Ex parte Martin

Board of Patent Appeals and Interferences

Oct 19, 2001

09085540 (B.P.A.I. Oct. 19, 2001)

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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL C. MARTIN
____________
Appeal No. 2000-1630
Application No. 09/085,540
____________
ON BRIEF
____________
Before STAAB, McQUADE, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 4-6 and 9-12, all the claims currently pending in the
application.
The claims on appeal are drawn to a storm shelter for
placement in the ground. A correct copy of appealed claims 9-12
appears in the appendix to appellant’s brief. A correct copy of
appealed claims 4-6 appears in the appendix to the examiner’s
answer.
Appeal No. 2000-1630
Application No. 09/085,540
2
The references applied in the final rejection are:
Monie 1,712,510 May 14, 1929
Kennon 183,575 Oct. 24, 1876
Moran 5,487,604 Jan. 30, 1996
Meyers 5,617,679 Apr. 8, 1997
The claims stand finally rejected as follows:
(1) Claims 4 and 9-12, under 35 U.S.C. § 102(b), as being
anticipated by Meyers;
(2) Claims 4, 10 and 12, under 35 U.S.C. § 102(b), as being
anticipated by Moran;
(3) Claim 12, under 35 U.S.C. § 102(b), as being anticipated by
Monie:
(4) Claim 5, under 35 U.S.C. § 103, as being unpatentable over
Meyers;
(5) Claim 6, under 35 U.S.C. § 103, as being unpatentable over
Kennon.
Preliminary Matters
In claim 12, line 3, “said chamber” lacks a clear
antecedent. For purposes of this appeal, we consider “said
chamber” to be a reference to the space defined within the
“upright hollow member.” With further regard to claim 12, line
Appeal No. 2000-1630
Application No. 09/085,540
3
5 calls for a base section including “a cylindrical wall” and
line 9 calls for “said cylindrical wall being tapered.” A side
wall that is “tapered,” as the side wall of appellant’s base
section, is not “cylindrical.” Thus, the term “cylindrical” as
applied to the side wall of appellant’s base section is
inaccurate and misdescriptive. For purposes of this appeal, we
interpret the aforementioned instances of the words “cylindrical
wall” of the base section to be a reference to the “side wall”
thereof, such that claim 12 sets forth a base section including
a bottom wall and a side wall extending upwardly therefrom, with
said side wall being tapered. Although these informalities do
not obscure the metes and bounds of claim 12, they nonetheless
are deserving of correction upon return of this application to
the Technology Center.
Rejection (1)
Independent claim 12 calls for a base section having a
tapered side wall and a top section that is tapered to enable
the base and top sections to be nested for shipment. The
examiner has not convincingly explained, and it is not apparent
to us, where Meyers discloses both a base section and a top
Appeal No. 2000-1630
Application No. 09/085,540
4
section that are tapered, much less a base section and a top
section that are tapered “to enable said base section and said
top section to be nested for shipment,” as called for in claim
12. In this regard, the examiner’s argument on page 6, lines
16-19, of the answer does not suffice. For this reason, the
examiner’s anticipation rejection of claim 12, as well as claims
4 and 9-11 that depend therefrom, based on Meyers cannot be
sustained.
Rejection (2)
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984). As stated by Judge Plager in his
concurring opinion in Oetiker, 977 F.2d at 1449, 24 USPQ2d at
1447:
The process of patent examination is an
interactive one . . . . The examiner cannot
sit mum, leaving the applicant to shoot
arrows into the dark hoping to somehow hit a
secret objection harbored by the examiner.
The ‘prima facie case’ notion, the exact
origin of which appears obscure . . . ,
seemingly was intended to leave no doubt
Appeal No. 2000-1630
Application No. 09/085,540
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among examiners that they must state clearly
and specifically any objections (the prima
facie case) to patentability, and give the
applicant fair opportunity to meet those
objections with evidence and argument. To
that extent the concept serves to level the
playing field and reduces the likelihood of
administrative arbitrariness.
In the present instance, in both the final rejection (Paper
No. 7, page 3) and the answer (Paper No. 10, page 4), the
examiner, in rejecting claims 4, 10 and 12 under 35 U.S.C. §
102(b), has merely stated that the claims are rejected “as being
clearly anticipated by . . . Moran” without any further
elaboration in either office action of precisely how Moran meets
the specific limitations of the rejected claims. In particular,
the examiner has not addressed appellant’s argument on page 8 of
the brief that the structure of Moran (1) is not a storm shelter
for placement in the ground, and (2) is missing the elements of
a hollow chamber because Moran includes a breaker bar extending
diametrically through the bin. In addition, the examiner has
not explained, and it is not clear to us, how Moran satisfies
the requirement of claim 12 that the upright hollow member
“ha[s] a height and diameter sufficient to permit at least one
person to seek shelter therein,” notwithstanding that Moran’s
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Application No. 09/085,540
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specification is silent as to the dimensions of the bin
disclosed therein.
Under these circumstances, we hold that the examiner has
failed to meet the examiner’s initial burden of establishing a
prima facie case of anticipation, such that the standing
rejection of claims 4, 10 and 12 as being anticipated by Moran
cannot be sustained.
Rejection (3)
As noted above, claim 12 calls for a base section having a
tapered side wall and a top section that is tapered to enable
the base and top sections to be nested for shipment. The
examiner has taken the position (answer, page 4) that the base
section of Monie has a tapered wall extending upwardly from the
bottom wall to an upper edge thereof; however, we are in accord
with appellant’s argument (brief, page 8) that the base section
of Monie does not have a side wall that is tapered. In
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Application No. 09/085,540
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addition, given appellant’s argument (brief, page 8) that each
of the sections of Monie includes a rung 28, we cannot accept
the examiner’s determination that there is a reasonable basis
for concluding that Monie’s top and bottom sections are
inherently capable of being nested for shipment, as now claimed.
For these reasons, the examiner’s rejection of claim 12 as
being anticipated by Monie cannot be sustained.
Rejection (4)
This rejection cannot be sustained because even if the
riser of Myers were made of fiberglass, as proposed by the
examiner, the claimed subject matter would not result. This is
so because the modified Meyers riser still would lack top and
bottom sections that are tapered to allow nesting for shipment.
Rejection (5)
Kennon pertains to a cistern “consist[ing] of a walling of
burned clay, made in sections or solid, and with [an] enlarged
upper edge or seat part” (column 1, lines 14-17). Kennon
further states that “the walling may be made in sections, or in
Appeal No. 2000-1630
Application No. 09/085,540
8
one solid piece, as in Fig. 2, with a top to close the same”
(column 2, lines 7-9).
Concerning the requirement of claim 12, from which claim 6
depends, that the claimed shelter comprises a base section
having a tapered side wall and a top section that is tapered to
enable the base and top sections to be nested for shipment, the
examiner has taken the position that “Kennon (column 2, lines 7-
8) discloses the cistern[] being made in sections or in one
solid piece. And as the sections are tapered, they are
certainly capable of being nested for shipment” (answer, page
7).
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). In making such
a rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in the factual basis. Id.
Appeal No. 2000-1630
Application No. 09/085,540
9
In the present case, the examiner has failed to advance any
factual basis to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the Figure
2 cistern of Kennon by dividing it along a horizontal plane
through the widest part of the cistern to produce a base section
and a top section in accordance with the base and top sections
called for in claim 12. The mere fact that the prior art could
be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the
modification (see In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984)). Kennon contains no such
suggestion. Rather, Kennon teaches that when the cistern is to
be made of plural sections, the sections should be generally
cylindrical in shape as shown in Figure 1.
Accordingly, we cannot sustain the standing 35 U.S.C. § 103
rejection of claim 6 as being unpatentable over Kennon.
Appeal No. 2000-1630
Application No. 09/085,540
10
Summary
Each of the examiner’s rejections is reversed.
The decision of the examiner is reversed.
REVERSED
LAWRENCE STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/lp
Appeal No. 2000-1630
Application No. 09/085,540
11
DENNIS L. THOMTE
801 GRAND AVENUE SUITE 3200
DES MOINES, IA 50309
Letty
JUDGE STAAB
APPEAL NO. 2000-1630
APPLICATION NO. 09/085,540
APJ STAAB
APJ McQUEADE
APJ BAHR
DECISION: REVERSED
PREPARED: Jul 18, 2002
OB/HD
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