Ex Parte Egnor

Board of Patent Appeals and Interferences

Mar 30, 2007

08828560 (B.P.A.I. Mar. 30, 2007)

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for publication and is not binding precedent of the Board.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 John M. Egnor
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Appeal 2005-1122
Application 08/828,560
Technology Center 3600
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Decided: March 30, 2007
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and ANTON W.
FETTING, Administrative Patent Judges.

PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-12. These are
the only claims in the application. It is noted that the Examiner has omitted
claim 5 from the grounds of rejection. We assume that this is an oversight on
the Examiner’s part and that claim 5 was intended to have been rejected
along with the independent claim from which it depends. We include it in
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the rejected claims in our decision. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 134.
The claimed invention is directed to a wheel stop for commercial
kitchen equipment. The claimed subject matter may be further understood
with reference to independent claim 1 appended to Appellant’s brief.
The references of record relied upon as evidence of obviousness are:
Wilson et al.(Wilson) US 2,007,514 Jul. 9, 1935
Gregg US 2,441,627 May 18, 1948
Rapp US 2,870,872 Jan. 27, 1959
THE REJECTIONS
In the Examiner’s answer mailed July 17, 2003, the examiner has
included the following rejections:
Claims 1, 2, 6/1, 6/2, 7, 10, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gregg in view of Rapp.
Claims 3, 4, 5, 6/3, 6/4, 8, and 9 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Gregg in view of Rapp and Wilson. As noted
above, we assume that the Examiner intended claim 5 in this group of
claims.
Notwithstanding the Examiner’s statement on page 2 of the
Examiner’s Answer, we do not find a rejection of claim 12 under 35 U.S.C.
§ 112, second paragraph, at any place in the Answer. Accordingly, we
conclude that the any rejection under section 112 has been withdrawn by the
Examiner.
For Appellant’s arguments with respect to these rejections, reference
is made to the appeal brief. Additionally, we note Appellant has furnished
declarations in rebuttal of the Examiner’s prima facie case of obviousness.
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OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, it is
our conclusion of law that claims 1-11 are obvious over the applied prior art.
With respect to claim 12, it is our legal conclusion that the claim is so
indefinite as to make a proper construction thereof impossible. Accordingly,
we enter a rejection of claim 12 under 35 U.S.C. § 112, second paragraph.
Our reasons follow.
OBVIOUSNESS
Turning to the obviousness rejections, it is our understanding from the
Brief that Appellant does not argue or challenge, in any manner, the
Examiner’s prima facie case of obviousness, based on the references, as this
prima facie case applies to claims 1-11. Instead, Appellant furnishes three
declarations under 37 C.F.R. § 1.132 as evidence of secondary
considerations. When such evidence is presented, it is our duty to carefully
consider all evidence anew. See, for example, In re Eli Lilly Co., 902 F.2d
943, 945, 14 USPQ2d 1741, 1443 (Fed. Cir. 1990). We are also mindful that
objective evidence of non-obviousness may be entitled to more or less
weight depending upon its nature and its relationship with the merits of the
invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539, 218
USPQ 871, 879 (Fed. Cir. 1983). We will consider the declaration evidence
in detail below.
A first declaration is by Marco Whitty. Mr. Whitty is a shift engineer
in facilities management at Foxwoods, a casino resort. It is unclear how long
Mr. Whitty has held such a position, what his training and formal education
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might be, and whether he could be considered either as an expert or one of
ordinary skill in the kitchen equipment art.
Mr. Whitty states that he believes “that there is a definite need for the
proposed invention….” This testimony appears to be both prospective and
forward-looking and in the nature of speculation. The multiple averments
that state that the invention would solve this or that problem convey to us
that Mr. Whitty has not actually used the invention, and for this reason we
understand the testimony to be speculative and forward-looking. Apparently
it cannot be said to be based on actual experience using the claimed subject
matter.
In the next paragraph, Mr. Whitty states he has attempted to solve the
problem that the invention would solve. It is difficult to assign a value to this
testimony as we cannot ascertain whether Mr. Whitty is one of ordinary skill
in the kitchen equipment art. We do credit the portions of the declaration
that discuss problems such as non-working fire safety equipment and
employee burns. We do not doubt that these are recognized problems Mr.
Whitty has witnessed. However, without actually practicing the invention,
the assumption that the claimed subject matter is a solution to these
problems rests on little actual evidence. For these reasons, the declaration of
Mr. Whitty is entitled to but little weight.
A second declaration is by Louis Endsley. Endsley is the Director of
Facilities Design and Construction at the Showboat Casino in Atlantic City,
New Jersey. While an employment history is given for Mr. Endsley, the
information is not put into perspective by explaining how the employment
history might relate to the field of the invention. We are unable to determine
whether he is an expert or a person of ordinary skill in the kitchen equipment
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art. Mr. Endsley, like Mr. Whitty, states that there is a definite need for the
proposed invention. He states that he has attempted to solve the problem
which Mr. Egnor’s invention would solve. Here again the averments seem to
be prospective in nature. Mr. Endsley does not state that the invention
actually does solve the problems associated with kitchen equipment, only
that it would solve the problem. This again raises the issue of whether the
declarant has actually seen the device in operation and can attest that it
actually worked to solve the problems.
Lastly, Appellant has provided a third declaration, this declaration by
Wallace Shield, a fire protection official for the municipality of Atlantic
City, New Jersey. Since Mr. Shield is a public employee, we presume he is a
person of ordinary skill in the fire protection art. Mr. Shield states that he
believes that there is a definite need for the proposed invention. He states
that many installation of kitchen equipment are not located properly, and
that the invention “would solve this problem.” Here again the evidence
offered is speculative and forward-looking in nature. Mr. Shield fails to state
that he has seen the invention actually operate to solve the problems he has
identified in the industry.
As noted above, the three witnesses do not state that they have seen
the invention function and that it does in fact solve the problems they have
recognized in the industry. Instead, their evidence is seen to be prospective
in nature and based on their speculation that the invention will solve a need
in the field of kitchen equipment safety. While the declarations provide
some evidence of long-felt need, the bulk of the averments appear to be
mere suppositions on the part of the declarants. They present little factual
information and appear to be merely laudatory. See In re Vamco Machine &
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Tool Inc., 752 F.2d 1564, 1574, 224 USPQ 617, 624 (Fed. Cir. 1985) and
Jenn-Air Corp. v. Modern Maid Co., 499 F.Supp 320, 209 USPQ 295, 301-
02 (D. Del. 1980). The praise set forth in the declarations appears to be
evoked by the general concept or overall idea of the invention. At most, the
declarations could be said to regard the prospective use of the invention as
promising. Note In re Fielder, 471 F.2d 640, 646, 176 USPQ 300, 309
(CCPA 1973)(At best, the evidence shows several instances of use and some
favorable reaction thereto which holds forth a promise of possible future
use). In short, we find that the declarations state Appellant’s concept is a
good idea and that it could be a useful tool. These are merely forward-
looking statements based on the expectations of the declarants and hardly
provide substantial evidence to rebut the unargued prima facie case of
obviousness established by the Examiner.
Considering all the evidence anew, including the Examiner’s prima
facie case and all of Appellant’s evidence of secondary considerations, it is
our legal conclusion that the evidence for obviousness outweighs the
evidence against obviousness. The rejections of claims 1-11 are sustained.
Turning to claim 12, we note the following errors and inaccuracies
that render the claimed subject matter indefinite within the purview of 35
U.S.C. § 112, second paragraph. In the second line of claim 12, as the line
appears in the second page of the claims in Appellant’s appendix to the
brief, we note there are words missing as represented by the bracket after the
clause “shifting of the” and before the comma. On the next page at line 4, it
is noted that the letter “d” is missing after the word “space” as the term
“space ramps” has not been previously recited. In line 6, after the comma,
we are unable to ascertain whether “by application of the displacing
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force…” is to be considered another positively recited step in Appellant’s
claimed method. Perhaps Appellant means that the application of the
displacing force is merely a result. In line 8, on this page, there appears to be
text missing after the phrase “downward force on” as represented by the
bracketed text. In that same line the expression “such rolling” has no
antecedent. In line 9, does the expression “wheel up the ramp” refer to one
of the opposed spaced ramps or to a new ramp not previously recited? In line
10, we note the reference to “its wheel.” However, “its wheel” refers back to
a clause the subject of which is a wheel. It is doubtful a wheel has another
wheel attached thereto. In the last line of the claim it is unclear whether the
rigid surface might be the floor recited in the first line of the claim. Finally,
it is unclear how the commercial kitchen equipment is secured to the rigid
surface by use of the securing means, since there is no recited relationship
between the securing means and any other recited structure such as a wheel,
etc.
All the words in a claim must be considered in judging the
patentability of the claim against the prior art. If no reasonable definitive
meaning can be ascribed to certain claim terms the claim does not become
obvious—the claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970). Our analysis of the claim indicates that
considerable speculation as to the meaning of terms employed therein and
assumptions as to the scope of such a claim needs to be made. We do not
think a rejection under section 103 should be based on such speculation and
assumptions. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). Accordingly, we reverse the rejection under 35 U.S.C. § 103 and
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enter our own rejection under 35 U.S.C. § 112, second paragraph, under the
provisions of 37 CFR § 41.50(b).
Claim 12 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. The reasons for this rejection are stated above.

CONCLUSION AND ORDER
The rejections of claims 1-11 are affirmed. The rejection of claims 12
under § 103 is reversed. A new rejection of claim 12 has been entered by the
Board.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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AFFIRMED-IN-PART; REJECTION UNDER 37 CFR § 41.50(b)

William F. Pate, III )
Administrative Patent Judge )
)
) BOARD OF PATENT
Jennifer D. Bahr )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Anton W. Fetting )
Administrative Patent Judge )

WFP/lp

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Jim Zegeer
801 North Pitt Street
Alexandria, VA 22314
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