Ex Parte Knirk et al

Board of Patent Appeals and Interferences

Jul 26, 2007

10796708 (B.P.A.I. Jul. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
34
35
36

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY LEE KNIRK, PAUL JEFFREY TAUZER, and
LARRY B. HIGGINS
____________________

Appeal 2006-3004
Application 10/796,708
Technology Center 3700
____________________

Decided: July 26, 2007
____________________

Before: MURRIEL E. CRAWFORD, JENNIFER D. BAHR and ROBERT
E. NAPPI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1, 4 and 5. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants invented a bathroom support bar (Specification 1).
Claim 1 under appeal reads as follows:
1. Bathroom support bar comprising:
Appeal 2006-3004
Application 10/796,708

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24

a bar having a central portion extending along a first direction
between a pair of ends, said ends being bent away from said bar central
portion; and
said bar being formed of a hollow thin walled tube material, with said
ends being formed integrally with said central portion, and a mounting
flange formed integrally at each said end and including a plurality of tabs
extending radially outwardly from said thin wall at each said end, with there
being at least three of said tabs in each mounting flange, and said at least
three of said tabs including a hole to receive a threaded fastener, and a
separate cover disposed at each said end to cover said holes.

The Examiner rejected claims 1, 4 and 5 under 35 U.S.C. § 112, ¶ 2,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. The Examiner
states that the recitation “said holes” in claim 1 lacks antecedent basis and
that the recitation “said at least three said tabs each including holes” in claim
5 is unclear.
The Examiner rejected claims 1, 4 and 5 under 35 U.S.C. § 102(b) as
being unpatentable over Sarkisian in view of Guenther.1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sarkisian 872,689 Dec. 3, 1907
Guenther 6,038,714 Mar. 21, 2000

1 The Examiner has withdrawn the rejection of claims 1, 4 and 5 under
35 U.S.C. § 103 as being unpatentable over Guenther.
2
Appeal 2006-3004
Application 10/796,708

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
Appellants contend that the recitation in claim 1 of “said holes” and
the recitation in claim 5 of “said at least three said tabs each including holes”
are clear and are directed to a single hole in each of the three tabs.
Appellants also contend that the placement of a third tab on the
Sarkisian rod may cause a tab to extend into the window and that therefore a
person of ordinary skill in the art would not be motivated to modify the
Sarkisian device so as to have a third tab (Appeal Br. 5). Appellants also
contend that one of ordinary skill in the art would not have been motivated
to modify the Sarkisian rod so as to have a cover for the flange because in
Sarkisian a curtain covers the flange (id.) .
ISSUES
The first issue is whether Appellants have shown that the Examiner
erred in holding that the recitations in claim 1 of “said holes” and the
recitation in claim 5 of “said at least three said tabs each including holes” are
unclear.
The second issue is whether Appellants have shown that the Examiner
erred in holding that it would have been obvious to modify the Sarkisian rod
so as to include a flange with three tabs and a cover.

FINDINGS OF FACT
Appellants invented a bathroom support which includes a bar 22
having ends 23 and an integrally formed mounting flange (paragraphs 0011
to 0012; Figure 1A). The mounting flange includes three tabs 26 which
extend radially outwardly. Each tab 26 includes a hole 28 for receiving a
threaded fastener (Figure 1A; paragraph 0012).
3
Appeal 2006-3004
Application 10/796,708

1
2
3
4
5
6
7
8
Sarkisian discloses a bar b having a mounting flange formed integral
with the ends of the bar (p. 1, l. 73). The mounting flange has tabs or feet b'
(p. 1, ll 68 to 74). Each of the tabs or feet b' has a hole for receiving screws
2 (p. 1, ll 75 to 80).
Guenther discloses a bathroom support bar that includes flanges 14
and 16 with covers 18 and 20 (col. 2, lines 11 to 14). The cover is provided
to conceal the flange (col. 1, lines 11 to 13).
DISCUSSION
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
Indefiniteness
We initially note that the second paragraph of 35 U.S.C. § 112
requires claims to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the claims must
be analyzed, not in a vacuum, but always in light of the teachings of the
prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
Id.
The examiner's focus during examination of claims for compliance
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph,
is whether the claims meet the threshold requirements of clarity and
precision, not whether more suitable language or modes of expression are
available. Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as precise as the
examiner might desire. If the scope of the invention sought to be patented
4
Appeal 2006-3004
Application 10/796,708

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
cannot be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate. Energizer v. ITC 435 F.3d 1366, 1370, 77
USPQ2d 1625, 1628 (Fed. Cir. 2006).
Thus, the failure to provide explicit antecedent basis for terms does
not always render a claim indefinite. As stated above, if the scope of a claim
would be reasonably ascertainable by those skilled in the art, then the claim
is not indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1146 (Bd. Pat.
App. & Inter. 1992).
With this as background, we analyze the specific rejections under
35 U.S.C. § 112, second paragraph, made by the examiner of the claims on
appeal.
Although the recitation in claim 1 of “said holes” lacks explicit
antecedent basis, when claim 1 is read in light of the specification it is clear
that claim 1 is reciting a hole in each of the tabs. In the same vein, when the
phrase “at least three of said tabs each including holes” is read in light of the
specification it is clear that it too recites a hole in each tab and that the use of
the word “holes” instead of “hole” is a typographical error. This is so
especially because the word “holes” is followed by the recitation “to receive
a threaded fastener” thereby clarifying that each of the tabs has just one hole
with one fastener within the hole. In view of the foregoing, we will not
sustain the Examiner’s rejection of claims 1, 4 and 5 under 35 U.S.C. § 112,
¶ 2.

5
Appeal 2006-3004
Application 10/796,708

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
Obviousness
We do not agree with the Appellants that to provide a third tab on the
flange disclosed in Sarkisian would require structure that might extend
toward the window because the third tab could be placed perpendicular to
the disclosed tabs extending away from the window. We also do not agree
with the Appellants that there would be no motivation to cover the flanges
disclosed by Sarkisian with a cover because the flanges are covered by a
curtain. In our view, it is not clear that the flanges would be totally covered
by a curtain in the modified Sarkisian device. This is so firstly because a
third tab may be placed perpendicular to the other displayed tabs in a
position extending away from the window and not be covered by a curtain.
Secondly, a curtain placed on rod b may not cover the tab that extends
toward the ceiling.
In view of the foregoing, we conclude that the Appellants have not
shown that the Examiner erred in holding that claims 1, 4 and 5 are
unpatentable over Sarkisian in view of Guenther. Therefore, we will sustain
this rejection of the claims.
19
20
21
22
23
24
25
26
27
AFFIRMED

JRG

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
6