Ex parte BRUSTLE et al,

Board of Patent Appeals and Interferences

Aug 26, 1999

08609991 (B.P.A.I. Aug. 26, 1999)

Application for patent filed February 29, 1996.1
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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KLAUS BRUSTLE,
HELMUT HOLLENSTEIN
and
ERICH ROCK
_____________
Appeal No. 99-1479
Application 08/609,9911
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and PATE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 99-1479
Application 08/609,991
A translation of this reference, prepared for the Patent 2
& Trademark Office, is forwarded to appellants herewith. All
citations in this decision to pages and lines of Grass AG are
to pages and lines of the translation.
2
This is an appeal from the final rejection of claims
14 to 16, 22, 23, 30, 32, 33, 35 and 36. Of the other claims
remaining in the application, claims 17 to 21, 27 and 34 stand
withdrawn from consideration under 37 CFR § 1.142(b) as being
directed to nonelected species, and claims 24 to 26, 28, 29
and 31 have been indicated as being allowable if rewritten in
independent form.
The claims on appeal, which are reproduced in the
appendix of appellants' brief, are drawn to a pull-out guide
fitting (claims 14 to 16, 22 and 23), and a retaining plate
(claims 30, 32, 33, 35 and 36).
The reference applied in the final rejection is:
German Gebrauchsmuster 9,413,108 Feb. 23,
19952
(Grass AG)
A reference, of record, applied herein in rejections
pursuant to 37 CFR § 1.196(b) is:
Appeal No. 99-1479
Application 08/609,991
3
Rasmussen 5,275,483 Jan. 4, 1994
Claims 14 to 16, 22, 23, 30, 32, 33, 35 and 36 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Grass AG.
In order for a claim to be anticipated, every
limitation thereof must be disclosed, expressly or inherently,
in a single prior art reference. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). We will
therefore first consider whether the limitations of
independent claim 14 are disclosed by Grass AG.
Reading Grass AG in relation to claim 14, we find
that Grass AG discloses a pull-out guide for a drawer 2 in an
article of furniture (cabinet) 1, the guide having (i) a
supporting runner 3 which is mounted on the furniture body,
has upper and lower running flanges at the top and bottom of
member 14, and has a running member (roller) 13, and (ii) a
pull-out runner 4 which is mounted on the drawer by plate 9
and hook 35 (page 7, lines 4 to 6; page 9, lines 1 to 9), a
horizontal fin 18, and a running member 11 which is guided
between the upper and lower flanges of member 14. Roller 13
Appeal No. 99-1479
Application 08/609,991
4
runs on the upper (undulating) flange of pull-out runner 4 (as
shown in Figs. 6 and 7), and horizontal fin 18 projects below
the upper flange of member 14 to prevent upward lifting away
of the pull-out runner (page 4, lines 10 to 13; page 8, lines
10 to 14).
However, there are certain limitations of claim 14
which we do not find in Grass AG. First of all, claim 14
recites that the pull-out runner includes:
a lower fixing flange to be connected to
the drawer, a vertical flange extending
upwardly from said lower fixing flange, an
upper running flange extending from said
vertical flange, at least one horizontal
fin extending laterally from said vertical
flange, and a running member.
As discussed above, runner 4 of Grass AG includes a horizontal
fin 18 and a running member 11. Also, as shown in Fig. 2,
there is a vertical flange extending upwardly from the fin and
an upper running flange (the undulating flange with groove 15)
which extends from the vertical flange. Grass AG does not,
however, disclose "a lower fixing flange to be connected to
the drawer" from which this vertical flange extends upwardly,
Appeal No. 99-1479
Application 08/609,991
5
but rather, the fin 18 is at the lowermost point on the
vertical flange. The examiner asserts at pages 4 to 5 of the
answer that "the lower fixing flange can be considered to be a
horizontal part of fin (18)," but we do not agree, because the
horizontal fin is recited as "extending laterally from said
vertical flange," and the vertical flange as "extending
upwardly from said lower fixing flange." Element 18 of Grass
AG cannot be read both as the recited lower fixing flange and
as the horizontal fin, as the examiner apparently intends,
because both of the quoted limitations describing how the fin
and the vertical flange extend would not be met.
Another limitation of claim 14 not present in Grass
AG is the requirement for the upper running flange of the
pull-out runner to be "extending above and covering said upper
and lower running flanges of said supporting runner," since in
Grass AG the upper running flange (at 15) of pull-out runner 4
does not cover the upper and lower flanges of element 14 on
supporting runner 3, but instead extends in the opposite
direction. The examiner's statement on page 4 of the answer
that "the running flange (3) of each pull-out runner covers
Appeal No. 99-1479
Application 08/609,991
6
the two running flanges of the associated supporting runner
(14)" is not in accordance with the disclosure of Grass AG,
since element 3 of Grass AG is the supporting runner, not a
flange of the pull-out runner.
Accordingly, since Grass AG does not disclose every
limitation of claim 14, it does not anticipate either claim 14
or the claims dependent thereon, claims 15, 16, 22 and 23.
Turning to independent claim 30, we note that Grass
AG shows a plate 22 for mounting the end of supporting runner
3 to
cabinet 1, but item 22, while it appears from Fig. 9 to have
upper and lower tabs, is not described in sufficient detail to
determine whether it would meet all the limitations of claim
30. The examiner nevertheless apparently is of the opinion
that the
retaining plate recited in claim 30 is readable on some other
apparatus disclosed in Grass AG, since he states on page 5 of
the answer that "[w]ith claim 30, the upper retaining tab and
Appeal No. 99-1479
Application 08/609,991
7
lower retaining tab are shown in Figures 2-7," and also refers
to Fig. 11 with respect to features recited in dependent
claims 32 and 36. The examiner does not, however, "point[]
out where all of the specific limitations recited in the
rejected claims are found in the prior art relied upon in the
rejection." See MPEP § 1208, pages 1200-16 to -17, item
10(c)(7th Ed., July 1998).
We have reviewed Grass AG, but do not find where,
either in Figs. 2 to 7 or in Fig. 11, there is disclosed a
retaining plate having upper and lower retaining tabs and a
positioning structure, as defined in claim 30. The rejection
of claim 30, and of dependent claims 32, 33, 35 and 36,
therefore will not be sustained.
Rejections Pursuant to 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
(1) Claim 30 is rejected under 35 U.S.C. § 102(b) as
anticipated by Rasmussen, which discloses in Fig. 3 a
retaining plate 72 for mounting the end of a supporting runner
50 to the body of a
Appeal No. 99-1479
Application 08/609,991
8
cabinet 21. The walls above and below opening 74 of the plate
72 constitute tabs, as broadly recited, and the side walls are
a positioning structure to laterally support the end of runner
50.
(2) Claim 33 is rejected under 35 U.S.C. § 103 as unpatentable
over Rasmussen in view of Grass AG. To use lugs instead of
screws 79 to mount plate 72 would have been obvious in view of
Grass AG's disclosure at page 9, lines 14 to 16, that either
screws or lugs may be used to mount such a plate.
Conclusion
The examiner's decision to reject claims 14 to 16,
22, 23, 30, 32, 33, 35 and 36 is reversed. Claims 30 and 33
are rejected pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997,
by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,
1997),
1203 Off. Gaz. Pat. and Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides that "[a] new ground of
Appeal No. 99-1479
Application 08/609,991
9
rejection shall not be considered final for purposes of
judicial review."
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(37 CFR § 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. . . .
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED 37 CFR § 1.196(b)
Appeal No. 99-1479
Application 08/609,991
10
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
IAC:psb
Appeal No. 99-1479
Application 08/609,991
11
Wenderoth Lind and Ponack
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