Ex Parte Mansueto

Board of Patent Appeals and Interferences

Sep 26, 2002

09416547 (B.P.A.I. Sep. 26, 2002)

1
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not written for publication and is not binding precedent of the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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD MANSUETO
__________
Appeal No. 2002-0670
Application 09/416,547
___________
ON BRIEF
___________
Before FRANKFORT, PATE, and NASE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3, 6, 7, 14, 16, 18 and 19, and the examiner’s refusal to
allow claims 23 through 25, 28, 29, 36, 38, 40 and 41 as amended
after final rejection. Claims 4, 5, 8 through 11, 15, 17, 20
through 22, 26, 27, 30 through 33, 37, 39 and 42 through 64 stand
withdrawn from consideration as directed to a nonelected
invention. Claims 12, 13, 34 and 35 have been canceled. These
are all the claims in the application.
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Application 09/416,547
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It is noted that there was confusion between the appellant
and the examiner as to the status of claims 10, 31 and 32 on
appeal. Paper No. 5, an amendment filed after final rejection,
amended claim 10, 31 and 32, although claims 10 and 32 had been
indicated as drawn to a nonelected invention and withdrawn from
consideration. Finally, in paper No. 14 mailed after the
examiner’s answer, the examiner indicated that claims 10 and 32
are indeed withdrawn from consideration. Since the examiner did
not comment on the status of claim 31, appellant stated in the
supplemental brief that claim 31 was on appeal. Inasmuch as
claim 31 depends from claim 30, a claim in and of itself
withdrawn from consideration, we hold that claim 31 must be, as
per the examiner, withdrawn from consideration and not subject to
this appeal.
The claimed invention is directed to a device retention
assembly for retaining a device. The specification mentions that
the device may be a computer drive or the like.
A further understanding of the claimed subject matter may be
had with reference to claim 1, reproduced below:
1. A device retention assembly, comprising:
a guide;
a guide channel;
Appeal No. 2002-0670
Application 09/416,547
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a retention mechanism;
wherein the guide is disposed on a device so that the guide
is capable of slidably moving along the guide channel so that the
retention mechanism may engage the guide therein providing a
restraining force and electrical ground for the device.
The references of record relied upon by the examiner as
evidence of anticipation are:
Steadman 1,527,282 Feb. 24, 1925
Juvet 1,563,864 Dec. 1, 1925
The Rejections
Claims 1 through 3, 6, 7, 14, 16, 18, 19, 23 through 25, 28,
29, 36, 38, 40 and 41 stand rejected under 35 U.S.C. § 102 as
anticipated by Juvet.
Claims 1 through 3, 6, 7, 23 through 25, 28 and 29 stand
rejected under 35 U.S.C. § 102 as anticipated by Steadman.
Opinion
We have carefully reviewed the record in this appealed
application. As a result of this review, we have determined that
the applied prior art establishes the lack of novelty of the
claims on appeal. However, inasmuch as the examiner has failed
to properly explain the rejection to the applicant in any of the
office actions or, indeed, in the examiner’s answer, we are
denominating our decision as a rejection under 37 CFR § 1.196(b).
Our reasoning follows.
Appeal No. 2002-0670
Application 09/416,547
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Juvet discloses a device retention assembly for use in the
dashboard of an automobile. Juvet discloses a casing 10 of sheet
metal. Page 1, line 80. The casing includes a guide channel 30.
A device 11, including cover 14, is moved in and out of the
casing, and the device’s movement is controlled by guide pin 37
which moves in the guide channel 30. A restraining means 40 in
the form of a leaf spring with an arcuate end is provided as a
retention mechanism. The arcuate portion at the free end of the
spring 40 is formed in this shape to aid in flexing the retention
mechanism by camming it away from the guide both in engaging and
in disengaging directions. Inasmuch as the casing 10 is
disclosed as a sheet metal, and the rest of the device is
crosshatched as a metal, it is clear to us that the device
retention assembly acts as a ground for the device 11,14.
It is our view that the reference to Juvet provides a prima
facie case of anticipation based on inherency of the claimed
subject matter on appeal. See In re King, 801 F.2d 1324, 1326,
231 USPQ 136, 139 (Fed. Cir. 1986). As such the burden has
shifted to the appellant to prove that the structure in Juvet
does not provide the functional attributes called for in the
claims.
Appeal No. 2002-0670
Application 09/416,547
5
Note for claims 14 through 19 that the guide in Juvet is a
pin 37 with head 38 to prevent detachment of the pin from the
casing. Note that this pin can be considered a post and is
substantially rounded and substantially circular. The pin 37 can
be said to be inserted in the hole formed by the rolled sheet 36.
Turning to a consideration of Steadman, Steadman discloses a
guide 8 with a guide channel 10 and a retention means 12, 13
thereon. Note that the retention means 12, 13 has a spring bias,
and pin 13 engages hole 9 in the guide 8. The crosshatching in
Steadman’s figures indicates that the material of Steadman is
metallic. Accordingly, it is our finding under the principle of
inherency that Steadman anticipates claims 1 through 3, 6, 7, 23
through 25, 28 and 29.
In essence, we agree with the examiner that the two
references cited anticipate the claimed subject matter. However,
during prosecution of the application, the appellant repeatedly
called on the examiner to explain how the references anticipated
appellant’s claimed subject matter. We note that even in the
examiner’s answer, the examiner did not state that he was relying
on the inherent properties of Juvet and Steadman. The closest
the examiner went was to state in one sentence that as long as a
disclosed structure is capable of providing the claimed function,
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Application 09/416,547
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rejection under § 102 is proper. Inasmuch as the examiner did
not fully explain to the appellant that the rejection was an
anticipation rejection based on inherent properties of the
references, we believe that appellant has not been given clear
notice of the basis of the rejection. Accordingly, the
rejections of the examiner are reversed and we will enter new
rejections on the same references under 37 CFR § 1.196(b).
Claims 1 through 3, 6, 7, 14, 16, 18, 19, 23 through 25, 28,
29, 36, 38, 40 and 41 are rejected under 35 U.S.C. § 102(b) as
anticipated by Juvet. See our above findings of fact for the
statements of this rejection.
Claims 1 through 3, 6, 7, 23 through 25, 28 and 29 are
rejected under 35 U.S.C. § 102(b) as clearly anticipated by
Steadman. Again, see our findings of facts made above for an
explanation of how the prior art anticipates these claims.
In summary, the rejections by the examiner of the claims on
appeal are reversed.
Pursuant to our authority under 37 CFR § 1.196(b), we have
entered new rejections of claims 1 through 3, 6, 7, 14, 16, 18,
19, 23 through 25, 28, 29, 36, 38, 40 and 41.
Appeal No. 2002-0670
Application 09/416,547
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This decision contains new grounds 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. . . .
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Application 09/416,547
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Reversed 37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE III )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
WFP:pgg
Appeal No. 2002-0670
Application 09/416,547
9
William J. Breen, III
Suiter & Associates PC
14301 FNB Parkway, Suite 220
Omaha, NE 68154-5299