Ex parte Granger

Board of Patent Appeals and Interferences

Mar 27, 1998

08441984 (B.P.A.I. Mar. 27, 1998)

Application for patent filed May 16, 1995. According to appellant,1
this application is a continuation of Application 08/115,516, filed September
1, 1993 (Abandoned).
1

Paper No. 20
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TIMOTHY P. GRANGER
______________
Appeal No. 96-4045
Application 08/441,9841
_______________
ON BRIEF
_______________
Before Calvert, Abrams and Pate, Administrative Patent Judges.
Pate, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims
4 through 6 and 21 through 23. These are the only claims
Appeal No. 96-4045
Application 08/441,984
2
remaining in the application.
The claimed invention is directed to a stamped door lock
bracket for an automobile or the like. The bracket is
comprised of a flange portion which is attached to the door
frame with screws, a generally perpendicularly extending base
portion, and an aperture portion with an aperture therein to
interact with the door latch bolt.
Claim 22, reproduced below, is further illustrative of
the claimed subject matter.
22. A one piece stamped door lock bracket comprising:
a unitary planar bank form defining a base portion having
one end and an opposite end; a flange portion complementary
with said one end of said base portion; and an apertured
portion having one end integral with said opposite end of said
base portion and an opposite end extending in a direction away
from said base portion;
means for deforming said one end of said apertured
portion with respect to said base portion such that said
opposite end of said apertured portion is substantially
perpendicular to said base portion and flange portion, said
deforming means further deforming said base portion with
respect to said flange portion such that said apertured
portion is substantially perpendicular to said flange portion;
and
means for securing said opposite end of said apertured
Appeal No. 96-4045
Application 08/441,984
3
portion to said flange portion.
The reference of record relied upon by the examiner as
evidence of anticipation under 35 U.S.C. § 102(b) is:
Peterson et al. (Peterson) 4,998,759 Mar. 12,
1991
The following rejections are before us on appeal. Claim
22 has been rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. According to the examiner, lines 7
through 12 are not drawn to the structural characteristics of
the bracket but are drawn to some structure that is separate
from and manipulates the bracket.
Claims 4 through 6 and 21 through 23 have been rejected
under 35 U.S.C. § 102(b) as anticipated by Peterson.
According to the examiner, Peterson discloses a bracket formed
from a unitary planar blank with a base 24, a flange 26, and
an aperture portion 30, 34, 36, 38 having one end integral
with the opposite end of the base portion 24. Reference is
Appeal No. 96-4045
Application 08/441,984
4
made to the examiner’s answer, page 4 for the further details
of this 35 U.S.C. § 102(b) rejection.
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, we have reached the conclusion that
claim 22 is indefinite under the purview of 35 U.S.C. § 112,
second para-graph. Therefore, the rejection of this claim
will be affirmed. However, with respect to claims 4 through 6
and 21 through 23, it is our view that these claims are so
indefinite as to preclude the possibility of properly
construing them for an art rejection. Therefore, as outlined
below, pursuant to our authority under
37 CFR § 1.196(b), we will enter a rejection of these claims
under § 112, second paragraph, and reverse the rejection
thereof under 35 U.S.C. § 102(b).
Turning to the rejection of claim 22 under 35 U.S.C. §
112, second paragraph, we note that
[t]he use of the term 'means' has come to
Appeal No. 96-4045
Application 08/441,984
5
be so closely associated with 'means-plus-
function' claiming that it is fair to say
that the use of the term 'means'
(particularly as used in the phrase 'means
for') generally evokes § 112(6) and that
the use of a different formulation
generally does not. Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1584, 39
USPQ2d 1783, 1787 (Fed. Cir. 1996).
Since the language of claim 22, lines 7 through 12 evokes
§ 112(6), and since § 112(6) requires us to construe claim
limitations in light of the structure, material, or acts in
support thereof in the specification and the equivalents
thereof, In re Donaldson & Co., 16 F.3d 1189, 1193, 29 USPQ
1845, 1848 (Fed. Cir. 1994), we must look to appellant’s
specification for proper construction of the “means for
deforming” in line 6 of
claim 22. The following passages from appellant’s
specification are examples of passages that indicate that the
claimed door lock bracket is deformed in a separate bending
apparatus: page 3, lines 22-24; page 4, lines 20-23 and lines
26-32, page 5, line 18; page 6, line 30; page 7, lines 4-10;
page 8, lines 7-10 and lines 18-20. Therefore, it is quite
Appeal No. 96-4045
Application 08/441,984
6
clear that the “means for deforming” limitation of claim 22
when construed in light of
the specification can only refer to a separate apparatus for
performing the bending operation and not a bend or deformation
in the planar U-shaped blank itself. The examiner is quite
correct in stating that the “means for deforming” literally
refers to an apparatus for performing the deforming operation.
The rejection of claim 22 under 35 U.S.C. § 112, second
paragraph, is affirmed. Pursuant to 37 CFR § 1.196(b) we
make the following new rejection. Claims 4 through 6, and 21
through 23 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failure to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
In the two independent claims on appeal, we note that the
claim preamble refers to an article, namely, a one-piece
stamped door lock bracket. However, we further note that the
first paragraph of the independent claims recites a “unitary
planar blank form” which is an intermediate article and is not
present in the finished door lock bracket article. The second
Appeal No. 96-4045
Application 08/441,984
7
paragraph of claim 23 refers to deformed portions which are
not present in the unitary planar blank form. Thus, the
independent claims on appeal are patently ambiguous as to
whether an intermediate planar blank form is being claimed or
a finished article -- a door lock bracket -- which is not a
planar form is being claimed. In view of this situation,
it is our opinion that no definite meaning can be ascribed to
the claim limitation of a “unitary planar blank form” when
read in conjunction with the preamble and the second paragraph
of claim 22 or the second and third paragraphs of claim 23.
When this is true of the terms in a claim, the subject matter
of the claim cannot be held to be anticipated, but rather the
claim becomes indefinite. See In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970). Since it is clear to us
that considerable speculation and assumptions are necessary to
determine the metes and bounds of what is being claimed, and
since the rejection under 35 U.S.C.
§ 102 cannot be based on speculation and assumptions, we are
constrained to reverse the examiner’s rejection of claims 22
and 23 and claims 4, 6, and 21 which depend from claim 23.
Appeal No. 96-4045
Application 08/441,984
8
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). It should be understood however, that a reversal of
the rejection under § 102 is not a reversal on the merits of
the rejection, but rather a procedural reversal predicated
upon the indefiniteness of the claimed subject matter.
SUMMARY
The rejection of claim 22 under 35 U.S.C. § 112, second
paragraph, has been affirmed.
A rejection of claims 4 through 6 and 21 through 25
pursuant to 37 CFR § 1.196(b) under 35 U.S.C. § 112, second
paragraph, has been entered by the Board.
The rejection of claims 4 through 6 and 21 through 23
under
35 U.S.C. § 102(b) has been reversed.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground 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
Appeal No. 96-4045
Application 08/441,984
9
(Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, “A new ground of
rejection shall not be considered final for purposes of
judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
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 (37
CFR § 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. . . .
Appeal No. 96-4045
Application 08/441,984
10
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(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 the 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.
Appeal No. 96-4045
Application 08/441,984
11
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
37 CFR § 1.196(b)
Ian A. Calvert )
Administrative Patent Judge )
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
William F. Pate, III )
Administrative Patent Judge )
Appeal No. 96-4045
Application 08/441,984
12
Remy J. Vanophem
Suite 1313
755 West Big Beaver Road
Troy, MI 48084
Appeal No. 96-4045
Application 08/441,984
13
WFP/cam