19 are secured. Coffey describes the
construction of the framework and pie-shaped plates as
follows:
The rotatable turn-table is composed of a circular
channel-beam 14 at the margin of the table; radial
I-beams 15 and 16 having their outer ends rigidly
secured to the circular beam; transverse beams 17
fixedly secured to the I-beams by angle-plates 19,
and a series of metal plates 18 extending over and
removably bolted to said beams. Said plates are
arranged in annular series with their meeting edges
over the beams 15, 16. [Page 1, lines 47-57.]
As is apparent from Coffey’s drawing figures, when assembled
the plates 19 cooperatively define a floor of generally
circular shape.
Coffey also discloses a plurality of wheel units mounted
Appeal No. 1997-1812
Application 08/055,382
See, for example, final rejection, page 2 (“Note pie-5
shaped panel units (18) . . .” and final rejection, page 5
(“As the panel units 18 are secured to the beams 15, 16 . .
.”).
9
at the periphery of the turntable. Coffey describes the
relationship between the wheel units and turntable as follows:
The margin of the table is supported by a series of
pairs of rollers 21 in tandem which are adapted to
run on a circular rail 22. Each pair of rollers is
journalled in a bracket 23. The brackets 23 extend
circumferentially under the radial beams 15, 16 in
such a manner that said beams bear on the brackets
respectively. Each bracket 23 is recessed, as at
24, to receive the lower flange of one of the radial
beams, and is provided with lugs 25 between which
said flange is confined. Each bracket 23, below the
beam flange, is provided with a central abutment 26,
on which the lower face of said flange bears. This
construction forms a connection between the bracket
and the beam which permits the bracket to slightly
tilt vertically, so that the load will be equalized
on both rollers of a pair, and will also permit the
rollers to accommodate themselves to any slight
irregularity in the rail 22. [Page 1, lines 58-79.]
In rejecting claim 1 as being anticipated by Coffey, it
is not clear which element(s) of Coffey the examiner considers
as corresponding to the claimed “pie-shaped panel units.” For
example, at several places the examiner refers to plates 185
as panel units, while at other places the examiner appears to
refer to Coffey’s plates 18 and beams members 15, 16 as panel
Appeal No. 1997-1812
Application 08/055,382
See, for example, final rejection, page 5 (“The added6
limitation in claim 1 is broad enough to read on the
securement between the panel units (18, 15, 16) and the wheel
unit (21, 23) . . .” and “this arrangement renders the
adjacent panel units (15, 16, 18) incapable of disassembly . .
.”).
10
units . In either case the examiner’s rejection is not6
sustainable.
If Coffey’s plates 18 alone are considered to correspond
to the claimed panel units, then we simply do not agree with
the examiner that “[a]s the panel units 18 are secured to the
beams 15, 16 which in turn are confined between lugs 25 of
wheel unit 21, 23, this arrangement renders the adjacent panel
unit (15, 16, 18) [sic, 18?] incapable of disassembly when the
wheel unit is connected thereto” (final rejection, page 5).
As is made clear by the above quoted portions of Coffey’s
specification, and as aptly pointed out by appellant, the
plates 18 extend over and are removably bolted to the beams of
the skeletal framework of beams 14-17 (Coffey, page 1, lines
47-55), while the wheel units are secured to the lower flanges
of the radial beams of the framework (Coffey, page 1, lines
66-72). We can think of no circumstance where one would
Appeal No. 1997-1812
Application 08/055,382
11
consider Coffey’s structure as rendering the
plates incapable of being disassembled from the framework when
the wheel units are connected thereto, as called for in each
of independent claims 1, 18 and 30.
Alternatively, if the examiner intends to read the
claimed panel units on Coffey’s plates 18 and beams 15, 16
collectively, the rejection is fundamentally flawed for
several reasons. First, claims 1, 18 and 30 require the panel
units to be “pie-shaped,” which plates 18 and beams 15, 16,
taken together, clearly are not. Second, claims 1, 18 and 30
require the panel units to be disposed between an adjacent
pair of panel units, which plates 18 and beams 15, 16, taken
together, clearly are not. Third, claims 1, 18 and 30 require
the panel units to be separated from adjacent panel units
along radial lines of separation, which plates 18 and beams
15, 16, taken together, clearly are not. For at least these
reasons, the rejection of claims 1, 18 and 30 as being
anticipated by Coffey based on this alternative interpretation
Appeal No. 1997-1812
Application 08/055,382
12
is not well taken.
In light of the foregoing, we will not sustain the § 102
rejection of claims 1, 18 and 30 as being anticipated by
Coffey. Likewise, we will not sustain the § 102 rejection of
claims 3, 5, 11, 16 and 17 that depend from claim 1, or the §
102 rejection of claims 20 and 23 that depend from claim 18.
The § 103 rejection based on Coffey
The examiner acknowledges that Coffey does not disclose
means for elevationally adjusting the support wheels (claims 4
and 19), means for elevationally adjusting the wheel track
(claims 12 and 24), and means on the center bearing for
elevationally adjusting the orientation of the assembled panel
units (claim 14). However, the examiner considers (final
rejection, page 3) that “these means are just obvious design
choices, since it has been held to be within the general skill
of a worker in the art to make structural members adjustable
as a matter of obvious engineering design choice.” The
examiner also tacitly acknowledges that Coffey does not
disclose the panel unit construction called for in claims 32
and 33. Nevertheless, the examiner considers (final
Appeal No. 1997-1812
Application 08/055,382
That is, In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA7
1954)
13
rejection, page 3) that as to these differences, the beam 15
or 16 of Coffey is “functionally equivalent” to the claimed
construction.
With respect to the subject matter of claims 4, 12, 14,
and 19, the examiner’s contention that the claimed adjustment
means are “just obvious design choices” is without foundation
in the absence of evidence supporting such contention. We
note that the means in question are for the express purpose of
fine tuning
the turntable relative to its supporting structure. See, for
example, page 10, lines 2-6, and page 11, line 36 through page
12, line 5, of appellant’s specification. Thus, they are not
merely a matter of obvious design choice solving no stated
problem. Compare, In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7,
9 (CCPA 1975). The Stevens case cited on page 3 of the final7
rejection and again on page 5 of the answer in support the
examiner’s position is noted. In Stevens, the examiner cited
Appeal No. 1997-1812
Application 08/055,382
14
references which taught both the basic concept of
adjustability in the same art area as the claimed device, and
the specific joints being claimed. Thus, in Stevens, the
examiner provided sufficient evidence from which to conclude
that the claimed subject matter would have been obvious. Such
is clearly not the case here.
As to claims 32 and 33, the examiner has cited no
evidence to establish that the construction of Coffey is the
“functional equivalent,” whatever that may be, of the claimed
subject matter. In any event, the mere existence of
functional and mechanical equivalence does not establish
obviousness. In other words,
components which are functionally equivalent to each other are
not necessarily obvious in view of one another. In re Scott,
323 F.2d 1016, 1019-20, 139 USPQ 297, 299 (CCPA 1963).
In the present case, the examiner has failed to indicate
any teaching in Coffey or any prior knowledge generally
available to one of ordinary skill in the art that would have
led an ordinarily skilled artisan to equip Coffey’s turntable
Appeal No. 1997-1812
Application 08/055,382
15
with the claimed adjusting means (claims 4, 12, 14, 19 and 24)
or panel unit construction (claims 32 and 33). For this
reason alone, the § 103 rejection of claims 4, 12, 14, 19, 24,
32 and 33 must fail for lack of a sufficient factual basis.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
Furthermore, even if we were to agree with the examiner
that the subject matter of claims 4, 12, 14, 19, 24, 32 and 33
would have been obvious, the incorporation of same into the
turntable of Coffey would not cure the basic deficiencies of
the Coffey device discussed above in our treatment of the §
102 rejection of independent claim 1, from which claims 4, 12,
14, 32 and 33 depend, and independent claim 18, from which
claims 19 and 24 depend.
For these reasons, we will not sustain the standing § 103
rejection of claims 4, 12, 14, 19, 24, 32 and 33.
The § 103 rejections based on Coffey and Other Prior Art
Claims 7 and 8, rejected as being unpatentable over
Appeal No. 1997-1812
Application 08/055,382
16
Coffey in view of Chatard, depend from claim 1 and further
define the interconnection means for connecting adjacent panel
units along the radial lines of separation. The examiner
relies on Coffey for a teaching of the interconnection means
called for in these dependent claims, and concludes that the
claimed subject matter as a whole would have been obvious in
view of the combined teachings of Coffey and Chatard. Even if
we were to agree with the examiner that Chatard teaches the
interconnection means of claims 7 and 8, and further agree
that it would have been obvious to provide such
interconnection means in Coffey, Chatard does not render
obvious what we have found to be lacking in Coffey in our
treatment of the standing § 102 rejection of claim 1.
Accordingly, the § 103 rejection of claims 7 and 8 will not be
sustained.
Claims 13 and 25-27 have been rejected under 35 U.S.C. §
103 as being unpatentable over Coffey in view of Funke. Claim
13 depends from claim 1 and further sets forth that the
turntable of claim 1 includes means for structurally
connecting the wheel track with the center bearing means.
Appeal No. 1997-1812
Application 08/055,382
17
Independent claim 25 contains all the limitations of claim 1
regarding the panel units, radial lines of separation, means
for interconnecting, and incapability of disassembly of the
panel units when the wheel units are connected thereto. In
addition, claim 25 contains all the limitations of claim 13
regarding the means for structurally connecting the wheel
track with the center bearing means. In rejecting these
claims, the examiner cited Funke for a teaching of providing
means for connecting a wheel track 12b with a center bearing
means 14a, and concluded that it would have been obvious to
connect the wheel track of Coffey to the center bearing means
thereof. Because Funke does not make up for the deficiencies
of Coffey with respect to the basic turntable limitations
found in
claims 1 and 25, even if we were to agree with the examiner
that it would have been obvious to modify Coffey in the manner
proposed, the subject matter of claims 13 and 25-27 would not
result. It follows that we will not sustain the standing §
103 rejection of these claims.
Dependent claim 36 has also been rejected under 35 U.S.C.
Appeal No. 1997-1812
Application 08/055,382
The dependency of claim 36 was changed from claim 25 to8
claim 35 in the amendment filed subsequent to the final
rejection.
18
§ 103 as being unpatentable over Coffey in view of Funke.
However, it appears that this rejection is maintained by the
examiner in this appeal based on the mistaken belief that
claim 36 depends from 25, as it did at the time of the final
rejection, rather than claim 35, as it does now. Because8
claim 36 now depends for claim 35, it requires, inter alia,
interconnecting means for each adjacent pair of panel units
permitting flex movement thereof along the radial lines of
separation therebetween, and wheel units connected to each
adjacent pairs of panel units along the radial lines of
separation. The examiner has not explained how the combined
teachings of Coffey and Funke render obvious this subject
matter; nor is it apparent to us how this subject matter would
have been obvious to one of ordinary skill in the art in light
of the teachings of the applied references. Accordingly, we
cannot sustain the examiner’s § 103 rejection of claim 36
based on Coffey in view of Funke.
Claims 15 and 31 stand rejected under 35 U.S.C. § 103 as
Appeal No. 1997-1812
Application 08/055,382
19
being unpatentable over Coffey in view of Wertz. Each of
these claims calls for seismic tie-down means disposed below
the floor surface of the turntable for preventing substantial
vertical upward displacement of the assembled panel units at
the peripheral edge of the floor surface. The examiner cited
Wertz for a teaching of “providing a turntable structure with
means (44, 46) which is capable of functioning as seismic tie-
down means to prevent substantial vertical displacement and/or
stabilize the panel units at the peripheral edge thereof”
(final rejection, pages 4-5). The examiner than concluded
that
it would have been obvious to one skilled in the art
to provide Coffey’s turntable structure with a
stabilize [sic, stabilization] means that is capable
of functioning as a seismic tie-down means as taught
by Wertz et al. to prevent substantial vertical
displacement and/or stabilize the panel unit at the
peripheral edge thereof. [Final rejection, page 5.]
Implicit in the above is the examiner’s conclusion that the
modified Coffey device would correspond to the subject matter
of claims 15 and 31.
While we appreciate that the guide members 44 and
circuitous channel 46 of Wertz provide a measure of lateral
Appeal No. 1997-1812
Application 08/055,382
20
stability to the annular rotatable frame 12 (column 4, lines
22-27), claims 15 and 31 expressly require seismic tie-down
means for preventing substantial vertical upward displacement
of the turntable. Because the examiner has not explained how
elements 44 and 46 of Wertz prevent vertical upward
displacement of the frame 12, and because we are not apprised
by the examiner of any other structure in either of the
applied references that teaches seismic tie-down means that
functions to prevent vertical upward displacement of the
turntable at its peripheral edge as called for in the claims,
the standing § 103 rejection of claims 15 and 31 cannot be
sustained.
Summary
Each of the examiner’s rejections is reversed.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Appeal No. 1997-1812
Application 08/055,382
21
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
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