Ex parte Gaines

Board of Patent Appeals and Interferences

Jul 6, 1999

08777413 (B.P.A.I. Jul. 6, 1999)

Application for patent filed December 30, 1996. 1
According to the appellant, the application is a continuation
of Application No. 08/321,243, filed October 11, 1994, now
abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFERSON J. GAINES
____________
Appeal No. 1999-0286
Application No. 08/777,4131
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, 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, 4 to 6 and 9 to 19, which are all of
the claims pending in this application.
Appeal No. 1999-0286
Application No. 08/777,413
We REVERSE.
Appeal No. 1999-0286 Page 3
Application No. 08/777,413
BACKGROUND
The appellant's invention relates to a top platform and
interchangeable guide lane assemblage for vibratory feeders.
An understanding of the invention can be derived from a
reading of exemplary claim 5, which appears in the appendix to
the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hendricks 4,952,109 Aug.
28, 1990
Lofstedt 5,116,185 May 26,
1992
Holcomb et al. (Holcomb) 5,154,316 Oct.
13, 1992
Wiese 5,361,937 Nov. 8,
1994
(filed Nov. 8,
1993)
The claims under appeal stand rejected under 35 U.S.C. §
103 as follows:
(1) Claims 5, 6, 9 to 12 and 14 as being unpatentable over
Holcomb in view of Wiese;
Appeal No. 1999-0286 Page 4
Application No. 08/777,413
(2) Claim 13 as being unpatentable over Holcomb in view of
Wiese, as applied to claim 5, and further in view of Lofstedt;
and
(3) Claims 1, 4 to 6 and 9 to 19 as being unpatentable over
Hendricks in view of Wiese.
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. 10, mailed July 20, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 9, filed April 30, 1998) for the appellant's
arguments thereagainst.
OPINION
Initially we note that the drawing objection set forth in
the final rejection (Paper No. 7, mailed November 25, 1997)
relates to a petitionable matter and not to an appealable
matter. See Manual of Patent Examining Procedure (MPEP) §§
1002 and 1201. Accordingly, we will not review the issue
raised by the appellant on pages 4-8 of the brief.
Appeal No. 1999-0286 Page 5
Application No. 08/777,413
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. Upon evaluation of all the evidence before us, 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. Accordingly, we will
not sustain the examiner's rejection of claims 1, 4 to 6 and 9
to 19 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
Before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. § 103
begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language
of the claim itself. See Smithkline Diagnostics, Inc. v.
Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468,
Appeal No. 1999-0286 Page 6
Application No. 08/777,413
1472 (Fed. Cir. 1988). Accordingly, we will initially direct
our attention to appellant's claims 1, 4 to 6 and 9 to 19 to
derive an understanding of the scope and content thereof.
Before turning to the proper construction of the claims,
it is important to review some basic principles of claim
construction. First, and most important, the language of the
claim defines the scope of the protected invention. Yale Lock
Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The scope of
letters patent must be limited to the invention covered by the
claim, and while the claim may be illustrated it cannot be
enlarged by language used in other parts of the
specification."); Autogiro Co. of Am. v. United States, 384
F.2d 391, 396, 155 USPQ 697, 701 (Ct. Cl. 1967) ("Courts can
neither broaden nor narrow the claims to give the patentee
something different than what he has set forth [in the
claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing
Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the
words of the claim" and words "will be given their ordinary
Appeal No. 1999-0286 Page 7
Application No. 08/777,413
and accustomed meaning, unless it appears that the inventor
used them differently." Envirotech Corp. v. Al George, Inc.,
730 F.2d 753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984).
Second, it is equally "fundamental that claims are to be
construed in the light of the specification and both are to be
read with a view to ascertaining the invention." United
States v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
Furthermore, the general claim construction principle
that limitations found only in the specification of a patent
or patent application should not be imported or read into a
claim must be followed. See In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978). One must be careful not to
confuse impermissible imputing of limitations from the
specification into a claim with the proper reference to the
specification to determine the meaning of a particular word or
phrase recited in a claim. See E.I. Du Pont de Nemours & Co.
v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129,
1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988).
Appeal No. 1999-0286 Page 8
Application No. 08/777,413
With this as background, we find it necessary to
determine the meaning of the phrase "said plurality of
mounting holes being formed in an orderly rank and file
configuration" as recited in all the claims under appeal.
A review of the disclosure reveals that the appellant did
not provide an explicit definition for this phrase.
Furthermore, it is apparent that the appellant did not use
"rank and file" in its ordinary and accustomed manner.
Accordingly, we must determine the implicit definition for
this phrase from the disclosure (i.e., the specification and
drawings). In this regard, the specification reveals: (1) the
appellant was concerned with the X and Y coordinates of the
pick point (pp. 3 and 11); (2) the mounting holes 42 are
provided in a uniformly spaced rectangular array with
preferably eight or nine rows of approximately fifteen
mounting holes, however Figure 3 shows an acceptable ten by
ten grid of mounting holes (p. 7); (3) the eight or nine rows
of mounting holes are spaced about 0.375 inches apart and the
fifteen mounting holes in each row are spaced about 0.197
inches apart (p. 9); (4) each guide lane 20 is provided with
Appeal No. 1999-0286 Page 9
Application No. 08/777,413
This meaning is consistent with the appellant's argument2
for patentability set forth on pages 14-18 of the brief
concerning the two-dimensional adjustability (i.e., X and Y
coordinates) at the pick-up point.
two mounting holes 44 which are spaced apart about 0. 75
inches so as to align with the mounting holes 42 (p. 10); and
(5) the orderly rank and file configuration of the mounting
holes facilitates adjustment of the guide lanes (abstract).
From this review of the appellant's disclosure, we have
determined that the appropriate meaning for the phrase "said
plurality of mounting holes being formed in an orderly rank
and file configuration" is that the mounting holes are formed
in configuration having at least a three by three grid wherein
the spacing between rows is uniform (i.e., constant) and the
spacing between the holes in each row is uniform (i.e.,
constant). 2
With this meaning of the phrase "said plurality of
mounting holes being formed in an orderly rank and file
configuration" having been determined, we now turn to the
examiner's rejections under 35 U.S.C. § 103.
Appeal No. 1999-0286 Page 10
Application No. 08/777,413
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
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Rejections (1) and (2)
We will not sustain the rejection of claims 5, 6, 9 to 12
and 14 as being unpatentable over Holcomb in view of Wiese.
Likewise, we will not sustain the rejection of claim 13 as
being unpatentable over Holcomb in view of Wiese, as applied
to claim 5, and further in view of Lofstedt.
When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art
Appeal No. 1999-0286 Page 11
Application No. 08/777,413
to make the selection made by the appellant. Obviousness
cannot be established by combining the teachings of the prior
art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art and its relationship
to the appellant's invention. As in all determinations under
35 U.S.C. § 103, the decision maker must bring judgment to
bear. It is impermissible, however, simply to engage in a
hindsight reconstruction of the claimed invention, using the
appellant's structure as a template and selecting elements
from references to fill the gaps. The references themselves
must provide some teaching whereby the appellant's combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations omitted). That
is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik
GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462,
Appeal No. 1999-0286 Page 12
Application No. 08/777,413
221 USPQ 481, 488 (Fed. Cir. 1984). In determining
obviousness/nonobviousness, an invention must be considered
"as a whole," 35 U.S.C. § 103, and claims must be considered
in their entirety. Medtronic, Inc. v. Cardiac Pacemakers,
Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
With this as background, it is our opinion that the
appellant (brief, pp. 14-19) is correct that there is no
reason/suggestion/motivation for combining Holcomb and Wiese
in the manner set forth in these rejections. That is, we see
no reason absent the use of impermissible hindsight to have
provided Holcomb's deck member 120 with a plurality of
mounting holes formed in an orderly rank and file
configuration.
Since all the limitations of claims 5, 6 and 9 to 14
would not have been suggested by the applied prior for the
reasons stated above, the decision of the examiner to reject
claims 5, 6 and 9 to 14 under 35 U.S.C. § 103 is reversed.
Rejection (3)
Appeal No. 1999-0286 Page 13
Application No. 08/777,413
We will not sustain the rejection of claims 1, 4 to 6 and
9 to 19 as being unpatentable over Hendricks in view of Wiese.
It is our opinion that the appellant (brief, pp. 21-22)
is correct that there is no reason/suggestion/motivation for
combining Hendricks and Wiese in the manner set forth in this
rejection. That is, we see no reason absent the use of
impermissible hindsight to have provided Hendricks' deck
member 24 with a plurality of mounting holes formed in an
orderly rank and file configuration.
Since all the limitations of claims 1, 4 to 6 and 9 to 19
would not have been suggested by the applied prior for the
reasons stated above, the decision of the examiner to reject
claims 1, 4 to 6 and 9 to 19 under 35 U.S.C. § 103 is
reversed.
Appeal No. 1999-0286 Page 14
Application No. 08/777,413
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 4 to 6 and 9 to 19 under 35 U.S.C. § 103 is
reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0286 Page 15
Application No. 08/777,413
RICHARD R. MYBECK
8010 EAST MORGAN TRAIL
SUITE 10
SCOTTSDALE, AZ 85258-1234
APPEAL NO. 1999-0286 - JUDGE NASE
APPLICATION NO. 08/777,413
APJ NASE
APJ McQUADE
APJ ABRAMS
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 01 Jul 99
FINAL TYPED:
Gloria: Change panel order