Ex parte Malone

Board of Patent Appeals and Interferences

Nov 30, 2000

08889872 (B.P.A.I. Nov. 30, 2000)

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written for publication and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID MALONE
____________
Appeal No. 1999-1761
Application No. 08/889,872
____________
HEARD: November 13, 2000
____________
Before CALVERT, COHEN, and GONZALES, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 1 through 20, all of the claims in the
application, as amended subsequent to final rejection.
Appellant’s invention pertains to a motion transmitting
remote control assembly for transmitting motion in a curved
path. A basic understanding of the invention can be derived
Appeal No. 1999-1761
Application No. 08/889,872
2
from a reading of exemplary claim 1, a copy of which appears
in a new APPENDIX to the brief (Paper No. 17).
As evidence of obviousness, the examiner has applied the
document specified below:
Boike et al. 5,477,745 Dec. 26,
1995
(Boike)
The following rejections are before us for review.
Claims 1 through 20 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based upon a specification which
lacks descriptive support for the claimed subject matter (new
matter).
Claims 1 through 20 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1 through 3 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Boike.
Appeal No. 1999-1761
Application No. 08/889,872
In our evaluation of the applied prior art, we have1
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 13), while the complete statement of appellant’s
argument can be found in the main and reply briefs (Paper Nos.
12 and 14).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,1
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determinations
which follow.
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Application No. 08/889,872
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The description issue
We reverse the examiner’s rejection of claims 1 through
20 under 35 U.S.C. § 112, first paragraph.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. Further, the content of the drawings may also be
considered in determining compliance with the written
description requirement. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1562-63, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991) and
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983).
At issue is the question of whether appellant’s
underlying disclosure descriptively supports the recitation in
independent claim 1 of release tabs of a locking button for
"moving independently of button teeth" in a direction parallel
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Application No. 08/889,872
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to a longitudinal axis of a slider member to release the
locking button from a locked position in response to forces
applied thereto in a direction parallel to the longitudinal
axis.
Appellant’s disclosure indicates (specification, page 4)
that a locking button 34 (Fig. 2) includes release tabs each
comprising a leg 38 and shelf 40 for releasing the locking
button from a locked position in response to forces applied
thereto in a direction parallel to a longitudinal axis. The
locking button 34 provides button teeth 36 on the inside of U-
shaped legs for engaging slider teeth 20 in a locked position
and also includes "U-shaped end surfaces 48" (Fig. 2)
extending transversely to the longitudinal axis and
intersecting the lateral surfaces 44 and top 46. As further
explained in the specification (page 5),
the shelves 40 may be manually grasped and
forced together toward the end surfaces 48
to clear the ramps 58 from the cross beams
56 to remove the locking button 34, 134
from the locked position to the unlocked
position.
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While the specification does not expressly state that the
release tabs are for moving independently as now claimed, it
is quite apparent to us that one skilled in this art would
fully appreciate from appellant’s overall disclosure that the
configuration of the locking button is such that the release
tabs, in response to forces applied thereto, are for moving
independently of the button teeth to release the locking
button from its locked position. Thus, it is fair to say that
the claimed subject does not address new matter since it is
descriptively supported by the originally filed disclosure.
The examiner’s rejection under 35 U.S.C. § 112, first
paragraph, cannot therefore be sustained.
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Application No. 08/889,872
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The indefiniteness rejection
We reverse the rejection of claims 1 through 20 under
35 U.S.C. § 112, second paragraph, as being indefinite.
In the examiner’s opinion (answer, page 4), the same
language of claim 1 discussed above in the rejection under
35 U.S.C. § 112, first paragraph, is imprecise. We disagree.
As we see it, the language at issue in this rejection,
when read in light of the disclosure in appellant’s
application (in particular, those portions of the
specification referenced above relative to the new matter
rejection) reveal that the claim language is precise and
definite in meaning. Consistent with our earlier analysis,
the release tabs do move independently of the button teeth
when they are manually forced together toward the end surfaces
48.
The anticipation rejection
We reverse the rejection of claims 1 through 3 under
35 U.S.C. § 102(e) as being anticipated by Boike.
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Application No. 08/889,872
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As explained by the examiner (answer, page 5), the tabs
and teeth of Boike are formed as one-piece like appellant’s
tabs and teeth and, therefore, if appellant’s tabs move
independently of the button teeth, the tabs of Boike
inherently move independently of the button teeth. The
examiner’s position is not well taken.
Simply stated, the examiner has failed to appreciate that
the locking means 20 of Boike (Fig. 2) is structurally
different from appellant’s locking button 34 and that the
respective locking and release arrangements differ one from
the other. Unlike the claimed release tab for movement
independently of the button teeth, Boike has no release tab
structure on the locking means for moving independently as now
claimed. The release of the locking means of Boike is
effected by a screwdriver engaging notches 66 to pop the
locking member out of its locking position after deflecting
the bridge members 80 outwardly; see column 5, lines 1 through
44. Thus, appellant’s claims 1 through 3 are not anticipated
by the Boike teaching.
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Application No. 08/889,872
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In summary, this panel of the board has not sustained any
of the examiner’s rejections.
The decision of the examiner is reversed.
REVERSED
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Application No. 08/889,872
10
IAN A CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
ICC/sld
Appeal No. 1999-1761
Application No. 08/889,872
11
HAROLD W MILTON JR
HOWARD & HOWARD
1400 NORTH WOODWARD AVENUE
SUITE 101
BLOOMFIELD HILLS, MI 48304-2856
APPEAL NO. 1999-1761 - JUDGE
COHEN
APPLICATION NO. 08/889,872
APJ COHEN
APJ CALVERT
APJ GONZALES
DECISION:
Prepared By:
DRAFT TYPED: 09 Jun 01
FINAL TYPED: