Ex parte Horton

Board of Patent Appeals and Interferences

Jan 26, 1998

08224090 (B.P.A.I. Jan. 26, 1998)

Application for patent filed April 5, 1994. According to1
appellant, the application is a continuation of Application
08/017,549, filed February 16, 1993, now abandoned.
Claim 20 has been amended subsequent to final rejection.2
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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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PAUL H. HORTON
________________
Appeal No. 95-4852
Application 08/224,0901
________________
ON BRIEF
________________
Before COHEN, STAAB and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 20 through
22. Claims 2 through 6, 8 through 12 and 15 through 19 stand2
allowed. Claim 23 has been indicated as containing allowable
subject matter but stands objected to as depending from a
Appeal No. 95-4852
Application 08/224,090
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rejected base claim. Claim 24, the only other claim pending in
the application, stand withdrawn from consideration pursuant to
37 CFR 1.142(b) as being directed to a non-elected invention.
The subject matter on appeal relates to a “machine for
conditioning and dispensing loose fill insulation material”
(specification, page 1). Claim 20 is illustrative and reads as
follows:
20. A machine for conditioning and dispensing loose fill
insulation material, comprising:
a hopper for receiving unconditioned insulation material;
a conditioning apparatus for receiving the unconditioned
insulation material from the hopper and for conditioning the
insulation material;
a dispensing assembly for receiving the conditioned
insulation material from the conditioning apparatus and for
dispensing the conditioned insulation material to an applicator;
and
wherein the conditioning apparatus comprises:
a housing for containing the insulation material, the
housing having a first end, a second end, a first side, a second
side, a top continuous with the hopper and defining an entry
opening, and a bottom continuous with the dispensing assembly and
having a length defined by the distance between the first and
second ends;
a movable partition in the bottom of the housing adapted to
form an adjustable exit opening whereby the flow of conditioned
insulation material from the housing into the dispensing assembly
is controlled, the exit opening having a length less than the
length of the bottom of the housing;
Appeal No. 95-4852
Application 08/224,090
The examiner has withdrawn the 35 U.S.C. § 112, second3
paragraph, rejection of claims 20 through 22 which was set forth
in the final rejection (see the advisory action dated July 1,
1994, Paper No. 11)
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first means in the housing for dispensing the insulation
material and conveying the insulation material in one direction
in the housing toward the exit opening; and
second means in the housing located above the first means
for dispensing the insulation material and conveying the
insulation material in a direction opposite to said one direction
in the housing.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Morris 1,413,345 Apr. 18, 1922
Woten 3,529,870 Sept. 22, 1970
The claims on appeal stand rejected as follows:
a) claims 20 and 22 under 35 U.S.C. § 102(b) as being
anticipated by Woten; and
b) claim 21 under 35 U.S.C. § 103 as being unpatentable over
Woten in view of Morris.3
Reference is made to the appellant’s brief (Paper No. 13)
and to the examiner’s answer (Paper No. 14) for the respective
positions of the appellant and the examiner with regard to the
propriety of these rejections.
Appeal No. 95-4852
Application 08/224,090
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As for the first rejection, anticipation is established when
a single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention. RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). It is not
necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. Kalman v. Kimberly Clark
Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983),
cert. denied, 465 U.S. 1026(1984).
Claim 20 recites a machine for conditioning and dispensing
loose fill insulation material comprising, inter alia, “first
means in the housing for dispersing the insulation material and
conveying the insulation material in one direction in the housing
toward the exit opening”. The sole issue raised in this appeal
by the appellant with regard to the examiner’s anticipation
rejection is whether Woten discloses structure which performs the
foregoing dispersing and conveying function. The examiner
contends that the auger 18 in Woten’s insulating machine meets
Appeal No. 95-4852
Application 08/224,090
Webster’s New Collegiate Dictionary (G. & C. Merriam Co.4
1977) defines term “disperse” as meaning “to cause to break up”.
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this limitation (see page 4 in the answer). The appellant,
tacitly acknowledging that Woten’s auger 18 conveys insulation
material in one direction toward an exit opening, argues that
Wooten [sic, Woten] recognizes that at least in
some operating conditions, a screw auger tends to
compact the material, rather than dispersing the material
as required for the first means. This is set forth in
detail in column 1 at lines 46-66 of Wooten [sic].
Thus, the “means” disclosed in Wooten [sic] does not
perform the identical function called for with respect
to the “first means” in claim 20 [brief, page 4,
emphasis in the original].
Woten does in fact discuss the problem of auger-induced
compaction in insulating machines at column 1, lines 46 through
66. Contrary to the appellant’s implication, however, the
particular insulating machine disclosed by Woten is designed to
eliminate this problem. To this end, the Woten machine includes
a number of rotating components such as a jogger 28, a circulator
22, the aforementioned auger 18 and a granulator 7 which keep
loose fill insulation material in a state of constant motion and
agitation to separate or “disperse” the individual particles 4
Appeal No. 95-4852
Application 08/224,090
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thereof which may have become somewhat compressed during
packaging (see column 1, lines 26 though 45; and column 4, line
31 et seq.). Consequently, “the separate particles, or nodules,
of the material being fed will be positively separated during the
feeding operation” (column 2, lines 19 through 21). Indeed,
Woten expressly emphasizes that “at all times the material is
kept in movement and there is no opportunity for compaction”
(column 4, lines 65 and 66). The auger 18 also functions to
convey the insulation material in one direction toward an outlet
or exit opening 15 (see Figure 2 and column 2, line 68 through
column 3, line 8.
In light of the foregoing, the appellant’s argument that
Woten’s auger 18 does not perform the function required of the
“first means” recited in claim 20 is not persuasive. Since such
argument is the only one advanced by the appellant with respect
to the standing 35 U.S.C. § 102(b) rejection of independent claim
20 and dependent claim 22, we shall sustain this rejection.
We shall also sustain the standing 35 U.S.C. § 103 rejection
of dependent claim 21 as being unpatentable over Woten in view of
Morris.
Appeal No. 95-4852
Application 08/224,090
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Claim 21 further defines the “first means” recited in parent
claim 20 as comprising “a shaft having a plurality of spikes
extending radially therefrom in a helical pattern”. Although
Woten’s auger 18 does not meet this additional limitation, the
examiner’s reliance on Morris to cure the deficiency (see pages 5
and 6 in the answer) is well taken.
Morris discloses a general purpose material feeder adapted
“to prevent caking or other adhesions of the material, whereby
the material ceases to flow freely through the outlet” (page 1,
lines 37 through 39). The feeder includes a plurality of shafts,
each having an array of fingers or spikes extending therefrom in
a spiral or helical pattern. The spiral or helical spike
patterns serve to agitate the material and to convey it toward
the center of the feeder (see page 1, line 105 through page 2,
line 13).
The teachings of Morris relating to the agitating and
conveying characteristics of rotating shafts having helical spike
patterns would have furnished the artisan with ample motivation
or suggestion to modify Woten’s auger 18 by providing it with
spikes as recited in claim 21 in order to enhance its agitating
capability while retaining its conveying capability. The
appellant’s argument that “Morris does not provide the function
Appeal No. 95-4852
Application 08/224,090
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of conveying the insulation material in one direction in the
housing toward the exit opening formed as required by claim 20
and hence claim 21" (brief, page 5, emphasis in the original) is
not convincing. To begin with, such argument is not commensurate
with the actual scope of claim 21 which does not exclude the
first means from conveying the insulation material in more than
one direction. Moreover, non-obviousness cannot be established
by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck &
Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In
re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Here, even if claim 21 did require the first means to convey the
insulation material in but a single direction toward the exit
opening, Woten’s “first means” or auger 18 does the same and the
provision of suitably arranged spikes thereon as suggested by
Morris would not alter this feature.
Appeal No. 95-4852
Application 08/224,090
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The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4852
Application 08/224,090
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Mary M. Lee
Dunlap, Codding & Lee
9400 North Broadway, Suite 420
Oklahoma City, OK 73114