Ex parte Cruz

Board of Patent Appeals and Interferences

Jul 13, 1999

08638454 (B.P.A.I. Jul. 13, 1999)

Application for patent filed April 26, 1996. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH P. CRUZ
____________
Appeal No. 1999-1505
Application No. 08/638,4541
____________
ON BRIEF
____________
Before MEISTER, 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 of claims 12 through 19, which are all of the claims
pending in this application.
We AFFIRM, REMAND and enter a new rejection pursuant to
37 CFR § 1.196(b).
Appeal No. 1999-1505 Page 2
Application No. 08/638,454
BACKGROUND
The appellant's invention relates to a hands-free paper
towel dispenser. An understanding of the invention can be
derived from a reading of exemplary claims 12 and 16, which
appear 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:
Anderson 4,771,966 Sep. 20,
1988
Tinker et al. 4,979,688 Dec. 25,
1990
(Tinker)
In addition, the examiner also relied upon the admitted
prior art discussed on pages 1-3 of the original disclosure
(admitted prior art).
References made of record by this panel of the Board are:
Chakravorty 4,790,490 Dec. 13,
1988
Hawkins 4,796,825 Jan. 10,
1989
Bauer et al. 4,960,248 Oct. 2,
1990
(Bauer)
Appeal No. 1999-1505 Page 3
Application No. 08/638,454
Byrd et al. 5,772,291 June 30,
1998
(Byrd) (filed Feb. 16, 1996)
Claims 12 through 19 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 12 through 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over the admitted prior art in view of
Tinker and Anderson.
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 (Paper
No. 9, mailed December 4, 1997) and the examiner's answer
(Paper No. 18, mailed September 29, 1998) for the examiner's
complete reasoning in support of the rejections, and to the
appellant's brief (Paper No. 17, filed July 3, 1998) and reply
brief (Paper No. 19, filed November 30, 1998) for the
appellant's arguments thereagainst.
Appeal No. 1999-1505 Page 4
Application No. 08/638,454
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
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
We sustain the rejection of claims 12 through 19 under
35 U.S.C. § 112, second paragraph.
In the final rejection (pp. 2-3) and the answer (p. 3),
the examiner set forth his rationale as to why claims 12
through 19 were indefinite.
The appellant has not specifically contested this
rejection in the brief or reply brief. Accordingly, we
summarily sustain the rejection of claims 12 through 19 under
35 U.S.C. § 112, second paragraph.
Appeal No. 1999-1505 Page 5
Application No. 08/638,454
The obviousness rejection
We will not sustain the rejection of claims 12 through 19
under 35 U.S.C. § 103.
When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art
to make the selection made by the appellant. Obviousness
cannot be established by combining the teachings of the prior
art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. It is
impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the appellant's
structure as a template and selecting elements from references
to fill the gaps. The references themselves must provide some
teaching whereby the appellant's combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991) (citations omitted). That is, something
in the prior art as a whole must suggest the desirability, and
thus the obviousness, of making the combination. See In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
Appeal No. 1999-1505 Page 6
Application No. 08/638,454
1992); Lindemann Maschinenfabrik GmbH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984).
In this case, we agree with the arguments set forth in
the appellant's brief and reply brief that the applied prior
art does not suggest the claimed subject matter.
Specifically, it is our opinion that the applied prior art
does not provide any motivation to have changed the admitted
prior art's hands-on dispensing to be hands-free dispensing.
In our view, the only suggestion for modifying the admitted
prior art by the teachings of Tinker in the manner proposed by
the examiner stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejections of claims 12 through 19.
Appeal No. 1999-1505 Page 7
Application No. 08/638,454
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 12 through 19 stand rejected under 35 U.S.C. §
112, first paragraph, as the specification, as originally
filed, does not provide support for the invention as is now
claimed.
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). The written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
Appeal No. 1999-1505 Page 8
Application No. 08/638,454
claimed by him; how the specification accomplishes this is not
material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90,
96 (CCPA 1976).
Claim 12 recites a housing having "an opening through
said bottom surface, said opening being sufficiently narrow to
permit the unused portion of said product within said housing
to be protected from outside forces and remain in a usable
condition." Claim 12 further recites "said opening being
positioned through said front portion." Claim 16 recites
making "an opening through the bottom front surface of said
housing."
We have reviewed the originally filed disclosure and find
no express disclosure for the above-noted limitations of
claims 12 and 16. In addition to an express disclosure, the
written description requirement can be satisfied by showing
that the disclosed subject matter, when given its "necessary
and only
Appeal No. 1999-1505 Page 9
Application No. 08/638,454
reasonable construction," inherently (i.e., necessarily)
satisfies the limitation in question. See Kennecott Corp. v.
Kyocera Int'l, Inc., 835 F.2d 1419, 1423, 5 USPQ2d 1194, 1198
(Fed. Cir. 1987), cert. denied, 486 U.S. 1008 (1988). While
there is an inherent disclosure that the housing has an
opening permitting the product (i.e., paper towel) to be
dispensed, there is nothing in the application to suggest that
the opening be in the bottom front portion of the housing as
set forth in the above-noted limitations from claims 12 and
16. In that regard, we note that a disclosure that merely
renders the later-claimed invention obvious is not sufficient
to meet the written description requirement; the disclosure
must describe the claimed invention with all its limitations.
See Tronzo v. Biomet Inc., 156 F.3d 1154, 1158-60, 47 USPQ2d
1829, 1832-34 (Fed. Cir. 1998); Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed. Cir.
1997); Vas-Cath Inc., 935 F.2d at 1563-1564, 19 USPQ2d at
Appeal No. 1999-1505 Page 10
Application No. 08/638,454
Likewise, it would appear that the proposed drawing2
corrections to Figures 1 and 4 (filed June 6, 1997) and the
amendment to Page 6, line 5, (presented in Paper No. 4, filed
June 6, 1997) contain new matter. The examiner should take
appropriate steps to ensure that any new matter is removed
from the specification and the drawings.
1117; In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131
(CCPA 1975); In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592,
593 (CCPA 1971); In re Wohnsiedler, 315 F.2d 934, 937, 137
USPQ 336, 339 (CCPA 1963).
For the reasons set forth above, the disclosure in the
application does not provide written description support for
the above-noted limitations of the claims under appeal. 2
REMAND
This application is remanded to the examiner for
consideration of prior art and further search of the claimed
subject matter as set forth below.
Since the claimed subject matter is directed to hands-
free dispensing, the examiner should consider whether the
claims are patentable under 35 U.S.C. § 103 over Chakravorty,
Appeal No. 1999-1505 Page 11
Application No. 08/638,454
This class was searched in Chakravorty.3
This class was searched in Chakravorty, Bauer and Byrd.4
Hawkins, Bauer and Byrd when considered together with the
other prior art.
The examiner's field of search as indicated on the
filewrapper was limited to Class 242, WINDING, TENSIONING, OR
GUIDING. The examiner's search did not include Class 225,
SEVERING BY TEARING OR BREAKING, or Class 312, SUPPORTS. 3 4
These classes appear to contain relevant subject and therefore
a search therein would seem to be appropriate.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 12 through 19 under 35 U.S.C. § 112, second paragraph
is affirmed; the decision of the examiner to reject claims 12
through 19 under 35 U.S.C. § 103 is reversed; a new rejection
of claims 12 through 19 under 35 U.S.C. § 112, first
paragraph, has been added pursuant to provisions of 37 CFR §
1.196(b); and the application has been remanded to the
examiner for consideration of prior art and further search.
Appeal No. 1999-1505 Page 12
Application No. 08/638,454
Since at least one rejection of each of the appealed
claims has been affirmed, the decision of the examiner is
affirmed.
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) and a remand pursuant
to 37 CFR
§ 1.196(e).
Appeal No. 1999-1505 Page 13
Application No. 08/638,454
37 CFR § 1.196(b) provides, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(e) provides that
Whenever a decision of the Board of Patent Appeals and
Interferences includes or allows a remand, that decision
shall not be considered a final decision. When
appropriate, upon conclusion of proceedings on remand
before the examiner, the Board of Patent Appeals and
Interferences may enter an order otherwise making its
decision final.
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
Appeal No. 1999-1505 Page 14
Application No. 08/638,454
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. . . .
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed
rejection is overcome. If the proceedings before the examiner
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 rejections, 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).
AFFIRMED; REMANDED; 37 CFR § 1.196(b)
Appeal No. 1999-1505 Page 15
Application No. 08/638,454
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1505 Page 16
Application No. 08/638,454
DOROTHY S. MOORE
515 PARK DRIVE, N.W.
BRADENTON, FL 34209-1147
APPEAL NO. 1999-1505 - JUDGE NASE
APPLICATION NO. 08/638,454
APJ NASE
APJ MEISTER
APJ STAAB
DECISION: AFFIRMED, REMANDED &
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 02 Jul 99
FINAL TYPED: