Ex parte Greenbaum

Board of Patent Appeals and Interferences

May 11, 2000

08504478 (B.P.A.I. May. 11, 2000)

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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journal and (2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLIAM M. GREENBAUM
________________
Appeal No. 1998-0500
Application 08/504,478
________________
ON BRIEF
________________
Before HAIRSTON, JERRY SMITH and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 13-18. Claims 1-12
have been allowed by the examiner. An amendment after final
rejection was filed on February 11, 1997 and was entered by
the examiner.
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Application 08/504,478
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The disclosed invention pertains to a system for
electronically verifying alignment and contact between two
parts to be mated.
Representative claim 13 is reproduced as follows:
13. An active verification system for at least one of
alignment, contact, and alignment and contact of mating parts,
comprising:
first and second structure means including conductive
patterns for alignment/contact verification of associated
mating parts; and

an elastomeric interface adapted to be located between
such associated mating parts;
whereby alignment verification is determined by a zero
electric flow through said electrically conductive patterns,
and contact verification is determined by an electric flow
through said electrically conductive patterns.
The examiner relies on the following reference:
Brodsky et al. (Brodsky) 5,468,917 Nov. 21, 1995
(filed Feb. 23,
1994)
Claims 13-16 and 18 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by the disclosure of Brodsky.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the teachings of Brodsky. A rejection of
claims 13-18 under the second paragraph of 35 U.S.C. § 112
made in the final rejection was not repeated in the examiner’s
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Application 08/504,478
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answer, and is, therefore, presumed to be withdrawn.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of anticipation and obviousness relied upon by the
examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, the appellant’s arguments set forth in the brief
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure of Brodsky does not fully meet
the invention as recited in claims 13-16 and 18. We are also
of the view that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
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Application 08/504,478
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set forth in claim 17. Accordingly, we reverse.
We consider first the rejection of claims 13-16 and 18
as being anticipated by the disclosure of Brodsky.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
With respect to each of these claims, the examiner
indicates how he reads these claims on the disclosure of
Brodsky on page 2 of the answer. Appellant argues that the
examiner’s interpretation of Brodsky is based solely on
unsupported speculation. It is also argued that the examiner
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has disregarded the recitations set forth in the preambles and
the whereby clauses of independent claims 13 and 18 [brief,
pages 6-7]. The examiner responds that the structural
elements of the claims are all disclosed in Brodsky so that
Brodsky must function in the same manner as appellant’s
invention [answer, pages 3-5].
Although the basic difference between appellant’s
position and the examiner’s position revolves around claim
interpretation of the preamble and the whereby clause, we
decide this issue on the more fundamental observation that
Brodsky does not even disclose the structure means and the
elastomeric interface interconnected as recited in the claims.
The examiner has identified parts 51 and 31 of Brodsky
as corresponding to the two mating parts. There is no
conductive pattern, however, associated with element 31.
Thus, there is no structure in Brodsky which corresponds to
the first and second structure means of claim 13 because these
structure means must include the conductive patterns for
verifying alignment and contact of the mated parts. The claim
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must also be read such that the elastomeric interface is
located between the two conductive patterns. As clearly seen
in Brodsky’s Figure 4, the elastomeric interface 41 is not
between conductive patterns 13 and 61. Therefore, we find
that Brodsky does not fully meet every feature as recited in
the claimed invention.
Since we agree with appellant that every limitation of
claims 13-16 and 18 is not fully disclosed by Brodsky, we do
not sustain the examiner’s rejection of claims 13-16 and 18
under 35 U.S.C. § 102.
We now consider the rejection of claim 17 under 35
U.S.C. § 103 as unpatentable over the teachings of Brodsky.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
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art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
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1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
Claim 17 depends from claim 13. The examiner relies
on Brodsky for teaching all the limitations of claim 13 as
noted above. The examiner’s explanation of this rejection
does not overcome the deficiencies of Brodsky noted above.
Thus, there are differences between the claimed invention and
the disclosure of Brodsky which have not been properly
addressed by the examiner. The failure to address the
obviousness of these differences between the claimed invention
and the applied prior
art results in a failure to properly establish a prima facie
case of obviousness. As noted above, the failure to make the
prima facie case of obviousness by the examiner must result in
a reversal of the rejection made under 35 U.S.C. § 103.
In conclusion we have not sustained either of the
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examiner’s rejections of the claims. Therefore, the decision
of the examiner rejecting claims 13-18 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1998-0500
Application 08/504,478
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Henry P. Sartorio
Deputy Laboratory Counsel for Patents
Lawrence Livermore National Laboratory
P.O. Box 808 L 703
Livermore, CA 94551