Ex Parte Bertolini

Board of Patent Appeals and Interferences

Sep 24, 2004

10278725 (B.P.A.I. Sep. 24, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.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 GEOFFREY MICHAEL BERTOLINI
_____________
Appeal No. 2004-2059
Application No. 10/278,725
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT, and STAAB, 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, 2, 5-18 and 22, all the claims currently
pending in the application.
Appellant’s invention pertains to a decking tile. As
explained in the summary of the invention on page 2 of
appellant’s brief, the decking tile of the present invention
comprises a base support structure that serves as a support base
for slats, cladding, tiles or other flooring material, which are
Appeal No. 2004-2059
Application No. 10/278,725
2
placed thereon and are attached with fasteners. Appellant’s
decking tile comprises a plurality of portions arranged in an
array and connected to adjacent portions by membranes that may be
severed so that one or more of the portions may be removed. This
allows flexibility in the design of a completed deck comprising a
plurality of interconnected decking tiles because the individual
decking tiles can be customized to accommodate different room
shapes and sizes and circumscribe pipes and the like. A further
understanding of the invention can be derived from a reading of
exemplary claim 1, which reads as follows:
1. A decking tile divided into a plurality of
portions arranged in an array, said portions being connected
to each adjacent portion by a membrane adapted to be
severable, each portion being removable from said tile upon
severing of the membranes connecting it to the other
portions, each portion arranged to receive at least two
fasteners to secure a slat thereto, wherein said at least
two fasteners can engage a slat positioned to any side of
said tile.
The references applied by the examiner in the final
rejection are:
Boyd 5,263,289 Nov. 23, 1993
Hayashi JP 1-275802 A Nov. 6, 1989
(published Japanese Kokai Patent Application)
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Application No. 10/278,725
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Claims 1, 2, 5-11, 14, 16-18 and 22 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Boyd.
Claims 12, 13 and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Boyd in view of Japanese patent
document 1-275,802 to Hayashi.
Reference is made to appellant’s brief (Paper No. 7) and to
the examiner’s answer (Paper No. 8) for the respective positions
of appellant and the examiner regarding the merits of these
rejections.
Discussion
Looking first at the examiner’s anticipation rejection of
claim 1, Boyd pertains to modular hollow floor panels, which in
use are laid in a continuous two-dimensional array over a
supporting sub-surface to form a hollow floor, wall or ceiling
suitable for reticulating electrical, optic-fiber, hydraulic and
other conduit. Figures 1-3 illustrate a first modular floor
panel embodiment. In the words of Boyd:
This panel has a flat upper surface, and the
underside is criss-crossed with a series of “vaults”
(1) which define channels through which the cabling may
be laid. The channels occur in at least two
directions: a first set of channels runs laterally from
one side of the panel to the other, and a second set of
channels runs longitudinally from one end of the panel
to the other. Diagonal and vertical channels are also
possible, and formations with these features will be
Appeal No. 2004-2059
Application No. 10/278,725
4
described later. Between the said vaults, there are
slits (2) which divide the panel into an array of rigid
sub-elements in the form of pedestals, which are
inter-connected by small cross-sections of material
(3). This allows the panel to flex and to accommodate
undulations in the surface of the structural sub-floor.
[Column 3, lines 11-25.]
Figures 6-9 illustrate a second modular floor panel
embodiment. According to Boyd:
This second type of construction differs from the
first in that additional slits (5) are provided which
divide the panel into triangular sub-elements (6).
Triangular sub-elements have the advantage of
accommodating to an uneven sub-surface, and this type
of construction is applicable to the use of rigid
materials such as pressed steel, cast aluminium, or
rigid plastics. [Column 3, lines 59-65.]
Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of a
claimed invention. RCA Corp. v. Applied Digital Data Sys., Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert.
dismissed, 468 U.S. 1228 (1984). It is not necessary that the
reference teach what the subject application discloses and
claims, but only that the claim on appeal “reads on” something
disclosed in the reference, i.e., that all limitations of the
claim are found in the reference. See Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983),
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Application No. 10/278,725
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cert. denied, 465 U.S. 1026 (1984). Concerning inherency, 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
Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed.
Cir. 1997).
As framed by appellant, the issue with respect to the
standing anticipation rejection of claim 1 is whether the floor
panel of Boyd’s Figures 6-9 embodiment includes portions that are
connected to each adjacent portion by “a membrane adapted to be
severable” so that “each portion [is] removable from said tile
upon severing of the membranes connecting it to the other
portions.” Appellant argues (brief, page 5) that it does not
necessarily follow that the panel system of Boyd, even when made
of rigid plastic and composed of cross-sections (3) of thinner
material to provide panel flexibility, would be adapted to be
severable. Appellant further argues (brief, page 6) that the
examiner speculatively concludes that elements (3) of Boyd are
inherently adapted to be severable, and that this speculative
conclusion is inconsistent with the law of inherency.
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Application No. 10/278,725
1We observe that the word “membrane” may mean “[a] thin
pliable layer of tissue covering surfaces or separating or
connecting regions, structures, or organs of an animal or plant.”
Webster’s II New Riverside University Dictionary, copyright ©
1984 by Houghton Mifflin Company.
6
Independent claim 1 sets forth a decking tile divided into a
plurality of portions, with the portions being connected to each
adjacent portion by a “membrane.” First, although Boyd does not
use the word “membrane” to describe the small cross-sections of
material (3), the examiner’s determination that these thin
elements (3) constitute membranes is reasonable on its face when
the term “membrane” is read in light of appellant’s specification
and the commonly accepted meaning of that term.1 Second,
independent claim 1 also contains several non-structural,
functional limitations of the claimed “membrane” describing the
membrane’s capabilities and how these capabilities impact on the
manner in which the decking tile may be used. More particularly,
claim 1 describes the membrane as being “adapted to be severable”
so that “each portion [is] removable from said tile upon severing
of the membranes connecting it to the other portions.” Based on
the fact that the Figures 6-9 panel of Boyd may be constructed of
rigid plastic (column 3, lines 64-65), and that the connecting
elements (3) are described in the Boyd specification as being of
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small cross-section to allow the panel to flex (column 3, lines
20-23), and the showing in Boyd’s drawing figures of elements (3)
as being of considerably smaller thickness than adjacent portions
of the floor panel, the examiner’s finding that the above noted
non-structural, functional limitations of claim 1 are inherent in
Boyd is well founded and not based on speculation. Stated
differently, the description provided in Boyd for the connecting
elements (3) constitutes evidence that supports the examiner’s
reasonable determination that Boyd’s elements (3) are capable of
being severed to allow removal of a selected portion of decking
tile, such that the “membrane adapted to be severable” limitation
of claim 1 “reads on” Boyd’s elements (3).
As to appellant’s argument in the brief to the effect that
the examiner’s treatment of the functional “adapted to be
severable” limitation of claim 1 is inconsistent with the law of
inherency, we point to the statement by the Court in Schreiber,
128 F.3d at 1478, 44 USPQ2d at 1432, that
[a] patent applicant is free to recite features of
an apparatus either structurally or functionally. See
In re Swinehart, 58 C.C.P.A. 1027, 439 F.2d 210, 212,
169 USPQ 226, 228 (CCPA 1971) (“[T]here is nothing
intrinsically wrong with [defining something by what it
does rather than by what it is] in drafting patent
claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a
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Application No. 10/278,725
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risk. As our predecessor court stated in Swinehart,
439 F.2d at 213, 169 USPQ at 228:
where the Patent Office has reason to believe
that a functional limitation asserted to be
critical for establishing novelty in the
claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it
possesses the authority to require the
applicant to prove that the subject matter
shown to be in the prior art does not possess
the characteristic relied on.
See also In re Hallman, 655 F.2d 212, 215, 210
USPQ 609, 611 (CCPA 1981); In re Ludtke, 58 C.C.P.A.
1159, 441 F.2d 660, 663-64, 169 USPQ 563, 565-67 (CCPA
1971).
In this case, as in Schreiber, we have considered the
functional limitations asserted by appellant as distinguishing of
Boyd and agree with the examiner that these limitations relate to
functional characteristics and intended use of the claimed
device, that they do not lend patentable weight to the presently
claimed subject matter, and that the limitations in question are
in fact inherent characteristics of the floor panel of Boyd.
Thus, we consider that the examiner has established a prima facie
case of anticipation that appellant has not overcome by
convincing argument or evidence to the contrary.
In light of the above, we shall sustain the rejection of
claim 1 as being anticipated by Boyd. We shall also sustain the
anticipation rejection of claims 2, 5-11, 14, 16-18 and 22 as
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Application No. 10/278,725
9
being anticipated by Boyd because these claims have not been
separately argued with any reasonable degree of specificity apart
from claim 1. See, for example, In re Hellsund, 474 F.2d 1307,
1309-10, 177 USPQ 170, 172 (CCPA 1973); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978); and In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
Turning to the rejection of claims 12, 13 and 15 as being
unpatentable over Boyd in view of Hayashi, we also shall sustain
the rejection of these claims since appellant has not separately
argued the merits of these claims with any reasonable degree of
specificity.
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Application No. 10/278,725
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The decision of the examiner finally rejecting the appealed
claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
LJS:hh
Appeal No. 2004-2059
Application No. 10/278,725
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