Ex Parte Ebert

Board of Patent Appeals and Interferences

Jun 6, 2007

10689230 (B.P.A.I. Jun. 6, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID A. EBERT
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Appeal 2007-0787
Application 10/689,230
Technology Center 3600
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Decided: June 6, 2007
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Before RICHARD E. SCHAFER, RICHARD TORCZON, and
ROMULO H. DELMENDO, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Applicant appeals the Final Rejection of claims 1 to 11 under
35 U.S.C. § 134 (2002). We have jurisdiction. 35 U.S.C. § 6(b) (2002).
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An examiner rejected Claims 1 and 5 under 35 U.S.C § 102(b) and
Claims 2-4 and 6-11 under 35 U.S.C. § 103(a). We reverse these rejections
and enter a new ground of rejection of Claim 1 under § 103(a).
Appeal 2007-0787
Application 10/689,230

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FINDINGS OF FACT
The Claimed Subject Matter
F. 1. Applicant’s invention relates to a pivoting or cantilevered lever
assembly.
F. 2. Claim 1 provides:1
1. A lever for a door comprising:
a shank to be attached to a door at one end, said shank
having an opposed end;
a handle attached to said opposed end of said shank, said
handle being formed of a material that is more fragile than a
material forming said shank.
F. 3. As set out in Claim 1, the lever has but two required parts: a shank
and attached handle.
F. 4. Applicant’s Figure 1, reproduced below, shows an embodiment of the
claimed lever assembly:2
F. 5. The shank is depicted as numeral 22.3
F. 6. The handle is shown as numeral 24.4

1 Appeal Br. 1, Claim 1.
2 Specification 2.
3 Specification 2-3.
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F. 7. The handle must be of “a material that is more fragile than the
material forming the shank.5”
F. 8. The Specification exemplifies the fragile material as glass or crystal,
preferably leaded glass crystal.6
F. 9. The Specification exemplifies the shank as formed of “a metal.7”
Prosecution
F. 10. An examiner rejected Claims 1 and 5 under 35 U.S.C § 102(b) as
anticipated by a patent to Tokarz.8
F. 11. The remaining claims have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Tokarz or on a combination of Tokarz with other patents.9
Tokarz
F. 12. Tokarz describes a lever assembly for a faucet having a structure very
similar to the lever claimed by Applicant.
F. 13. Tokarz Figure 1, reproduced below, shows an embodiment of
Tokarz’s lever assembly.10

4 Specification 3.
5 Appeal Br. 9.
6 Specification 1, 2.
7 Specification 3.
8 U.S. Patent 5,797,422.
9 Answer 3-7.
10 Tokarz 2:10-17.
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F. 14. The lever assembly includes a shank or base 20 and a lever or handle
body 22.11
F. 15. The handle 22 may be made of materials including “metal such as
chrome or brass, wood, porcelain or plastic.12”
F. 16. Tokarz does not describe the material of the shank portion 20.
F. 17. Tokarz does not anticipate the subject matter of Claim 1.
ISSUES
The Examiner contends that the subject matter of Claim 1 is
anticipated by the lever assembly described and shown by Tokarz.
Applicant contends that Tokarz does not describe all the limitations of
Claim 1 and is not anticipated.
The issue before us is whether Tokarz describes a lever assembly
encompassed by the subject matter of Applicant’s Claim 1.
PRINCIPLES OF LAW
Anticipation requires that that every limitation of the claim be found,
either expressly or under principles of inherency, in a single prior art
reference. Minnesota Mining and Mfg. Co. v. Johnson & Johnson

11 Tokarz 2:45-47.
12 Tokarz 1:56-59.
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Orthopaedics Inc., 976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir.
1992). Inherency requires that the missing descriptive matter necessarily be
present in the thing described in the reference. In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999). Inherency may not be
established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749
(Fed.Cir. 1991).
ANALYSIS
Applicant’s Claim 1 requires that the handle portion of the lever
assembly be made “a material that is more fragile than a material forming
said shank.13” Tokarz teaches that the handle portion of the lever assembly
may be made of “metal such as chrome or brass, wood, porcelain or
plastic.14” Tokarz does not describe the material of the shank portion 20.
Thus, Tokarz does not provide a basis for comparing the materials of the
handle and shank to determine if Tokarz discloses a handle material that is
more fragile than the material forming the shank.
The Examiner addresses the “more fragile” limitation by finding that
Tokarz teaches a handle portion made of a material including plastic or
ceramic and that “one of ordinary skill in the art recognizes that shank
portion is likely to be chrome-plated brass for example.15”
In order to anticipate, each claim limitation must be expressly or
inherently found in the reference. Minnesota Mining, 976 F.2d at 1565, 24
USPQ2d at 1326. The Tokarz patent neither expressly describes that the

13 Appeal Br. Claim 1.
14 Tokarz 1:56-59.
15 Answer 3.
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shank 20 is made of metal nor is it apparent that the Tokarz’s shank would
inherently be of metal. While it is possible or even probable that one having
ordinary skill in the art would understand the shank to be made of metal, that
fact is insufficient to establish inherency. The missing disclosure must
necessarily flow from the references teachings. Robertson, 169 F.3d at 745,
49 USPQ2d at 1951. Probabilities and possibilities are insufficient to
establish inherency. Continental Can, 948 F.2d 1264 at 1269, 20 USPQ2d
at 1749. Tokarz does not expressly or inherently describe a shank made of
metal. Absent a basis for comparison, Tokarz can not describe a handle
made of a material more fragile than the material of the shank.
While we view as correct the Examiner’s finding that one skilled in
the relevant art would recognize that the shank portion of Tokarz handle
would likely be a metal such as chrome plated brass, that finding does not
establish anticipation. Inferences that the person of ordinary in the art might
draw from the express teachings of a reference while relevant to obviousness
under § 103(a), do not establish anticipation. The Federal Circuit
specifically addressed this issue :
The [district court] opinion says anticipation may be
shown by less than “complete anticipation” if one of
ordinary skill may in reliance on the prior art “complete
the work required for the invention”, and that “it is
sufficient for an anticipation ‘if the general aspects are
the same and the differences in minor matters is only
such as would suggest itself to one of ordinary skill in the
art.’ “Those statements relate to obviousness, not
anticipation. Anticipation requires the presence in a
single prior art disclosure of all elements of a claimed
invention arranged as in the claim. A prior art disclosure
that “almost” meets that standard may render the claim
invalid under §103; it does not “anticipate.”
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Connell. v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198
(Fed. Cir. 1983) (citations omitted). .
The Examiner’s finding that the subject matter of Claims 1 and 5 are
anticipated is reversed.
Since the rejections of the remaining claims all rely on Tokarz as
describing the “more fragile” limitation, we reverse the rejection of Claims
2-4 and 6-11 also.
NEW GROUND OF REJECTION
We enter a new ground of rejection of Claim 1. Claim 1 is rejected
under 35 U.S.C. § 103(a) over Tokarz. Tokarz describes a handle assembly
as part of a faucet including a shank (base 20) and handle (lever or handle
body 22).16 The handle 22 may be made of a material including “metal such
as chrome or brass, wood, porcelain or plastic.17” Tokarz is silent as to the
material of the shank or base portion 20. However, the use of metals for the
base and other parts of the faucet is ubiquitous. One having ordinary skill in
the art would recognize, as noted by the Examiner, that the shank portion is
likely to be a metal such as chrome plated brass. It would have been
obvious to use the typical metal base with any of the handle materials
described by Torkarz, including porcelain and plastic. Porcelain and plastic
are materials more fragile than metal. Applicant’s Claim 1 encompasses
subject matter (e.g., a faucet lever with a metal shank or base and a porcelain
or plastic handle) which would have been obvious to a person having
ordinary skill in the art from Tokarz’s teachings.

16 Tokarz, Figure 1 and 2:32-48.
17 Tokarz 1:56-59.
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Applicant argues that Claim 1 requires that the shank be attached to a
door. 18 However, the claim has no such requirement. Claim 1 specifies a
lever “for a door” and that the shank is “to be attached” to a door. These
statements merely describe the context of the lever assembly and do not
impart any essential structure to the claimed combination of handle and
shank. Language that merely states the purpose or intended use of an
invention is generally not treated as limiting the scope of the claim.
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345, 65 USPQ2d 1961, 1964-65 (Fed. Cir. 2003). The combination
of a shank and handle as set forth in the claim describes a structurally
complete invention.
Applicant also argues that the function of the lever assembly (the
combination of a shank and handle) to be attached to a door is different than
the function of Tokarz’s lever assembly as part of a faucet.19 Applicant
further argues that the intended use limitations require a distinct structure
necessary to attach the lever assembly to a door.20 However, the “functions”
merely reflect the intended use of the shank and handle combination and add
nothing to the required structure. Nor does the statement of intended use
import undefined additional structure into the claim. The only required
structure relates to the shank and handle.
We express no view as to the patentability of Claims 2-11 which we
leave to the further consideration of the Examiner in light of the new ground
of rejection.

18 Appeal Br. 4; Reply Br., 1.
19 Appeal Br. 4.
20 Reply Br. 1.
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ORDER
The rejections of Claims 1-11 are reversed.
Claim 1 is unpatentable over Tokarz under 35 U.S.C. 103(a).
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b). That section provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO 7
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 the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
REVERSED AND NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(b)

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