Ex parte Emmons

Board of Patent Appeals and Interferences

Jul 13, 1999

08839065 (B.P.A.I. Jul. 13, 1999)

Application for patent filed April 23, 1997. 1
Claim 1 was amended subsequent to the final rejection.2
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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte J. BRUCE EMMONS
____________
Appeal No. 1999-1523
Application No. 08/839,0651
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 8. Claims 9 to 19 have been2
indicated as being allowable. Claim 20 has been canceled.
We AFFIRM-IN-PART.
Appeal No. 1999-1523 Page 2
Application No. 08/839,065
BACKGROUND
The appellant's invention relates to a connector. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which appears in the supplemental
appendix of claims (Paper No. 11, filed December 22, 1998).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rensch 3,688,461 Sept. 5,
1972
Hollis, Sr. 3,969,563 July 13,
1976
Claims 1 to 3 and 6 to 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Rensch.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Rensch.
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Rensch in view of Hollis, Sr.
Appeal No. 1999-1523 Page 3
Application No. 08/839,065
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 12, mailed January 4, 1999) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 10, filed November 30, 1998) and reply brief
(Paper No. 13, filed March 8, 1999) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Claim 1
We sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b).
Appeal No. 1999-1523 Page 4
Application No. 08/839,065
Anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or
the recognition of inherent properties that may be possessed
by the prior art reference. See Verdegaal Bros. Inc. v. Union
Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.),
cert. denied, 484 U.S. 827 (1987). A prior art reference
anticipates the subject of a claim when the reference
discloses every feature of the claimed invention, either
explicitly or inherently (see Hazani v. Int'l Trade Comm'n,
126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the
law of anticipation does not require that the reference teach
what the appellant is claiming, but only that the claims on
appeal "read on" something disclosed in the reference (see
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984)).
Appeal No. 1999-1523 Page 5
Application No. 08/839,065
For convenience, we will make the following3
designations: (1) the upper left junction element 2 is
designated junction element 2A; (2) the bottom left junction
element 2 is designated junction element 2B; (3) the bottom
center junction element 2 is designated junction element 2C;
(4) the rightmost girder running between junction element 2A
and junction element 2C is designated girder 3D; (5) the
leftmost girder running between junction element 2A and
junction element 2C is designated girder 3E; (6) the rightmost
girder running between junction element 2A and junction
element 2B is designated girder 3F; (7) the leftmost girder
running between junction element 2A and junction element 2B is
designated girder 3G; (8) the bottommost girder running
between junction element 2B and junction element 2C is
designated girder 3H; and (9) the topmost girder running
between junction element 2B and junction element 2C is
designated girder 3I.
We agree with the examiner than claim 1 is anticipated by
Rensch since the subject matter recited in claim 1 "reads on"
Rensch. We read claim 1 on Rensch's Figure 1 as follows: 3
A connector, comprising:
a first connecting interface adapted to be connected to
and across a cross-section of a first beam (the radial arms of
Rensch's junction elements 2A and 2C extending at the three
o'clock position, the web of Rensch's junction element 2A
extending from the three o'clock positioned arm to the five
o'clock positioned arm, the web of Rensch's junction element
Appeal No. 1999-1523 Page 6
Application No. 08/839,065
2C extending from the 11 o'clock positioned arm to the three
o'clock positioned arm, and if needed girder 3D);
a second connecting interface adapted to be connected to
and across a cross-section of a second beam (the radial arms
of Rensch's junction elements 2A and 2B extending at the 11
o'clock position, the web of Rensch's junction element 2A
extending from the seven o'clock positioned arm to the 11
o'clock positioned arm, the web of Rensch's junction element
2B extending from the 11 o'clock positioned arm to the one
o'clock positioned arm, and if needed girder 3G);
a first load bearing member having two ends and a length
extending generally across said first connecting interface
(Rensch's girder 3E);
a second load bearing member having two ends and a length
extending generally across said second connecting interface,
one of said second load bearing member ends being adjacent one
of said first load bearing member ends (Rensch's girder 3F);
a third load bearing member having two ends and extending
generally between the other said end of said first load
bearing member and the other said end of said second load
bearing member (Rensch's girder 3I); and
Appeal No. 1999-1523 Page 7
Application No. 08/839,065
wherein said first, second and third load bearing members
are arranged in a generally triangular arrangement (see Figure
1 of Rensch wherein girders 3E, 3F and 3I are shown in a
triangular arrangement) such that a load along one of the
beams is transferred along at least one of said load bearing
members (a load along one of the beams (e.g., a load applied
from the right in Figure 1 of Rensch) is inherently
transferred along at least one of the load bearing members
(i.e., girders 3E, 3F and 3I)).
The appellant's arguments concerning claim 1 (brief, pp.
6-7, and reply brief, pp. 1-2) are unpersuasive for the
following reasons. First, claim 1 is anticipated by Rensch
since claim 1 "reads on" Rensch as set forth above. Second,
claim 1 is directed to the connector per se and not the
combination of the connector, a first beam and a second beam.
Third, we do not agree with the appellant's position (brief,
p. 6) that it is not proper to read Rensch's girders and
junction elements as both a "connector" and a "beam." Lastly,
while Rensch's framework shown in Figure 1 might not actually
be subjected to lateral loads (e.g., from the right in Figure
Appeal No. 1999-1523 Page 8
Application No. 08/839,065
See page 4 of the appellant's brief.4
1), we nevertheless find that as set forth above that Rensch's
framework is inherently capable of transferring a lateral load
from a beam to at least one of the load bearing members (i.e.,
girders 3E, 3F and 3I).
For the reasons stated above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 102(b) is
affirmed.
Claims 2, 3 and 6 to 8
The appellant has grouped claims 1 to 3 and 6 to 8 as
standing or falling together. Thereby, in accordance with 4
37 CFR § 1.192(c)(7), claims 2, 3 and 6 to 8 fall with claim
1. Thus, it follows that the decision of the examiner to
reject claims 2, 3 and 6 to 8 under 35 U.S.C. § 102(b) is also
affirmed.
Claims 4 and 5
We will not sustain the rejection of claims 4 and 5 under
Appeal No. 1999-1523 Page 9
Application No. 08/839,065
35 U.S.C. § 103.
Claim 4 reads as follows: "The connector of claim 1,
wherein said connector is formed as a single-piece from a
casted piece of metal."
The examiner found (answer, p. 5) that "Rensch sets forth
the invention except for the connector, including the load
bearing members, being formed integrally as a single-piece."
Thereafter, the examiner took the position that
case law dictates that forming several pieces integrally
as a single-piece is not considered to be patentable
subject matter, and that it would have been obvious to
one of ordinary skill in the art to modify the
configuration of Rensch to be formed as an integral
single-piece, in order to increase the rigidity of the
assembly, and to reduce the number of steps required to
produce the structure.
The appellants argue (brief, pp. 7-8, and reply brief,
pp. 2-3) that Rensch requires "that the junction elements 2
are separate pieces from the girders 3" and that there is no
suggestion or incentive to make Rensch's lattice structure
into a single piece. Lastly, the appellant concludes that the
Appeal No. 1999-1523 Page 10
Application No. 08/839,065
examiner has "failed to establish a prima facie case of
obviousness for Claims 4 and 5."
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
Appeal No. 1999-1523 Page 11
Application No. 08/839,065
We agree with the appellant that the examiner has failed
to establish a prima facie case of obviousness for claims 4
and 5. In that regard, it is our determination that the
claimed limitation of claim 4 (i.e., said connector is formed
as a single-piece from a casted piece of metal) would not have
been obvious to one of ordinary skill in the art at the time
the invention was made from the teachings of the applied prior
art (i.e., Rensch alone or combined with Hollis). In
addition, we note that the examiner incorrectly drew from case
law turning on specific facts, a general obviousness rule:
namely, that forming several pieces integrally as a single-
piece is not considered to be patentable subject matter. No
such per se rule exists. The examiner's citation (answer, p.
8) of In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) or
any other case as a basis for rejecting claims that differ
from the prior art by reciting a single-piece is improper, if
it sidesteps the fact-intensive inquiry mandated by 35 U.S.C.
§ 103. Thus, in this case, one must determine if it would
have been obvious to one of ordinary skill in the art at the
time the invention was made to make Rensch's connector as a
single-piece. We think not for the reasons expressed by the
Appeal No. 1999-1523 Page 12
Application No. 08/839,065
We view the casting limitation of claim 4 (i.e., said5
connector is formed as a single-piece from a casted piece of
metal) as presenting a structural limitation not accounted for
in the examiner's rejection of claim 4.
appellant. Furthermore, even if it would have been obvious to
make Rensch's connector as a single-piece of metal, there is
no suggestion of forming such a single-piece from "a casted
piece of metal" as recited in claim 4.5
For the reasons stated above, the decision of the
examiner to reject claims 4 and 5 under 35 U.S.C. § 103 is
reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3 and 6 to 8 under 35 U.S.C. § 102(b) is affirmed
and the decision of the examiner to reject claims 4 and 5
under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-1523 Page 13
Application No. 08/839,065
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1523 Page 14
Application No. 08/839,065
HOWARD & HOWARD
1400 NORTH WOODWARD AVENUE
SUITE 101
BLOOMFIELD HILLS, MI 48304-2856
APPEAL NO. 1999-1523 - JUDGE NASE
APPLICATION NO. 08/839,065
APJ NASE
APJ STAAB
APJ ABRAMS
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 01 Jul 99
FINAL TYPED: