Ex parte BLY

Board of Patent Appeals and Interferences

Mar 16, 2000

08540095 (B.P.A.I. Mar. 16, 2000)

Claim 1 was amended subsequent to the final rejection.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for publication in a law journal and (2) is not binding precedent of the Board.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 ROBERT R. BLY
____________
Appeal No. 1998-1847
Application No. 08/540,095
____________
ON BRIEF
____________
Before STAAB, 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, 5 to 10, 12 to 15 and 17, which are all
of the claims pending in this application.1
We REVERSE.
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Application No. 08/540,095
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Application No. 08/540,095
BACKGROUND
The appellant's invention pertains to the art of patient
care products and more particularly to a transfer bench
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.
Claims 1, 5 to 10, 12 to 15 and 17 stand rejected under
35 U.S.C. § 112, first paragraph, as containing subject matter
which was not described in the specification in such a way as
to enable one skilled in the art to make and/or use the
invention.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
6, mailed June 3, 1997) and the answer (Paper No. 12, mailed
January 7, 1998) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 11,
filed December 8, 1997) for the appellant's arguments
thereagainst.
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Application No. 08/540,095
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, and to the respective positions articulated by the
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
We do not sustain the rejection of claims 1, 5 to 10, 12
to 15 and 17 under 35 U.S.C. § 112, first paragraph, as
failing to adequately teach how to make and/or use the
invention, i.e., failing to provide an enabling disclosure.
The basis for the examiner's enablement rejection of the
claims under appeal is set forth on page 4 of the answer as
follows:
The structure of the "snap buttons" (110) is unclear to
enable practicing the invention. No disclosure could be
found which directs one on how to construct a "snap
button" that passes through "openings" as claimed.
Appellant's "openings" are actually each a pair of
aligned openings formed cooperatively by the seat
recesses (90,92) and respective frame members (40,42).
The selective retraction is neither disclosed in, nor
understood from, the instant disclosure.
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Application No. 08/540,095
The appellant argues (brief, pages 5-7) that a snap
button is a conventional structure and that one skilled in the
art when reviewing the disclosure in its entirety would
understand precisely how to make and use the claimed
structure.
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Application No. 08/540,095
The examiner's response (answer, pages 4-5) to the
appellant's argument is as follows:
Appellant argues at pages 5-7 of the brief that one
of ordinary skill in the art would understand what the
disclosed snap buttons are and how they operate, per se.
The examiner agrees, however, how such snap buttons
operate in connection with the instant invention would
not be understood by one of ordinary skill in the art.
The disclosed snap buttons are known as cooperating with
axially aligned openings formed in a pair of telescopic,
tubular members, as illustrated in appellant's Fig. 1
relating to snap buttons 20, for example. No such
telescopic, tubular members with cooperating, axially
aligned openings have been disclosed relating to legs
94,96 and seat 60 in the instant disclosure. It is
further noted appellant has not offered any reasoning as
to how the snap buttons 110 are effective in performing
the intended function.
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc., 857
F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
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Application No. 08/540,095
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art
as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's
invention
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Application No. 08/540,095
without undue experimentation. The appellant's disclosure
describes the claimed "snap buttons" on page 8 of the
specification and shows the claimed "snap buttons" in Figures
1 and 3. From this disclosure, it is clear to us that each
terminal end 104, 106 of the seat back mounting members 94, 96
receives a snap button 110 biased outwardly by a spring 112 to
preclude removal of the seat back 100 once the terminal ends
104, 106 have been advanced entirely through their respective
openings in the seat portion of a seat. The appellant's
disclosure describes the claimed "openings" on page 7 of the
specification and shows the openings in Figures 1 and 2. From
this disclosure, it is clear to us that the claimed "openings"
can be formed entirely within the seat portion, if so desired,
or the openings defined in whole or in part, by recessed areas
in the frame assembly, or the openings can consist of a pair
of recesses 90, 92 formed in the lower surface of the seat
portion which cooperate with the frame assembly to define the
openings.
It is our determination that this disclosure would have
enabled a person of ordinary skill in the art to make and use
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Application No. 08/540,095
the claimed invention. In that regard, it is clear to us that
the claimed "snap buttons" pass through the claimed "openings"
as follows: The snap buttons are depressed against the force
of
the springs thus permitting the terminal ends of the seat back
mounting members to be inserted into the openings and the
terminal ends of the seat back mounting members are advanced
entirely through the openings such that the force of the
springs are now able to extend the snap buttons thus fixing
the seat back in place. While in the embodiment of the
openings shown in Figures 1 and 2 the snap buttons appear to
be oriented downwardly such that they would automatically
extend upon passing the rear bench leg 12 and thus the snap
buttons would need to be depressed again to pass the front
bench leg 10, we believe that even this embodiment of the
openings is enabled.
For the reasons set forth above, we conclude that
appellant's disclosure would have enabled a person of ordinary
skill to make and use the appellant's invention without undue
experimentation.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 5 to 10, 12 to 15 and 17 under 35 U.S.C. § 112,
first paragraph, is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1998-1847 Page 12
Application No. 08/540,095
HUDAK AND SHUNK, CO., L.P.A.
7 WEST BOWERY STREET
SUITE 808
AKRON, OH 44308-1133
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JVN/dl