Ex parte Boldt

Board of Patent Appeals and Interferences

Jan 31, 2001

08674911 (B.P.A.I. Jan. 31, 2001)

1
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not written for publication and is not binding precedent of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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY L. BOLDT
__________
Appeal No. 1999-2369
Application 08/674,911
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Gary L. Boldt appeals from the final rejection of claims
1 through 11, 13, 15, 24 through 31, 33, 35, 43 and 44.
Claims 12, 14, 16 through 18, 32, 34 and 36 stand objected to
as depending from rejected base claims. Claims 19 through 23,
the only other claims pending in the application, stand
withdrawn from consideration pursuant to 37 CFR § 1.142(b).
THE INVENTION
Appeal No. 1999-2369
Application 08/674,911
2
The subject matter on appeal relates to “door frame kits
to be assembled into door frames [and] to door frames
assembled from
such kits” (specification, page 1). Independent claim 1 and
its
dependent claims 2 through 11, 13 and 15 are drawn to a door
frame kit and independent claim 24 and its dependent claims 25
through 31, 33, 35, 43 and 44 are drawn to a door frame
assembly. A copy of these claims appears in the appendix to
the appellant’s main brief (Paper No. 12).
THE PRIOR ART
The references relied upon by the examiner to support the
final rejection are:
Passovoy 4,236,354 Dec. 2,
1980
Fast et al. (Fast) 5,572,840 Nov. 12,
1996
THE REJECTIONS
Appeal No. 1999-2369
Application 08/674,911
3
Claims 1, 2, 7, 8, 10, 11, 24, 25, 30, 31 and 43 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Passovoy.
Claims 3 through 6, 9, 26 through 29 and 44 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Passovoy.
Claims 13, 15, 33 and 35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Passovoy and Fast.
Attention is directed to the appellant’s main, reply and
supplemental reply briefs (Paper Nos. 12, 16 and 18) and to
the examiner’s answer (Paper No. 13) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection of claims 1, 2, 7, 8, 10,
11, 24, 25, 30, 31 and 43 as being anticipated by Passovoy
Anticipation is established only when a single prior art
reference discloses, expressly or under 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
Appeal No. 1999-2369
Application 08/674,911
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reference disclosure, as viewed by a person of ordinary 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). Passovoy discloses a door frame assembly 10 for
installation within an opening 14 in a building wall 16. The
assembly 10 includes a top frame member 19 and two side frame
members 18, 20 formed of identical metal extrusions. Each
extrusion consists of a central web 26 adapted to span the
width of the wall 16 and a pair of side flanges 27, 28 adapted
to extend around the edges of the wall 16 (see Figure 2).
Each extrusion also includes a plurality of slots extending
along its entire length for variously receiving and
positioning hinge plates 52, cover plates 58, a strike plate
24 and door stop pads 40.
Independent claims 1 and 24 recite a door frame kit and
assembly, respectively, comprising a top and two side members
for “attachment to building members which define a door
opening.” These claims also require each of the top and two
side members to comprise an elongate extruded metal structure
having a cavity therein and a substrate received in the
cavity.
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Application 08/674,911
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In rejecting claims 1 and 24 under 35 U.S.C. § 102(b),
the examiner has found (see page 3 in the answer) that
Passovoy’s top and side metal extrusions meet the claim
limitations relating to the elongate extruded metal structures
having cavities therein and that Passovoy’s building wall 16
meets the claim limitations relating to the substrates
received in the cavities. The examiner explains with respect
to the substrate limitations that “[t]he applicant has not
provided language in the claims to suggest the ‘substrates’ as
not being part of a wall or a separate entity from a building”
(answer, page 6).
As indicated above, however, claims 1 and 24 do contain
language distinguishing the substrates from building members
which define a door opening. Given the distinctions drawn by
the claims between the substrates and such building members, a
person of ordinary skill in the art would not view Passovoy’s
building wall 16 as meeting the substrate limitations. Since
Passovoy
does not disclose any other structure meeting these
limitations, the examiner’s determination that it constitutes
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Application 08/674,911
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an anticipatory reference with respect to the subject matter
recited in claims 1 and 24 is unsound.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claims 1 and 24, or of dependent claims
2, 7, 8, 10, 11, 25, 30, 31 and 43, as being anticipated by
Passovoy.
II. The 35 U.S.C. § 103(a) rejection of claims 3 through 6, 9,
26 through 29 and 44 as being unpatentable over Passovoy and
the 35 U.S.C. § 103(a) rejection of claims 13, 15, 33 and 35
as being unpatentable over Passovoy and Fast
In addition to not disclosing a door frame kit or
assembly comprising substrates of the type recited in
independent claims 1 and 24, Passovoy also would not have
suggested same to one of ordinary skill in the art. Fast’s
disclosure of a window frame having a hinged nailing strip
does not cure this deficiency.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of dependent claims 3 through 6, 9, 26
through 29 and 44 as being unpatentable over Passovoy or the
standing 35
Appeal No. 1999-2369
Application 08/674,911
1 The subject matter recited in appealed claims 27 and 28, as well as in
objected to claims 17 and 18, is not consistent with the underlying
specification. More specifically, the specification describes an extruded
metal wall thicknesses of at least about 0.03 inch (see pages 5, 10 and 11) as
opposed to the at least about 0.02 inch thicknesses recited in claims 27 and
28. In addition, the description of Figure 7 in the specification (see pages
13 and 14) does not provide clear antecedent basis (see 37 CFR § 1.175(d)(1))
for much of the terminology set forth in claims 17 and 18 which presumably
read on the Figure 7 embodiment. These discrepancies are deserving of
correction.
7
U.S.C. § 103(a) rejection of claims 13, 15, 33 and 35 as being
unpatentable over Passovoy and Fast.1
III. Additional matter for consideration
Upon return of the application to the technology center,
the examiner should consider reevaluating the patentability of
the appellant’s claims in view of the other prior art
references of record. By way of example, U.S. Patent No.
4,531,337 to Holdiman appears to be particularly relevant to
the subject matter recited in appealed claims 1 and 24.
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Application 08/674,911
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SUMMARY
The decision of the examiner to reject claims 1 through
11, 13, 15, 24 through 31, 33, 35, 43 and 44 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2369
Application 08/674,911
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JPM/kis
THOMAS D. WILHELM
100 W. LAWRENCE
THIRD FLOOR
APPLETON, WI 54911