Ex parte Constantino et al.

Board of Patent Appeals and Interferences

Jun 18, 1998

08445660 (B.P.A.I. Jun. 18, 1998)

Application for patent filed May 22, 1995. According to appellants,1
this application is a continuation of application serial no. 07/975,805, filed
November 13, 1992, now abandoned.
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(2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES P. CONSTANTINO, RAYMOND H. GOSNELL
RICHARD A. JORDAN and JAMES W. JACOBY JR.
__________
Appeal No. 97-4260
Application 08/445,6601
__________
ON BRIEF
__________
Before CALVERT, Administrative Patent Judge,
McCANDLISH, Chief Administrative Patent Judge, and
STAAB, Administrative Patent Judge.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
Appeal No. 97-4260
Application 08/445,660
2
4, 6 to 11, and 14 to 18, all of the claims remaining in the
application. However, in the examiner's answer, the examiner
did not repeat a provisional rejection of all of the claims on
the ground of double patenting, so that rejection is assumed
to be withdrawn. Ex parte Emm, 118 USPQ 180 (Bd. Apps. 1957).
Since claims 4 and 18 were not finally rejected on any other
ground, they are not involved in this appeal.
The subject matter on appeal concerns a pallet formed of
upper and lower thermoplastic sheets. The claims on appeal
are reproduced in the Appendix to appellants' brief, although
we note that claims 16 and 17 therein do not include all of
the additions made by the amendment filed on May 22, 1995
(Paper No. 14).
The references applied in the final rejection are:
Griffin 4,000,704 Jan. 04, 1977
Dresen et al. (Dresen) 4,428,306 Jan. 31, 1984
Shuert 4,879,956 Nov. 14, 1989
Cool 305,082 Mar. 01,
1989
(European Application)
The claims stand finally rejected as follows:
Appeal No. 97-4260
Application 08/445,660
3
(1) Claims 8, 9, 11 and 14, anticipated by either of
Shuert or Dresen, under 35 USC § 102(b);
(2) Claims 14, 15, and 17, anticipated by Cool, under 35
USC § 102(b);
(3) Claims 1 to 3, 6, 7, 10, 16 and 17, unpatentable
over Dresen in view of Griffin, under 35 USC § 103.
Rejection (1)
The claims to which this rejection applies call for a
plurality of bosses "in a substantially non-linear
arrangement." Appellants' argument may be summarized as
follows: (1) they may be their own lexicographers; (2) they
have defined "non-linear" in the specification (page 9, lines
13 to 15) as an arrangement wherein "a line formed through the
center of two adjacent bosses does not intersect the center of
any boss adjacent to either of the line defining bosses"; and
(3) neither Shuert nor Dresen anticipates these claims because
in their disclosed pallets, a line can be formed through the
center of two adjacent bosses that intersects the center of a
boss adjacent to either of the line defining bosses (brief,
pages 5 and 6).
Appeal No. 97-4260
Application 08/445,660
4
It is well settled that patent applicants may be their
own lexicographers, in that a term used in the claims shall be
given a special meaning if that meaning is sufficiently clear
in the specification. Multiform Desiccants Inc. v. Medzam
Ltd. 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir.
1998). In the present case, the paragraph of the
specification from which appellants extracted the above-
quoted definition reads, in part (page 9, lines 3 to 16,
emphasis added):
Bosses 13 are arranged on upper surface 9 of deck 7
in an essentially non-linear pattern. The pattern
substantially avoids formation of hinge or bending
moments by avoiding linear arrangements of bosses.
The pattern is non-symmetrical about either of the
two major axes -X or -Y. In a preferred embodiment,
the bosses are generally evenly distributed over the
surface of the deck yet are not symmetrical about
either of the X or Y axes. The arrangement of
bosses may also be non-symmetrical about axes
along the diagonals of the deck. A non-hinge
forming arrangement may also be formed by locating
bosses so that a line formed through the center
of two adjacent bosses does not intersect the center
of any boss adjacent to either of the line defining
bosses.
Also on page 10, lines 3 to 10 (emphasis added):
Appeal No. 97-4260
Application 08/445,660
5
Turning to FIG. 6, another embodiment of the
invention is illustrated. Minor bosses 19 are
arranged in a non-hinge forming pattern as are major
bosses 17. Stepped boss floors 57 may be used in
either arrange-ment of major and minor bosses 17,
19. In arrangements comprising major and minor
bosses 17, 19, two adjacent bosses of the same size
will define the line which should not intersect the
boss center of the next adjacent boss, regardless of
size, to form a non-hinge forming arrangement.
From these portions of the specification, it is evident
that the definition which appellants contend should be applied
to the term "non-linear" in the claims is not presented in the
specification as a definition of that term, but as a
definition of the term "non-hinge forming arrangement". It is
questionable whether it is sufficiently clear from the
specification (as required by Multiform Desiccants, supra)
that this definition
should be the special meaning to be given the term "non-
linear".
However, assuming arguendo that the term "non-linear" as
used in claims 8, 9, 11 and 14 should be construed as argued
by appellants, we do not consider that the claims are
patentable over either Shuert or Dresen. Appellants seem to
Appeal No. 97-4260
Application 08/445,660
6
assume that the claims are not anticipated by Shuert or Dresen
because not all of the references' bosses are in a non-linear
arrangement, but the claims are not so limited. During patent
examination, pending claims must be interpreted as broadly as
their terms reasonably allow. In re Zletz, 893 F.2d 319, 321,
13 USPQ 2d 1320, 1322 (Fed. Cir. 1989). Here, the claims
recite a pallet "comprising" certain elements, which leaves
open the inclusion of other, unclaimed structures. Thus, with
respect to the bosses recited in independent claims 8 and 14,
all that the claims require is a plurality (i.e., two or more)
bosses "in a substantially non-linear arrangement", and do not
exclude the presence of other bosses in a linear arrangement.
The following is an enlargement of a portion of Fig. 8 of
Shuert, with reference characters added:

Appeal No. 97-4260
Application 08/445,660
Appellants assert in their reply brief that "adjacent" means2
"relatively near and having nothing of the same kind intervening." Bosses
"a" and "b" meet this definition.
7
Reading the "non-linear arrangement" limitation of claims 8
and 14 on this figure, there are a plurality (two) of
adjacent bosses, "a" and "b", which are in a "non-linear2
arrangement" (as defined by appellants) because a line through
their centers does not intersect the center of any adjacent
boss, e.g., bosses "c", "d", "e", "f" or "g". Thus, Shuert
Appeal No. 97-4260
Application 08/445,660
Appellants also indicate that claims 10 and 15 stand or fall with3
claims 8 and 14, respectively, but since claims 10 and 15 were not included in
rejection (1), these statements were evidently intended to apply to rejections
(3) and (2), respectively.
8
anticipates claims 8 and 14.
Similarly, claims 8 and 14 are anticipated by Dresen. As
the examiner shows in the copy of Dresen's Fig. 2 in Appendix
B of the examiner's answer, the disclosed pallet of Dresen has
at
least two bosses which meet appellants' definition of a "non-
linear" arrangement. Here again, the fact that there are
other bosses on Dresen's pallet which are not non-linearly
arranged is irrelevant, since their presence is not excluded
by these claims.
Accordingly, we will sustain the rejection of claims 8
and 14 as anticipated by Shuert or Dresen, as well as the same
rejection of claims 9 and 11, which, appellants state on page
4 of their brief, stand or fall with claim 8.3
Rejection (2)
The Cool reference shows in Fig. 1 a plastic pallet
Appeal No. 97-4260
Application 08/445,660
9
having nine bosses 20 with stepped floors. With regard to
claim 14, the bosses at the centers of two adjacent sides of
the pallet meet appellants' asserted definition of a non-
linear arrangement, because a line joining their centers (as
shown in Appendix C of the examiner's answer) does not
intersect the center of any other boss. As discussed above,
that is sufficient to anticipate the non-linear arrangement
recited in claim 14.
We also conclude that independent claim 17 is anticipated
by Cool. This claim calls for a plurality of bosses "in a
non-symmetrical, non-hinge forming arrangement." As the
examiner points out on page 8 of the answer, the claim does
not require the bosses to be non-symmetrical about each and
every axis, and while they are symmetrical about the X and Y
axes, they are "non-symmetrical about the diagonal axis
because the pallet is rectangular." Since Cool's bosses are
non-symmetrical about at least one axis, they meet the "non-
symmetrical" limitation of claim 17; as with the term "non-
linear", supra, the term "non-symmetrical" does not exclude a
symmetrical arrangement of the bosses around some axes, but
Appeal No. 97-4260
Application 08/445,660
10
only requires that they be non-symmetrical about at least one
axis. As for the requirement of a "non-hinge forming
arrangement", our previous conclusion that some of Cool's
bosses are in a "non-linear" arrangement carries with it the
conclusion that they are also in a "non-hinge forming"
arrangement, since in the portions of the specification quoted
previously, appellants give "non-hinge forming" the definition
which they contend should be given to "non-linear".
We will therefore sustain the rejection of claims 14 and
17, and of claim 15 which falls with 14 (brief, page 4).
Rejection (3)
The crux of this rejection, as stated on page 5 of the
examiner's answer, is that it would have been obvious "to have
formed the boss arrangement of Dresen et al. in a non-symme-
trical/major and minor boss arrangement as taught by Griffin
[as seen in Fig. 12]." Appellants argue on page 8 of the
brief that the rejection is improper because the bosses of
Griffin, e.g., those on each side of the center foot, are
symmetrical, presum-ably about the vertical center line of the
pallet. Considering the apparatus recited in claim 1 vis-a-
Appeal No. 97-4260
Application 08/445,660
11
vis the Dresen patent, it appears that, with the possible
exception of the last paragraph, Dresen discloses all the
structure recited. The last paragraph of the claim reads:
"said bosses being arranged substantially non-symetrically
about one of said axes". The "said axes" are defined in the
claim as:
a first axis in the plane of said deck member
extending through the center of said deck member
running between two non-adjacent sides of said deck
member;
a second axis extending through the center of
said deck member in the plane of the deck member
perpendicular to said first axis.
We consider that Dresen meets the limitation in the last
paragraph of the claim, since the axes are broadly defined.
Looking at Fig. 2 of Dresen, for example, the lead line from
reference numeral 32, if extended across the pallet 10, would
constitute a "first axis" extending through the center of deck
member 13 and running between two non-adjacent sides of the
deck
member, as claimed, and a second axis would extend through the
center of the deck member perpendicular to the first axis.
Since the bosses 22 of Dresen would not be symmetrical about
Appeal No. 97-4260
Application 08/445,660
We recognize that this is, in effect, a holding that Dresen anticipates4
claim 1, but this is considered proper since lack of novelty is the epitome of
obviousness. In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
12
either of these axes, Dresen meets all of the limitations of
claim 1, and it is unnecessary to consider the Griffin
patent.4
Appellants state on page 4 of their brief that claims 2,
3, 6 and 7 stand or fall with claim 1. Also, claims 10, 16
and 17 fall with claim 1, since no explanation is presented as
to why they are believed to be separately patentable. 37 CFR
1.192(c)(7).
Rejection Under 37 CFR 1.196(b)
Claim 18 reads:
18. A plastic pallet comprising:
a substantially planar load bearing deck member
formed from an upper and lower sheet of
thermoplastic;
a plurality of bosses thermoformed in said deck
member in a non-symmetrical, non-hinge forming
arrangement and;
a plurality of bosses thermoformed in said deck
member whereby no more than three adjacent boss
centers are collinear.
Pursuant to 37 CFR 1.196(b), as amended effective
Appeal No. 97-4260
Application 08/445,660
The expression "not more than three" in the last paragraph of the claim5
appears to have no antecedent basis in the specification, as required by 37
CFR 1.75(d)(1). Also, the recitation of two pluralities of bosses seems to
imply that different bosses are referred to, whereas, as disclosed, these
would seem to be the same bosses.
13
December
1, 1997, 62 F.R. 53132, 53197 (Oct. 10, 1997), 1203 O.G. 63,
122
(Oct. 21, 1997), claim 18 is rejected under 35 USC § 102(b) as
anticipated by Cool.5
Cool discloses a plastic pallet 10 formed from upper and
lower plastic sheets, having bosses 20. As discussed
previously, these bosses are in a non-symmetrical, non-hinge
forming arrangement, and no more than any three adjacent boss
centers are collinear.
Conclusion
The examiner's decision to reject claims 1 to 3, 6 to 11
and 14 to 17 is affirmed. Claim 18 is rejected pursuant to 37
CFR 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
Appeal No. 97-4260
Application 08/445,660
14
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. & Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, “A new ground of
rejection shall not be considered final for purposes of
judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground 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. . . .
Appeal No. 97-4260
Application 08/445,660
15
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145
with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-4260
Application 08/445,660
16
Affirmed
37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS AND
Senior Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-4260
Application 08/445,660
17
Timothy G. Newman
1000 Town Center
Twenty-Second Floor
SouthField, MI 48075