Ex parte Lyles et al.

Board of Patent Appeals and Interferences

Aug 27, 1997

08156811 (B.P.A.I. Aug. 27, 1997)

Application for patent filed November 22, 1993.1
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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS W. LYLES,
ROBERT A. COURTWRIGHT, DANIEL C. ALLEN
and
EDGAR GRIGSBY, JR.
_____________
Appeal No. 96-1692
Application 08/156,8111
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-1692
Application 08/156,811
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 5, 20 and 21, which are all of the
claims remaining in this application. Claims 6 through 19 have
been canceled.
Appellants' invention is directed to a method of
assembling a land vehicle (claim 21) and, more particularly, to a
method of assembling a golf car (claims 1 and 20). As explained
on page 2 of their brief, the golf car
can have either an electric motor (16)
drive system or an internal combustion
engine (14) drive system. The method
comprises selecting (308) a type of
drive system and connecting (310) the
selected type of drive system to a
chassis (12). Unlike prior art golf
cars, the chassis (12) is adapted to
alternatively receive either the
electric motor drive system or the
internal combustion engine drive system.
Thus, the method allows golf cars to be
assembled on a single assembly line as
either electric cars or internal
combustion engine cars. The method
allows rapid selection of different
drive systems types for manufacturing
both electric motor cars and internal
combustion engine cars on the single
assembly line, based upon product
Appeal No. 96-1692
Application 08/156,811
3
demand, without having to reconfigure
the assembly line for the different
types of cars.
Independent claims 1 and 21 are representative of the
claimed subject matter and read as follows:
1. A method of assembling a golf car comprising steps
of:
providing a golf car chassis having a general block
shaped drive system receiving area;
selecting a type of drive system from a group of drive
system types consisting of an electric motor drive system and an
internal combustion engine drive system; and
connecting a drive system of the selected type of drive
system to the chassis in the drive system receiving area.
21. A method of assembling a land vehicle comprising
steps of:
providing a vehicle chassis;
selecting a drive system from a group of drive systems,
the group of drive systems comprising an electric motor type and
an internal combustion engine type; and
connecting the selected drive system to the chassis.
The references of record relied upon by the examiner in
rejections of the appealed claims under 35 U.S.C. § 102(b) are:
Westmont 3,108,481 Oct. 29, 1963
Gardner 3,608,659 Sept. 28, 1971
Lanius et al. (Lanius) 4,930,591 June 5, 1990
Appeal No. 96-1692
Application 08/156,811
4
Claims 1 through 5, 20 and 21 stand 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 appellants regard as their invention.
Claims 1, 2, 4, 5, 20 and 21 stand rejected under
35 U.S.C. § 102(b) as being clearly anticipated by Gardner.
Claims 1, 3, 4, 5, 20 and 21 stand rejected under
35 § U.S.C. 102(b) as being clearly anticipated by either of
Westmont or Lanius.
Rather than reiterate the examiner's full explanation
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper No.
12, mailed August 28, 1995) and the supplemental examiner's
answer (Paper No. 14, mailed October 11, 1995) for the examiner's
reasoning in support of the rejections, and to appellants'
brief (Paper No. 11, filed July 19, 1995) and reply brief
Appeal No. 96-1692
Application 08/156,811
5
(Paper No. 13, filed September 8, 1995) for appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
Turning first to the examiner's rejection of claims 1
through 5, 20 and 21 under 35 U.S.C. § 112, second paragraph, we
note that the examiner's position is that
[t]he terms "the selected type" or "the
selected style" or "selected drive
system" in appellant's [sic] claims are
vague and indefinite because it is not
apparent which "selected type" or which
"selected style" or which "selected
drive system" is claimed. Since the
drive systems and/or styles are mutually
exclusive the claims cannot recite that
both systems are operating at the same
time or that both styles are
structurally connected at the same time
(answer, page 4).
Appeal No. 96-1692
Application 08/156,811
6
After reviewing the claims on appeal, it is our
determination that the examiner is incorrect concerning the
questioned claim language. We reach this conclusion essentially
for the reasons set forth by appellants on pages 3-5 of their
brief.
When the language of the claims on appeal is considered from the
perspective of one of ordinary skill in the art, we have no doubt
that such an artisan would understand the metes and bounds of the
claimed subject matter.
Based on the foregoing, we find that the scope of the
subject matter embraced by appellants' claims 1 through 5, 20
and 21 is reasonably clear and definite, and fulfills the
requirement of 35 U.S.C. § 112, second paragraph, that it provide
those who would endeavor, in future enterprise, to approach
the area circumscribed by the claim, with the adequate notice
demanded by due process of law, so that they may more readily
and accurately determine the boundaries of protection involved
and evaluate the possibility of infringement and dominance. See
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA
Appeal No. 96-1692
Application 08/156,811
7
1970). Therefore, we will not sustain the examiner's rejection
of claims 1 through 5, 20 and 21 under 35 U.S.C. § 112, second
paragraph.
We next look to the examiner's prior art rejections of
the appealed claims under 35 U.S.C. § 102(b). With regard to
Gardner, it is the examiner's opinion, that
Gardner discloses a golf car with a
chassis, and electric dive [sic, drive]
system comprising a set of drive
batteries, an electric motor and a rear
axle assembly connected to the electric
motor connecting the electric motor
drive system to the drive axle and all
assemblies substantially entirely in the
drive system receiving area (answer,
page 5).
With regard to Westmont and Lanius, the examiner has indicated
that each of these references discloses "a golf car chassis with
an internal combustion engine and a drive assembly connected to
the rear axle assembly" (answer, page 5).
Noticeably absent from the examiner's comments
regarding the applied prior art references is any mention of a
"method of assembling a golf car" as is defined in claims 1
Appeal No. 96-1692
Application 08/156,811
8
through 5 and 20 on appeal, or of a "method of assembling a land
vehicle" as set forth in appellants' claim 21 on appeal. It
would appear to be the examiner's position that the applied
references somehow each "inherently" teach or suggest the claimed
methods of assembly based simply on the disclosure of a given
type of golf car including, in one case, a chassis and an
electric motor drive system (Gardner) and in another case, a
chassis and an internal combustion engine drive system (Westmont
and Lanius). In this
regard, the examiner has stated on page 7 of the answer
that
the prior art cited and applied to
appellant's [sic] claims has been
selected from a group of drive system
types or selected from a group of body
part types or selected from a group of
body part styles. Although the
reference may show one drive system, or
one body part or one body part style it
meets the claimed recitation of
"selecting a type...from a group of
types...".
Appeal No. 96-1692
Application 08/156,811
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We do not find the examiner's position to be
sustainable. Like appellants (brief, pages 5-10, and reply brief,
pages 2-3), we are of the opinion that the examiner has failed
to consider the claims as a whole, and that he has not given
weight to the fact that these claims are directed to a method or
process of assembling a golf car or land vehicle, and not to the
golf car or vehicle itself. Nowhere in the applied prior art
references is there disclosed or suggested a golf car assembly
method which utilizes a single type of chassis (i.e., one having
a general block shaped drive system receiving area) to produce
golf cars with different types of drive systems (electric motors
or internal combustion engines) in a single assembly line. The
examiner's apparent speculation concerning the methods by which
the
vehicles of Gardner, Westmont and Lanius may have been assembled
is of no value in evaluating appellants' claims on appeal. The
selection of the proper type of drive system for a given golf car
or land vehicle in appellants' claimed method takes place during
the actual assembly of the golf car/vehicle while the universal
Appeal No. 96-1692
Application 08/156,811
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chassis for the car/vehicle is moving down the assembly line,
with that selection being immediately followed by connection of
the selected drive system to the chassis in the drive system
receiving area. The particular assembly methods as defined in
appellants' claims on appeal are simply not taught or suggested
by the prior art references applied by the examiner.
Accordingly, based on the reference evidence provided by the
examiner, we are constrained to reverse.
In light of the foregoing, the examiner's respective
rejections of appealed claims 1 through 5, 20 and 21 under
35 U.S.C. § 102(b) will not be sustained.
To summarize our decision, the examiner's rejection of
claims 1 through 5, 20 and 21 under 35 U.S.C. § 112, second
paragraph, has been reversed;
the examiner's rejection of claims 1, 2, 4, 5, 20 and
21 under 35 U.S.C. § 102(b) as being clearly anticipated by
Gardner has been reversed; and
Appeal No. 96-1692
Application 08/156,811
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the examiner's rejection of claims 1, 3, 4, 5, 20
and 21 under 35 U.S.C. § 102(b) as being clearly anticipated by
either of Westmont or Lanius has also been reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-1692
Application 08/156,811
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Mark F. Harrington
Perman & Green
425 Post Road
Fairfield, CT 06430