Ex parte Booth et al.

Board of Patent Appeals and Interferences

Apr 9, 1999

08325361 (B.P.A.I. Apr. 9, 1999)

Application for patent filed December 12, 1994. 1
According to appellants, this application is a U.S. national
stage application, PCT/GB93/00893, filed April 29, 1993, under
35 U.S.C. § 371.
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte IAN A. BOOTH,
DAVID H. ATTON, ROBERT W. INCE,
and STEPHANIE M. HICKFORD
__________
Appeal No. 98-1295
Application 08/325,3611
__________
ON BRIEF
__________
Before ABRAMS, STAAB, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1295
Application No. 08/325,361
2
This is an appeal from the decision of the examiner
finally rejecting claims 1-3 and 5-17. Claim 4, the only
other claim of record, has been indicated as containing
allowable subject matter.
The appellants’ invention is directed to a blast
attenuating container. The subject matter before us on appeal
is illustrated by reference to claim 1, which reads as
follows:
1. A blast attenuating container comprising:
a number of panels, at least one of which has blast
attenuating properties,
the panels being joined together to form an enclosure by
joint means for providing a relatively rigid joint between
joined panels under normal handling loads and for providing a
relatively flexible hinged joint capable of transmitting
tensile loads between joined panels under blast conditions.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Powell, Jr. (Powell) 2,489,670 Nov. 29, 1949
Veenema 3,989,157 Nov. 2, 1976
Norton 4,162,341 Jul. 24, 1979
Kupersmit 4,860,912 Aug. 29,
1989
Lee (PCT) WO 91/07337 May 30, 1991
Appeal No. 98-1295
Application No. 08/325,361
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THE REJECTIONS
The following rejections stand under 35 U.S.C. § 102(b):
(1) Claims 1, 2, 5, 15 and 17 on the basis of Veenema or
Powell.
(2) Claims 3 and 6-8 on the basis of Veenema.
The following rejections stand under 35 U.S.C. § 103:
(1) Claim 9 on the basis of Veenema and Lee.
(2) Claim 10 on the basis of Powell.
(3) Claims 11, 13 and 14 on the basis of Veenema or Powell,
each in view of Lee.
(4) Claim 12 on the basis of Veenema or Powell, each in view
of Lee and Norton.
(5) Claim 16 in view of Veenema or Powell, each in view of
Kupersmit.
The rejections are explained in the Examiner's Answer.
The arguments advanced by the appellants are set forth in
the Brief and the Reply Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
Appeal No. 98-1295
Application No. 08/325,361
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examiner and the appellants as set forth in the Answer and the
Briefs.
The Rejections Under 35 U.S.C. § 102(b)
It is axiomatic that anticipation under 35 U.S.C. §
102(b) is established only when a single prior art reference
discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention.
See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481, 31
USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). It is the
examiner’s view that independent claim 1 is anticipated by
both Veenema and Powell. We do not agree, and therefore we
will not sustain the rejection of claim 1 or, it follows, of
claims 2, 3, 5-8, 15 and 17, which depend therefrom. Our
reasons for arriving at this conclusion follow.
Claim 1 recites a number of panels, at least one of which
has blast attenuating properties, and states that the panels
be
joined together to form an enclosure by joint means that
provide a relatively rigid joint between joined panels under
normal handling loads and “a relatively flexible hinged joint
Appeal No. 98-1295
Application No. 08/325,361
5
capable of transmitting tensile loads between joined panels
under blast conditions.” This requirement of the claim is
not, in our opinion, disclosed or taught by either Veenema or
Powell.
Veenema is directed to a container assembly for a
transportation vehicle, and its objective is to assemble the
plurality of panels that comprise the container in mutually
perpendicular planes without the use of fastening devices such
as bolts or rivets (column 1, lines 4-9). The reference
contains no mention of the problem of attenuating the force of
a blast that occurred in the container. The assembled
container is shown in Figure 1. The manner in which the
panels are attached together is best shown in Figure 2,
wherein side panel 14 is attached to top panel 18 by inserting
the edges of each in moldings 60 which are installed in a
right-angled rail 40. Inwardly-facing teeth 64, which can be
augmented by an adhesive, permanently grip the edges of the
plywood panels when they are inserted into the moldings
(column 2, line 35 et seq.). While we do not quarrel with the
examiner’s position that this joint means provides a
relatively rigid joint between joined panels under normal
Appeal No. 98-1295
Application No. 08/325,361
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handling loads, we agree with the appellants that there is no
evidence that this joint also provides a “relatively flexible
hinged joint capable of transmitting tensile loads between
joined panels under blast conditions,” as is required by the
claim. There is no explicit recitation in the reference that
the joint would behave in such a fashion. The examiner’s
conclusion that the Veenema joint “will flex under some blast
conditions” is not supported by evidence and is not, from our
perspective, a mode of operation that would be apparent to one
of ordinary skill in the art from a review of the disclosure
of the invention. Thus, it can only be regarded as
speculation, which cannot form the basis for a rejection.
The same applies to Powell, which is directed to a truck
body that can be shipped in the knocked-down state and then
quickly assembled. There is no concern voiced for attenuating
the force of a blast that has occurred in the container. The
joint, shown in Figures 3, 6 and 9, would appear to meet the
first portion of the applicable requirement of claim 1, that
is, that it is relatively rigid under normal handling loads.
However, there is no evidentiary basis from which to conclude
that it also provides a relatively flexible hinged joint
Appeal No. 98-1295
Application No. 08/325,361
The test for obviousness is what the combined teachings2
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
7
capable of transmitting tensile loads between joined panels
under blast conditions.
The Rejections Under 35 U.S.C. § 103
All five of these rejections pertain to claims that
ultimately depend from claim 1, and all utilize as the primary
reference either Veenema or Powell. Considering the
disclosures and teachings of these two references from the
standpoint of obviousness under Section 103, it is our view2
that the problem with each reference discussed above still
exists. Even taking into account the teachings of Lee, Norton
and Kupersmit, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the
art to provide the joint means of Veenema or Powell with such
modifications as would permit them to be relatively flexible
and capable of transmitting tensile loads between joined
panels under blast conditions. The only suggestion for doing
so is vested in the hindsight accorded one who first viewed
the appellants’ disclosure, and in that manner determining the
Appeal No. 98-1295
Application No. 08/325,361
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existence of the problem and the solution thereto. This, of
course, is improper as the basis for a rejection. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
We therefore will not sustain any of the Section 103
rejections.
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-1295
Application No. 08/325,361
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Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
tdc
Appeal No. 98-1295
Application No. 08/325,361
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