Ex parte Keenan

Board of Patent Appeals and Interferences

Jun 30, 1999

08607886 (B.P.A.I. Jun. 30, 1999)

Application for patent filed February 27, 1996. 1
According to appellant this application is a continuation of
Application No. 08/323,882, filed October 17, 1994, now
abandoned.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREW J. KEENAN
____________
Appeal No. 98-2122
Application No. 08/607,8861
____________
ON BRIEF
____________
Before MEISTER, NASE, and GONZALES, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-2122 Page 2
Application No. 08/607,886
"Although no "Notice of References Cited by Examiner"2
(PT0-892) is present in parent application Serial No.
08/323,882, the references to Hilsey and Collins were
apparently made of record (but not relied on) in the Office
action dated July 14, 1995 (Paper No. 3) of the parent
application.
Andrew J. Keenan (the appellant) appeals from the final
rejection of claims 1-8, 10-14 and 18-24, the only claims
remaining in the application.
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter new rejections of claims
1, 2 and 18 under 35 U.S.C. § 102(b) and claims 1-5, 12-14 and
18-24 under 35 U.S.C. § 103.
The references relied on by the examiner are:
Pickett 4,111,401 Sep. 5,
1978
Myers et al. (Myers) 5,202,132 Apr. 13,
1993
Additional references of record relied on by this merits
panel of the Board are:2
Hilsey 4,290,246 Sep. 22,
1981
Collins 5,404,685 Apr. 11,
1995
(filed Aug. 31, 1992)
Claims 1, 2, 4-7 and 18 stand rejected under 35 U.S.C.
Appeal No. 98-2122 Page 3
Application No. 08/607,886
§ 103(a) as being unpatentable over Myers.
Claims 3, 8, 10-14 and 19-24 stand rejected under 35
U.S.C.
§ 103(a) as being unpatentable over Myers in view of Pickett.
As a preliminary matter, we base our understanding of the
appealed subject matter upon the following interpretation of
the terminology set forth in the claims (as they appear in the
appendix to the brief). With respect to claims 13 and 14, in
lines 4 and 8 of claim 13, and line 7 of claim 14, we interpret
"mounting block" to be -- mounting post --. With respect to
claim 18, in lines 14 and 17 we interpret "the first mounting
post" to be -- the mounting post --; in lines 15 and 16 we
interpret "the first panel" to be -- the panel --; and in line
16 we interpret "the notch" to be -- the notch end --.
Each of the above-noted rejections is bottomed on the
examiner's position that:
It . . . would have been obvious to one having
ordinary skill in the art to center Myers's [sic,
Myers'] panel section one [sic, on] the post section,
so that a more aesthetically pleasing, physically
balanced wall section would be created; note that
centering the panel with respect to the post provides
a functionally equivalent wall structure, since the
interconnection of adjacent wall sections is not
affected by "shifting" the location of the panel from
Appeal No. 98-2122 Page 4
Application No. 08/607,886
an extreme left or right side to the center -- the
adjacent panels still interconnect in the required
tongue-and-groove manner, and the resultant wall
still serves as a noise barrier. [Answer, page 5.]
We will not support the examiner's position. Obviousness
under § 103 is a legal conclusion based on factual evidence (In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988)) and it is well settled that, in order to establish a
prima facie case of obviousness, the prior art teachings must
be sufficient to suggest to one of ordinary skill in the art
making the modification needed to arrive at the claimed
invention (see, e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984)). The examiner, however, has
provided no factual evidence whatsoever in support of the
position that it would have been obvious to center the wall
with respect to the mounting post. As the court in In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968) stated: “A rejection based
on section 103 must rest on a factual basis, and these facts
must be interpreted without hindsight reconstruction of the
invention from the prior art. . . . [The examiner] may not . .
. resort to speculation, unfounded assumptions or hindsight
Appeal No. 98-2122 Page 5
Application No. 08/607,886
reconstruction to supply deficiencies in . . . [the] . . .
factual basis.” As to the examiner's contention that the
proposed modification would provide a "functionally equivalent"
wall structure, it is well settled that equivalency does not
establish obviousness. See In re Scott, 323 F.2d 1016, 1019-
20, 139 USPQ 297, 299-300 (CCPA 1963) and In re Flint, 330 F.2d
363, 367-68, 141 USPQ 299, 302 (CCPA 1964).
With respect to claims 3, 8, 10-14 and 19-24, we have
carefully reviewed the teachings of Pickett but find nothing
therein which would overcome the deficiencies of Myers that we
have noted above.
Both of the above-noted rejections are reversed.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 1, 2 and 18 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Hilsey. Initially we note that the
terminology in a pending application's claims is to be given
its broadest reasonable interpretation (In re Morris, 127 F.3d
1048, 1056, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d, 1320, 1322 (Fed. Cir.
Appeal No. 98-2122 Page 6
Application No. 08/607,886
1989)) and limitations from a pending application's
specification will not be read into the claims (Sjolund v.
Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir.
1989)). Moreover, anticipation by a prior art reference does
not require either the inventive concept of the claimed subject
matter or the recognition of inherent properties that may be
possessed by the prior art reference. See Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054
(Fed. Cir. 1987). A prior art reference anticipates the
subject matter of a claim when that reference discloses every
feature of the claimed invention, either explicitly or
inherently (see Hazani v. Int’l Trade Comm’n, 126 F.3d 1473,
1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997)); however, the law
of anticipation does not require that the reference teach what
the appellant is claiming, but only that the claims on appeal
"read on" something disclosed in the reference (see Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983)). It is also well settled that if a prior art
device inherently possesses the capability of functioning in
the manner claimed, anticipation exists regardless of whether
Appeal No. 98-2122 Page 7
Application No. 08/607,886
there was a recognition that it could be used to perform the
claimed function. See, e.g., In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Note also
LaBounty Mfg. v. Int’l Trade Comm’n, 958 F.2d 1066, 1075, 22
USPQ2d 1025, 1032 (Fed. Cir. 1992).
Here, Hilsey discloses a wall including first and second
panels (see, e.g., Figs. 1 and 2) which are assembled in a
fashion similar to a tongue and groove structure (see Figs. 2,
7 and 9a; col. 2, lines 5-7). The panel members are provided
with a grid-work of embedded reinforcing bars or rods placed on
approximately 14 inch centers (see col. 5, lines 11-14), which
grid-work would include both vertical and horizontal bars.
Noting that independent claims 1 and 18 set forth that the
mounting post may be one times the width of the panel (i.e.,
the same width as the panel), the end of the panel containing
the groove and at least one vertical reinforcing rod can be
considered to be the "mounting post" as broadly claimed. As to
the limitation that the wall is a "noise abatement" wall, the
wall of Hilsey clearly has the capability of being used as a
noise abatement wall (see In re Schreiber, supra) and whether
Appeal No. 98-2122 Page 8
Application No. 08/607,886
Hilsey's wall actually is or might be used as such a wall
depends upon the performance or non-performance of a future act
of use, rather than a structural difference in the claims.
Stated differently, the wall of Hilsey would not undergo a
metamorphosis to a new wall simply because it was used as a
noise abatement wall. See In re Pearson, 494 F.2d 1399, 1403,
181 USPQ 641, 644 (CCPA 1974) and Ex parte Masham, 2 USPQ2d
1647, 1648 (Bd. Pat. App. & Int. 1987).
As to the limitation in claim 18 that the panel and
mounting post are vertically cast, claim 18 is directed to a
product (i.e., a wall section), and not to the method of making
the product. Thus, notwithstanding the "product-by-process"
recitation of "vertically cast," the determination of the
patentability of claim 18 is based on the wall section itself.
That is, the wall section defined by claim 18 is anticipated if
it is the same as the wall section of Hilsey, even if Hilsey's
wall section was made by a different process. See In re
Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 19-22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hilsey. With respect to the embodiment of
Appeal No. 98-2122 Page 9
Application No. 08/607,886
See Ex parte Lee, 31 USPQ2d 1105, 1106 (Bd. Pat. App. &3
Int. 1993) and Titanium Metals Corp. of America v. Banner, 778
Fig. 14a, Hilsey states that the panels may also include
internal reinforcing in the form of "metallic mesh" which is
"similar to metal fencing material" (col. 11, lines 39-42).
Noting that the issue of obviousness is not only determined by
what the references expressly state but also is determined by
what they would fairly suggest to those of ordinary skill in
the art (see, e.g., In re Delisle, 406 F.2d 1386, 1389, 160
USPQ 806, 808-09 (CCPA 1969) and In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549-50 (CCPA 1969)), we are of the opinion
that this disclosure by Hilsey would have fairly suggested
"wire" reinforcement as claimed.
Claims 1-5, 12-14 and 18-24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Myers in view of Collins. As
set forth on pages 4 and 5 of the answer, Myers discloses sub-
stantially all the limitations set forth (including a mounting
post having a notch to receive the notch end of the panel so as
to form a tongue and groove-type connection wherein the width
of the mounting post relative to the width of the panel is
within the claimed range - see Figs. 5 and 6) with the3
Appeal No. 98-2122 Page 10
Application No. 08/607,886
F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985): “It is also
an elementary principle of patent law that when, as by a
recitation of ranges or otherwise, a claim covers several
compositions, the claim is ‘anticipated’ if one of them is in
the prior art.” Note also the court’s analysis in In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed.
Cir. 1990) concerning the need to show criticality for a
claimed range in order to establish obviousness. Here, page 6
of the specification merely indicates that the range is
preferred.
exception of the panel being centered with respect to mounting
post. Collins, however, teaches a wall structure (col. 1, line
67) having a mounting post 30 and a panel 20 wherein the notch
end of a panel is received in a notch in the mounting post so
as to form a tongue and groove-type connection. Collins also
teaches that the panel should be centered with respect to the
mounting post (see, e.g., Fig. 5). The width of the mounting
post relative to the width of panel (like the primary reference
to Myers) appears to be within the claimed range (see Figs. 5
and 11). A combined consideration of Myers and Collins would
have fairly suggested to the artisan to modify the appearance
of Myers' wall (wherein the center of the panel is offset from
the center of the mounting post such that the mounting post and
panels are flush on one side and the mounting posts protrude on
the other side) in order to achieve a more traditional fence-
Appeal No. 98-2122 Page 11
Application No. 08/607,886
like appearance (wherein the centers of the mounting post and
panel are aligned such that the mounting posts protrude from
both sides, thus creating a uniform appearance when viewed from
either side) as taught by Collins.
Apparently anticipating a rejection based upon the
combined teachings of Meyers and Collins (a rejection which, as
we have noted above, was never made, the appellant in the
parent application argued that:
Assuming for the sake of argument, that Collins
is applied to the claims in singly or in combination
with Myers et al., applicant's invention is still not
taught. Firstly, Collins has a post with two panels
mounted on each side thereof. The panels must then
be clipped to the post with additional devices 40.
Such devices 40 of Collins are not required or used
by either Myers et al. or applicant. Secondly, to
use such devices would destroy the function of both
Myers et al. wall and applicant's wall. Devices 40,
41, 42 and 43 alone renders Collins inapplicable to
applicant's wall.
Furthermore, devices 40 et al. alone mitigate
against the combination of Myers et al. and Collins.
The Collins post is hollow, stands alone, and
receives a panel on each side. Myers et al. has a
post incorporated in the panel. Modifying either
structure to incorporate the other would destroy
their function.
Even assuming for the sake of argument that the
combination of Myers et al. and Collins is possible,
applicant's invention still is not taught. No
reference or reasonable combination thereof shows
Appeal No. 98-2122 Page 12
Application No. 08/607,886
applicant's coplanar, single unit, post and panel
combination being assembled into a wall. [See page
11 of the amendment filed on September 25, 1995
(Paper No. 5) of the parent application.]
We are unpersuaded by the appellant's arguments. In order
to establish obviousness under § 103, it not necessary that all
of the features of the secondary reference be bodily
incorporated into the primary reference (see In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)) and the artisan
is not compelled to blindly follow the teaching of one prior
art reference over the other without the exercise of
independent judgment (Lear Siegler, Inc. v. Aeroquip Corp., 733
F.2d 881, 889, 221 USPQ 1025, 1032 (Fed. Cir. 1984)). Here,
the secondary reference to Collins is merely being used as a
suggestion to center the panel relative to the mounting post as
claimed.
In summary:
The examiner's rejections of claims 1-8, 10-14 and 18-24
under 35 U.S.C. § 103(a) are reversed.
New rejections of claims 1, 2 and 18 under 35 U.S.C. §
102(b) and claims 1-5, 12-14 and 18-24 under 35 U.S.C. § 103
have been made.
Appeal No. 98-2122 Page 13
Application No. 08/607,886
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37
CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Appeal No. 98-2122 Page 14
Application No. 08/607,886
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 98-2122 Page 15
Application No. 08/607,886
MATHEW R. P. PERRONE JR
210 SOUTH MAIN STREET
ALGONQUIN, IL 60102