Ex parte Ferre

Board of Patent Appeals and Interferences

Jan 28, 1999

08220462 (B.P.A.I. Jan. 28, 1999)

Application for patent filed March 31, 1994. According1
to appellant, the application is a continuation of Application
07/977,837, filed November 17, 1992, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSE M. RODRIGUEZ FERRE
________________
Appeal No. 96-1608
Application 08/220,4621
________________
HEARD: JANUARY 11, 1999
________________
Before ABRAMS, STAAB and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Jose Manuel Rodriguez Ferre appeals from the final
rejection of claims 3, 7, 9, 10, 12 and 14 through 16, all of
Appeal No. 96-1608
Application 08/220,462
Claim 7 has been amended subsequent to final rejection.2
An English language translation of this reference,3
prepared by the Patent and Trademark Office, is appended
hereto.
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the claims pending in the application. We reverse and enter2
new rejections of claims 3, 7, 9, 10, 12 and 14 through 16
pursuant to 37 CFR § 1.196(b).
The invention relates to an articulated skeletal frame
for a doll. Copies of representative claims 9 and 10 appear
in the appendix to the appellant’s brief (Paper No. 25).
The references relied upon by the examiner as evidence of
obviousness are:
Rapata 3,539,234 Nov. 10, 1970
Cotey et al. (Cotey) 4,268,991 May 26, 1981
Refabert 4,954,118 Sept. 4, 1990
Deichmann 35,744 Jun. 15, 19353
(Dutch Patent Document)
Claims 3, 9, 10, 12, 15 and 16 stand rejected under 35
U.S.C. § 103 as being unpatentable over Deichmann in view of
Rapata and Cotey, and claims 7 and 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over Deichmann in view of
Appeal No. 96-1608
Application 08/220,462
The examiner has withdrawn the 35 U.S.C. § 112, second4
paragraph, rejection of claim 7 set forth in the final
rejection (see page 5 in the examiner’s answer, Paper No. 26).
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Rapata, Cotey and Refabert.4
Reference is made to the appellant’s brief (Paper No. 25)
and to the examiner’s answer (Paper No. 26) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Deichmann, the examiner's primary reference, discloses an
articulated doll having a head 1, an upper body 2, a lower
body 3, overarms 4, 4', forearms 5, 5, hands 6, 6', upper legs
7, 7', lower legs 8, 8 and feet 9, 9'. Some of these parts
consist of a pair of parallel plates bolted together in spaced
relationship. These plate-like parts articulate with respect
to one another via links 14 having ball-shaped ends 15, 15'
frictionally received in recesses formed in the edges of the
plates (see Figure 3).
As conceded by the examiner (see page 3 in the answer),
the Deichmann doll does not meet the limitations in
independent claims 9 and 10 relating to the spherical hollow
helmet-shaped socket portion. These limitations require the
Appeal No. 96-1608
Application 08/220,462
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socket portion to include a single opening on a distal end
thereof and a single semicircular recess formed in the single
opening for receiving a section of a link shaft to facilitate
a natural multidirectional movement of the members of the
claimed structure with a primary movement in a single
direction. The examiner's reliance on Cotey to overcome this
deficiency is not well taken.
Cotey discloses a doll 10 having an articulated skeletal
framework 12 whose components are joined to one another by
complementary balls and sockets formed on adjacent component
ends.
In the examiner's view, it would have been obvious to one
of ordinary skill in the art to provide the Deichmann
construction with sockets of the sort taught by Cotey to
receive the ball-shaped ends 15, 15' of Deichmann's connecting
links 14 "as obvious alternative structures and/or to provide
a better fitting socket for the ball elements, and a less
bulky skeleton for the doll" (answer, page 4). As for the
Appeal No. 96-1608
Application 08/220,462
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requirement in claims 9 and 10 that the socket portion include
a single semicircular recess formed in the single opening for
receiving a section of a link shaft to facilitate a natural
multidirectional movement with a primary movement in a single
direction, the examiner tacitly acknowledges that Cotey's
sockets do not include such recesses. Nonetheless, the
examiner submits that "Deichmann clearly discloses such a
recess for the socket to allow the shaft portion #14 of the
link to move therein to define the movement of the link as in
appellant's structure" (answer, page 5).
The only suggestion for this highly selective combination
of articulated joint features disclosed by Deichmann and Cotey
stems from hindsight knowledge derived from the appellant's
own teachings. The use of such hindsight knowledge to support
a conclusion of obviousness is, of course, impermissible.
Since Rapata and Refabert do not cure this shortcoming in the
examiner's evidence of obviousness, we shall not sustain the
standing 35 U.S.C. § 103 rejections of claims 9 and 10, or of
claims 3, 7, 12 and 14 through 16 which depend therefrom.
Appeal No. 96-1608
Application 08/220,462
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The following rejections are entered pursuant to 37 CFR
§ 1.196(b).
Claims 9 and 10, and claims 3, 7, 12 and 14 through 16
which depend therefrom, are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellant regards as
the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In determining whether this standard is met, the definiteness
of the language employed in the claims must be analyzed, not
in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would
be interpreted by one possessing the ordinary level of skill
in the pertinent art. Id. In the present case, it is not
clear what is meant by the recitations in the first clauses of
independent claims 9 and 10 that all of the members are of a
substantially cylindrical shape. The underlying disclosure
lacks any apparent mention or showing of such shape. Thus,
Appeal No. 96-1608
Application 08/220,462
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the metes and bounds of the claimed subject matter are
indefinite.
Claims 9 and 10, and claims 3, 7, 12 and 14 through 16
which depend therefrom, are rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which fails
to comply with the written description provision of this
section of the statute.
The test for determining compliance with the written
description provision is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). The content of the drawings may also
be considered in determining compliance with the written
description requirement. Id. Here, the disclosure of the
application as originally filed would not reasonably convey to
the artisan that the appellant had possession at that time of
an articulated structure wherein all of the members are of a
substantially cylindrical shape as is now recited in the first
Appeal No. 96-1608
Application 08/220,462
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clauses of independent claims 9 and 10.
In summary:
a) the decision of the examiner to reject 3, 7, 9, 10, 12
and 14 through 16 under 35 U.S.C. § 103 is reversed; and
b) new rejections of 3, 7, 9, 10, 12 and 14 through 16
are entered pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the 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 proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
Appeal No. 96-1608
Application 08/220,462
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application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1608
Application 08/220,462
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Birch, Stewart, Kolasch & Birch
P. O. Box 747
Falls Church, VA 22040-0747
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