Ex parte Botting

Board of Patent Appeals and Interferences

Mar 29, 2001

09268925 (B.P.A.I. Mar. 29, 2001)

On February 22, 2001, the appellant waived the oral1
hearing (see Paper No. 10) scheduled for March 21, 2001.
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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM ANDREW BOTTING
____________
Appeal No. 2000-2175
Application No. 09/268,925
____________
ON BRIEF1
____________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB and
NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection (Paper No. 5, mailed December 2, 1999) of claims 1
to 15, which are all of the claims pending in this
application.
Appeal No. 2000-2175
Application No. 09/268,925
We REVERSE.
Appeal No. 2000-2175 Page 3
Application No. 09/268,925
In the final rejection, the examiner rejected claims 1-2
3, 6, 7, and 9 under 35 U.S.C. § 102(b) as being anticipated
by Ono. In our discussion below with regard to this ground of
(continued...)
BACKGROUND
The appellant's invention relates to a folded and hinged
plastic connector for use with heating, ventilation and air
conditioning (HVAC) duct work (specification, p. 1). A copy
of the claims under appeal is set forth 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:
Meyer, Jr. (Meyer) 3,578,026 May 11,
1971
Ono et al. (Ono) 4,891,471 Jan. 2,
1990
Botsolas 5,158,114 Oct. 27,
1992
The following grounds of rejection are set forth in the
examiner's answer (Paper No. 8, mailed April 21, 2000):
1. Claims 1-3, 6, 7, 9, and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ono.2
Appeal No. 2000-2175 Page 4
Application No. 09/268,925
(...continued)2
rejection we will treat claims 1-3, 6, 7, 9, and 15 as being
rejected under both 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
2. Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Meyer.
3. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ono.
4. Claims 11-14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Botsolas.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection and the
answer for the examiner's complete reasoning in support of the
rejections, and to the brief (Paper No. 7, filed April 3,
2000) for the appellant's arguments thereagainst.
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
Appeal No. 2000-2175 Page 5
Application No. 09/268,925
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 2000-2175 Page 6
Application No. 09/268,925
The rejections based on Ono
We will not sustain the rejection of claims 1-4, 6, 7, 9,
10 and 15 based on Ono.
A prior art reference anticipates a claim only if the
reference discloses, either expressly or inherently, every
limitation of the claim. See Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
1987). Absence from the reference of any claimed element
negates anticipation. See Kloster Speedsteel AB v. Crucible,
Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed. Cir. 1986).
Similarly, a case of obviousness is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993).
The issue raised by the appellant and the examiner in this
appeal is whether the claim phrase "HVAC plastic duct
connector," which appears in the preamble of independent claims
1 and 7, is or is not an affirmative limitation of the claim.
Appeal No. 2000-2175 Page 7
Application No. 09/268,925
The examiner has interpreted the claim as drawn to the subject
matter of a duct connector of general utility and gave no
meaning to the word "HVAC." On this basis, the examiner
concluded that the Ono patent, which admittedly discloses only
a wiring harness protector, anticipated or rendered obvious the
appellant's claims 1 and 7. The appellant urges that the
examiner erred in failing to limit the claims at issue to a
HVAC plastic duct connector.
"[A] claim preamble has the import that the claim as a
whole suggests for it." See Bell Communications Research, Inc.
v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d
1816, 1820 (Fed. Cir. 1995). Where an appellant uses the claim
preamble to recite structural limitations of his claimed
invention, the USPTO and courts give effect to that usage. See
id.; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).
Conversely, where an appellant defines a structurally complete
invention in the claim body and uses the preamble only to state
a purpose or intended use for the invention, the preamble is
not a claim limitation. See Bell Communications, 55 F.3d at
Appeal No. 2000-2175 Page 8
Application No. 09/268,925
620, 34 USPQ2d at 1820; Kropa v. Robie, 187 F.2d 150, 152, 88
USPQ 478, 481 (CCPA 1951).
The determination of whether preamble recitations are
structural limitations or mere statements of purpose or use
"can be resolved only on review of the entirety of the
application to gain an understanding of what the inventor
actually invented and intended to encompass by the claim. See
Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. The
inquiry involves examination of the entire application record
to determine what invention the appellant intended to define
and protect. See Bell Communications, 55 F.3d at 621, 34
USPQ2d at 1821 (looking to patent specification to determine
whether claimed invention includes preamble recitations); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994) (examining "patent as a whole"); Vaupel Textilmaschinen
KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 880, 20 USPQ2d
1045, 1053 (Fed. Cir. 1991) (looking to claims, specification,
and drawings); Gerber Garment Tech., Inc. v. Lectra Sys., Inc.,
916 F.2d 683, 689, 16 USPQ2d 1436, 1441 (Fed. Cir. 1990)
(noting that preamble recitations provided antecedent basis for
Appeal No. 2000-2175 Page 9
Application No. 09/268,925
terms used in body of claim); Corning Glass Works, 868 F.2d at
1257, 9 USPQ2d at 1966 (considering the specification's
statement of the problem with the prior art); Kropa, 187 F.2d
at 152, 88 USPQ at 481 (noting that preamble sets out distinct
relationship among remaining claim elements).
Inspection of the entire record in this case reveals that
"HVAC plastic duct connector" is, in fact, a structural
limitation of claims 1 and 7. To begin with, the term "HVAC"
was added to the preamble of claims 1 and 7 in the amendment
filed on September 14, 1999 (Paper No. 4) to distinguish those
claims from the applied prior art. Additionally, the
appellant's specification clearly indicates that the inventor
was working on a particular problem concerning HVAC duct
connectors used in heating, ventilation and air conditioning
systems (i.e., systems that use a network of ducts to deliver
the heated and/or cooled air to various rooms and spaces within
a building structure) and not general improvements to all
ducts. In our opinion, to read claims 1 and 7 indiscriminately
to cover all types of ducts would be divorced from reality.
The invention so described is restricted to those HVAC plastic
Appeal No. 2000-2175 Page 10
Application No. 09/268,925
duct connectors that work to deliver heated and/or cooled air
to various rooms and spaces within a building structure, which
is not true with respect to all duct connectors recited in just
the body of claims 1 and 7. Thus, we conclude that the claim
preamble in this instance does not merely state a purpose or
intended use for the claimed structure. Rather, those words do
give "life and meaning" and provide further positive
limitations to the invention claimed.
In view of the above-noted determinations, we conclude
that the wiring harness protector of Ono does not anticipate or
render obvious the subject matter of claims 1 and 7.
Accordingly, the decision of the examiner to reject independent
claims 1 and 7, and claims 2-4, 6, 9, 10 and 15 dependent
thereon, based on Ono is reversed.
The rejection based on Meyer
We will not sustain the rejection of claims 1-3 and 5-9
under 35 U.S.C. § 102(b) as being anticipated by Meyer.
Appeal No. 2000-2175 Page 11
Application No. 09/268,925
In view of the determinations made above that the words
"HVAC plastic duct connector" as recited in claims 1 and 7 do
give "life and meaning" and provide further positive
limitations to the invention claimed, we conclude that the hose
jacket of Meyer does not anticipate the subject matter of
claims 1 and 7. Accordingly, the decision of the examiner to
reject independent claims 1 and 7, and claims 2, 3, 5, 6, 8 and
9 dependent thereon, based on Meyer is reversed.
The rejection based on Botsolas
We will not sustain the rejection of claims 11-14 under
35 U.S.C. § 103(a) as being unpatentable over Botsolas.
The record is clear that the examiner has given little or
no patentable weight to the "providing" step of claim 11 or the
"connecting" steps of claim 11 (see answer, p. 5). This is
clearly in error. Under 35 U.S.C. § 103 all words in a claim
must be considered in judging the patentability of that claim
against the prior art. In re Wilson, 424 F.2d 1382, 1385, 165
USPQ 494, 496 (CCPA 1970). Furthermore, it is well established
that the materials on which a process is carried out must be
Appeal No. 2000-2175 Page 12
Application No. 09/268,925
accorded weight in determining the obviousness of that process.
See In re Pleuddemann, 910 F.2d 823, 825-28, 15 USPQ2d 1738,
1740-42 (Fed. Cir. 1990); In re Kuehl, 475 F.2d 658, 664-65,
177 USPQ 250, 255 (CCPA 1973); Ex parte Leonard, 187 USPQ 122,
124 (Bd. App. 1974). In our view, the case law clearly
establishes that the position of the examiner in this case is
in error. That is, the particular structure recited in the
"providing" step of claim 11 cannot be ignored under 35 U.S.C.
§ 103. Likewise, the particular structure recited in the
"connecting" steps of claim 11 cannot be ignored under 35
U.S.C. § 103. When that structure is given weight as required
under 35 U.S.C. § 103, it is clear that the examiner has not
established that the subject matter of claim 11 would have been
obvious at the time the invention was made to a person having
ordinary skill in the art. For example, connecting the
plastic duct connector at one end to heating, ventilation or
air conditioning duct work and connecting the plastic duct
connector at another end thereof, to a register opening or
other heating, ventilation or air conditioning duct work is not
taught by Botsolas and the examiner has not set forth any basis
as to why such limitations would have been obvious at the time
Appeal No. 2000-2175 Page 13
Application No. 09/268,925
the invention was made to a person having ordinary skill in the
art from the teachings of Botsolas.
For the reasons set forth above, the decision of the
examiner to reject claims 11-14 under 35 U.S.C. § 103(a) as
being unpatentable over Botsolas is reversed.
Appeal No. 2000-2175 Page 14
Application No. 09/268,925
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 15 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-2175 Page 15
Application No. 09/268,925
KILLWORTH GOTTMAN HAGAN & SCHAEFF
ONE DAYTON CENTRE
ONE SOUTH MAIN STREET
SUITE 500
DAYTON, OH 45402-2023
Appeal No. 2000-2175 Page 16
Application No. 09/268,925
JVN/jg