Ex parte DAO et al.

Board of Patent Appeals and Interferences

Nov 17, 1999

08799056 (B.P.A.I. Nov. 17, 1999)

Application for patent filed February 10, 1997. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHUC B. DAO, DOUGLAS S. VANBIBBER and JAMES N. MILLER
____________
Appeal No. 1999-0645
Application No. 08/799,0561
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-9 and 11-16, which are all of the claims
pending in this application. In the answer (Paper No. 8), the
examiner withdrew the 35 U.S.C. § 102(b) rejection of claims
1-6, 11-14 and 16 based on the Australian document (answer,
page 3) and the 35 U.S.C. § 103 rejection of claims 1, 2, 7-9
Appeal No. 1999-0645 Page 2
Application No. 08/799,056
and 11-15 (answer, page 4) and indicated that claims 6-9, 13
and 15 contain allowable subject matter but are objected to as
being dependent upon a rejected base claim. Accordingly, this
appeal involves only claims 1-5, 11, 12, 14 and 16.
We REVERSE.
BACKGROUND
The appellants' invention relates to a collapsible knob
assembly and to a retention spring for yieldably fixing a
shaft in a cavity of a knob. An understanding of the
invention can be derived from a reading of exemplary claims 1
and 11, which appear in the appendix to the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Keeling, Jr. (Keeling) 3,805,637 Apr. 23, 1974
The following rejection is before us for review.
Claims 1-5, 11, 12, 14 and 16 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Keeling.
Reference is made to the brief (Paper No. 7) and the
answer (Paper No. 8) for the respective positions of the
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Application No. 08/799,056
We note that "the tab" in claim 12, line 4, lacks antecedent basis in2
the claim. We leave this to be addressed in the event of any further
prosecution before the examiner.
appellants and the examiner with regard to the merits of these
rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims , to the applied prior art reference, and to the2
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
Appeal No. 1999-0645 Page 4
Application No. 08/799,056
Webster's New World Dictionary, Third College Edition (Simon &3
Schuster, Inc. 1988).
1010 (Fed. Cir. 1991). Claim 1 recites, inter alia, a
retention spring "surrounding the shaft" and claim 11 recites,
inter alia, "a sheet metal spring having a body for
surrounding and frictionally gripping the shaft." The
examiner's position (answer, page 3) is that the Keeling
retention clip (35) surrounds "(at least partially)" the
shaft. It appears to us that this position is based on a
misinterpretation of the term "surrounding."
The term "surround" is ordinarily and customarily
understood to mean "to cause to be encircled on all or nearly
all sides" or "to be present on all or nearly all sides." 3
The body (26) of the appellants' disclosed retention spring
(24), as best seen in Figure 4, forms a D-shaped enclosure
which fully encircles or encloses the shaft (14) inserted
therein and, thus, is capable of "surrounding" the shaft in
the ordinary and customary usage of "surrounding." As we see
it, complete, or nearly complete, enclosure is required to
satisfy the "surrounding" limitation of claims 1 and 11.
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Application No. 08/799,056
The shank (37) of the retention clip (35) of Keeling does
not form an enclosure or anything even close to an enclosure
and, thus, is not capable of "surrounding" a shaft, as
required by independent claims 1 and 11.
Accordingly, we cannot sustain the examiner's rejection
of claims 1 and 11, or claims 2-5, 12, 14 and 16 which depend
therefrom, under 35 U.S.C. § 102(b).
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Application No. 08/799,056
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-5, 11, 12, 14 and 16 under 35 U.S.C. § 102(b) is
reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0645 Page 7
Application No. 08/799,056
JIMMY L FUNKE
DELCO ELECTRONICS CORPORATION
P.O. BOX 9005
ERC BUILDING MAIL STOP D 32
KOKOMO, IN 46904