Ex parte Mullet

Board of Patent Appeals and Interferences

Nov 30, 2001

09141069 (B.P.A.I. Nov. 30, 2001)

Claims 1, 2 and 10 have been amended subsequent to final1
rejection.
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not written for publication and is not binding precedent of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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIS J. MULLET
__________
Appeal No. 2001-2126
Application 09/141,069
___________
ON BRIEF
___________
Before MCCANDLISH, Senior Administrative Patent Judge, COHEN,
and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Willis J. Mullet originally took this appeal from the
final rejection of claims 1 through 6, 8, 10, 11 and 14
through 22. Upon reconsideration, the examiner has since1
withdrawn the rejection of claim 10 which now stands objected
to as depending from a rejected base claim. Thus, the appeal
as to claim 10 is hereby dismissed, leaving for review the
Appeal No. 2001-2126
Application 09/141,069
2
standing rejection of claims 1 through 6, 8, 11 and 14 through
22. Claims 7, 9, 12, 13 and 23, the only other claims pending
in the application, stand allowed.
THE INVENTION
The invention relates to “a combination stop and seal
member that operates to position and provide a weather seal
for a garage door or the like” (specification, page 1).
Representative claim 1 reads as follows:
1. A combination stop and seal member for a door
operatively movable between an open position and a closed
position in relation to a door frame comprising, a base for
attaching the member to the door frame, a rigid projecting arm
extending from said base in an angular relation thereto, a
stop block at a distal end of said projecting arm adapted to
engage the door when the door is in the closed position, and a
flexible member extending from said projecting arm at a
location adjacent to said stop block and adapted to sealingly
engage the door when the door is in the closed position.
THE REJECTION
Claims 1 through 6, 8, 11 and 14 through 22 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by U.S.
Patent No. 4,472,469 to Thies.
Attention is directed to the appellant’s brief (Paper No.
15) and to the examiner’s answer (Paper No. 16) for the
Appeal No. 2001-2126
Application 09/141,069
In the final rejection (Paper No. 6), claims 1 and 22
also stood rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. As the examiner has not restated this
rejection in the answer, we assume it has been withdrawn (see
Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957)) in light of
the amendments made subsequent to final rejection (see n.1,
supra).
3
respective positions of the appellant and the examiner with
regard to the merits of this rejection.2
DISCUSSION
Thies discloses a sealing strip adapted to be attached to
a vehicle bodywork flange. As described by Thies, the Figure
1 embodiment relied on by the examiner
is composed of a holding part 1, and of [a] sealing
part, the latter being designed as a lip 2. The
holding part 1 is composed of two limbs, 3 and 4,
which are interconnected by a web 5. On the inner
surfaces, the limbs 3,4 possess holding ribs 6, 7,
these ribs serving to improve the grip on a vehicle
bodywork flange, onto which the holding part 1 is to
be pushed. The holding part is endowed with the
necessary gripping strength by means of a metallic
reinforcing insert 8 which is composed, for example,
of a steel wire, bent into a zigzag shape, and which
passes through the two limbs 3, 4, and through the
web 5 . . . . The insert is encased, with the
profile section indicated in the drawing, by a
thermoplastic material, such as, for example,
polyvinyl chloride, the hardness of which is
adjusted to the level customary for profile sections
used of protecting edges on motor vehicles.
Appeal No. 2001-2126
Application 09/141,069
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The sealing lip 2 departs from the holding part
1 in the region of the transition-between the limb 4
and the web 5. It is composed of essentially the
same material, but its hardness is adjusted to a
somewhat lower value. . . . The thermoplastic
material forming the holding part 1 and the sealing
lip 2 is co-extruded, by a known technique, the two
grades of material being securely welded to one
another in the transition region.
The sealing lip 2 contains a reinforcing insert
10, composed of spring steel wire, bent into a
zigzag shape, this wire being thinner than that of
the reinforcing insert 8. The strength of the
reinforcing
insert 10 and the thickness of thermoplastic
material surrounding it are chosen, by design, such
that the desired sealing force and compliance
results when the sealing lip is deformed by the
expected amount [column 4, lines 21 through 59].
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 examiner’s determination that Thies discloses each
and every element of the invention set forth in the appealed
claims rests on the analysis that
Appeal No. 2001-2126
Application 09/141,069
Appendix B, which is attached to the answer, consists of3
a copy of Thies’ drawings with Figure 1 color coded and
labeled in accordance with the examiner’s analysis.
5
Thies (See appendix B) shows a base (3) having[3]
a rigid projecting arm (5) extending from said base,
an anvil-shaped stop block (13) at a distal end of
said projecting arm, a flexible member (2) overlaps
and [is] fused to the a portion of distal end of
said projecting arm at a location adjacent to said
stop block, said base and said projecting arm being
constructed of a resin, said flexible member being
constructed of a flexible resin attached to said
projecting arm, said projecting [arm] being
angularly offset from said base at an acute angle,
said base being substantially rectangular with the
projecting arm attached to said base proximate a
corner thereof.
Thies’s structure is inherently capable of
being adapted to be used in conjunction with the
door and its usage conditions [answer, page 4].
The examiner’s determination that Thies’ limb 4 (the
numeral 13 referred to by the examiner denotes the
thermoplastic material of limb 4) constitutes a stop block (or
means) as recited in the claims on appeal is not well taken.
As indicated above, independent claim 1 requires the stop
block to be “adapted to engage the door when the door is in
the closed position.” In a similar vein, independent claim 14
recites a stop block “for positioning the door when the door
is in the closed position,” independent claim 18 calls for
Appeal No. 2001-2126
Application 09/141,069
There is nothing intrinsically wrong with this claim4
drafting technique. See In re Swinehart, 439 F.2d 210, 213,
169 USPQ 226, 228 (CCPA 1971).
6
stop means “for engaging the door when the door is in the
closed position,” and independent claim 21 sets forth a stop
block and flexible seal “adapted to simultaneously engage the
door.” These limitations employ functional language to define
the stop block by what it does rather than by what it is. 4
Thies neither expressly teaches that limb 4 performs the
foregoing functions nor provides the factual basis necessary
to find that the structure embodied by limb 4 is inherently
capable of so functioning. Thus, the examiner’s apparent
position that limb 4 meets the stop block (or means)
limitations in claims 1, 14, 18 and 21 under principles of
inherency is completely conjectural and without merit. Hence,
Thies cannot be said to disclose, either expressly or under
principles of inherency, each and every element of the subject
matter recited in claims 1, 14, 18 and 21.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of independent claims 1, 14, 18 and 21,
Appeal No. 2001-2126
Application 09/141,069
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and dependent claims 2 through 6, 8, 11, 15 through 17, 19, 20
and 22, as being anticipated by Thies.
SUMMARY
The decision of the examiner to reject claims 1 through
6, 8, 11 and 14 through 22 is reversed.
REVERSED
Appeal No. 2001-2126
Application 09/141,069
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HARRISON E. MCCANDLISH )
Senior Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
IRWIN CHARLES COHEN )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
PHILLIP L. KENNER
RENNER, KENNER, GRIEVE,
BOBAK, TAYLOR & WEBER
1610 FIRST NATIONAL TOWER
AKRON, OH 44308-1456
Appeal No. 2001-2126
Application 09/141,069
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