Ex Parte LE

Board of Patent Appeals and Interferences

Sep 30, 2002

08995431 (B.P.A.I. Sep. 30, 2002)

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for publication and is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAM KIEN LE
____________
Appeal No. 2002-1685
Application No. 08/995,431
____________
ON BRIEF
____________
Before McQUADE, NASE, and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
Decision on Appeal
This is a decision on appeal from the examiner's final
rejection of claims 14 to 17, 20 and 23. Claims 18, 19, 21, 22,
24 and 25 are allowed. Claims 1 to 13 have been canceled.
The appellant’s invention relates to a spring door
crustacean trap. A copy of the claims under appeal is set forth
in the appendix to the appellant’s brief.
Appeal No. 2002-1685
Application No. 08/995,431
Page 2
The prior art
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Lile 2,196,928 Apr. 9, 1940
The rejections
Claims 14 to 17 and 23 stand rejected under 35 U.S.C. § 102
as being anticipated by Lile.
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lile.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper No.
19) and the answer (Paper No. 22) for the examiner's complete
reasoning in support of the rejections, and to the brief (Paper
No. 21) and reply brief (Paper No. 23) for the appellant’s
arguments thereagainst.
Opinion
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art reference, and to the
Appeal No. 2002-1685
Application No. 08/995,431
Page 3
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We turn first to the examiner’s rejection of claims 14 to 17
and 23 under 35 U.S.C. § 102(b). The examiner is of the opinion
that Lile discloses the invention as claimed.
The appellant argues that Lile does not disclose at least
one tensioning member extending around the door and connected to
and producing a spring tension in the rods.
The examiner states:
The concentric circles of Lile extend around
the door and produce a spring tension in the
rods since the rods are shown to be bent in
an arc such as in Fig. 2. If the rods were
not under a spring tension, they would be
straight. [final rejection at page 4]
As such the examiner states that Lile inherently discloses
each and every element of the claims. We note that the prior
art reference need not expressly disclose each claimed element
in order to anticipate the claimed invention. See Tyler
Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ
845, 846-847 (Fed. Cir. 1985). Rather, if a claimed element (or
elements) is inherent in a prior art reference, then that element
(or elements) is disclosed for purposes of finding anticipation.
Appeal No. 2002-1685
Application No. 08/995,431
Page 4
See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631-33,
2 USPQ2d 1051, 1052-54 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987).
It is well settled that the burden of establishing a prima
facie case of anticipation resides with the Patent and Trademark
Office (PTO). See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). When relying upon the theory of
inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. See Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed Cir.
1991); Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. &
Int. 1990). Inherency, however, can not be established by
probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not
sufficient. Continental Can Co., 948 F.2d at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326
(CCPA 1981).
After the PTO establishes a prima facie case of anticipation
based on inherency, the burden shifts to the appellant to prove
that the subject matter shown to be in the prior art does not
Appeal No. 2002-1685
Application No. 08/995,431
Page 5
possess the characteristics of the claimed invention. See In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985);
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir.
1986).
The specification discloses that the crab pot is comprised
of spring steel rods 36 connected by spring steel wire 33 and
plastic fishing line material 34. As the spring steel rods 36
are bound by the wire 33 and plastic fishing line material 34, a
tension is developed in the spring steel rods 36 (specification
at pages 6 to 7).
Lile discloses that the dome-like shaped compartments
are built up of substantially rigid wire framework having a
foraminous screen covering. Lile discloses nothing about spring
tension or the use of spring steel in the substantially rigid
wire framework. As such, in our view, the examiner’s reasoning
that Lile discloses a tensioning member producing a spring
tension in the rods is speculative in nature and can not support
a rejection under 35 U.S.C. § 102(b). Therefore, the examiner
has failed to establish a prima facie case of anticipation by
inherency. As such, we will not sustain this rejection.
Appeal No. 2002-1685
Application No. 08/995,431
Page 6
We turn next to the examiner’s rejection of claim 20 under
35 U.S.C. § 103 as being unpatentable over Lile. In support of
this rejection, the examiner states:
The patent to Lile shows a crab trap as
discussed above. Lile shows a top portion
and a bottom portion with a gap between the
members. Lile does not disclose if the gap
is located at a midpoint between the top and
bottom portion, but it appeals to be close to
the midpoint. At any rate, it would have
been obvious to locate the gap at the
midpoint between the top and bottom member
since the exact location of the gap is a
matter of design choice to be determined
through routine experimentation since the
function is the same and no showing of
unexpected results was made. [final rejection
at pages 3 to 4]
We will not sustain this rejection because we are of the
opinion that Lile does not suggest at least one tensioning member
as is recited in claim 14 from which claim 20 depends. In fact
Lile suggests the opposite by disclosing that the compartment is
substantially rigid (page 1, col. 1, lines 32 to 35).
Appeal No. 2002-1685
Application No. 08/995,431
Page 7
The decision of the examiner is reversed.
Reversed
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC/jrg
Appeal No. 2002-1685
Application No. 08/995,431
Page 8
JOAN H. PAULY
BARNARD & PAULY, P.S.
P.O. BOX 58888
SEATTLE, WA 98138