Ex parte LOGAN

Board of Patent Appeals and Interferences

Jan 29, 1998

08157872 (B.P.A.I. Jan. 29, 1998)

Application for patent filed November 24, 1993. 1
According to appellant, this application is a continuation of
Application 07/978,830 filed November 19, 1992, now 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GERALD A. LOGAN
__________
Appeal No. 95-5059
Application 08/157,8721
__________
ON BRIEF
__________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 5 and 9 through 12. Claims 6 and 7
have been allowed, and claim 8 has been indicated as containing
allowable subject matter.
Appeal No. 95-5059
Application 08/157,872
Our understanding of this reference has been obtained2
through a PTO translation, a copy of which is enclosed.
2
The appellant's invention is directed to a vehicle body
extension for mounting upon the exterior fender surface of a
vehicle. The subject matter on appeal is illustrated by
reference to claim 1, which appears in an appendix to the
appellant’s Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Rantala 3,580,628 May 25, 1971
Purcell 4,115,974 Sep. 26, 1978
Jacobson 5,044,688 Sep. 3, 1991
Italian patent 621,392 Jun. 7, 1961
(Daimler Benz)2
THE EXAMINER’S REJECTIONS
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Daimler Benz.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Daimler Benz in view of Purcell.
Appeal No. 95-5059
Application 08/157,872
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Claims 5, 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Daimler Benz in view of Jacobson.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Daimler Benz in view of Jacobson and
Rantala.
The rejections are explained in the Examiner's Answer and
Paper No. 11.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The Examiner’s Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984). A reference
anticipates a claim if it discloses the claimed invention such
that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession
of the invention. In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
Appeal No. 95-5059
Application 08/157,872
4
1697, 1701 (Fed. Cir. 1995), cert. denied, 116 S.Ct. 1362 (1996),
quoting from In re LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372
(CCPA 1962).
According to the examiner, Daimler Benz discloses a fender
flare extension unit “having an inner edge 15 which generally1
conforms to the shape of the wheel opening; [and] an outer edge
15 " (Paper No. 11, page 2). All of the other components of the2
body extension as defined by claim 1 are located between these
two landmarks. This means that in order for claim 1 to be
anticipated by Daimler Benz, the “exposed” contour of the claimed
device, that is, the “protuberant region,” the “shoulder region,”
the “reverse-turned region” and “a nonprotuberant border flange
region,” all must be found in portion 14 of the disclosed device,
which is pictured in several embodiments in Figures 2, 3 and 4.
The examiner has described how he reads the various portions on
the Daimler Benz device on page 3 of the Answer. Because of how
the examiner is reading the claimed structure on the reference,
we find some deficiencies, which cause us not to sustain the
Section 102 rejection of claims 1 through 3.
Claim 1 requires an inner edge, which the examiner reads on
the lower of the two edges 15 of Daimler Benz, and an outer edge,
which he reads on the upper one of the edges 15. According to
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Application 08/157,872
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the examiner, the “protuberant region” reads on the “bulge”
directly below the upper finger 15, the “reverse-turned region”
between the bulge and the tip of the upper edge 15, and the
“nonprotuberant border flange region” between that and upper edge
15. The examiner has not stated where the “shoulder region” is
located, which constitutes a deficiency in his rejection. The
rejection clearly fails, however, because the claim requires that
the “protuberant region” be adjacent the inner edge of the
extension and not the outer edge, where it has been located by
the examiner in his analysis of Daimler Benz. Moreover, to call
the protuberant region the bulge adjacent to the inner edge 15
would cause it to be on the opposite surface of the device from
the other components, thus not being in conformance with the
other requirements of the claim.
For the reasons expressed above, it is our conclusion that
the examiner’s rejection of claims 1 through 3 under Section
102(b) should not be sustained.
The Examiner’s Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). All three of the examiner’s rejections under
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Application 08/157,872
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Section 103 are based upon the application of Daimler Benz as
discussed above with regard to the Section 102 rejection. Since
the secondary references cited by the examiner against other
aspects of the claimed subject matter fail to alleviate the
shortcoming in the manner in which Daimler Benz was applied
above, it is our view that in none of the rejections is a prima
facie case of obviousness established against the claimed subject
matter.
This being the case, none of the Section 103 rejections are
sustained.
REJECTIONS MADE BY THIS PANEL OF THE BOARD OF PATENT APPEALS AND
INTERFERENCES PURSUANT TO 37 CFR § 1.196(b)
New Rejection Under 35 U.S.C. § 102(b)
Claims 1 through 4 are rejected as being anticipated by
Daimler Benz. At the outset, we point out that the appellant’s
claims are directed to a vehicle body extension “for” mounting on
an exterior fender surface, and not to the combination of a
vehicle body extension and an exterior fender surface of a
vehicle. That is, the intended use of the body extension is upon
a vehicle in a particular location.
Appeal No. 95-5059
Application 08/157,872
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Using the language of claim 1 as a guide, Daimler Benz
discloses a vehicle body extension that is capable of being
mounted on the exterior surface of a vehicle in the region
surrounding a wheel opening. While Daimler Benz does not show a
wheel opening per se in the drawings, the shape of the body
extension (Figure 1) clearly indicates that it is complementary
to a wheel opening, and a wheel is shown in Figure 2. The
Daimler Benz unit is in the form of a contoured sheet-like body
having an inner edge (the lower right-hand edge of panel 11 in
Figure 2) which generally conforms to the shape of a wheel
opening (see Figure 1), and an outer edge (generally at the upper
15 in Figure 2) which is nonconforming to the shape of the wheel
opening and which is capable of fitting generally conformingly to
a vehicle fender. The contour of the body being exposed, when
mounted on a vehicle, reveals a protuberant region adjacent the
inner edge (the lowermost of the downwardly curved portion of
element 11 in Figure 2), a shoulder region extending from the
protuberant region toward the outer edge (the uppermost of the
downwardly curved portion of element 11), a reverse-turned region
between the shoulder and selected portions of the outer edge (the
upwardly curved corner portion immediately beneath the lead line
to the numeral 14 in Figure 2), and a nonprobuberant border
Appeal No. 95-5059
Application 08/157,872
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flange region which will extend substantially parallel with a
vehicle body when installed thereon and which will terminate
immediately adjacent the outer edge of the unit (the flange
immediately beneath upper edge 15 in Figure 2). The Daimler Benz
unit will provide a smooth visual transition between the exterior
surfaces of a vehicle fender when installed thereon.
With regard to claim 2, as shown in Figure 1, the outer edge
of the Daimler Benz device includes rectilinear segments
encompassing major portions of the length of the outer edge.
Looking to claim 3, the outer edge includes a generally straight
horizontal segment encompassing a major portion of the uppermost
edge, and a vertical segment encompassing a major portion of the
outer edge. These segments are “generally perpendicular” (Figure
1), giving the unit a “generally squared-off appearance,” as
required by claim 4.
New Rejections Under 35 U.S.C. § 103
Claims 5, 11 and 12 are rejected as being unpatentable over
the combined teachings of Daimler Benz and Jacobson. Daimler
Benz has been discussed above with regard to our Section 102
rejection. That reference discloses the unit mounted over a
vehicle wheel (Figure 2), and behind what appears to be a door
opening. Daimler Benz fails to teach providing the unit with an
Appeal No. 95-5059
Application 08/157,872
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opening in registration with a fuel access port in the vehicle,
as is added to the basic structure by claim 5.
However, such a feature was known in the prior art at the
time of the appellant’s invention, as exemplified by Jacobson
(see the fuel opening, unnumbered, in Figures 1 and 2). It would
have been obvious to one of ordinary skill in the art to modify
the Daimler Benz unit by adding such an access opening in
registration with an access port on the vehicle, suggestion being
found in the self-evident advantages thereof, such as permitting
the continued use of the existing fuel port, which would have
been known to the artisan, who is presumed to possess a
reasonable level of skill rather than the lack thereof. See In
re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985).
Claim 11 adds to claim 1 the limitation that the extension
unit be secured to the vehicle via an adhesive, and independent
claim 12 effectively adds the same limitation to the structure
also recited in claim 1. Daimler Benz discloses securing the
unit to the vehicle by means of fasteners that fit through
openings in the vehicle body. Jacobson discusses several means
for attaching panels to the outer surface of a vehicle, including
fasteners (column 1), and suggests a preference for using an
adhesive at the edges (column 2, lines 32 and 33). From our
Appeal No. 95-5059
Application 08/157,872
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perspective, it would have been obvious to one of ordinary skill
in the art to utilize such a known alternative fastening system
as a substitute for the one disclosed in Daimler Benz, for the
self-evident advantages thereof. In this regard, while it is
true that the Daimler Benz unit is attached by means which render
it more easily removable than one attached by adhesive, it is our
view that one of ordinary skill in the art would have recognized
from the discussion in Jacobson that both fastener and adhesive
systems were known in the art at the time of the appellant’s
invention, thus suggesting the use of either, depending upon the
objectives of the artisan.
Claims 9 and 10 are rejected as being unpatentable over the
combined teachings of Daimler Benz, Jacobson and Rantala. In
addition to the matters discussed immediately above, Jacobson
discloses a panel 14 which overlies the entire lower portion of
the side of a vehicle body. It includes a front fender panel 16,
which surrounds the front wheel opening, and a box panel 24,
which surrounds the rear wheel opening (Figures 1 and 2). Panel
14 further comprises a rocker panel 20 mounted on the body
beneath the door and a cowl panel 22 behind the door, which
together comprise an elongate generally rigid member which
extends between the two fender units, as is required by claim 9.
Appeal No. 95-5059
Application 08/157,872
11
Such also is created by considering door panel 18 and cowl panel
22 as the elongate generally rigid extension.
It is our opinion that one of ordinary skill in the art
would have found it obvious to utilize two units as disclosed in
Daimler Benz, one to surround the front wheel opening and the
other to surround the rear wheel opening, and to connect the two
together by an extension unit, suggestion being found in the
teachings of Jacobson as well as in the self-evident advantage of
providing the protection and appearance of such to both wheel
openings as well as to the intermediate parts of the vehicle
body. To the extent that the Jacobson structure does not include
a “molding strip,” evidence of such a well-known feature in the
art is provided by Rantala, and it would have been prima facie
obvious to install it where deemed necessary for protection on
the extension unit constructed in accordance with the teachings
of Daimler Benz and Jacobson.
As for claim 10, we note that Jacobson discloses the
required lower strip, and Rantala attaches a molding at such a
location.
Appeal No. 95-5059
Application 08/157,872
12
SUMMARY
In formulating the new rejections set forth above, we
considered the arguments presented by the appellant in response
to the examiner’s rejections, as they might apply to the
positions we have taken. They have not dissuaded us, however,
from making these new rejections. We wish to reiterate that the
appellant’s claims are directed to a body extension for use upon
a vehicle, and it is well settled that the manner in which a
device is to be used is not germane to the issue of the
patentability of the device itself. See In re Casey, 370 F.2d
576, 580, 152 USPQ 235, 238 (CCPA 1967), and In re Otto, 312 F.2d
937, 939, 136 USPQ 458, 459 (CCPA 1963). The fact is that the
body extension disclosed in Daimler Benz is capable of being used
in the manner recited in the appellant’s claims.
None of the examiner’s rejections are sustained.
Pursuant to 37 CFR § 1.196(b) the following new rejections
are entered:
Claims 1 through 4 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Daimler Benz.
Claims 5, 11 and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of Daimler Benz
and Jacobson.
Appeal No. 95-5059
Application 08/157,872
13
Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Daimler Benz,
Jacobson and Rantala.
The decision of the examiner is reversed. 37 CFR
§ 1.196(b).
This decision contains a new ground 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 ground 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. . . .
Appeal No. 95-5059
Application 08/157,872
14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 95-5059
Application 08/157,872
15
Walter W. Karnstein
Kolisch, Hartwell, Dickinson,
McCormack & Heuser
200 Pacific Building
520 S.W. Yamhill Street
Portland, OR 97204