Ex Parte Davis, Jr.

Board of Patent Appeals and Interferences

Oct 31, 2000

08265858 (B.P.A.I. Oct. 31, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM M. DAVIS, JR.
__________
Appeal No. 1998-0838
Application No. 08/265,858
__________
ON BRIEF
__________
Before FRANKFORT, NASE, and JENNIFER D. BAHR, Administrative
Patent Judges.
FRANKFORT, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to appellant’s request for rehearing of
our decision mailed July 31, 2000, wherein we affirmed the
examiner's rejection of claims 1 through 6 under 35 U.S.C. § 103.
Appeal No. 1998-0838
Application No. 08/265,858
2
We have carefully considered each of the points of argument
raised by appellant in the request for rehearing, however, those
arguments do not persuade us that our prior decision was in error
in any respect.
In contrast with appellant’s position that we have
misapprehended the primary distinction between the prior art
applied by the examiner and appellant’s invention, we recognize
that the slag handling system disclosed by appellant and that
disclosed in Hibbel are not the same, however, it is the claimed
subject matter which we have evaluated in this appeal relative to
the applied prior art and not the system as specifically
disclosed by appellant. During the prosecution of a patent
application, claims are given their broadest reasonable
interpretation consistent with the specification. See In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983);
In re Tanaka, 551 F.2d 855, 860, 193 USPQ 138, 141 (CCPA 1977).
However, limitations in the specification will not be read into
the claims. See In re Winkhaus, 527 F.2d 637, 639, 188 USPQ 129,
131 (CCPA 1975). In this particular case, we have given the
claimed slag handling system and, more particularly, the claim
language “closed loop sluice water system” in appellant’s
Appeal No. 1998-0838
Application No. 08/265,858
3
independent claim 1 on appeal its broadest reasonable
interpretation and found that it is readable on the closed loop
sluice water system in Hibbel which transports slag from the
separating chamber (43) and lock vessel (6) in a water/slag
mixture into the collecting vessel or sump pit (22). Appellant
has pointed to nothing in the claims on appeal (particularly,
independent claim 1) which in any way changes our views as set
forth on pages 5 through 10 of our earlier decision.
The fact that appellant’s invention as disclosed may be a
substitute for the mechanical device (49) of Hibbel and that the
system or process in Hibbel may be an appropriate process
precursor to appellant’s process, is of no avail, since the
claims before us on appeal (specifically independent claim 1) do
not include any limitations which make or require any such
distinctions in the claimed subject matter. For that reason, we
remain of the view expressed in our earlier decision concerning
the obviousness of the subject matter set forth in appellant’s
claims on appeal.
Appeal No. 1998-0838
Application No. 08/265,858
4
In light of the foregoing, appellant’s request is granted to
the extent of reconsidering (rehearing) our earlier decision, but
is denied with respect to making any changes therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
Charles E. Frankfort )
Administrative Patent Judge )
)
)
)
Jeffrey V. Nase ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jennifer D. Bahr )
Administrative Patent Judge )
CEF:tdl
Appeal No. 1998-0838
Application No. 08/265,858
5
Stephen H. Cagle
HOWREY SIMON ARNOLD & WHITE, L.L.P.
P.O. Box 4433
Houston, TX 77210-4433