Ex Parte Lundgren

Board of Patent Appeals and Interferences

Apr 26, 2004

09264398 (B.P.A.I. Apr. 26, 2004)

1Upon confirmation of his request by counsel for the appellant (Paper No. 31), this case was
docketed for oral hearing at 1 PM on March 2, 2004. However, counsel failed to appear at the appointed
time and date. Therefore, this appeal has been decided on the Briefs.
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for publication and is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDERS LUNDGREN
____________
Appeal No. 2004-0360
Application No. 09/264,398
____________
ON BRIEF1
____________
Before COHEN, ABRAMS, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 20-34,
which are all of the claims pending in this application.
We AFFIRM.
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Application No. 09/264,398
Page 2
2Rejections of claim 34 under 35 U.S.C. § 112, first and second paragraphs, were withdrawn in
the Answer as a result of an amendment after the final rejection.
BACKGROUND
The appellant's invention relates to a load carrier strut for mounting on load
carrier feet disposed at opposing side edges of a vehicle roof. An understanding of the
invention can be derived from a reading of exemplary claim 20, which has been
reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Burland 3,677,451 Jul. 18, 1972
Duemmler 5,275,320 Jan. 4, 1994
Ozog 5,282,560 Feb. 1, 1994
Derecktor 5,848,743 Dec. 15, 1998
Sibinger (German Patent Document) DE 4,113,230 Oct. 29, 1992
The Examiner’s Rejections
Claim 33 stands rejected under 35 U.S.C. § 112, first paragraph,2 as containing
subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Claim 33 stands rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
the appellant regards as the invention.
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Application No. 09/264,398
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The following rejections stand under 35 U.S.C. § 102(b):
(1) Claims 20-32 and 34 as being anticipated by Burland.
(2) Claim 33 as being anticipated by Duemmler.
The following rejections stand under 35 U.S.C. § 103(a):
(1) Claims 20-22, 24, 25, 27 and 34 as being unpatentable over Derecktor
in view of Duemmler.
(2) Claims 20-22, 24, 25, 27, 31, 32 and 34 as being unpatentable over
Sibinger in view of Duemmler.
(3) Claims 20, 21, 24 and 34 as being unpatentable over Ozog in view of
Duemmler.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 22) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 21) 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 references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
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Application No. 09/264,398
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Claim 20
An arrangement adapted to be mounted on load carrier feet that are
disposed at opposing side edge regions of a vehicle roof, said
arrangement comprising:
a load carrier strut having a substantially streamlined outer cross-sectional
configuration defined at least partially by an outer contour line and, at
opposing end regions thereof, longitudinal slots located on an underside
of said load carrier strut, each of said longitudinal slots is adapted to
receive a drawbar; and
said outer contour line of said streamlined out cross-sectional
configuration being broken at said underside of said load carrier strut by a
longitudinal projecting portion having a forward defining surface, a rear
defining surface and a bottom surface.
The Rejection Under The First Paragraph Of Section 112
Among the structure defined in claim 33 is “a strut having a substantially
rectangular cross-sectional configuration defined at least at partially [sic, at least
partially] by an outer contour line” (emphasis added). It is the examiner’s position that
this structure was not disclosed in the specification, and therefore the claim runs afoul
of the first paragraph of Section 112. We agree.
As described in the specification, the load carrier strut 6 has an outer edge line 7
which defines the streamlined cross section (page 5), and there also is a “rectangular
tube profile” which has a front wall 14, a rear wall 15, and upper wall 16 and a bottom
wall 12 (page 6). Figure 1 of the appellant’s drawings makes it clear that outer edge
line 7 transcribes a substantially elliptical profile which defines the strut, within which is
positioned the rectangular tube profile. This being the case, the limitation in claim 33
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that the “strut,” which is the entire device to which the claim is directed, has a
“substantially rectangular cross-sectional configuration,” is without support in the
specification. From our perspective, the cross-sectional configuration of the “strut” is
not “substantially rectangular,” but substantially elliptical.
While we have carefully considered the arguments presented by the appellant in
opposition to this rejection, they have not persuaded us that the specification discloses
both a strut and a tube that forms part of the strut which have substantially rectangular
cross-sectional configurations.
The examiner also has taken the position that the slots are not associated with
the tube member, and therefore this limitation also is not supported by the specification.
We do not agree with this conclusion. Claim 33 is directed to a load carrier “strut.” The
claim recites longitudinal slots located on the underside and at opposing end regions of
“said strut,” and they are disclosed as being in bottom wall 12 of the rectangular tube.
Since the tube described in claim 33 is a component of the strut, the examiner’s
conclusion here is in error.
However, since we are in agreement with the examiner on one of the two
matters raised here, this rejection of claim 33 is sustained.
The Rejection Under The Second Paragraph Of Section 112
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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 has explained this rejection in terms of how the rectangular cross-
sectional configuration would not meet the objectives set forth in the appellants’
specification, that is, that it would not present a “substantially streamlined” profile, as is
stated on page 3, for example. As we view claim 33, it requires that the strut, which is
the entire claimed device, and the tube member that constitutes a substantially internal
component of the strut, both have “substantially rectangular cross-sectional
configurations.” Such is not described in the specification, and therefore the recitation
of two components “of substantially rectangular cross-sectional configuration” causes
the claim not to set out the invention with a reasonable degree of precision and
particularity, placing one of ordinary skill in the art in the position of being unable to
determine its metes and bounds based upon the language of the claim as interpreted in
view of the specification. The claim therefore is indefinite. The appellant’s arguments
have not convinced us otherwise.
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This rejection of claim 33 is sustained.
The Rejections Under Section 102
Anticipation under 35 U.S.C. § 102(b) is established only when a single prior art
reference discloses, either expressly or under the principles of inherency, each and
every element of the claimed invention. See, for example, In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference
does not require either the inventive concept of the claimed subject matter or
recognition of inherent properties that may be possessed by the reference. See
Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d
1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what the
applicant is claiming, but only that the claim on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in the reference. See Kalman v.
Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
The first rejection under Section 102 is that claims 20-32 and 34 are anticipated
by Burland. The examiner has explained on page 4 of the Answer how the language of
claim 20 reads on the load carrier disclosed by Burland in Figure 6. We agree with this
analysis. We are not persuaded by the appellant’s arguments that it is in error. The
fact that the Burland carrier is “mounted differently” than that of the appellants’ invention
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is of no consequence because all of the subject matter recited in claim 20 “reads on”
Burland’s Figure 6. With regard to the argument concerning the drawbar, claim 20
states that the strut has longitudinal struts “adapted to receive a drawbar” (emphasis
added). It is our view that even if T-shaped element 44 is for argument’s sake not
considered to be a “drawbar,” the slots in the strut are nevertheless appear to be
“adapted,” that is, capable of, receiving a drawbar. As for the “longitudinal projecting
portion,” the claim does not require that it protrude downwardly, as argued by the
appellant, but only that the streamlined outer configuration be “broken at the underside”
by a “longitudinally” projecting portion, which clearly is the case in Burland at 47 and 52.
This rejection of claim 20 is sustained. Since the appellant has chosen not to
argue the separate patentability of dependent claims 21-32, which depend from claim
20, the rejection of those claims also is sustained.
The only argument advanced by the appellant with regard to independent claim
34 is that the longitudinal slot is not disclosed as receiving a drawbar. However, as we
concluded above with regard to claim 20, the slot is Burland appears to be capable of
receiving a drawbar, and therefore the reference meets the “adapted to receive”
requirement of the claim. This rejection of claim 34 is sustained.
Claim 33 stands rejected as being anticipated by Duemmler. The first argument
advanced by the appellant with regard to this rejection is that Duemmler does not
disclose longitudinal slots adapted to receive a drawbar, in that the slots in Duemmler
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receive a supporting jaw, a clamping screw bolt and a claw, which do not constitute a
drawbar (Brief, page 8). We find this argument not to be persuasive because, in our
view, the slots are “adapted to receive a drawbar,” that is, they are capable of receiving
a drawbar, which is all the claim requires.
The second argument posed by the appellant is that Duemmler does not
disclose the required lower projecting portion that protrudes downwardly beyond the
contour line (Brief, page 8). Again, we do not agree. Claim 33 recites two elements
having a “substantially rectangular cross-sectional configuration.” The first of these is
upper of the two rectangular elements shown in Figure 2, which is delineated “at least
partially” by the outer contour of the outer top and side surfaces of the portion of the
strut that defines internal slot 16. The upper rectangular element terminates at the top
of the hollow opening delineated by the numeral 2. Extending downwardly from this
point is a second element of substantially rectangular cross-sectional configuration,
which has a lower portion protruding downwardly beyond the contour line that defines
the upper rectangular portion, with the underside of the lower portion being configured
to cooperate with support surfaces.
On the basis of this reading of the claim language on the Duemmler strut it is our
conclusion that the subject matter recited in claim 33 is anticipated by Duemmler. This
being the case, we will sustain this rejection of claim 33.
The Rejections Under Section 103
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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, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The first rejection under Section 103 is that claims 20-22, 24, 25, 27 and 34 are
unpatentable over the combined teachings of Derecktor and Duemmler. In this
rejection the examiner finds all of the claimed subject matter to be disclosed by
Derecktor except for the individual slots at each end of the strut. However, the
examiner takes the position that it would have been obvious to modify the Derecktor
strut by replacing the single full length slot with individual slots at each opposing end
region of the strut in view of the teachings of Duemmler, because doing so “would
involve mere substitution of one functional equivalent for another and . . . would perform
equally well on the Derecktor device” (Answer, page 6). However, one of the objectives
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of the Derecktor device is to provide a strut “which is capable of being installed on any
size and model van” (column 1, lines 23-25), which in our view would be interpreted by
one of ordinary skill in the art to pertain, among other things, to vehicles of different
widths. To accomplish this, Derecktor provides a single slot that extends for the entire
length of the strut and therefore can accommodate both narrow and wide vehicles.
In the absence of evidence establishing that slots at the opposed ends of the
strut would be the functional equivalent of a single slot extending along the entire length
of the strut in the Derecktor device and would perform equally well, or would be an
improvement to the Derektor system, we fail to perceive any teaching, suggestion or
incentive in either reference which would have led one of ordinary skill in the art to
make the examiner’s proposed modification. Therefore, the combined teachings of
Derecktor and Duemmler fail to establish a prima facie case of obviousness with regard
to the subject matter recited in claim 20, and we will not sustain this rejection. It follows
that we also will not sustain the like rejection of claims 21, 22, 24, 25 and 27, which
depend from claim 20, or of independent claim 34, which contains the same limitation.
Claims 20-22, 24, 25, 27, 31, 32 and 34 stand rejected as being unpatentable
over Sibinger in view of Duemmler. In this rejection, the examiner admits that Sibinger
discloses no slots, but expresses the view that it would have been obvious to add slots
at the opposed ends “in order to allow attachment of the strut to longitudinal rails on the
vehicle to increase utility thereof” (Answer, page 7). We do not agree. Sibinger utilizes
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an attachment system in which the opposed ends of the strut (3) are fastened to
support feet (2), and discloses no slots in the underside, much less slots at the opposed
ends. The examiner has not provided reasons why the proposed modiftication would
increase the utility of the Sibinger device or where suggestion to do so is found. This
being the case, from our perspective the suggestion to make the modification proposed
by the examiner is found only in the hindsight afforded one who first viewed the
appellant’s disclosure, which is not a proper basis for a rejection. This rejection of
independent claim 20 and dependent claims 21, 22, 24, 25, 27, 31 and 32, as well as
that of independent claim 34, is not sustained.
Claims 20, 21, 24 and 34 stand rejected as being unpatentable over Ozog in
view of Duemmler, with the examiner’s rationale being the same as with Sibinger and
Duemmler, that is, while Ozog does not disclose slots in the strut, it would have been
obvious to add them to increase the utility of the Ozog device. On the basis of the
same reasoning we set forth in refusing to sustain the rejection based upon Sibinger
and Duemmler, we also will not sustain this rejection of claims 20, 21, 24 and 34.
CONCLUSION
The rejection of claim 33 under 35 U.S.C. § 112, first paragraph, is sustained.
The rejection of claim 33 under 35 U.S.C. § 112, second paragraph, is
sustained.
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The rejection of claims 20-32 and 34 under 35 U.S.C. § 102(b) as being
anticipated by Burland is sustained.
The rejection of claim 33 under 35 U.S.C. § 102(b) as being anticipated by
Duemmler is sustained.
The rejection of claims 20-22, 24, 25, 27 and 34 under 35 U.S.C. § 103(a) as
being unpatentable over Derecktor in view of Duemmler is not sustained.
The rejection of claims 20-22, 24, 25, 27, 31, 32 and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Sibinger in view of Duemmler is not sustained.
The rejection of claims 20, 21, 24 and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Ozog in view of Duemmler is not sustained.
A rejection of each of the claims on appeal having been sustained, the decision
of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
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Application No. 09/264,398
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA:pgc
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HOWREY, SIMON, ARNOLD & WHITE L.L.P.
1299 PENNSYLVANIA AVE. N.W.
BOX 34
WASHINGTON, DC 20004