Ex parte Kvasnes

Board of Patent Appeals and Interferences

Aug 16, 2001

08549828 (B.P.A.I. Aug. 16, 2001)

1
The opinion in support of the decision being entered today was not written for
publication and is not precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte OLAV J. S. KVASNES
____________
Appeal No. 1998-1781
Application No. 08/549,828
____________
HEARD: MAY 9, 2001
____________
Before STAAB, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to appellant’s request for rehearing
(Paper No. 30, filed July 30, 2001) of our decision (Paper No.
29, dated May 30, 2001) reversing the examiner’s rejection of
claims 10-19 and sustaining the examiner’s rejection of claims
25 and 26 under 35 U.S.C. § 103(a) as being unpatentable over
Wright (U.S. Pat. No. 2,740,168) in view of Thom (U.S. Pat. No.
3,774,342).
Appeal No. 1998-1781
Application No. 08/549,828
2
Appellant’s request submits that this panel has
misapprehended the structure of Wright and misconstrued the
meaning of the language of claim 25. In particular, the request
urges that, contrary to our decision, the fitting (frame member
17) of Wright does not pivot relative to the panel (including
the lower housing 13), that the mounting of the fitting to the
lower housing is not a pivotal mounting, and that we have
misconstrued the claim terminology “mounted” and “rotate in a
plane.”
Turning first to appellant’s argument that the frame member
17 of Wright does not pivot relative to the lower housing 13, we
note that the frame member 17 pivots about a point of contact
(at 27) on the track 20. In that the pivotal movement of the
frame member is relative to the lower housing 13, we maintain
our view that the frame member pivots relative to the lower
housing.
As for appellant’s argument that the mounting of the
fitting on the panel is required by claim 25 to be a pivotal
connection, in that the mounting via the shafts 24 and openings
23 permits pivotal movement of the frame member 17 relative to
the lower housing 13, we consider the frame member to be
Appeal No. 1998-1781
Application No. 08/549,828
3
pivotally mounted on the lower housing 13 to pivot relative to
the lower housing.
Appellant’s assertion on page 2 of the request that “[f]or
the frame member 17 to pivot relative to the panel 10 (lower
housing 13), there would have to be a pivot axis passing through
both the frame member 17 and the panel 10" is not well founded,
as there is no requirement in claim 25 that the mounting of the
fitting on the panel coincides with the mounting of the fitting
on a common horizontal axis. We remind appellant that
limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1,
5 (CCPA 1982).
As for our interpretation, on page 7 of our decision, of
the term “mounted” in the claim terminology “mounted on a common
horizontal axis” as placed on something raised, in accordance
with the definition of “mount” in Webster's New World
Dictionary, Third College Edition (Simon & Schuster, Inc. 1988),
we observe that, in proceedings before it, the PTO applies to
the verbiage of claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one
of ordinary skill in the art, taking into account whatever
Appeal No. 1998-1781
Application No. 08/549,828
4
enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997). Moreover, absent an express
definition in the specification, the fact that appellant can
point to definitions or usages that conform to his
interpretation does not make the PTO's definition unreasonable
when the PTO can point to other sources that support its
interpretation. Id., 127 F.3d at 1056, 44 USPQ2d at 1029.
Finally, appellant’s request (page 2) contends that “the
plain meaning of claim 25 particularly when read in light of the
drawings and the specification at page 10, lines 26 to 29 is
that it is the central plane of the wheel which is claimed in
claim 25.” Appellant’s specification (page 10, lines 26-30)
states that
[t]he bearing profile 20 is pivotably mounted about
the axis 21a, which in the illustrated embodiment is
located laterally outside the central plane of the
castor wheel 17a and laterally outside the central
plane of the bearing profile 20 and also the central
plane of the sliding panel 12.
There is no mention in this discussion of a plane of rotation.
Further, we find no definition of plane of rotation or rotating
Appeal No. 1998-1781
Application No. 08/549,828
Attorney's arguments in a brief cannot take the place of evidence. In1
re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974).
5
in a plane anywhere in appellant’s specification. Appellant has
provided no evidence to support the assertion on page 3 of the
request that “one of ordinary skill would interpret the plane of
rotation of the wheel in claim 25 as the central plane” and we1
are not aware that "rotate in a plane" is a term of art which
refers to the central plane of a rotating wheel or roller. In
fact, we find it equally likely, if not more likely, that one
skilled in the art would consider the face of a rotating wheel
or roller to be the plane in which it rotates. An applicant can
be his own lexicographer provided the applicant's definition, to
the extent it differs from the conventional definition, is
clearly set forth in the specification. Beachcombers Int’l,
Inc. v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1158, 31
USPQ2d 1653, 1656 (Fed. Cir. 1994). As appellant has not
clearly set forth a definition of the plane of rotation of the
wheel, our treatment of the claim language “disposed to rotate
in a plane spaced laterally of said common horizontal axis” on
page 7 of our decision is not unreasonable. While such an
interpretation is broad, it would not “make the claim
Appeal No. 1998-1781
Application No. 08/549,828
Just because a claim is broad does not mean that it is indefinite. 2
See In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17 (CCPA
1977); In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971); In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) and Ex parte
Scherberich, 201 USPQ 397, 398 (Bd. App. 1977).
6
indefinite” as appellant urges on page 3 of the request. As2
pointed out on page 7 of our decision, “the plane of rotation
running along each face of the roller element [of Wright], for
example, is spaced laterally of the common horizontal axis,”
thereby meeting the above-noted limitation of claim 25.
Appeal No. 1998-1781
Application No. 08/549,828
7
As should be evident from our discussion above, appellant’s
request for rehearing has been reviewed and the request granted
to the extent of our reconsidering our earlier decision in light
thereof, but is denied with respect to making any changes in
that decision.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-1781
Application No. 08/549,828
8
Francis C. Hand, Esq.
CARELLA BYRNE BAIN GILFILLAN CECCHI STEW
6 Becker Farm Road
Roseland , NJ 07068-2391