Ex parte Mark

Board of Patent Appeals and Interferences

Apr 29, 1999

08178068 (B.P.A.I. Apr. 29, 1999)

Application for patent filed January 6, 1994.1
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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROGER MARK
_____________
Appeal No. 97-1835
Application 08/178,0681
______________
HEARD: April 8, 1999
_______________
Before FRANKFORT, PATE and McQUADE, Administrative Patent
Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-1835
Application 08/178,068
2
This is an appeal from the final rejection of claims
1 and 3 through 14. These are all the claims that remain in
the application.
The claimed invention is directed to a shock absorb-
ing system for a housing such as a high fidelity speaker. The
shock absorbing system is characterized by an energy absorbing
material with special energy absorbing characteristics on the
corners of the speaker. The energy absorbing material has a
resistance to impact as shown in Figure 4 of the application.
The claims at issue on appeal are appended to appel-
lant's brief.
The references of record relied upon by the examiner
as evidence of obviousness are:
Mautner 2,674,433 Apr. 6,
1954
McClive 3,063,613 Nov. 13,
1962
Smith 3,922,408 Nov. 25,
1975
Meyer 5,218,176 June 8,
1993
Appeal No. 97-1835
Application 08/178,068
3
REJECTIONS
The examiner has rejected claims 1, 4, 5 and 8
through 12 under 35 U.S.C. § 102(b) as anticipated by Mautner.
The examiner has found that the protective rubber 8 of Mautner
inherently exhibits high stiffness under normal operating
conditions and low stiffness during impact.
The examiner has rejected claims 1, 3, 6, 8, 9, 13
and 14 under 35 U.S.C. § 102(e) as anticipated by Meyer. It
is the examiner's finding that Meyer's material, closed cell
foam
of the urethane type, such as that used by appellant, would
have inherently exhibited high stiffness under normal operat-
ing conditions and low stiffness during impact.
The examiner has rejected claims 1, 6, 8 and 9 under
35 U.S.C. § 102(b) as anticipated by Smith. Again, the exam-
iner has found that Smith's yieldable material inherently
exhibits high stiffness during normal operation and low stiff-
ness (that it will yield) during impact.
Appeal No. 97-1835
Application 08/178,068
4
The examiner has rejected claims 1, 4 and 8 through
10 under 35 U.S.C. § 102(b) as anticipated by McClive. Ac-
cording to the examiner, McClive supports a finding that the
yieldable material disclosed therein inherently exhibits high
stiffness during normal operation and low stiffness during
impact.
The examiner has rejected claim 7 under 35 U.S.C.
§ 103 as unpatentable over Smith in view of Mautner. Accord-
ing to the examiner, it would have been obvious to use screws
to mount the corner caps of Smith following the disclosure of
Mautner.
The examiner has rejected claims 13 and 14 under
35 U.S.C. § 103 as unpatentable over McClive in view of Meyer.
McClive does not disclose that the housing therein is used as
a loudspeaker cabinet. The examiner has concluded that it
would
have been obvious to use the McClive enclosure as a loud-
speaker cabinet following the teaching of Meyer.
Appeal No. 97-1835
Application 08/178,068
5
We further note that the examiner has appended two
references to the final rejection and the examiner's answer.
The first reference appears to be a copy of page 468 of the
Proceedings of the Polyurethane 1994 Conference. The second
reference appears to be page 53 of the Standard Handbook for
Mechanical Engineers. Where a reference is relied upon to
support a rejection, whether or not in a minor capacity, there
is no excuse for not positively including the reference in a
statement of the rejection. In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). We will comment on
the contents of these unapplied references infra.
The examiner has noted that appellant's brief in-
cludes a statement that claims 1 and 3 through 14 do not stand
or fall together and appellant provides sufficient reasons
therefore under 37 CFR § 192(c)(7). Accordingly, appellant's
claims do not stand or fall together.
OPINION
We have carefully reviewed the rejections on appeal
in light of the arguments of the appellant and the examiner.
As a
Appeal No. 97-1835
Application 08/178,068
6
result of this review, we have reached the determination that
the applied prior art does not support a finding of anticipa-
tion or a prima facie case of obviousness with respect to the
claimed subject matter on appeal. Accordingly, the rejections
on appeal are reversed. Our reasons follow.
Anticipation under 35 U.S.C. § 102 requires that
"each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior
art reference." In re Robertson, 169 F.3d 743, ____, 49
USPQ2d 1949, 1950 (Fed. Cir. 1999) (quoting Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987)). If the prior art reference does not ex-
pressly set forth a particular element of the claim, that
reference still may anticipate if that element is "inherent"
in its disclosure. To establish inherency, the extrinsic
evidence must make clear that the missing descriptive matter
is necessarily present in the reference, and that it would
have been so recognized by persons of ordinary skill. Robert-
son, 169 F.3d at ____, 49 USPQ2d at 1950-51 (quoting
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
Appeal No. 97-1835
Application 08/178,068
7
USPQ2d 1745, 1749 (Fed. Cir. 1991)). "Inherency, however, may
not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id. at
____, 49 USPQ2d at 1951 (quoting In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981)).
Claim 1, the independent claim on appeal, includes a
shock absorbing material exhibiting first, second and third
stiffnesses. The material is further defined as having a
first and third stiffness significantly higher than said
second stiffness.
We have carefully reviewed the four references the
examiner has cited as anticipatory. Therein, we find no
express disclosure of appellant's claimed first, second and
third stiffnesses. While we acknowledge that the examiner has
stated that these stiffness properties are inherent in the
references, it is clear that this finding of inherency is
based merely on speculation and conjecture on the part of the
examiner. However, inherency may not be established by mere
possibilities or probabilities. Evidence of inherency must
Appeal No. 97-1835
Application 08/178,068
8
make clear that the missing descriptive material is necessar-
ily present in the reference and it would so have been recog-
nized by persons of ordinary skill. See Robertson, 169 F.3d
at ____, 49 USPQ2d
at 1950-51.
The examiner further contends that the unapplied
references show that the stiffness characteristics claimed in
claim 1 are "true for virtually all materials with some degree
of resiliency." Answer, page 7. With regard to the first of
those references, we note the first cited graph is a stress v.
strain curve illustrating creep for a foam automobile seat.
Creep, of course, is the tendency of a material to deform
under sustained loading. Impact connotes instantaneous load-
ing. Therefore, while the graph appears to depict the three
slopes necessary to satisfy appellant's three claimed
stiffnesses, it can be seen that a creep test has little
relevance to the claimed invention and certainly will not
support the examiner's finding of inherency. With respect to
the second uncited reference, we merely note that the steel is
Appeal No. 97-1835
Application 08/178,068
9
deforming plastically after the elastic limit is reached, and
it is improper to refer to the stiffness or Young's modulus
after the yield point of the material has been reached.
Therefore, even if it were proper for us to consider
the uncited references as extrinsic evidence bearing on the
inherency issue, the uncited references provide no evidence
that the properties claimed in claim 1 are inherent in any of
the four cited references.
With respect to claims 7, 13 and 14 rejected under
35 U.S.C. § 103, the combinations of references in the
rejections
of the examiner do not establish a prima facie case of
obviousness. For the same reasons given above, the subject
matter of these claims has not been shown to have been
unpatentable by the examiner.
SUMMARY
The rejection of all claims on appeal is reversed.
REVERSED
Appeal No. 97-1835
Application 08/178,068
10
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN C. McQUADE )
Administrative Patent Judge )
psb
Appeal No. 97-1835
Application 08/178,068
11
Charles Hieken
Fish & Richardson
225 Franklin Street
Boston, MA 02110-2804