Ex parte Hattori

Board of Patent Appeals and Interferences

Dec 18, 1998

08251306 (B.P.A.I. Dec. 18, 1998)

Application for patent filed May 31, 1994. According 1
to appellant, the application is a division of Application
07/840,309, filed February 24, 1992, which is now U.S. Patent
No. 5,372,082, issued December 13, 1994.
1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YOSHIYUKI HATTORI

_____________
Appeal No. 96-0922
Application 08/251,3061
______________
HEARD: December 10, 1998
_______________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges.
Appeal No. 96-0922
Application 08/251,306
A final rejection of claim 17 under 35 U.S.C. § 112,2
first paragraph, was overcome as indicated by the examiner on
page 1 of the answer (Paper No. 13).
2
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
17 and 18. These claims constitute all of the claims remain-
ing in the application.
Appellant’s invention pertains to a watercraft. An
understanding of the invention can be derived from a reading
of exemplary claims 17 and 18, copies of which appear in the
APPENDIX to the brief (Paper No. 16).
As evidence of anticipation, the examiner has ap-
plied the documents listed below:
Hegg et al. (Hegg) 4,548,155 Oct. 22, 1985
Crone 4,896,744 Jan. 30,
1990
The following rejections are before us for review.2
Appeal No. 96-0922
Application 08/251,306
The brief (Paper No. 16) was submitted subsequent to the3
filing of an earlier appeal brief (Paper No. 12), pursuant to
an order for compliance (Paper No. 15). Appellant chose to
submit the new brief (Paper No. 16), rather than a supplement
to the earlier brief.
3
Claim 17 stands rejected under 35 U.S.C. §102(b) as
being anticipated by Hegg.
Claim 18 stands rejected under 35 U.S.C. § 102 (b)
as being anticipated by Crone.
The full text of the examiner's rejections and
response to the argument presented by appellant appears in the
answer (Paper No. 13), while the complete statement of appel-
lant’s argument can be found in the brief (Paper No. 16). 3
OPINION
In reaching our conclusion on the anticipation
issues raised in this appeal, this panel of the board has
carefully considered appellant’s specification and claims 17
and 18, the applied patents, and the respective viewpoints of
Appeal No. 96-0922
Application 08/251,306
4
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
The rejection of claim 17
We affirm the examiner’s rejection of claim 17 under
35 U.S.C. § 102(b).
Anticipation under 35 U.S.C. § 102(b) is established
only when a single prior art reference discloses, either
expressly or under principles of inherency, each and every
element of a claimed invention. See In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), In re
Paulsen, 30 F.3d 1475, 1478-1479, 31 USPQ2d 1671, 1675 (Fed.
Cir. 1994), In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990), and RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). However, the law of anticipation does not require that
the reference teach specif- ically what an appellant has
Appeal No. 96-0922
Application 08/251,306
5
disclosed and is claiming but only that the claims on appeal
"read on" something disclosed in the reference, i.e., all
limitations of the claim are found in the reference. See
Kalman v. Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983); cert. denied, 465 U.S. 1026 (1984).
A consideration of the subject matter of claim 17
relative to the Hegg patent reveals to us that the claimed
small watercraft reads on, and is therefore anticipated by,
the reference document.
Contrary to the attorney's argument on page 4 of the
brief (Paper No. 16) that a rider’s hand could not “easily be
accommodated” by the seat back of Hegg, we are in accord with
the view of the examiner (answer, pages 3 and 4) that the back
rest
(seat back) disclosed by Hegg is clearly capable of being
grasped (acting as a handle), easily or otherwise. No evi-
dence is before us to the effect that the back rest (seat
back) of Hegg (Figures 2 and 3) is incapable of being grasped
(acting as a handle) by a swimmer (rider) entering the swim
platform 18 from the rear of the boat 10.
Appeal No. 96-0922
Application 08/251,306
6
The rejection of claim 18
We reverse the examiner’s rejection of claim 18
under 35 U.S.C. § 102 (b).
Claim 18, drawn to a watercraft, requires, inter
alia, a hull defining a rider’s area, the rider’s area being
comprised of “a floor having a transversely extending recess,”
and boarding means for facilitating the entry of a rider into
the rider’s area from outside of the hull, the boarding means
being configured to nest at least in part in the recess when
in a storage position within the rider’s area. Consistent
with the underlying specifi- cation (pages 6 and 16), we
understand the claimed recitation of a floor having a trans-
versely extending recess to denote, inter
alia, that the floor is transversely recessed to form the
transversely extending recess.
The patent to Crone is concerned with boat ladders
for use on pontoon boats, party barges, or the like. The
Appeal No. 96-0922
Application 08/251,306
7
patentee makes it clear that the component parts, i.e., car-
rier 30, support assembly 20, and ladder 10 are positioned
beneath the undersurface 34 of the deck 36 of a boat 38 (Fig-
ure 4).
As we see it, the open space beneath the undersur-
face of the deck 36 of Crone cannot fairly be considered to be
a “recess” in the deck (floor), as the term recess of claim 18
is understood in light of the underlying disclosure. Since a
“floor having a transversely extending recess” is not present
in the Crone teaching, the subject matter of claim 18 is not
anticipated thereby.
In summary, this panel of the board has:
affirmed the rejection of claim 17 under 35 U.S.C.
§ 102(b) as being anticipated by Hegg, and
reversed the rejection of claim 18 under 35 U.S.C.
§ 102(b) as being anticipated by Crone.
The decision of the examiner is affirmed-in-part.
Appeal No. 96-0922
Application 08/251,306
8
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
psb
Appeal No. 96-0922
Application 08/251,306
9
Ernest A. Beutler
Knobbe, Martens, Olson & Bear
620 Newport Center Drive
Sixteenth Floor
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