Ex parte Huber

Board of Patent Appeals and Interferences

Mar 30, 1999

08587931 (B.P.A.I. Mar. 30, 1999)

Application for patent filed January 17, 1996. 1
Independent claim 11 has been amended subsequent to2
final rejection.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDGAR HUBER
____________
Appeal No. 98-2164
Application No. 08/587,9311
____________
ON BRIEF
____________
Before MEISTER, STAAB, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Edgar Huber (the appellant) appeals from the final
rejection of claims 11 and 13-15. Claims 16 and 17, the only2
Appeal No. 98-2164 Page 2
Application No. 08/587,931
other claims present in the application, have been indicated as
being allowable subject to the requirement that they be
rewritten to include all the subject matter of the claims from
which they depend.
We REVERSE.
The appellant's invention pertains to a drawer the nature
of which is readily apparent from a perusal of independent
claim 11. A copy of claim 11 may be found in the APPENDIX to
the brief.
The reference relied on by the examiner is:
Lautenschläger 5,439,285 Aug. 8,
1995
Claims 11 and 13 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Lautenschläger. According to the
examiner:
Lautenschläger teaches a drawer, as illustrated
in Figures 1-9, comprising a front panel (18), two
drawer sides (20), and a rear panel (16). The two
drawer sides (20) each have a lateral U-shaped
profile with upper and lower horizontal bars (26,24)
for the insertion of a drawer base (14) with a groove
(30). Each drawer side (20) has a single projection
(28a) which projects into the groove (30) of the
drawer base. The front panel is joined to the two
drawer sides by means of fixing devices which are
conventional in the art. [Answer, page 3-4.]
Appeal No. 98-2164 Page 3
Application No. 08/587,931
Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lautenschläger. The examiner is of the
opinion that the particular shape of the projection is a matter
of design choice.
With respect to the examiner's position that
Lautenschläger teaches all the subject matter defined by
independent claim 11, the appellant argues that Lautenschläger
fails to teach (1) two drawer sides wherein each drawer side
includes a horizontally extending flange with only a single
projection extending upwardly from each horizontally extending
flange, (2) a drawer base which includes a bottom surface with
grooves formed therein at the lateral edges thereof, and (3)
fixing devices that include a non-rigid structure to enable
tilting of the side walls away from each other during the
assembly of the drawer.
OPINION
Having carefully considered the respective positions
advanced by the appellant in the brief and reply brief, and by
the examiner in the answer, we are in substantial agreement
Appeal No. 98-2164 Page 4
Application No. 08/587,931
The projections 28a identified by the examiner appear in3
the embodiments of Figs. 2-7 where there are a plurality of
such projections on each side whereas independent claim 11
requires that the flange on each side have only a single
projection. We observe, however, that in the embodiment of
Fig. 1 Lautenschläger does provide only a single projection 28
on each side.
with the above-noted arguments (1) through (3) of the
appellant.
With respect to the appellant's arguments (1) and (2), the
answer states that:
Lautenschläger does disclose a lower horizontal
flange (24) with a projection (28a) that extends3
upwardly. The orientation of the elements to be
lateral or vertical is relative to the other
structural elements in the invention. In this case,
the examiner has interpreted the projection 28a to be
situated in a vertical direction above from [sic]
lower flange 24. [Answer, page 5; footnote added.]
From this explanation, it is difficult to determine
exactly what the examiner intends. If, on the one hand, the
examiner intends simply to "orient" Lautenschläger's drawer on
its side so that projection 28a extends upwardly (e.g., with
reference to Fig. 3, being in an orientation such that the web
20 rests on a horizontal surface) then the web 20 would become
the flange (since the projection is claimed as extending from
the flange) and edge 32 would become the bottom surface. The
Appeal No. 98-2164 Page 5
Application No. 08/587,931
problem with this, however, is that (a) the projection on the
other side of the drawer would now be on the top and extend
downwardly (rather than upwardly as claimed), (b) the "bottom
surface" 32 would have only a single groove formed therein
(rather than grooves formed therein at the lateral edge
portions as claimed), and (c) there would be no horizontal lip
spaced from the flange so as to define a space therebetween as
expressly claimed. If, on the other hand, the examiner by
stating that "the examiner has interpreted the projection 28a
to be situated in a vertical direction above from [sic] lower
flange 24," is contending that, since the projection 28a is
vertically spaced above lower flange 24 in the orientation
depicted in Fig. 3, it can somehow be considered to "extend
upwardly" from the lower flange 24, then we simply disagree.
Terms in a claim should be construed in a manner consistent
with the specification and construed as those skilled in the
art would construe them (see In re Bond, 910 F.2d 831, 833, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990), Specialty Composites v.
Cabot Corp., 845 F.2d 981, 986, 6 USPQ2d 1601, 1604 (Fed. Cir.
1988) and In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
Appeal No. 98-2164 Page 6
Application No. 08/587,931
(Fed. Cir. 1983)). Here, consistent with the appellant's
specification, we can think of no circumstances under which the
artisan would construe the horizontally extending projections
28a depicted by Lautenschläger in Fig. 3 to "extend upwardly"
merely because they are vertically spaced above the
horizontally extending flanges 24. Moreover, with respect to
the structure depicted by Lautenschläger in
Fig. 3, the projections 28a extends from the vertical web 20
(rather than from the horizontal flange 24 as claimed) and the
grooves 30 are in the edges 32 of the base 14 and face
outwardly (rather than in the bottom surface of the base and
facing downwardly as claimed).
As to the appellant's argument (3), there is absolutely
nothing in Lautenschläger which would suggest a fixing device
as set forth in the last four lines of claim 11 that includes
a non-rigid structure sufficient to enable, during
assembly of said drawer and before mounting of said
rear wall, tilting of said side walls away from each
other without separation of said side walls from said
front panel.
In fact, Lautenschläger discloses no specific fixing devices
whatsoever, and instead merely states that the front may be
joined to the sides by conventional known hardware (see col. 3,
Appeal No. 98-2164 Page 7
Application No. 08/587,931
lines 15-18). It totally unclear what the examiner's position
is with respect to the above-noted limitation. We do observe,
however, that the examiner in the paragraph bridging pages 4
and 5 of the answer notes that statements of intended use are
insufficient to distinguish structure over the prior art. If
the examiner is suggesting that the above-noted limitation is
merely a statement of intended use which can be dismissed, then
the examiner is simply wrong. Instead, this limitation defines
a non-rigid structure in terms of a function that it must be
capable of performing. See, e.g., Rowe v. Dror, 112 F.3d 473,
479-80, 42 USPQ2d 1550, 1554-55 (Fed. Cir. 1997); In re
Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981); In
re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52 (CCPA
1976)); In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644
(CCPA 1974) and In re Yanush, 477 F.2d 958, 959, 177 USPQ 705,
706 (CCPA 1973).
In view of the above, the rejections of claims 11 and 13
under 35 U.S.C. § 102(e) and claims 14 and 15 under 35 U.S.C.
§ 103 are reversed.
REVERSED
Appeal No. 98-2164 Page 8
Application No. 08/587,931
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JMM/jlb
Appeal No. 98-2164 Page 9
Application No. 08/587,931
Wenderoth, Lind & Ponack
2033 K Street N.W. Suite 800
Washington, DC 20006
JoAnne
Appeal No. 98-2164
Application No. 08/587,931
APJ MEISTER
APJ STAAB
APJ CRAWFORD
REVERSED
Prepared: December 6, 1999