Ex parte Bonner

Board of Patent Appeals and Interferences

Oct 27, 1999

08422840 (B.P.A.I. Oct. 27, 1999)

Application for patent filed April 17, 1995. 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL J. BONNER
____________
Appeal No. 1998-1454
Application No. 08/422,8401
____________
HEARD October 18, 1999
____________
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 through 20, which are all of the claims
pending in this application.
Appeal No. 1998-1454
Application No. 08/422,840
We REVERSE.
Appeal No. 1998-1454 Page 3
Application No. 08/422,840
The examiner's objection to the drawings under 37 CFR §§ 1.83 and 1.842
relates to a matter petitionable under 37 CFR § 1.181 and not to an appealable
matter. See Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
Accordingly, we decline to review the first issue identified on page 6 of the
brief.
BACKGROUND
The appellant's invention relates to a cranking device.
An understanding of the invention can be derived from a
reading of exemplary claims 1, 13 and 14, which appear in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Seliger et al. (Seliger) 4,083,259 Apr.
11, 1978
Schuitema 4,807,855 Feb.
28, 1989
The following rejections are before us for review.2
1. Claims 1 through 20 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
2. Claims 1 through 12 and 14 through 20 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Seliger.
Appeal No. 1998-1454 Page 4
Application No. 08/422,840
3. Claims 1 through 9 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Schuitema.
Reference is made to the brief (Paper No. 12) and reply
brief (Paper No. 15) and the final rejection (Paper No. 5) and
answer (Paper No. 13) for the respective positions of the
appellant and the examiner with regard to the merits of these
rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
Initially, we note that the claims are clearly directed
to a cranking device and not to the combination of a cranking
device and a winch. Thus, to the extent that the examiner's
comments on pages 5 and 6 of the answer suggest that the
claims are ambiguous in this regard, we do not agree.
Appeal No. 1998-1454 Page 5
Application No. 08/422,840
With regard to the lack of antecedent basis of "said
socket" in claims 10 and 14 discussed on page 3 of the final
rejection, it appears to us that the amendment to claim 10
filed March 10, 1997 after the final rejection, which has been
entered, resolves this problem with respect to claim 10. As
for claim 14, we note that "a socket" is recited in line 4
thereof, thereby providing antecedent basis for "the socket"
in lines 5 and 6 and "said socket" in line 7.
In rejecting claims 1 through 20 under 35 U.S.C. § 112,
second paragraph, the examiner contends that words of degree,
such as (a) "a loose fitting relationship" in claim 1, (b)
"low torque" in claims 1 and 13 and (c) "substantially
perpendicularly" in claims 12 and 13, are indefinite since the
specification does not provide a standard for measuring said
degree.
When a word of degree is used the PTO must determine
whether the applicant's specification provides some standard
for measuring that degree. The PTO must decide, that is,
whether one of ordinary skill in the art would understand what
is claimed when the claim is read in light of the
specification. See Seattle Box Company, Inc. v. Industrial
Appeal No. 1998-1454 Page 6
Application No. 08/422,840
Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-
74 (Fed. Cir. 1984). In the present case, we have reviewed
the appellant's disclosure to help us determine the meaning of
the above-noted terminology.
With regard to the "loose fitting relationship," the
specification, at page 6, states that
[d]ue to its relative size, the socket easily slips
onto the enlarged end 108 of the crankable shaft in
a loose fitting relationship, and were it not for
the locking means 8 the socket would be rotatable
relative to the enlarged shaft end.
Further, claim 1 recites that the engagement member is
engageable with an end of the shaft "in a loose fitting
relationship such that the engagement member may be rotated
relative to the shaft."
From this disclosure, we are of the opinion that one of
ordinary skill in the art would have understood "loose fitting
relationship" to denote a non-constraining type of engagement
which permits rotation between the end of the shaft and the
engagement member and, accordingly, would have understood the
metes and bounds of this limitation.
As for the "low torque" limitation, the appellant's
specification, at page 7, makes clear that the cranking handle
Appeal No. 1998-1454 Page 7
Application No. 08/422,840
Webster's New World Dictionary, Third College Edition (Simon &3
Schuster, Inc. 1988).
member is to be gripped and cranked by an operator. From our
viewpoint, one of ordinary skill in the art would have
understood from this disclosure that "low torque" as used in
the claims refers to torque levels of an order which is
attainable manually.
As for the "substantially perpendicularly" limitation,
the term "perpendicular" has the universally recognized and
accepted meaning of "at right angles to a given plane or
line." This, we assume, is not in dispute. Further, this is3
consistent with the appellant's disclosure. Specifically, the
appellant's specification, at page 7, refers to a second
handle member (6) extending perpendicularly to a first handle
member (4). Moreover, Figures 1 and 3 depict the second
handle member (6) extending at what appears to be a right
angle from the first member (4). While it is true that
"substantially" and other similar words are sometimes
construed liberally to avoid unduly restricting a patent
claim, the imprecision of such a word cannot be allowed to
negate the meaning of the words it modifies. The use of the
Appeal No. 1998-1454 Page 8
Application No. 08/422,840
modifier "substantially" in the context of claims 12 and 13,
we think, was intended to allow for irregular deviations from
a perfectly perpendicular orientation and not to broaden the
scope of "perpendicular" to encompass orientations of the
second handle member relative to the first handle member which
are distinctly not perpendicular by design. Arvin Industries,
Inc. v. Berns Air King Corp., 525 F.2d 182, 185, 188 USPQ 49,
51 (7th Cir. 1975). See also Amhil Enterprises, Ltd. v. Wawa,
Inc., 81 F.3d 1554, 1562, 38 USPQ2d 1471, 1476 (Fed. Cir.
1996) (In view of specification, prosecution history, and
prior art, "substantially vertical face" in the patent's claim
must be construed as the same as or very close to "vertical
face."). Therefore, we do not agree with the examiner that
"substantially perpendicularly" renders the claims indefinite.
The examiner also finds terms such as "engageable,"
"crankable," "rotatable" and "movable" vague and indefinite
"in the sense that things which may be done are not required
to be done." While we agree with the examiner that these
terms are directed to actions which may be done but are not
required to be done, it is not apparent to us why this
attribute renders these terms indefinite. These terms do
Appeal No. 1998-1454 Page 9
Application No. 08/422,840
See, e.g, In re Venezia, 530 F.2d 956, 958-59, 189 USPQ 149, 152 (CCPA4
1976) (Claims directed to a "kit" of components, which may or may not be
assembled in the future, and defining the structures of the components in
terms of the interrelationships or attributes they must possess in the
completed assembly, if assembled, complied with 35 U.S.C. § 112, second
paragraph.).
impart structural limitations to the claimed cranking device
in that, to satisfy these limitations, a device must be
capable of permitting the function or action called for in the
term; however, it is not necessary that the device actually
perform the function in question or be used in such a manner
that the function is performed thereon. For example, the4
language "selectively engageable with an end of the crankable
shaft of the winch" limits the structure of the cranking
device such that it is constructed and configured so as to
permit the engagement member to engage an end of a shaft of a
winch.
For the foregoing reasons, we shall not sustain the
examiner's rejection of claims 1 through 20 under 35 U.S.C.
§ 112, second paragraph.
Appeal No. 1998-1454 Page 10
Application No. 08/422,840
The anticipation rejections
Turning first to the examiner's rejection of claims 1
through 12 and 14 through 20 under 35 U.S.C. § 102(b) as being
anticipated by the Seliger patent, Seliger (Figure 2)
discloses an apparatus for cranking the rotor of a turbo
machine, the apparatus comprising a drive shaft (27) rotatably
mounted in a sleeve (24) and having a friction wheel (26) on
one end thereof for engagement with the rotor cranking surface
(23). The sleeve and drive shaft are mounted in a housing
(31) having an arresting means (22) at one end thereof for
fixing the apparatus in an opening (24') of the compressor
casing at an angle. The apparatus is provided with a thrust
piece (34) biased by a coil spring against the sleeve (24). A
nut (33) screwed over a tubular extension (32) is used to
adjust the preload on the coil spring to thereby adjust the
contact pressure of the friction wheel on the rotor surface.
A square-head pin-type extension (18) of the drive shaft
extends through a handle (12') provided with a flange (17). A
crank apparatus (Figure 1A) provided with a crank (41), a
fitting (40) having a square-shaped socket adapted to
accommodate the extension (18) and a casing (44) is secured to
Appeal No. 1998-1454 Page 11
Application No. 08/422,840
the flange (17) to rotate the drive shaft (27) and friction
wheel (26) to thereby rotate the rotor.
In rejecting the claims, the examiner's position is that
Seliger's housing (31), handle (12') and spring, tubular
extension and thrust pin (28, 32, 34) respond, respectively,
to the engagement member, handle and locking means of the
appellant's claims (final rejection, page 4). For the reasons
which follow, we do not agree with the examiner that Seliger
anticipates the claims.
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).
While we acknowledge that the claims recite only the
cranking device and do not include the winch, the examiner
cannot ignore the limitations that the engagement member be
"engageable" (i.e., capable of engaging) an end of the
crankable shaft of a winch (claims 1 through 12 and 14 through
20) and a locking means for locking the engagement member onto
the end of the crankable shaft of the winch (claims 1 through
Appeal No. 1998-1454 Page 12
Application No. 08/422,840
12). To anticipate the claims, the Seliger apparatus, as a
whole, must be configured and constructed to permit these
functions and relationships.
Seliger's housing (31) is not engageable with an end of a
crankable shaft of a winch as required by the claims, because
the sleeve (24) and drive shaft (27) of the apparatus extend
outwardly from one end thereof and the handle (12') is
provided at the other end thereof. Further, the thrust member
(34) and
spring (28) act internally of the housing (31) to engage the
sleeve (24) and are not capable of locking the housing onto
the end of a crankable shaft of a winch as required by the
claims.
While the examiner did not rely on this portion of Seliger
in rejecting the claims, we do note that Seliger discloses a
cranking device comprising a crank (41) and a fitting (40)
having a square-shaped socket for engaging the square-shaped
pin extension (18) of the drive shaft (27). However, while
the fitting socket may be capable of being engaged with an
appropriately sized cylindrical shaft of a winch "in a loose
fitting relationship such that the engagement member may be
Appeal No. 1998-1454 Page 13
Application No. 08/422,840
rotated relative to the shaft," the cranking device lacks a
locking means for locking the socket fitting onto the end of
such a shaft "in the loose fitting relationship such that the
shaft may be cranked together with the engagement member" as
required by claims 1 through 12. Similarly, the device lacks
the spacer means required in claims 14 through 20.
For the foregoing reasons, we shall not sustain the
examiner's rejection of claims 1 through 12 and 14 through 20
under 35 U.S.C. § 102(b) as being anticipated by Seliger.
Turning now to the examiner's rejection of claims 1
through 9 under 35 U.S.C. § 102(b) as being anticipated by the
Schuitema patent, Schuitema discloses a gas cylinder plunger
lock for a pneumatic cylinder of the type commonly employed in
assisting movement of doors or lids on vehicles or machines,
such as trunk or hatchback lids, and for retaining such in one
position, usually the open position (column 1, lines 5 to 11).
The disclosed apparatus comprises a pneumatic cylinder (12)
having a piston (17) and rod (16) extending therefrom. The
cylinder is provided at one end thereof with a connector (14)
for connection to a vehicle or the like. A cover tube (20) is
fixed about the piston rod by means of, for example, threading
Appeal No. 1998-1454 Page 14
Application No. 08/422,840
a socket connector (18) onto a threaded stud (16') of the rod
passed through an orificed end (20') of the cover tube (as
shown in Figure 4). A plunger lock assembly comprises a
tubular body (26) welded to the cover (20) and extending
outwardly therefrom, a plunger (28) attached to a grippable
knurled knob (30) and a coil spring (32) which biases the
plunger (28) into the path of the cylinder so as to prevent
further movement of the cylinder (12) into the cover tube
(20), thereby retaining the device in the open condition. The
knurled knob enables the plunger (28) to be manually retracted
out of the path of the cylinder to allow the cylinder to move
telescopically further into the cover tube (20) to reach a
closed condition.
In rejecting claims 1 through 9, the examiner's position
is that Schuitema's cover tube (20), cylinder (12) and plunger
lock assembly (26, 28, 30, 32) respond to the engagement
member, handle and locking means, respectively, of claim 1
(final rejection, page 5).
Initially, we find the examiner's suggestion that the
cylinder (12) is a cranking handle for cranking the cover tube
(20) manifestly unreasonable. Moreover, with the cylinder
Appeal No. 1998-1454 Page 15
Application No. 08/422,840
(12), which also comprises a piston/rod (17,16) extending
therefrom, installed on the device, the piston rod extends
through the cover tube (20) and is threadedly connected at the
end thereof to a connector (18). Thus, it is not apparent to
us how the plunger lock assembly can possibly lock the cover
tube onto a shaft of a winch as required by the claims.
Accordingly, we shall also not sustain the examiner's
rejection of claims 1 through 9 under 35 U.S.C. § 102(b) as
being anticipated by Schuitema.
Appeal No. 1998-1454 Page 16
Application No. 08/422,840
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 20 under 35 U.S.C. § 112, second paragraph,
and claims 1 through 12 and 14 through 20 under 35 U.S.C. §
102(b) is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-1454 Page 17
Application No. 08/422,840
JDB/pgg
Carrier, Blackman & Associates, P.C.
24101 Novi Road
Suite 100
Novi, MI 48375