Ex parte Hulak

Board of Patent Appeals and Interferences

Jun 25, 1998

08569275 (B.P.A.I. Jun. 25, 1998)

Application for patent filed December 8, 1995. 1
According to appellant, this application is a continuation-in-
part of Application 08/225,576, filed April 11, 1994, now
abandoned.
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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANDREW J. HULAK
__________
Appeal No. 97-3196
Application No. 08/569,2751
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 21-32. Claims 1-20 have been
Appeal No. 97-3196
Application No. 08/569,275
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canceled and claims 33-40 have been withdrawn from
consideration as being directed to a non-elected invention.
No claims have been allowed.
The appellant's invention is directed to a locking device
for a tractor trailer air hose coupling. The subject matter
before us on appeal is illustrated by reference to claims 21
and 27, which read as follows:
21. A two piece locking device for a trailer or
container carrier air hose coupling secured with a padlock
through matching hasp holes comprising:
(1) a hasp holed flange and an insert hole on a face of
a rectangular cage, and
(2) a hasp holed flange with a tongue or pin insert
which fits through the insert hole and into an air hole in the
coupling.
27. A two piece gladhand locking device fabricated from
sheet steel comprising:
(1) a rectangular holed cage with an adjacent
perpendicular semicircular flange with hasp hole; and
(2) a hasp holed semicircular flange with a tongue
insert.
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Application No. 08/569,275
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Appeal No. 97-3196
Application No. 08/569,275
A rejection on the basis of the judicially created2
doctrine of obviousness-type double patenting was withdrawn by
the examiner upon the filing of a terminal disclaimer.
4
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bratzler 4,571,964 Feb. 25,
1986
Renne 5,076,077 Dec. 31,
1991
Adams, Jr. (Adams) 5,246,345 Sep. 21,
1993
THE REJECTIONS2
Claim 32 stands rejected under 35 U.S.C. § 112, first
paragraph, as being based upon a specification which fails to
provide support for the invention as now claimed.
Claims 21-32 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
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Application No. 08/569,275
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Claims 27-30 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Renne.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Renne.
Claims 21-24 and 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bratzler in view of Renne.
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Bratzler in view of Renne and Adams.
The rejections are explained in Paper No. 6 (the final
rejection).
The opposing viewpoints of the appellant are set forth in
Paper No. 13 (the supplemental Appeal Brief).
OPINION
The Rejection Under Section 112, First Paragraph
The examiner has objected to the specification as
originally filed because it does not provide support for the
limitation in claim 32 that the rough edges of the locking
device are removed by “burnishing.” We agree with the
examiner that this term is not explicitly recited in the
specification, and are not persuaded by the appellant’s
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Application No. 08/569,275
See, for example, Merriam Webster’s Collegiate3
Dictionary, Tenth Edition, 1996, page 160.
6
arguments that it should not be considered to be new matter.
This rejection is sustained.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
There are four parts to this rejection. The first is
that the term “rectangular,” as used in claims 21, 27 and 31,
is indefinite, in that it is not clear whether the appellant
is applying it to the shape of the cage or the shape of the
channel that extends through the cage. We do not agree. The
explicit language used in the claim is that the “cage” is
rectangular. There is no mention of a channel extending
through the cage. The common definition of “cage” is a box or
enclosure having some openwork. To state that this cage is3
“rectangular” in our view indicates to one of ordinary skill
in the art that the walls of the cage are of rectangular shape
and meet at right angles. This clearly is supported by the
disclosure of the invention. The fact that the claim language
is broad does not cause it to be indefinite.
The second item of alleged indefiniteness concerns what
is “fabricated” in claims 22, 24, 25 and 30. In our opinion
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the artisan would understand this to mean that it is the
“locking device” which is “fabricated,” for that is the item
to which each of these claims is directed, and the language of
the claims does not contain further restrictions. Thus, we
also do not agree with the examiner here.
Nor do we agree that the term “adjacent” in claim 27 is
indefinite. To state that there is a flange “adjacent” to a
cage is not an inaccurate statement, in view of the
disclosure, although it is a broad manner in which to set
forth the relationship between these two components. However,
as we stated above, a claim is not indefinite simply because
its language is broad.
With regard to claim 28, the examiner’s point is well
taken, for the dependent claim sets forth the hasp holes for
the second time.
In summary, it is our opinion that indefinite language
appears only in claim 28, and therefore the rejection will be
sustained with regard to that claim only.
The Rejection Under Section 102
Claims 27-30 stand rejected on the basis that the subject
matter recited therein is anticipated by Renne. Anticipation
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is established only when a single prior art reference
discloses, expressly or under the principles of inherency,
each and every element of the claimed invention. See RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984). The law
of anticipation does not require that the reference teach what
the applicant is claiming, but only that the claim 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).
Independent claim 27 requires that there be a
“rectangular holed cage.” As we pointed out above, a cage is
an enclosure. Renne discloses an “enclosing unit 12"
comprising a stationary member 31 and a pivoted member 32.
The term “cage” in the appellant’s claims therefore must be
read on both members of Renne’s enclosing unit 12. The
“adjacent perpendicular semicircular flange with hasp hole”
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required by the claim reads on hasp 45 of Renne. What remains
of the claim language is “a hasp holed semicircular flange
with a tongue insert.” While Renne discloses a hasp holed
semicircular flange 35, this element does not have a tongue
insert. The only tongue present in the Renne device is
mounted on the cage, that is, on stationary member 31, which
is a part of the cage and not the semicircular flange.
It therefore is our opinion that the subject matter of
claim 27 does not read on the Renne device, and thus is not
anticipated by this reference. The rejection of independent
claim 27 and, it follows, of dependent claims 28-30, therefore
is not sustained.
The Rejections Under Section 103
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
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in the art (In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)).
Claims 31 and 32 stand rejected as being unpatentable
over Renne. As we pointed out above in our discussion of the
Section 102 rejection based upon Renne, the reference fails to
disclose the subject matter required by independent claim 27,
from which claims 31 and 32 ultimately depend. Considering
this reference in the context of Section 103 does not
alleviate that deficiency, since we fail to perceive any
teaching, suggestion or incentive which would have led one of
ordinary skill in the art to modify the Renne structure in
such a fashion as to conform to the terms of claim 27. This
being the case, we will not sustain the rejection of dependent
claims 31 and 32.
Claims 21-24 and 26 stand rejected as being obvious in
view of the teachings of Bratzler in view of those of Renne.
Bratzler is directed to a lock for a trailer hitch. While the
Bratzler device has some features in common with that which is
recited in claim 21, there are some key differences. First of
all, the Bratzler “cage” is cylindrical rather than
rectangular, as required by the claim. And this is for good
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reason, for the trailer hitch structure which it is to receive
is of essentially circular cross-section, and fits closely
therein. Thus, it is our view that one of ordinary skill in
the art would not have been motivated to substitute a
rectangular cage for the cylindrical structure disclosed by
Bratzler. Second, whereas the claim specifies that there be a
hasp holed flange “and” an insert hole on “a” face of the
rectangular cage, in the Bratzler arrangement the
corresponding hasp holed flange 25 is located on the opposite
side of the “cage” from the insert hole 24 that receives the
tongue. Thus, even if it were considered, arguendo, to have
been obvious to substitute a rectangular cage for the
cylindrical one disclosed by Bratzler, the reference teaches
locating the two components named above on opposite faces.
Finally, the examiner has presented no evidence that would
support a conclusion that one of ordinary skill in the art of
securing air hose couplings would have been motivated to
utilize a trailer hitch lock for that purpose.
For the foregoing reasons, it is our view that the
teachings of Bratzler and Renne fail to establish a prima
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facie case of obviousness with regard to the subject matter of
independent claim 21. This being the case, we will not
sustain the rejection of claim 21 or of claims 22-24 and 26,
which depend therefrom.
Adding Adams to the other two references in the rejection
of claim 25 fails to cure the problems present in the basic
rejection. The rejection of claim 25 also is not sustained.
SUMMARY
The rejection of claim 32 under 35 U.S.C. § 112, first
paragraph, is sustained.
The rejection of claim 28 under 35 U.S.C. § 112, second
paragraph, is sustained.
None of the other rejections are sustained.
The decision of the examiner is affirmed-in-part.
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Application No. 08/569,275
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge)
Appeal No. 97-3196
Application No. 08/569,275
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James K. Luchs
32 Hayloft Circle
Wilmington, DE 19808