Ex parte Buettiker

Board of Patent Appeals and Interferences

Aug 28, 2000

08675465 (B.P.A.I. Aug. 28, 2000)

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in a law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL BUETTIKER
____________
Appeal No. 1998-0484
Application No. 08/675465
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ON BRIEF
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Before ABRAMS, STAAB, and JENNIFER D. BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 and 11,
which are all of the claims pending in this application, claims 2-10 having been canceled.
We REVERSE.
Appeal No. 1998-0484 Page 2
Application No. 08/675465
BACKGROUND
The appellant's invention relates to a molten glass feeder. An understanding of the
invention can be derived from a reading of exemplary claim 1, which appears 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:
Barker, Jr. (Barker) 2,075,756 Mar. 30, 1937
Kirkman et al. (Kirkman) 4,305,747 Dec. 15, 1981
Claims 1 and 11 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Claims 1 and 11 also stand rejected under 35 U.S.C. § 103 as being unpatentable
over Kirkman in view of Barker.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 17) and the final rejection (Paper No. 15) for the examiner's complete reasoning in
support of the rejections, and to the Brief (Paper No. 16) and Reply Brief (Paper No. 18)
for the appellant's arguments thereagainst.
Appeal No. 1998-0484 Page 3
Application No. 08/675465
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 112, First Paragraph
The examiner has taken the position that the language of claim 1 which recites that
the oblong lower outlet opening is located completely “within” the circular upper inlet
opening is not supported by the disclosure, considering that the two openings are remote
from each other.
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). It would appear that the examiner believes the definition of “within”
should be so limited as to require that the two openings be in the same plane which, of
Appeal No. 1998-0484 Page 4
Application No. 08/675465
course, is not the case in the appellant’s disclosure. We do not agree. The appellant has
disclosed that the two openings in the spout bowl are in planes spaced vertically from one
another, as is shown in Figures 1 and 2. It is our view that one of ordinary skill in the art
readily would have understood from the disclosure that describing the lower outlet opening
as being “within” the upper inlet opening is intended to mean that it falls within the
perimeter of the upper opening when viewed along the axis of the spout bowl, for example,
looking down from the top, as in Figure 3.
This rejection is not sustained.
The Rejection Under 35 U.S.C. § 103
The examiner has taken the position that all of the subject matter recited in
claim 1 is taught by Kirkman, except for the particular relationship between the shapes of
the inlet and the outlet openings of the spout bowl. This, however, the examiner finds in
Barker, concluding it would have been obvious to replace the arrangement of Kirkman with
that of Barker.
The examiner bears the initial burden of presenting a prima facie case of
obviousness when rejecting claims under 35 U.S.C. § 103. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie 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.
Appeal No. 1998-0484 Page 5
Application No. 08/675465
See In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). It is
incumbent upon the examiner to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine reference teachings to arrive at
the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int.
1985). To this end, the requisite motivation must stem from some teaching, suggestion or
inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
It is our opinion that the examiner has not met these burdens, and we therefore will
not sustain the rejection. Our rationale for arriving at this conclusion follows.
In column 1, Kirkman explains that in apparatus which produce multiple gobs of
glass, control of the flow of the center streams has presented a problem due to the fact that
they are hotter than the outer streams, as has maintaining uniformity of flow. The
improvements offered in the Kirkman invention to overcome these problems include
providing a relatively small circular inlet opening at the top of the spout bowl and an
elongated outlet opening at the bottom. As clearly is shown in Figures 1 and 6, the oblong
outlet opening does not fall “within” the periphery of the circular inlet opening, but extends
beyond, with portions of the interior walls diverging from inlet to outlet.
Appeal No. 1998-0484 Page 6
Application No. 08/675465
This is coupled with a downwardly diminishing cross-sectional area from the circular inlet
opening to the oblong outlet opening (column 5). Barker discloses a glass feeder
apparatus with a single discharge opening rather than the multiple openings found in
Kirkman. Barker’s spout bowl has a circular inlet opening and an oblong outlet opening,
with the outlet opening being “within” the inlet opening, in the manner required by the
appellant’s claim 1. However, the mere fact that the Kirkman structure could be modified
does not make such a modification obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). Quite
frankly, we are unable to appreciate the relevance of the examiner’s statement, apparently
made to justify the proposed combination of references, that one of ordinary skill in the art
would do so because of “the reasonable expectation of providing for the discharge of
molten glass from the spout bowl and to control the flow of glass and to deliver a uniform
glass gob from the feeder” (final rejection, Paper No. 15, page 5). In any event, it is our
view that the artisan would not have been motivated to substitute the Barker arrangement
for that disclosed by Kirkman because it would result in a wholesale makeover of the glass
discharge spout of Kirkman, and that would appear, in the absence of evidence to the
contrary, to destroy the Kirkman invention.
Appeal No. 1998-0484 Page 7
Application No. 08/675465
CONCLUSION
Neither rejection is sustained.
The decision of the examiner is reversed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-0484 Page 8
Application No. 08/675465
SPENCER T. SMITH
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD
TOWSON , MD 21286