Ex parte Darovic

Board of Patent Appeals and Interferences

Aug 30, 1999

07793824 (B.P.A.I. Aug. 30, 1999)

Application for patent filed November 18, 1991.1
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(2) is not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRIAN DAROVIC
_____________
Appeal No. 1994-4016
Application 07/793,8241
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK, and WALTZ, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 21, which are all of the claims
pending in the application. No amendments to the claims have
been entered subsequent to the final Office action. See Paper
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No. 38.
CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a device for
trimming excess material applied to a workpiece. Claims 1 and
21 are illustrative of the claimed subject matter and read as
follows:
Claim 1. A device for trimming excess material applied to a
workpiece, comprising:
horizontal planar surface for supporting a
workpiece, said horizontal planar surface having
front and back ends;
vertical support means supported by said
horizontal planar surface, said vertical support
means having a tracing assembly support means
disposed thereon; and
means for cutting the excess material applied to
a workpiece, said cutting means supported and guided
by a tracing assembly means which traces a surface
of the workpiece as the workpiece is moved from said
front end toward said back end of said horizontal
planar surface.
Claim 21. A device for trimming excess material applied to a
workpiece, comprising:
horizontal planar surface, having front and back
ends, said horizontal planar surface further having
a tracing assembly cavity;
vertical support means in proximity and
perpendicular to said horizontal planar surface,
having disposed thereon a tracing assembly support
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means, said tracing assembly support means having
disposed thereon a plate, a sliding support means
movably connected to said plate, a cutter rotating
means disposed on said plate, a cutting means
connected to said cutter rotating means, the cutting
means aligned with a tracing assembly means sized to
fit within said tracing assembly cavity, said
tracing assembly means having a means for tracing
which traces a surface of the workpiece, a roller,
and a means for adjusting the tracing means so that
it is aligned with said cutting means.
PRIOR ART
The references of record relied upon by the examiner are:
Bottcher et al (Bottcher) 3,863,543 Feb. 04,
1975
Draper 4,142,444 Mar. 06,
1979
De Muynck 4,260,001 Apr.
07, 1981
Hosoi 4,317,644 Mar. 02,
1982
Wirth, Jr. (Wirth ‘735) 4,593,735 Jun. 10,
1986
Ford et al.(Ford) 4,733,997 Mar. 29,
1988
Wirth, Jr. (Wirth ‘292) 4,909,292 Mar. 20,
1990
Butler 4,991,637 Feb. 12,
1991
(filed Aug. 3, 1989)
REJECTIONS
The appealed claims stand rejected as follows:
(1) Claims 1 through 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
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point out and distinctly claim the subject matter which
applicant regards as the invention;
(2) Claims 1 through 3, 5, 6, 12, 13, 14, 17 and 20 under
35 U.S.C. § 103 as unpatentable over Hosoi and Bottcher;
(3) Claims 4, 7, 15 and 21 under 35 U.S.C. § 103 as
unpatentable over Hosoi, Bottcher and Butler;
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Application No. 07/793,824
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(4) Claims 8, 10, 11, 16, 18 and 19 under 35 U.S.C. § 103 as
unpatentable over Hosoi, Bottcher, Butler and Wirth ‘292;
(5) Claims 1 through 4 under 35 U.S.C. § 102(b) as
anticipated by Ford;
(6) Claims 5 through 12 under 35 U.S.C. § 103 as unpatentable
over Ford in view of Hosoi and Wirth ‘292;
(7) Claims 13 through 20 under 35 U.S.C. § 103 as
unpatentable over either Ford or Draper, in view of Wirth
‘292, Hosoi and Wirth ‘735; and
(8) Claim 21 under 35 U.S.C. § 103 as unpatentable over
either Ford or Draper, in view of Wirth ‘292, Hosoi, Wirth and
De Muynck.
OPINION
We reverse each of the foregoing rejections. Our reasons
for this determination follow.
INDEFINITENESS
We will not sustain the examiner’s rejection of claims 1
through 21 under 35 U.S.C. § 112, second paragraph, for the
reasons expressed at pages 11 and 12 of the Brief.
PRIOR ART REJECTIONS
The initial inquiry into determining the propriety of the
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examiner’s prior art rejections is to correctly construe the
scope and meaning of the claimed subject matter. Gechter v.
Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir.
1997). As a matter of law, we construe the scope of the
claimed subject matter. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir.
1995)(en banc), aff'd, 517 U.S. 370 (1996). Generally, we
give the broadest reasonable interpretation to the terms in
the claims consistent with appellant’s specification. In re
Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997). When the terms in the claims are written in a
“means-plus-function” format, however, we interpret them as
the corresponding structure described in the specification and
the equivalents thereof consistent with 35 U.S.C. 112,
paragraph 6. In re Donaldson Co., 16 F.3d 1189, 1193, 29
USPQ2d 1845, 1848 (Fed. Cir. 1994)(en banc). The manner in
which a “means-plus-function” element is expressed, either by
a function followed by the term “means” or by the term “means
for” followed by a function, is unimportant so long as the
modifier of that term specifies a function to be performed.
Ex parte Klumb, 159 USPQ 694, 695 (Bd. App. 1967).
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Nevertheless, the term “means” as used above is not considered
as a means-plus-function element if the claimed “means”
includes sufficient structural limitations to perform the
recited function. See Al-Site Corp. v. Vsi Int'l, Inc., 174
F.3d 1308, 1319, 50 USPQ2d 1161, 1167 (Fed. Cir.
1999); Unidynamics Corp. v. Automatic Prods. Int'l., 157 F.3d
1311, 1319, 48 USPQ2d 1099, 1104-1105 (Fed. Cir. 1998).
Applying the above precedents to the present situation,
we initially determine that “vertical support means,” “a
tracing assembly support means,” “means for cutting the excess
material applied to workpiece” and “a tracing assembly means”
in claim 1 are means-plus-function elements within the meaning
of 35 U.S.C. § 112, paragraph 6. Nowhere does claim 1 recite
sufficient structural limitations for the above-mentioned
“means”. Similarly, we also determine that “a vertical
support means,” “a sliding support means,” “a cutter rotating
means,” “cutting means,” “means for tracing" and “a means for
adjusting the tracing means” in claim 21 are means-plus-
function elements within the meaning of 35 U.S.C. § 112,
paragraph 6. However, we do not construe “a tracing assembly
support means” in claim 21 as a means-plus-function element
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since sufficient structural limitations for the tracing
assembly support means, i.e., a plate and a sliding support
means (which is interpreted as the corresponding structure
described in the specification and the equivalents thereof)
movably connected to the plate, are recited. Nor do we
construe “a tracing assembly means” in claim 21 as means-plus-
function elements, since sufficient structural limitations for
the tracing assembly means, i.e., means for tracing, a roller
and a means for adjusting, are recited.
Having determined that certain “means” in claims 1 and 21
meet the requirements under 35 U.S.C. § 112, paragraph 6, we
now look to the specification for the structure corresponding
to such means to define the structure of the claimed device.
We observe that the specification defines “vertical support
means” as the vertical support structure (15) having a cavity
illustrated in Figures 1 and 2. See page 8, lines 14-15. We
observe that the specification defines “means for cutting the
excess material applied to workpiece” or “cutting means” as
the particularly designed rotary cutter structure (145, 305 or
445) illustrated in Figures 6, 16 and 17. See page 2, line
14, page 8, line 22, and page 15, lines 6 and 15. We observe
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that the specification defines “a tracing assembly support
means” as follows (the paragraph bridging pages 7 and 8
together with Figures 1 and 2):
Figures 1 and 2 also show the complete tracing
assembly 5 attached to plate 55, in turn attached to
sliding support 60. The support consists of
parallel bars 65 and 70 (not shown) (see also Figure
15) oriented at an angle. It may be desired, but
not
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limited thereto, to use a 45 degree angle to the
plane defined by the horizontal table 20. The bars
65 and 70 are securely attached to bar supports 75
and 80, and bar supports 85 and another (not shown),
which are securely attached to vertical support 15.
The vertical support 15 is attached perpendicularly
to the table base 35. The plate 55 is movably
attached to the parallel bars 65 and 70 (not shown)
by means of a bore through plate supports 95 and 100
and plate supports 105 and 110 so that the plate 55
and attached tracing assembly support 10 can slide
freely along the length of the parallel bars 65 and
70 (not shown). The tracing assembly support 10 is
then disposed on the vertical support 15 so that the
tracing assembly support 10 is allowed by the force
of gravity to rest at the bottom of the sliding
support 60 at point 112. A portion of the complete
tracing assembly 5 nests in tracer cavity - 50, so
that the bottom of the complete tracing assembly 5
rests below the upper surface 115 of the horizontal
table 20.
We observe that the specification defines "a tracing assembly
means" as follows (page 9, lines 10-18, Figure 6, page 14,
line 21 to page 15, line 7, Figure 16, and page 15, lines 16-
22, Figure 19):
Figure 6 depicts the complete tracing assembly 5
in detail, having a tracer subassembly 150, a roller
155, rod 215, cavity 210, and a tracing adjustment
assembly 160 having rods 230 and 235, having threads
240 and 245, and locknuts 250 and 255. The tracer
subassembly 150, having upright member 185 and
horizontal member 190, is supported by sidewalls 165
and 170, which are fastened at right angles to
assembly support 175. The assembly support 175 is
attached perpendicularly to plate 55. Protruding
through plate 55 is cutter 145 on shaft 135 through
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cavity 140.
. . . .
An alternative embodiment as shown in Figure
16, where the invention is substantially the same as
the preferred embodiment, except that the tracing
assembly consists of a cube 345 attached to assembly
support 300, in turn connected to the plate 55, as
shown in Figure 1. Disposed on either side of the
cube 345 are movable links 350 and 355. Attached to
the movable links 350 and 355 are rollers 360 and
365. Rods 310 and 320 having threads 330 and 335
extend through the assembly support 300 so that when
the distance between the links 350 and 355 and the
assembly support 300 is increased or decreased by
turning rods 310 and 320, the rollers 360 and 365
are raised or lowered, adjusting the cutting depth
of the cutter 305. Locknuts 340 lock rods 310 and
320 in place.
. . . .
In another alternate embodiment as shown in
Figure 19, the invention is substantially the same
as that shown in the preferred embodiment, except
that the upright and horizontal members of the
tracing assembly are replaced with upright cam 595
and horizontal cam 590. The cams 595 and 590, like
the upright and horizontal members of the preferred
embodiment are adjustable via adjusting rods 510 and
515.
We observe that the specification defines "a sliding support
means" as follows (page 7, lines 20-25):
The [sliding] support consists of parallel bars 65
and 70 (not shown) (See also Figure 15) oriented at
an angle. It may be desired, but not limited
thereto, to use a 45 degree angle to the plane
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defined by the horizontal table 20. The bars 65 and
70 are securely attached to bar supports 75 and 80,
and bar supports 85 and another (not shown), which
are securely attached to vertical support 15.
We observe that the specification defines "a cutter rotating
means" as follows (page 8, lines 12-21, and page 15, lines 8-
15):
Also attached to plate 55 is a cutter rotation
assembly 125, the cutter rotation assembly 125
protruding through a vertical support cavity 120 in
the vertical support 15. The vertical support
cavity 120 is sized to accommodate the cutter
rotation assembly 125 through the complete movement
of the sliding support 60 from the point where the
plate 55 rests at the bottom point 112 of the
parallel bars 65 and 70 (not shown) to the point
where the plate 55 is moved to the top of the
parallel bars 65 and 70 at top point 130. The
cutter rotation assembly 125 has a shaft 135,
extending through a hole 140 in the plate 55.
. . . .
Another alternate embodiment shown in Figure 17
is constructed substantially as the preferred
embodiment, except that the cutter rotation assembly
425 is not attached to plate 55 (shown in Figure 1).
Instead, as shown in Figure 17, bar 405 is attached
to a stationary support ( not shown) which allows
tracing assembly 410 to move up and down through an
arch which allows the cutter 445 to cut the front
face of the workpiece and then the top surface of
the workpiece as the workpiece is moved under the
cutter 445.
We observe that the specification defines "means for tracing"
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as follows (page 9, lines 13-17 and 19-26, and page 10, line
1):
The tracer subassembly 150, having upright member
185 and horizontal member 190, is supported by
sidewalls 165 and 170, which are fastened at right
angles to assembly support 175. The assembly
support 175 is attached perpendicularly to plate 55.
. . . .
In the preferred embodiment shown in Figure 7,
the tracer subassembly 150 is a two piece apparatus
consisting of an upright member 185 and a horizontal
member 190, so that when fitted together, the pieces
have a predominately L-shaped configuration. The
surfaces on the outside of the L, 195 and 200 are
rounded, while the inside surface 205 of the upper
member 185 is beveled at an angle pointing towards
the top of the L. The upright member 185 and
horizontal member 190 have excess material removed
from them to form a cavity 210 so as to accommodate
a roller 155.
We observe that the specification defines “a means for
adjusting the tracing means” as follows (page 10, lines 11-
21):
The tracer subassembly 150 is secured into
position with tracing adjustment assembly 160. The
tracing adjustment assembly 160 consists of two
extensible rods 230 and 235 extending through
threaded bores in assembly support 175. The rods
have threads 240 and 245 so that when rods 230 and
235 are turned, the distance between the end of the
rods 260 and 265 and the assembly support 175 can be
varied. The end 265 of rod 235 is positioned so
that it makes contact with the beveled portion 205
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of the upright member 185, whereas the end 260 of
rod 230 is positioned to make contact with the top
surface 270 of the horizontal member 190. Locknuts
250 and 255 lock rods 230 and 235 in place.
Consistent with our observation, we interpret the claimed
means-plus-function elements as the corresponding structures
specifically described above and their equivalents. A
structure is an “equivalent” if it differs from the above
described structure by an insubstantial change which adds
nothing of significance. Valmont Indus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454 (Fed.
Cir. 1993).
With the above interpretation in mind, we now turn to the
prior art rejections. Our review of the prior art references
relied upon by the examiner indicates that none of them,
either individually or in combination, teaches or would have
suggested the claimed subject matter. The examiner simply has
not taken into consideration the importance of interpreting
means-plus-function elements in the claims as the
corresponding structure in the specification and the
equivalents thereof. Donaldson, 16 F.3d at 1197, 29
USPQ2d at 1850. Accordingly, we determine that none of the
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examiner’s prior art rejections can be sustained.
CONCLUSION
In view of the foregoing, the decision of the examiner is
reversed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CKP:svt
Appeal No. 1994-4016
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TIMOTHY T. PATULA
PATULA & ASSOCIATES
116 South Michigan Avenue
Chicago, IL 60603