Ex parte Inbar

Board of Patent Appeals and Interferences

May 15, 2001

08760652 (B.P.A.I. May. 15, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAN INBAR
__________
Appeal No. 2001-0252
Application 08/760,652
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 12, 21 through 23 and 30 through
32. Subsequent to the final rejection appellant filed four
amendments, of which only those filed on March 22, 1999 (Paper
No. 20) and May 25, 1999 (Paper No. 24) were entered by the
examiner. As a result of the entry of those amendments, the
Appeal No. 2001-0252
Application 08/760,652
2
examiner has indicated that claims 2, 3, 9 and 10 stand
allowed. Accordingly, the appeal as to those claims is
dismissed, leaving for our consideration on appeal claims 4
through 8, 11, 12, 21 through 23 and 30 through 32. Claims 1,
13 through 20, 24 through 29 and 33 through 40 have been
canceled.
Appellant’s invention relates to a transparency viewing
device or viewbox for holding and illuminating X-rays and like
transparencies. Independent claims 4, 21, 23, 30 and 31 are
representative of the subject matter on appeal and a copy of
those claims may be found in the Appendix to appellant’s
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Krajian 2,722,762 Nov. 8,
1955
Geluk 4,637,150 Jan. 20,
1987
In making an obviousness-type double patenting rejection
Appeal No. 2001-0252
Application 08/760,652
3
of certain of the appealed claims, the examiner has
additionally relied upon U.S. Patent No. 5,430,964, issued
July 11, 1995 to Dan Inbar et al.
Claims 21 through 23 and 30 through 32 stand rejected
under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claim 1 of U.S.
Patent No. 5,430,964.
Claims 4 through 6 and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Krajian.
Claim 30 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Geluk.
Claims 7, 11 and 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Krajian.
Rather than reiterate the details of these rejections and
Appeal No. 2001-0252
Application 08/760,652
4
the conflicting viewpoints advanced by the examiner and
appellant regarding the rejections, we refer to the examiner's
answer (Paper No. 27, mailed August 13, 1999) and to
appellant’s brief (Paper No. 25, filed May 25, 1999) and reply
brief (Paper No. 28, filed October 13, 1999) for a full
exposition thereof.
OPINION
After careful consideration of appellant’s specification
and claims, the teachings of the applied references and each
of the arguments and comments advanced by appellant and the
examiner, we have reached the determinations which follow.
Turning first to the examiner's rejection of claims 21
through 23 and 30 through 32 under the judicially created
doctrine of obviousness-type double patenting, we observe that
the examiner’s position as set forth on page 3 of the answer
is that
[a]lthough the conflicting claims are not identical, they
are not patentably distinct from each other because claim
Appeal No. 2001-0252
Application 08/760,652
5
1 of Patent No. 5,430,964 discloses all of the structure
defined by the applicant in claims 21-23 and 30-32 except
for detecting only two transparencies which is considered
to be within one skilled in the art to modify claim 1 of
Patent No. 5,430,964.
It is of great interest to us that the single difference
pointed to by the examiner (i.e., detecting only two
transparencies) is found only in independent claim 21 on
appeal and does not appear in independent claims 23, 30 and 31
which are also subject to this ground of rejection. Thus, we
are at a loss to understand exactly how the examiner has
reached the conclusion that appellant’s claims 23 and 30
through 32 are unpatentable under the judicially created
doctrine of obviousness-type double patenting, since the
examiner has identified no differences between those claims
and claim 1 of U.S. Patent No. 5,430,964 and has provided no
statement as to what is considered to have been obvious.
Thus, the examiner has not established a prima facie case of
obviousness-type double patenting. In reviewing claims 23 and
30 through 32, we note that there are clearly differences
between the subject matter covered by those claims and the
subject matter set forth in claim 1 of U.S. Patent No.
Appeal No. 2001-0252
Application 08/760,652
6
5,430,964 and that we agree with appellant’s position set
forth in the brief and reply brief as to those differences.
Accordingly, we are constrained to reverse the examiner's
double patenting rejection of claims 23 and 30 through 32.
As to claims 21 and 22, we share appellant’s view as set
forth on page 9 of the brief and pages 6 and 7 of the reply
brief, that the examiner has not made out a prima facie case
for obviousness since he has merely made a general assertion
that the identified difference “is considered to be within one
skilled in the art to modify claim 1 of Patent No. 5,430,964”
(answer, page 3), without any evidence to support such a
conclusion. Appellant has argued (reply brief, pages 6-7)
that the modification urged by the examiner is not obvious and
also provided reasons in support of that position. In the
face of those arguments we have nothing from the examiner but
speculation to support his conclusion. Thus, we will not
sustain the examiner’s rejection of claims 21 and 22 under the
judicially created doctrine of obviousness-type double
patenting.
Appeal No. 2001-0252
Application 08/760,652
7
We turn next to the examiner's rejection of claim 30
under 35 U.S.C. § 102(b) as being anticipated by Geluk. In
this instance, appellant has presented arguments on pages 10
and 11 of the brief and on pages 8 and 9 of the reply brief
which we find persuasive. Like appellant, we consider the
examiner’s position equating “the center spot on the screen”
in Geluk (answer, page 4) to appellant’s “guide” set forth in
claim 30 to be untenable. Unlike appellant’s guide seen in
Figures 4A, 4B of the present application, the imaginary
center spot identified by the examiner on the screen (2) of
Geluk is not capable of “guiding the transparency into a
predetermined mounting position” as at (42) of Figure 4A, or
of cooperating with a second transparency having a second
predetermined mounting position (44 in Fig. 4A) as is set
forth in appellant’s claim 30 so that the guide “separates and
determines the two predetermined mounting positions.” As for
the examiner’s position (answer, page 8) that appellant “fails
to define any structure with regard to the guide,” we find
this position to be in error, since the limitation as set
forth in claim 30 on appeal with regard to the “guide” would
Appeal No. 2001-0252
Application 08/760,652
8
invoke an interpretation under 35 U.S.C. § 112, sixth
paragraph. Thus, we will not sustain the examiner’s rejection
of claim 30 under 35 U.S.C. § 102(b) based on Geluk.
As for the examiner’s rejection of claims 4 through 6 and
8 under 35 U.S.C. § 102(b) based on Krajian, we share
appellant’s view that the “faceplate adapted for holding a
film transparency having an area thereon” of claim 4 on appeal
is not readable on the layer (13) in the device of Krajian as
urged by the examiner, since the layer (13) is not capable of
“holding” a film transparency thereon. Moreover, we observe
that the device of Krajian lacks a “means for rotating said
housing [enclosing the light source] so that light is emitted
from the first aperture to scan said transparency” (emphasis
ours) as set forth in appellant’s claim 4. As for the
remaining claims subject to this rejection, we agree with
appellant’s arguments as set forth on pages 7 and 8 of the
brief and on pages 2 through 6 of the reply brief. Thus, we
will not sustain the examiner’s rejection of independent claim
4, or of claims 5, 6 and 8 which depend therefrom, under 35
Appeal No. 2001-0252
Application 08/760,652
9
U.S.C. § 102(b) based on Krajian.
Regarding the examiner’s rejection of dependent claims 7,
11 and 12 under 35 U.S.C. § 103 based on Krajian, we observe
that these claims include the limitations noted above in claim
4, and for that reason alone define over the device of
Krajian. Moreover, we agree with appellant’s position that the
examiner’s reasoning regarding modification of the device in
Krajian to meet the limitations of these claims lacks any
evidential basis and stems entirely from speculation and
conjecture. Accordingly, the examiner’s rejection of claims
7, 11 and 12 under 35 U.S.C. § 103 based on Krajian will also
not be sustained.
In summary:
The examiner's decision rejecting claims 21 through 23
and 30 through 32 under the judicially created doctrine of
obviousness-type double patenting is reversed.
The examiner's decision rejecting claims 4 through 6 and
Appeal No. 2001-0252
Application 08/760,652
10
8 under 35 U.S.C. § 102(b) as being anticipated by Krajian is
reversed, as is the examiner's decision rejecting claims 7, 11
and 12 under 35 U.S.C. § 103 based on Krajian.
In addition, the examiner's decision rejecting claim 30
under 35 U.S.C. § 102(b) as being anticipated by Geluk is
reversed.
Thus, the decision of the examiner rejecting claims 4
through 8, 11, 12, 21 through 23 and 30 through 32 of this
application is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Appeal No. 2001-0252
Application 08/760,652
11
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgg
Greenblum & Bernstein
Intellectual Property Causes
1941 Roland Clarke Place
Reston, VA 20191