Ex parte Berry

Board of Patent Appeals and Interferences

Aug 12, 1999

08799433 (B.P.A.I. Aug. 12, 1999)

Application for patent filed February 13, 1997. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID HAROLD BERRY
____________
Appeal No. 1999-1740
Application No. 08/799,4331
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 14. Claim 19 has been allowed.
Claim 15 has been objected to as depending from a non-allowed
claim. Claims 16 to 18 have been canceled.
Appeal No. 1999-1740
Application No. 08/799,433
We REVERSE.
Appeal No. 1999-1740 Page 3
Application No. 08/799,433
BACKGROUND
The appellant's invention relates to a flush glass seal
insert with a belt-line extension. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears 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:
Omura et al. (Omura) 4,908,989 Mar. 20,
1990
Norton 5,694,718 Dec. 9,
1997
(filed Sept. 6, 1996)
Claims 1 to 4, 6 to 8 and 10 to 14 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Omura.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Omura.
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Omura in view of Norton.
Appeal No. 1999-1740 Page 4
Application No. 08/799,433
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 16,
mailed February 26, 1999) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 15, filed November 16, 1998) 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 1 to 4, 6 to
8 and 10 to 14 under 35 U.S.C. § 102(b).
Appeal No. 1999-1740 Page 5
Application No. 08/799,433
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.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellant is 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)).
All the independent claims on appeal (i.e., claims 1, 6,
10 and 13) include the limitation that the insert include "a
Appeal No. 1999-1740 Page 6
Application No. 08/799,433
line of weakness" for "permitting the second leg to be
separated from the base."
The examiner's anticipation rejection (answer, pp. 4 and
5-6) is founded on the basis that the claimed "line of
weakness" is readable on the slit 16 in Omura's glass run (see
Figure 8). Specifically, the examiner states (answer, p. 5)
that Omura discloses "a slit or line of weakness which is
taught to be ripped or torn." We do not agree. We have
reviewed the entire disclosure of Omura and fail to find any
teaching therein that Omura's slit is "ripped or torn."
Accordingly, we find ourselves in agreement with the
appellant's argument (brief, pp. 4-6, 8 and 12-13) that Omura
does not disclose "a line of weakness" as recited in the
claims under appeal.
Since all the limitations of claims 1 to 4, 6 to 8 and 10
to 14 are not disclosed in Omura for the reasons stated above,
the decision of the examiner to reject claims 1 to 4, 6 to 8
and 10 to 14 under 35 U.S.C. § 102(b) is reversed.
Appeal No. 1999-1740 Page 7
Application No. 08/799,433
The obviousness rejections
We will not sustain the rejections of claims 5 and 9
under
35 U.S.C. § 103.
As pointed out above, the limitation regarding "a line of
weakness" is not taught or suggested by Omura. We have also
reviewed the reference to Norton applied in the rejection of
claim 5 but find nothing therein which would have suggested
the claimed "line of weakness." Since all the claimed
limitations are not suggested by the applied prior art, the
decision of the examiner to reject claims 5 and 9 under 35
U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 4, 6 to 8 and 10 to 14 under 35 U.S.C. § 102(b) is
reversed and the decision of the examiner to reject claims 5
and 9 under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-1740 Page 8
Application No. 08/799,433
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-1740 Page 9
Application No. 08/799,433
CUMPSTON & SHAW
2 STATE STREET
SUITE 850
ROCHESTER, NY 14614
APPEAL NO. 1999-1740 - JUDGE NASE
APPLICATION NO. 08/799,433
APJ NASE
APJ GONZALES
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 02 Aug 99
FINAL TYPED: