Ex Parte Boldizar

Board of Patent Appeals and Interferences

Jun 28, 2002

08964496 (B.P.A.I. Jun. 28, 2002)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LASLO L. BOLDIZAR
____________
Appeal No. 2002-0220
Application No. 08/964,496
____________
ON BRIEF
____________
Before FRANKFORT, STAAB and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4, 6,
7, 9-12, 14, 15 and 17-20. Claims 5, 8, 13 and 16, the only other claims pending in this
application, stand objected to as depending from a rejected base claim but have been
indicated as containing allowable subject matter.
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Application No. 08/964,496
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BACKGROUND
The appellant's invention relates to a safety tool for preventing falling movement
of an automobile window which has been disengaged from its normally attached
window-height regulator (specification, page 2). Representative claims 1, 9 and 17
read as follows:
1. A tool for supporting and preventing sudden downward
movement of a vehicle door window, the window including a
glass panel disposed for free-moving vertical movement in a
window channel bounded by inner and outer door panels,
the window tool comprising
a frame,
first and second suction cups, mounted on the
support frame in a spaced arrangement, for removably
clamping the tool to the window glass panel; and
first and second slides, mounted on the frame in a
spaced arrangement, for inserting a predetermined distance
into the window channel between the glass panel and one of
said door panels;
wherein the first and second suction cups, clamped to
the window panel, cooperate with the slides, inserted into
the window channel, and with the frame, to evenly support
and prevent sudden downward movement of the glass
panel.
9. A window-support tool for automobile door windows
disposed for free-moving vertical movement in a linear
channel in the automobile door, the tool comprising
a tool frame having a longitudinal dimension;
a pair of spaced suction cups mounted on the frame
for removably attaching the tool to the window glass panel;
and
Appeal No. 2002-0220
Application No. 08/964,496
Page 3
1 U.S. Pat. No. 5,398,602, issued March 21, 1995 to Kim S. Taylor.
a pair of slides, mounted on the frame, for engaging
the linear channel;
wherein the window is evenly supported in the
channel and prevented from sudden downward movement.
17. A tool for preventing sudden downward movement of a
vehicle door window, the window including a glass panel
disposed for free-moving vertical movement in a window
channel bounded by inner and outer door panels, the
window tool comprising
a frame;
attachment means disposed in the frame for
removably attaching the housing to the glass panel; and
channel support means disposed within the housing for
preventing downward movement of the frame below the
height of the window channel.
The following rejections are before us for review.
Claims 1-3, 7, 9-11, 15 and 17-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Taylor1.
Claims 4, 6, 12 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taylor.
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. 12) for the examiner's complete reasoning in support of the rejections and to
the brief (Paper No. 11) for the appellant's arguments thereagainst.
OPINION
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Application No. 08/964,496
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2 In so doing, the preambles of claims 1 and 9 are “necessary to give life, meaning, and vitality” to
the claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-
66 (Fed. Cir. 1999). See also Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the Taylor patent, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations which follow.
Independent claim 1 recites, in the preamble thereof, a tool for supporting and
preventing sudden downward movement of a vehicle door window including a glass
panel disposed for free-moving vertical movement in a window channel bounded by
inner and outer door panels and, in the body of the claim, “first and second slides ... for
inserting a predetermined distance into the window channel between the glass panel
and one of said door panels” (emphasis ours). Independent claim 9, likewise, recites,
in its preamble, a window-support tool for automobile door windows disposed for
vertical movement in a linear channel in the automobile door and, in the body thereof,
“a pair of slides ... for engaging the linear channel” wherein the window is evenly
supported in the channel and prevented from sudden downward movement.
In this instance, the preambles of claims 1 and 9 help define what is meant by
the “window channel” and “linear channel” referred to in the body of the claims and,
thus, impart structural limitations to the “slides” recited in the body of the claims.2 In
particular, the recited slides must be capable of being inserted into the window channel
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Application No. 08/964,496
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3 Under principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary skill. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
of a vehicle door window between the glass panel and one of the door panels (claim 1)
or capable of engaging the linear channel of an automobile door (claim 9).
The examiner’s reading of the claim elements on Taylor’s device is set forth on
page 3 of the answer. Appellant argues that the clamps 30 of Taylor’s registration
device for positioning a silk screen frame against a smooth, flat surface or panel have a
different structure and function than the slides 30, 32 of appellant’s invention and could
not be used in the same manner to support the vehicle window from falling (brief, page
6). The examiner identifies Taylor’s clamps 30 as slides but offers no rationale and
points to no teaching in Taylor to show that the clamps 30 are dimensioned so as to be
capable of insertion between the glass panel and door panels of a vehicle door to
engage the window channel. Taylor certainly does not teach such a use of the clamps
30 of the registration device and we find nothing in the teachings of Taylor which would
lead one skilled in the art to conclude that the clamps 30 of Taylor are inherently3
capable of achieving the function set forth in claims 1 and 9.
Anticipation is established only when a single prior art reference discloses,
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. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
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Application No. 08/964,496
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skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Having determined that Taylor does not disclose, either expressly or under the
principles of inherency, each and every element recited in claims 1 and 9, we are
constrained to reverse the examiner’s rejection of claims 1 and 9, as well as claims 2, 3,
7, 10, 11 and 15 which depend therefrom, as being anticipated by Taylor.
As discussed supra, the examiner has not set forth a basis to establish that
Taylor’s clamps 30 are capable of performing the functions called for in claims 1 and 9.
We find no suggestion in Taylor, and the examiner has not pointed to any such
suggestion, to modify the clamps 30 for such capability. Thus, we must also reverse
the examiner’s rejection of claims 4, 6, 12 and 14, which depend from claims 1 and 9,
as being unpatentable over Taylor.
We also shall not sustain the examiner’s rejection of claims 17-20. For the
reasons discussed in the new ground of rejection, infra, claims 17-20 are indefinite.
Therefore, the rejection of these claims as being anticipated by Taylor must fall
because it is necessarily based on speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). It
should be understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the adequacy of
the prior art evidence applied in support of the rejection.
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Application No. 08/964,496
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4 See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
NEW GROUND OF REJECTION
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new
ground of rejection.
Claims 17-20 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the invention.
The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994).
In claim 17, it is not clear what is meant by “attachment means disposed in the
frame.” While this attachment means might appear to correspond to the suction cups
disclosed in appellant’s specification, such structure is disclosed as being supported or
disposed on the frame and not in the frame (see, for example, Figures 3 and 5). As
such, this limitation presents an inexplicable inconsistency with the underlying
disclosure and thus renders the claim indefinite.4 Moreover, “the housing” lacks
antecedent basis in the claim. While we might speculate that “the housing” is intended
to refer to the tool or to the frame, this uncertainty renders the scope of the claim
indefinite. Finally, the language “channel support means” would seem to describe a
structure which supports a channel and thus does not appear to accurately describe
any structure disclosed in appellant’s specification. Consequently, one of ordinary skill
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Application No. 08/964,496
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in the art would not be able to determine with any certainty the metes and bounds of
claim 17. Claims 18-20 depend from claim 17 and are likewise indefinite.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-4, 6, 7, 9-12, 14,
15 and 17-20 is reversed and a new rejection of claims 17-20 under 35 U.S.C. § 112,
second paragraph, is entered pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b),
which 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. . . .
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Application No. 08/964,496
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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)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2002-0220
Application No. 08/964,496
Page 10
Kenneth L. Milik
Milik & Medeiros
Attorneys at Law
53 Main Street
Concord, MA 01742