Ex parte McBryde

Board of Patent Appeals and Interferences

Mar 29, 1999

08539353 (B.P.A.I. Mar. 29, 1999)

Application for patent filed October 5, 1995.1
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not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRETT McBRYDE
__________
Appeal No. 98-2086
Application 08/539,3531
___________
ON BRIEF
___________
Before ABRAMS, STAAB, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Brett McBryde appeals from the final rejection of claims
1 through 3, 5 and 6, all of the claims pending in the
application. We reverse and enter new rejections pursuant to
37 CFR § 1.196(b).
Appeal No. 98-2086
Application 08/539,353

2
The invention relates to "the field of devices used by
musicians and others for the safekeeping of stringed
instruments having 'necks' such as guitars, violins, violas,
bass fiddles, ukuleles, mandolins, bass guitars, banjos and
the like" (specification, page 1). Claim 1 is illustrative
and reads as follows:
1. An apparatus for locking musical instruments having
necks to a fixed structure comprising:
first and second relatively rigid arms;
each of said relatively rigid arms having length and
thickness and having a first straight portion and a second
curved portion forming a right angle at the point of
connection of said portions;
each of said relatively rigid arms having a thickness
small compared to the length of each said arm;
said rigid arms forming a single closed essentially
semicircular loop when mutually engaged;
said first and second arms formed into mirror images of
each other for engaging the neck of the musical instrument;
each of said arms has first and second engaging means
formed thereon for engaging the other arm; said first arm
first engaging means is formed into an eye means;
said second arm first engaging means is formed into an
eye means;
said first and second arms second engaging means are
formed into first and second mating cylinder members which
when engaged form a hinge means for permitting the relative
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rotation of the first arm with respect to the second arm.
The references relied upon by the examiner as evidence of
anticipation are:
Grisel 4,059,209 Nov. 22, 1977
McIntosh et al. (McIntosh) 5,544,505 Aug. 13, 1996
(§ 102(e) date of Nov. 28,
1994)
Claims 1, 2 and 5 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Grisel, and claims 3 and 6 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by
McIntosh.
Reference is made to the appellant's main and reply
briefs (Paper Nos. 21 and 23) and to the examiner's final
rejection and answer (Paper Nos. 12 and 22) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Turning first to the § 102(b) rejection of claims 1, 2
and 5, Grisel discloses a carrier "used by skiers in the
carrying of their skis and poles and . . . to secure such
equipment against theft when it is not in use" (column 1,
lines 6 through 9). The carrier 10 consists of a pair of side
Appeal No. 98-2086
Application 08/539,353

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frames 11, 12 which are hinged together at 13 to allow them to
be pivoted together in clamshell-type fashion. The side
frames include resilient strips 16 on their inner surfaces for
gripping the ski equipment, latches/catches 23, 24, 26 and 27
for securely clamping them together, and tubular locking
members 30, 31. The locking members 30, 31 are designed to
telescope over posts 32, 33 on a backing member 36 mounted to
a building wall or similar structure. Tubular member 30
contains a lock 38 adapted to engage a hole 37 in post 32 to
secure the carrier 10 to the backing member 36.
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984).
The appellant's contention (see pages 4 and 5 in the main
brief) that the carrier disclosed by Grisel does not include
first and second arms of the type required by independent
claim 1 is well taken. By way of example, one of the claim
limitations in question calls for the arms to form "a single
closed essentially semicircular loop when mutually engaged."
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Notwithstanding the examiner's rather strained arguments to
the contrary (see page 3 in the answer), no parts of the
Grisel carrier arguably meeting the other arm recitations in
claim 1 also meet this particular limitation. Grisel also
fails to respond to the recitation in claim 1 that each of the
arms has a first engaging means formed thereon for engaging
the other arm wherein each such means is formed into an eye
means. The examiner's reliance on Grisel's tubular locking
members 30, 31 to meet this limitation (see page 3 in the
final rejection) is unsound because neither of these elements
is involved in engaging the other "arm" of the Grisel carrier.

Thus, Grisel does not disclose each and every element of
the invention set forth in claim 1 or in claims 2 and 5 which
depend therefrom. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(b) rejection of these claims as being
anticipated by Grisel.
As for the § 102(e) rejection of claims 3 and 6, McIntosh
discloses a lock bracket "for securing together two adjacent
objects such as a gate and a fence post" (column 1, lines 4
and 5). The embodiment illustrated in Figures 1 and 2 has two
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bracket members 1, 2 joined by a hinge 4. Each of the bracket
members includes an apertured plate 5, 6 which is adapted to
align with the other plate to receive a padlock when the
bracket is closed. In the embodiment illustrated in Figure 3,
the hinge 4 is replaced by a sliding connection formed by a
housing 17 on one of the bracket members and an extended end
18 and stopper 19 on the other bracket member.
Claim 3 depends from claim 1 and requires the first and
second arms to respectively have an aperture in and an "L"
shaped member connected thereto, with the "L" shaped member
adapted to fit inside of the aperture for relative rotation
such that the first arm is able to rotate relative to the
second arm. Here again, the appellant's contention (see pages
5 and 6 in the main brief) that the lock bracket disclosed by
McIntosh does not include such structure is well taken. The
examiner's insistence that McIntosh's housing 17, extended end
18 and stopper 19 constitute an aperture and "L" shaped member
which allow relative rotation of the sort set forth in claim 3
(see page 3 in the final rejection and page 4 in the answer)
is unsupported by, and indeed is inconsistent with, McIntosh's
disclosure. Moreover, the examiner's reliance on the separate
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embodiments of the McIntosh lock bracket shown in Figures 1
and 2 and in Figure 3, respectively, to cover all of the
limitations in dependent claim 3 and its parent claim 1 (see
pages 3 and 4 in the final rejection) is also unsound.
Anticipation is not established if in reading a claim on
something disclosed in a reference it is necessary to pick,
choose and combine various portions of the disclosure not
directly related to each other by the teachings of the
reference. In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524,
526 (CCPA 1972).
Thus, McIntosh does not disclose each and every element
of the invention set forth in claim 3 or in claim 6 which
depends therefrom. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(e) rejection of these claims as being
anticipated by McIntosh.
The following rejections are entered pursuant to 37 CFR
§ 1.196(b).
Claim 3, and claim 6 which depends therefrom, are
rejected under 35 U.S.C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the subject
matter the appellant regards as the invention.
Appeal No. 98-2086
Application 08/539,353

Although the following informalities are not serious2
enough in and of themselves to render the involved claims
indefinite, they are nonetheless deserving of correction in
the event of further prosecution before the examiner. The
preambles of dependent claims 2, 5 and 6 ("The locking means .
. .) is inconsistent with the preamble and ultimately recited
8
The second paragraph of § 112 requires claims to set out
and circumscribe a particular area with a reasonable degree of
precision and particularity. In re Johnson, 558 F.2d 1008,
1015, 194 USPQ 187, 193 (CCPA 1977). In determining whether
this standard is met, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
In the present case, the appellant's disclosure indicates
that the aperture and "L" shaped member recited in claim 3 and
the first and second mating cylinder members which form a
hinge means recited in parent claim 1 are mutually exclusive
characteristics of different locking apparatus embodiments.
The recitation of both in claim 3 by virtue of its dependency
from claim 1 renders the scope of claims 3 and 6 unclear. 2
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Application 08/539,353

subject matter of parent claim 1 ("An apparatus for locking .
. .). In claim 3, the references to "said first straight
member" lack a proper antecedent basis ("member" should be --
portion-- for consistency with preceding claim terminology).
Finally, claim 3 should end with a period rather than a comma.
The written description and enablement requirements of3
35 U.S.C. § 112, first paragraph, are, of course, separate and
distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991).
9
Claims 3 and 6 are also rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which fails
to comply with both the written description and enablement
requirements of this section of the statute. 3
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. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
The disclosure of the appellant's application as
originally filed lacks any basis for the subject matter now
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recited in claim 3 which includes both an aperture and "L"
shaped member (claim 3) and first and second mating cylinder
members which form a hinge means (parent claim 1). Thus, the
originally filed disclosure would not reasonably convey to the
artisan that the appellant had possession at that time of the
subject matter presently recited in claims 3 and 6.
Insofar as the enablement requirement is concerned, the
dispositive issue is whether the appellant's disclosure,
considering the level of ordinary skill in the art as of the
date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982).
The brief discussion of the aperture and "L" shaped
member on page 4 of the appellant's specification and the
extremely ambiguous and inconsistent showing of same in
Figures 6 through 9 would not have enabled one of ordinary
skill in the art to make and use the invention set forth in
claims 3 and 6 without undue experimentation.
In summary and for the above reasons:
a) the decision of the examiner to reject claims 1, 2 and
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5 under 35 U.S.C. § 102(b) and claims 3 and 6 under 35 U.S.C.
§ 102(e) is reversed; and
b) new rejections of claims 3 and 6 are entered pursuant
to 37 CFR § 1.196(b).
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
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment
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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 appli-
cation 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. . . .
Appeal No. 98-2086
Application 08/539,353

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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)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/caw
Appeal No. 98-2086
Application 08/539,353

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David S. Woronoff
200 Turman Drive
Fort Collins, CO 80525