Ex Parte Bohacik et al

Board of Patent Appeals and Interferences

Mar 23, 2007

10392140 (B.P.A.I. Mar. 23, 2007)

The opinion in support of the decision being entered today was not written 1
for publication and is not binding precedent of the Board 2
3
UNITED STATES PATENT AND TRADEMARK OFFICE 4
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BEFORE THE BOARD OF PATENT APPEALS 7
AND INTERFERENCES 8
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Ex parte RICHARD BOHACIK and STANLEY DICKERSON 11
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Appeal 2006-1951 14
Application 10/392,1401 15
Technology Center 3700 16
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Decided: March 23, 2007 19
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Before STUART S. LEVY, ROBERT E. NAPPI, and ANTON W. 22
FETTING, Administrative Patent Judges. 23
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LEVY, Administrative Patent Judge. 25
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DECISION ON REQUEST FOR REHEARING 28
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STATEMENT OF CASE 30
Appellants request Rehearing of our Decision on Appeal dated 31
September 27, 2006. In our Decision, we affirmed the rejection of claims 32
10-13. 33

1Application filed March 19, 2003. The real party in interest is the
inventors.
Appeal 2007-1951
Application 10/392,140

2
Claim 10 is the only independent claim under appeal, and reads as 1
follows: 2
10. A sink comprising 3
4
a drawn one piece metal body defining a floor and an 5
upstanding wall extending peripherally of said floor; and 6
7
a peripheral metal frame welded to and extending upwardly 8
from said wall of said body. 9
10
The prior art relied upon by the Examiner in rejecting the claims on 11
appeal is: 12
Just US 2,456,065 Dec. 14, 1948 13
Wenning US 6,488,172 B1 Dec. 3, 2002 14
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Appellants contend (Rehearing 1) that the Decision commits error in 16
the interpretation of the Wenning reference, and in the application of 17
Wenning to claim 10. Appellants further contend that the Decision commits 18
error in holding that the structure of claim 12 is met by the offset facing 19
tubular edges of the tubular element 14 of Wenning and the bottom 15, 16 20
and 17 which are welded in offset fashion. Specifically, Appellants contend 21
(Rehearing 2) that the Decision is in error in opining that "we find nothing in 22
the language of claim 12 that would preclude the facing edges of Wenning 23
from being offset welded." With regard to claim 10, Appellants assert 24
(Rehearing 3) that shell bottom 16 is not a floor because it forms the rear 25
wall of useful space 11. It is argued that there is no basis in law or fact to 26
support for finding that the orientation of the structure, in and of itself, does 27
not distinguish the claimed structure from Wenning. 28
29
Appeal 2007-1951
Application 10/392,140

3
ISSUE 1
The issue is whether we erred in holding that the teachings of 2
Wenning were sufficient to anticipate claim 10, and whether we erred in 3
holding that the teachings and suggestions of Wenning and Just would have 4
suggested the language of claim 12. With regard to claim 10, the issue turns 5
on whether the shell bottom 16 of Wenning meets the claimed floor. With 6
regard to claim 12, the issue turns on whether Wenning meets the language 7
of the claim, or if not, whether the combined teachings and suggestions of 8
Wenning and Just would have suggested the language of the claim. 9
10
PRINCIPLES OF LAW 11
12
A claim is anticipated only if each and every element as set forth in 13
the claim is found, either expressly or inherently described, in a single prior 14
art reference. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 15
USPQ2d 1051, 1053 (Fed. Cir. 1987). The inquiry as to whether a reference 16
anticipates a claim must focus on what subject matter is encompassed by the 17
claim and what subject matter is described by the reference. As set forth by 18
the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 19
781, 789 (Fed. Cir. 1983), it is only necessary for the claims to "'read on' 20
something disclosed in the reference, i.e., all limitations of the claim are 21
found in the reference, or 'fully met' by it." 22
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FINDINGS OF FACT 25
We make reference to our findings, in the Decision, as to the 26
teachings and suggestions of Wenning and Just. 27
Appeal 2007-1951
Application 10/392,140

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ANALYSIS 1
We begin with independent claim 10. As we noted, supra, in an 2
anticipation rejection it is only necessary that the claim reads on something 3
disclosed in the reference. In Wenning, structure identical to claim 10 is 4
found in the reference with the exception that in Wenning, the structure is 5
vertically oriented. The claim does not recite an orientation of the sink. 6
Claim 10 recites an upstanding wall that extends peripherally to the floor, 7
and that a peripheral metal frame extends upwardly from the wall of the 8
body. As broadly recited, the frame extends upwardly from the body. In the 9
orientation of Wenning, the frame 17 extends upwardly from the peripheral 10
wall 12 of shell bottom 16 since the frame 17 extends in a direction away 11
from the upstanding peripheral wall 12 of shell bottom 16. In addition, how 12
the shell of Wenning is oriented is an intended use of Wenning's device. 13
The shell bottom 16 and frame 12 is capable of being oriented in a vertical 14
fashion, though Wenning does not disclose doing so. Certainly, most 15
persons of ordinary skill in the art have tipped storage containers on their 16
back temporarily to take advantage of gravity in loading heavy or bulky 17
contents, in which case, the back becomes the floor, and supports the heavy 18
and bulky contents, at least temporarily. This illustration merely serves to 19
demonstrate the inherent nature of Wenning’s device. As we stated in our 20
Decision (p. 4) "anticipation exists whether or not there was a recognition 21
that it could be used to perform the claimed function." Thus, the shell 22
bottom 16 is the floor of the housing 10 irrespective of the orientation of the 23
housing. In sum, because the intended use of Wenning's structure does not 24
Appeal 2007-1951
Application 10/392,140

5
detract from the device of Wenning being used in a different orientation, we 1
maintain our position that claim 10 is anticipated by Wenning. 2
Turning to claim 12, we note at the outset that as stated in our 3
Decision (p. 13) that "claim 12 does not recite butt welding." The claim 4
recites that the fame and wall are welded, but is silent as to how they are 5
welded, and as such is met by offset welding. Nor are we persuaded by 6
Appellants' assertion (Rehearing 2) that the edges cannot be offset because 7
they are facing. We find Appellants to be providing a narrower definition of 8
facing than is required by the claim. For example, people in an auditorium 9
may face the stage. However, this does not mean that an axis running 10
through the person facing the stage also passes through a person on the 11
stage. Rather, the person may be facing the stage as a whole. In any event, 12
even if we are wrong in our interpretation of the language in the claim, as 13
Appellants have asserted, claim 12 is still met by the prior art for the reasons 14
which follow. 15
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being 16
unpatentable over Wenning in view of Just (Answer 3). As we noted in our 17
Decision (p. 15) , "appellants do not argue the teachings of Just. From the 18
disclosure of Just of using a butt weld to secure the facing edges of a sink 19
that is fabricated out of metal using seamless weld (col. 1, lines 7 and 8 and 20
36 and 37), we agree with the examiner that an artisan would have been 21
motivated to weld facing elements in the structure of Wenning." 22
Accordingly, from the failure of Appellants to argue the teachings of Just, 23
and our findings with respect to the Just reference, we are not convinced of 24
any error on the part of the Examiner in rejecting claim 12 under 35 U.S.C. 25
Appeal 2007-1951
Application 10/392,140

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§ 103(a) as being unpatentable over Wenning in view of Just. 1
2
CONCLUSION OF LAW 3
We have granted Appellants' Request for Rehearing to the extent that 4
we have reconsidered our Decision of September 27, 2006. However, we 5
decline to make any changes to our ultimate decision affirming the rejection 6
of claims 10-13. 7
No time period for taking any subsequent action in connection with 8
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 9
REQUEST FOR REHEARING DENIED 10
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hh 20
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Francis C. Hand, Esq. 23
c/o Carella, Byrne, Bain, 24
Gilfillan, Cecchi, Stewart & Olstein 25
6 Becker Farm Road 26
Roseland, NJ 07068 27