Ex parte Fink

Board of Patent Appeals and Interferences

Mar 21, 2000

08816559 (B.P.A.I. Mar. 21, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARTIN FINK
____________
Appeal No. 1999-2832
Application No. 08/816,559
____________
ON BRIEF
____________
Before STAAB, NASE, and GONZALES, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9 to 17. Claims 18 to 21 have been
objected to as depending from a non-allowed claim. Claims 1
to 8 have been canceled.
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
Appeal No. 1999-2832 Page 2
Application No. 08/816,559
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Application No. 08/816,559
BACKGROUND
The appellant's invention relates to a sliding door
arrangement. A copy of the claims under appeal is set forth
in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims (the applied prior
art) are:
Kaptur et al. (Kaptur) 3,392,812 July 16,
1968
Moreuil 5,077,938 Jan. 7,
1992
Monot 2,118,667 Nov. 2,
1983
(United Kingdom)
Claims 9 to 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Monot in view of Moreuil and Kaptur.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 24,
mailed June 21, 1999) for the examiner's complete reasoning in
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support of the rejection, and to the brief (Paper No. 23,
filed January 26, 1999) for the appellant's arguments
thereagainst.
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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, and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
The obviousness rejection
We will not sustain the rejection of claims 9 to 17 under
35 U.S.C. § 103.
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 would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
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Application No. 08/816,559
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Upon our evaluation of all the evidence before us (i.e.,
the applied prior art), it is our conclusion that the evidence
adduced by the examiner is insufficient to establish a prima
facie case of obviousness with respect to the claims under
appeal. Specifically, claim 9 includes the following
limitations:
a freewheel mounted on the first end of the spindle so as
to enable the spindle to rotate when the at least one
door leaf is moving in a closing direction thereof, the
freewheel having a component which is stationary relative
to but capable of rotating together with the spindle, and
a releasable device selected from the group comprising a
brake and a clutch configured to prevent rotation of the
component of the freewheel.
The above-quoted limitations are not suggested by the
applied prior art. In that regard, we have reviewed all the
teachings of the applied prior art and fail to find any
teaching whatsoever of a freewheel, let alone a suggestion
that would have led an artisan to have modified the primary
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reference (i.e., Monot) to have included a freewheel arranged
as set forth in the above-quoted limitations.
In our view, the only possible suggestion for modifying
the applied prior art to arrive at the claimed invention stems
from hindsight knowledge derived from the appellant's own
disclosure.
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Application No. 08/816,559
The use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the
examiner to reject claims 9 to 17 under 35 U.S.C. § 103 is
reversed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 9 to 21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
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Application No. 08/816,559
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Claim 9 (the only independent claim pending in this
application) includes the limitation "a releasable device
selected from the group comprising a brake and a clutch
configured to prevent rotation of the component of the
freewheel [emphasis ours]."
Ex parte Markush, 1925 C.D. 126 (Comm'r Pat. 1925)
sanctions claiming a group as consisting of certain specified
members. It is well-settled that it is improper to use the
term "comprising" instead of "consisting of." See Ex parte
Dotter, 12 USPQ 382 (Bd. App. 1931) and Manual of Patent
Examining Procedure (MPEP) § 2173.05(h). Thus, it is our view
that claim 9, and all claims dependent thereon, is indefinite
for utilizing the term "comprising" in the limitation "a
releasable device selected from the group comprising a brake
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and a clutch configured to prevent rotation of the component
of the freewheel."
Additionally, it is our opinion that the following
limitation of claim 9 is vague and indefinite: "the drive
being
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Application No. 08/816,559
configured to one of rotate the spindle so that the nut
linearly moves the at least one door leaf and directly
linearly move the at least one door leaf." It is unclear to
us exactly what this limitation is reciting, thus the metes
and bounds of claim 9 are not known. Specifically, the use of
the phrase "one of" and the repetition that the at least one
door leaf is moved linearly renders claim 9 indefinite.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 9 to 17 under 35 U.S.C. § 103 is reversed and a new
rejection of claims 9 to 21 under 35 U.S.C. § 112, second
paragraph, has been added pursuant to provisions of 37 CFR §
1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, "[a]
new ground of rejection shall not be considered final for
purposes of judicial review."

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Application No. 08/816,559
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
ground 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
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. . . .
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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)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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FRIEDRICH KUEFFNER
342 MADISON AVENUE
NEW YORK, NY 10173
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JVN/dl