Ex parte Becker

Board of Patent Appeals and Interferences

Nov 25, 1998

08612045 (B.P.A.I. Nov. 25, 1998)

Application for patent filed March 7, 1996.1
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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALBERT BECKER
__________
Appeal No. 98-1233
Application 08/612,0451
__________
ON BRIEF
__________
Before MEISTER, STAAB, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Albert Becker (the appellant) appeals from the final
rejection of claims 1-9, the only claims present in the
application.
Appeal No. 98-1233
Application No. 08/612,045
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), we will enter new rejections
of claims 1-3 and 5-7.
The appellant's invention pertains to a plaster guard for
a concealed sanitary valve which can be controlled by a valve
element. Independent claim 1 is further illustrative of the
appealed subject matter and copy thereof may be found in the
appendix to the brief.
The references relied on by the examiner are:
Carlson 942,541 Dec. 7, 1909
Bergmann 5,497,584 Mar. 12, 1996
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bergmann in view of Carlson.
According to the examiner:
Bergmann discloses the claimed "plaster guard"
invention except for the recitation of a coacting
tool. Carlson teaches that it is known to provide a
"reversible" valve "tool" including a lower "guard"
portion 23 and a reversible "tool" portion 24 as set
forth at column 2, lines 62+. It would have been
obvious to one having ordinary skill in the art at
the time the invention was made to modify the
"plaster guard" of Bergmann to include a coacting
tool portion, as taught by Carlson in order to
provide means to test actuation of the valve
following completion of plastering the wall.
[Answer, page 3.]
Appeal No. 98-1233
Application No. 08/612,045
3
We will not support the examiner's position. While the
examiner opines that it would have been obvious to provide the
plaster guard of Bergmann with a coacting tool "in order to
provide means to test actuation of the valve," we must point
out the mere fact that the prior art could be modified would
not have made the modification obvious unless the prior art
suggested the desirability of the modification. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992) and In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Here, there is no such suggestion. As
the examiner recognizes, the plaster guard of Bergmann has no
tool whatsoever. In order to overcome this deficiency the
examiner has relied upon the teachings of Carlson, contending
that Carlson teaches a "guard" portion at 23 and a tool
portion at 24. We observe, however, that while the element 23
of Carlson may have the capability of being used as a guard,
there is no teaching or suggestion in Carlson of doing so. To
the contrary, Carlson describes the element 23 as a "threaded
stud" which is used to engage the threads on collar 17 for the
purpose of removing it from the valve in order that the valve
Appeal No. 98-1233
Application No. 08/612,045
4
may be repaired and, upon the completion of repairs,
repositioning the collar in the valve (see page 1, lines 62-
78). In short, Carlson teaches providing two tools 23, 24 on
opposite sides of a "master key" 22 (see Fig. 4). There is
absolutely nothing in the combined teachings of Bergmann and
Carlson which would fairly suggest providing the plaster guard
of Bergmann with a tool portion in view of the teachings of
Carlson as the examiner proposes. Accordingly, we will not
sustain the rejection of claims 1-9 under 35 U.S.C. § 103(a)
as being unpatentable over Bergmann in view of Carlson.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 1-3, 5 and 6 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Carlson. Initially we note that
anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the
recognition of inherent properties that may be possessed by
the prior art reference. See Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.
1987), cert. denied, 484 U.S. 827 (1987). Additionally, the
Appeal No. 98-1233
Application No. 08/612,045
5
law of anticipation does not require that the reference teach
what the appellants are claiming, but only that the claims on
appeal "read on" something disclosed in the 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).
Moreover, it is well settled that if a prior art device
inherently possesses the capability of functioning in the
manner claimed, anticipation exists regardless of whether
there was a recognition that it could be used to perform the
claimed function. See, e.g., In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). See also
LaBounty Mfg. v. Int’l Trade Comm’n, 958 F.2d 1066, 1075, 22
USPQ2d 1025, 1032 (Fed. Cir. 1992) (in quoting with approval
from Dwight & Lloyd Sintering Co. v. Greenawalt, 27 F.2d 823,
828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed
without change for the purposes of the patent; the
statute authorizes the patenting of machines, not of
their uses. So far as we can see, the disclosed
apparatus could be used for "sintering" without any
change whatever, except to reverse the fans, a
matter of operation. [Alteration in original.]
Appeal No. 98-1233
Application No. 08/612,045
6
Here, Carlson discloses a valve 5 which includes a
concealed part 6, a part (the remainder of the valve) which
projects from a wall (note page 1, lines 34-39) and a control
element 12. The appellant's specification provides no
particularly definition of "sanitary" and, giving this term
its broadest reasonable interpretation (see In re Morris, 127
F.3d 1048, 1055, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d, 1320, 1322 (Fed. Cir.
1989)), Carlson's valve may be considered to be a "sanitary"
valve as claimed. Carlson also discloses an element 22 which
has the capability of functioning as a plaster guard as
claimed. More specifically, element 22 includes (1) a
threaded stud 23 that will act as a protective cover section
for the internal threads on collar 17 when the studs are
engaged in these threads and (2) a tool bearing section with a
tool 24 (see Fig. 4).
Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carlson. With respect to claim 5, the
tool 24 and the end 21 of control element 12 of Carlson appear
to be square-shaped as claimed. In any event, the provision
Appeal No. 98-1233
Application No. 08/612,045
The provision of the tool being "bonded" to the plaster2
guard is not mentioned in the specification. If such a
provision a vital part of the appellant's invention, it seems
strange to us that all mention of its importance was omitted
from the original description. See Graham v. John Deere Co.,
383 U.S. 1, 24-26, 148 USPQ 459, 469-470 (1966).
7
of a square shaped end vis-à-vis other polygonally shaped ends
solves no stated problem insofar as the record is concerned,
leading us to conclude that such a provision is an obvious
matter of design choice. See In re Kuhle, 526 F.2d 553, 555,
188 USPQ 7, 8-9 (CCPA 1975). Similarly, with respect to claim
7, the provision of the tool being "bonded" to the guard 222
vis-à-vis the one-piece construction arrangement of Carlson
also solves no stated problem insofar as the record is
concerned, once again leading us to conclude that such a
provision is an obvious matter of design choice.
In summary:
The examiner's rejection of claims 1-9 under 35 U.S.C.
§ 103(a) is reversed.
New rejections of claims 1-3 and 5-7 have been made.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Appeal No. 98-1233
Application No. 08/612,045
-8-
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Appeal No. 98-1233
Application No. 08/612,045
-9-
James M. Meister )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
tdc
Appeal No. 98-1233
Application No. 08/612,045
-10-
American Standard Inc.
One Centennial Avenue
Piscataway, NJ 08855-6820