08317135 (B.P.A.I. Mar. 12, 1999)

Ex parte Hopson

Board of Patent Appeals and InterferencesMar 12, 1999

08317135 (B.P.A.I. Mar. 12, 1999)

Application for patent filed October 3, 1994.1 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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 DOUGLAS F. HOPSON __________ Appeal No. 96-3418 Application 08/317,1351 __________ ON BRIEF __________ Before COHEN, ABRAMS, and CRAWFORD, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the decision of the examiner finally rejecting claims 1-17, which constitute all of the claims of record in the application. Appeal No. 96-3418 Application No. 08/317,135 2 The appellant's invention is directed to a coupling that includes at least one filter to remove contaminants from the stream of material flowing therethrough. The claims on appeal have been reproduced in an appendix to the Brief (Paper No. 16). The references relied upon by the examiner to support the final rejection are: Neracher 331,531 Dec. 1, 1885 Strong 2,247,590 Jul. 1, 1941 The following are the rejections before us on appeal: Claims 1, 4, 7, 13, 14, 16 and 17 under 35 U.S.C. § 102(b) as being clearly anticipated by Neracher. Claims 2, 3, 5 and 6 under 35 U.S.C. § 103 as being unpatentable over Neracher. Claims 8-12 and 15 under 35 U.S.C. § 103 as being unpatentable over Neracher and Strong. In reaching our decision on the issues raised in this appeal, we have carefully assessed the claims, the prior art applied against the claims, and the respective views of the examiner and the appellant as set forth in the Answer (Paper No. 17) and the Briefs (Papers Nos. 16 and 18). Appeal No. 96-3418 Application No. 08/317,135 3 The Rejection Under 35 U.S.C. § 102(b) All five independent claims stand “clearly anticipated” by Neracher. We have evaluated this rejection on the basis that anticipation is established only when a single prior art reference discloses, either expressly or under the principles of inherency, each and every element of the claimed invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada., 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). The threshold issue with regard to this rejection is whether the subject matter recited in the appellant’s claims can be read on the structure disclosed in the applied reference. We begin our analysis on this issue by focusing on the opening page of the appellant’s specification, where the appellant states that he has directed his inventive efforts to improvements to couplings such as that disclosed in Wilcox U.S. Patent No. 5,323,812. This patent discloses a pressure- locked coupling comprising a coupler and a nipple, which is used to transfer natural gas or propane from a source of gas to a vehicle. As explained by the appellant on page 1 of the specification, the present invention Appeal No. 96-3418 Application No. 08/317,135 See, for example, Merriam Webster’s Collegiate2 Dictionary, Tenth Edition, 1997, page 266. 4 adds filters to the coupler and the nipple. The filters can be in both the coupler and the nipple, the coupler only or the nipple only. The appellant’s invention is further described as including “a coupler 15 and a nipple 66,” which are referred to in the specification as “coupler halfs” (specification, page 3). As a result of our review of the Wilcox patent, and the appellant’s drawings and the accompanying explanation in the specification, it is clear to us that the “coupling” that is the subject of the appellant’s invention comprises two components, a “coupler” and a “nipple,” which are removably attachable together. This conforms to the common definition of the term “coupling,” which is “a device that serves to connect the ends of adjacent parts or objects.” 2 In view of the above, the term “coupling” in the appellant’s claims should be interpreted as meaning a two- component structure comprising a releasably attachable coupler and nipple. This being the case, the claims do not read on the Neracher device, for several reasons. First, inventor Neracher has called his device a “filter,” not a coupling. Appeal No. 96-3418 Application No. 08/317,135 5 Second, it does not couple one element of a system to another, but is attached to the end of a water faucet. Third, as shown and described, this device is an assemblage of parts into a single item that comprises a central filter (B) flanked by a pair of screens (l) that are installed in seats (m) and are held in place by packing rings (n). From our perspective, therefore, the examiner’s rejection of independent claims 1, 4 and 7 fails at the outset because each of these claims is directed to a coupling and each requires that there be a coupler and a nipple, none of which are present in Neracher. Confirmation of this has been provided by the examiner, who has tacitly acknowledged that the coupler and nipple are not present by labeling the parts as a “coupler end portion” and a “nipple end portion” in the enlarged view of the drawing that is attached to the Answer. Because all of the claimed subject matter is not found in Neracher, the rejection of claims 1, 4 and 7 cannot be sustained. Independent claims 13 and 14 are directed, respectively, to a coupler and a nipple. There is an analogy here with the reasoning expressed above in that, in the context of the Appeal No. 96-3418 Application No. 08/317,135 See Merriam Webster’s, supra, page 679.3 6 interpretation we find should be given to the claim language, Neracher discloses neither a coupler nor a nipple. In addition, however, claims 13 and 14 each recite a filter which includes a lip that engages a shoulder. The examiner is of the view that the outer annular portion of each of the flat Neracher screens constitutes a lip. We do not agree. In our opinion, the portion to which the examiner refers is an edge and not a lip, because it lies in the plane of the screen, whereas a lip, in the context of this invention, would project therefrom at an angle. 3 The rejection of independent claims 13 and 14, and dependent claims 16 and 17, will not be sustained. The Rejections Under 35 U.S.C. § 103 The first of these is that claims 2, 3, 5 and 6 are unpatentable over Neracher. These claims add details of the filter to independent claims 1 and 4. We have pointed out above the deficiencies in Neracher insofar as the structure recited in claims 1 and 4 is concerned. These are not overcome by considering the reference in the light of Section Appeal No. 96-3418 Application No. 08/317,135 The test for obviousness is what the teachings of the4 prior art would have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). 7 103, and we therefore will not sustain the rejection of4 claims 2, 3, 5 and 6. The other rejection under Section 103 is that claims 8-12 and 15 are unpatentable over Neracher taken together with Strong. These claims depend from claim 7, and Strong has been cited for the particular valve structure which the examiner believes would have been an obvious modification to the Neracher device. Be that as it may, Strong does not overcome the shortcomings of Neracher as a primary reference, and we therefore will not sustain this rejection. Summary None of the rejections are sustained. The decision of the examiner is reversed. REVERSED Irwin Charles Cohen ) Appeal No. 96-3418 Application No. 08/317,135 8 Administrative Patent Judge ) ) ) ) Neal E. Abrams ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) Murriel E. Crawford ) Administrative Patent Judge ) tdc Appeal No. 96-3418 Application No. 08/317,135 9 Kenneth L. Mitchell Woodling, Krost and Rust 1801 East Ninth Street, Suite 1520 Cleveland, OH 44114