Ex Parte Dunifon et al

Board of Patent Appeals and Interferences

Sep 29, 2006

09956524 (B.P.A.I. Sep. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS A. DUNIFON and JENNIFER R. WOLFE
____________

Appeal 2006-2998
Application 09/956,524
Technology Center 1700
____________

Decided: September 29, 2006
____________

Before KIMLIN, WALTZ, and FRANKLIN Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final rejection of
claims 1 through 12.
A copy of claim 1 is set forth below:

1. An apparatus for press binding glass sheets comprising:
a male mold and a female mole positioned to press a glass sheet
between them, said male mold having a pressing surface facing said
female mold, said pressing surface having a contoured shape to press
bend the glass sheet into a specific shape, wherein said contoured
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Application 09/956,524

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surface of said male mold is curved in a first direction and in a second
direction transverse to said first direction;
said male mold including a plurality of heating elements
disposed through said male mold; and
each of said heating elements being disposed to substantially
follow said contoured shape of said pressing surface to maintain a
substantially constant distance from said pressing surface of said male
mold.

Claims 1 through 12 stand rejected under 35 U.S.C. § 112, ¶ 1
(written description).
Claims 1, 2, 5 to 8, 11 and 12 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Flaugher.
Claims 3 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Flaugher in view of Pickard.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Flaugher in view of Woodward.
To the extent that the commonly rejected claims have been separately
argued, they will be individually considered in our assessment of the
respective rejections advanced on this appeal. See In re Dance, 160 F.3d
1339, 1340 n.2, 48 USPQ2d 1635, 1636 n.2 (Fed. Cir. 1998). Also see 37
C.F.R. § 41.37(c)(1)(vii)(Sep. 2004).
The Examiner relies upon the following references as evidence of
unpatentability:
Pickard US 3,753,673 Aug. 21, 1973
Flaugher US 5,346,526 Sep. 13, 1994
Woodward US 5,755,845 May 26, 1998
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OPINION
We have carefully reviewed Appellants’ Brief and Reply Brief and the
Examiner’s Answer and the evidence of record. This review has led us to
the following determinations.

I. The 35 U.S.C. § 112, ¶ 1 (written description) Rejection
On page 3 of the Answer, the Examiner states that the disclosure as
filed does not support a first longitudinal axis, a second axis transverse to the
first axis, or a surface curvature both a first and second axis.
Beginning on page 10 of the Brief, Appellants point out how the
figures, specifically how Figures 2 and 3, show a curvature in a first
direction and a curvature in a second direction, transverse to the first
direction, as depicted in Figure 3. Appellants argue that Figure 3 is a
sectional view along line 33 of Figure 2, and also shows a curvature
transverse to the curvature depicted in Figure 2.
We agree with the Appellants that the Figures support the claimed
aspect regarding a male mold that is curved in a first direction and in a
second direction transverse to the first direction.
On page 5 of the Answer, the Examiner responds and states that the
drawing figures cannot be used to import specific structural limitations into
the claims. This is an incorrect statement. It has been held that drawings
can be sufficient to provide the "written description of the invention"
required by § 112, first paragraph. Several cases support this conclusion.
The issue in In re Wolfensperger, 302 F.2d 950, 133 USPQ 537 (CCPA
1962) was whether the specification of the applicant's utility patent
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application disclosing a ball valve, and particularly the drawings thereof,
supported a claim limitation that read: "having, in untensioned condition, a
mean diameter corresponding approximately to the mean diameter of said
chamber and a radial width smaller than the radial width of said chamber
. . . . " Id. at 952, 133 USPQ at 538. The court did not agree with the
Board's conclusion that the "radial width" relationship was not supported by
applicant's figure 5: The board's statement that "drawings alone cannot form
the basis of a valid claim" is too broad a generalization to be valid and is,
furthermore, contrary to well settled and long-established Patent Office
practice . . . . Consider, for one thing, that the sole disclosure in a design
patent application is by means of a drawing . . . . For another thing,
consider that the only informative and significant disclosure in many
electrical and chemical patents is by means of circuit diagrams or graphic
formulae, constituting "drawings" in the case . . . . The practical, legitimate
enquiry in each case of this kind is what the drawing in fact discloses to one
skilled in the art. . . . The issue here is whether there is supporting
"disclosure" and it does not seem, under established procedure of long
standing, approved by this court, to be of any legal significance whether the
disclosure is found in the specification or in the drawings so long as it is
there. Id. at 955-56, 133 USPQ at 541-42.
Employing a "new matter" analysis, the court in In re Heinle, 342
F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the
applicant's claims to a "toilet paper core" as "including subject matter having
no clear basis in the application as filed." Id. at 1003, 145 USPQ at 133. The
claim limitation said to be without support required that the width of the
apertures in the core be "approximately one-fourth of the circumference of
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Application 09/956,524

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said core." Id. at 1007, 145 USPQ at 136. Having reviewed the application
drawings relied upon for support, the court stated: it seems to us that [the
drawings] conform to the one-fourth circumference limitation almost
exactly. But the claim requires only an approximation. Since we believe an
amendment to the specification to state that one-fourth of the circumference
is the aperture width would not violate the rule against "new matter," we feel
that supporting disclosure exists. The rejection is therefore in error.
Id.
In view of the above, we reverse the 35 U.S.C. § 112, ¶ 1 (written
description) rejection of claims 1 through 12.

II. The 35 U.S.C. § 102(b) Rejection
The Examiner’s position for this rejection is set forth on pages 3
through 4 of the Answer and we incorporate the position therein as our own.
Appellants’ position is set forth on pages 13 through 16 of the Brief
and page 8 of the Reply Brief. Appellants disagree with the Examiner’s
position that Figures 1 and 2 of Flaugher teaches a curvature along the
longitudinal and transverse axis.
Appellants also point out that the male mold according to their
invention includes a plurality of heating elements disposed through the male
mold. Appellants state that each of the heating elements is disposed to
substantially follow the contoured shape of the pressing surface to maintain
a substantially constant distance from the pressing surface of the male mold.
Br. 13-14.
Appellants argue on page 14 of the Brief that Flaugher does not show
a curvature of the pressing surface in transverse directions as claimed.
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Appellants argue that even if the surface of Flaugher showed curvature in a
second direction transverse to a first direction, Flaugher would not anticipate
the present claims because if there were curvature in this direction, the linear
rods of Flaugher would, out of necessity, not be substantially of a constant
distance from the pressing surface as the distance would vary in accordance
with the curvature.
We are not convinced by Appellants’ arguments for the following
reasons.
First, Appellants’ specification does not provide a specific description,
e.g., measurements, for defining the term “substantially.” Hence, we turn to
the ordinary meaning of this word. As stated by the Examiner on page 5 of
the Answer, the word “substantially” encompasses a relatively wide ranges
of values. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA
1962). In this light, referring to Figure 2 of Flaugher, heating elements 70
are disposed to substantially follow the contoured shape of the pressing
surface to maintain a substantially constant distance from the pressing
surface of the male mold. We see no difference between that depicted in
Figure 2 of Flaugher and that claimed in the last paragraph of Appellants’
claim 1, in light of the claim interpretation discussed herein.
Second, we agree with the Examiner’s findings that the figures in
Flaugher depict a curvature along the longitudinal axis and transverse axis.
For example, both drawings of Figure 3 depict such a feature. We do note
that the C.C.P.A. has recognized a subtle distinction between a written
description adequate to support a claim under §112 and a written description
sufficient to anticipate its subject matter under §102(b). The difference
between "claim-supporting disclosures" and "claim-anticipating disclosures"
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is discussed in In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971).
The facts in the instant case differ from In re Lukach in that the facts before
us support both (1) our determination that Flaugher’s written description
(e.g., the figures) anticipates Appellants’ claims, and (2) our determination
made, supra, regarding the reversal of the 35 U.S.C. § 112, ¶ 1 (written
description) rejection.
In view of the above, we therefore affirm the 35 U.S.C. § 102(b)
rejection of claims 1, 2, 5 through 8, 11 and 12.

III. The 35 U.S.C. § 103 Rejections
The 35 U.S.C. § 103 rejection of claims 3 and 9 as being unpatentable
over Flaugher in view of Pickard and the 35 U.S.C. § 103 rejection of claims
4 and 5 as being unpatentable over Flaugher in view of Woodward are also
affirmed for the reasons discussed above. That is, we note that Appellants
only separately argue claim 1. For example, on page 16 of the Brief,
Appellants state that claims 3 and 9 depend from what are believed to be
allowable base claims and are therefore allowable. Likewise, on page 17 of
the Brief, Appellants state that claims 4 and 10 depend from what are
believed to be allowable base claims.
We therefore also affirm each of these obviousness rejections.

IV. Conclusion
The 35 U.S.C. § 112, ¶ 1 (written description) rejection of claims 1
through 12 is reversed.
The 35 U.S.C. § 102(b) rejection of claims 1, 2, 5 through 8, 11 and
12 as being anticipated by Flaugher is affirmed.
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The 35 U.S.C. § 103 rejection of claims 3 and 9 as being unpatentable
over Flaugher in view of Pickard is affirmed.
The 35 U.S.C. § 103 rejection of claims 4 and 10 as being
unpatentable over Flaugher in view of Woodward is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).

AFFIRMED

MARSHALL & MELHORN
FOUR SEAGATE, EIGHT FLOOR
TOLEDO, OH 43604

BAF/hh