Ex parte JENTZSCH et al.

Board of Patent Appeals and Interferences

Apr 16, 1998

08298351 (B.P.A.I. Apr. 16, 1998)

Application for patent filed August 29, 1994. According to appellants,1
this application is a continuation of application no. 08/031,059, filed March
2, 1993, abandoned, which is a continuation of application 07/600,942, filed
October 22, 1990, abandoned, which is a continuation of application
07/505,618, filed April 6, 1990, 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(2) is not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte K. REED JENTZSCH, OTIS H. WILLOUGHBY and
GARY A. BALDWIN
__________
Appeal No. 97-3757
Application 08/298,3511
__________
ON BRIEF
__________
Before CALVERT, COHEN and CRAWFORD, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 53, 56
to 64, 67 to 75, 78 to 87 and 90 to 111, all of the claims
remaining in the application.
Appeal No. 97-3757
Application 08/298,351
2
The claims on appeal are reproduced in Appendix A of
appellants’ brief.
The reference applied in the final rejection is:
Claydon et al. (Claydon) 4,885,924 Dec. 12, 1989
Claims 53, 56 to 64, 67 to 75, 78 to 87 and 90 to 111 stand
finally rejected as anticipated by Claydon, under 35 U.S.C.
§ 102(b).
The examiner takes the position that the appealed claims are
all readable on the container arrangement shown in Fig. 10 of
Claydon.
We will first consider the four independent claims on
appeal, claims 53, 64, 75 and 87.
Claim 53
Claim 53 recites, inter alia, a panel positioning portion
positioned between the supporting surface and the center panel
and comprising (1) a second part which extends outwardly from its
lower end to its upper end, and (2) a third part, above the
second part, extending inwardly from its lower end to its upper
end. The claim then recites:
Appeal No. 97-3757
Application 08/298,351
37 CFR 1.75(d)(1) requires that terms used in the claims must find2
clear support or antecedent basis in the description. The specification
should be appropriately amended to provide such antecedent basis.
3
said lower end of said third part having a second
diameter greater than said first diameter of said
radially innermost part of said annular support and
said upper end of said third part having a third
diameter less than said first diameter of said radially
innermost part of said annular support, wherein there
is a discontinuity between said upper end of said third
part and said center panel.
With regard to the term “discontinuity” in the penultimate
line of claim 53, we do not find any such term used in connection
with, for example, the description of the point at the upper end
of dimension L in Figs. 15 and 16 . Nevertheless, we understand2 2
from appellants’ brief at pages 19 to 20 that this term refers to
the fact that in Fig. 16, for example, the upper end of the
third part 88 of the panel positioning portion is differentiated
from center panel 38, presumably by the change in radius (from
R to R ). pR 5R
In attempting to read the above-noted claim recitations on
Claydon’s Fig. 10, one would have to construe the claimed second
part of the panel positioning portion as annular wall 5 of
Claydon, and the claimed third part as part of the outer edge of
Appeal No. 97-3757
Application 08/298,351
MPEP § 1208, items 11(iii) and (v) (page 1200-17), requires that the3
examiner point out “where all of the specific limitations recited in the
rejected claims are found in the prior art relied upon in the rejection” and
“compare at least one of the rejected claims feature by feature with the prior
art relied on in the rejection.” That has not been done in this case.
4
Claydon’s central panel 4, extending from the upper end of wall 5
to a point radially inward of the inner edge of bead 6 (in order
to meet the claimed “third diameter” limitation).
However, in order to meet the final clause (“wherein . . .
panel”) of claim 53, at such point there would have to be a
“discontinuity” between the third part and Claydon’s center
panel 4.
The examiner does not explain where there is any such
discontinuity in the Claydon Fig. 10 container, and no discon-3
tinunity is evident to us, since center panel 4 extends contin-
uously from the axis to the upper end of wall 5. Claim 53 is
therefore not anticipated by Claydon, because the reference does
not disclose either explicitly or inherently, every limitation of
the claimed invention. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997).
The rejection of claim 53 will not be sustained.
Claim 64
In this claim, it is recited in the last five lines that:
Appeal No. 97-3757
Application 08/298,351
See note 2, supra.4
5
said lower and upper end portions of said third part
being defined by first and second radiuses, respec-
tively, wherein centers of said first and second
radiuses are disposed on opposite sides of a reference
plane extending between said upper and lower ends of
said third part.
Here again, we find no specific antecedent basis for this
language in the specification, but note that in Fig. 16, third4
part 83 is concave with a radius R at its upper part, and is5R
convex with another radius (unnumbered) at its lower part. No
such structure is found in Claydon’s Fig. 10, and the examiner
has not identified any which would meet this limitation.
The rejection of claim 64 will therefore not be sustained.
Claim 75
This claim recites, in part:
an exteriorly convexly-shaped annular support
comprising an annular supporting surface, wherein a
reference plane substantially contains said annular
supporting surface
* * * * *
wherein a vertical distance of a radially outermost
part of said center panel relative to said reference
plane is significantly greater than a vertical distance
of said upper end of said second part relative to said
reference plane.
Fig. 10 of Claydon does not meet these limitations because
in Claydon, the radially outermost part of central panel 4 and
the upper end of the second part (annular wall 5) coincide, and
Appeal No. 97-3757
Application 08/298,351
6
therefore are at the same vertical distance from the plane at the
bottom of the support surface (bead 6).
The rejection of claim 75 will not be sustained.
Claim 87
Claim 87 requires that the first and second parts of the
inner wall positioned between the annular support and center
panel have “different orientations relative to said vertical
axis”. This language is not readable on the reference because,
in Claydon’s Fig. 10, if the inner wall 5 were arbitrarily
divided into first and second parts, those parts would both have
the same orientation relative to the vertical axis of the
container. The examiner does not suggest otherwise.
We therefore will not sustain the rejection of claim 87.
The Dependent Claims
Since we will not sustain the rejection under 35 U.S.C.
§ 102(b) of the four independent claims on appeal, it follows
that the rejection on that ground of the claims dependent on
these claims will likewise not be sustained.
Conclusion
The examiner’s decision to reject claims 53, 56 to 64, 67 to
75, 78 to 87 and 90 to 111 is reversed.
REVERSED
Appeal No. 97-3757
Application 08/298,351
7
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3757
Application 08/298,351
8
James L. Johnson
Sheridan, Ross & Mcintosh
1700 Lincoln St.
Suite 3500
Denver, CO 80203