Ex parte NAPIER et al.

Board of Patent Appeals and Interferences

Aug 24, 1998

08440907 (B.P.A.I. Aug. 24, 1998)

Application for patent filed May 15, 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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CORBETT NAPIER
and
SANDY NAPIER
_____________
Appeal No. 98-0007
Application 08/440,9071
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and McQUADE, Administrative Patent
Judges.
Appeal No. 98-0007
Application 08/440,907
All references herein to appellants’ brief are to the2
substitute brief filed on May 27, 1997 (Paper No. 14).
2
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 10, all the claims in the application.
The appealed claims are drawn to an apparatus for
use in removing an engine from a vehicle and transporting it
elsewhere. Claims 1 to 10 are reproduced in Appendix A of
appellants’ brief.2
The reference applied in the final rejection is:
Symon 5,033,717 July 23,
1991
Claims 1 to 10 stand finally rejected as unpatent-
able over Symon, under 35 U.S.C. § 103.
After fully considering the record in light of the
arguments presented in appellants’ brief and in the examiner’s
Appeal No. 98-0007
Application 08/440,907
3
answer, we conclude that the appealed claims are patentable
over Symon, and will not sustain the rejection.
The examiner in essence takes the position that:
(1) the first eleven lines of claim 1 “recite non-substantive
intended use language that has no patentable significance”
(answer, page 3); (2) the Symon device, although not disclosed
as attachable to an engine, is capable of being fastened to an
engine; (3) element 218 of Symon is a face plate which is
“rigidly” fastened to the boom “if all bolts one [sic, are]
properly tightened” (answer, page 4), and in any event it
would have been obvious to fasten it rigidly; (4) any one of
the elements 218 of Symon may be termed the center support
recited in claim 1.
Considering the examiner’s argument (4) first, the
last two lines of claim 1 recite:
a center support carried by said face plate
for engaging the drive pulley of such an
engine to control positioning of such an
engine relative to the face plate.
Appeal No. 98-0007
Application 08/440,907
4
Even assuming that it would have been obvious to use the
apparatus shown in Symon’s Fig. 5 to support an engine, we do
not find included therein a center support as recited. The
center support is defined functionally, i.e., by what it does;
this is permissible, and such functional limitation cannot be
ignored. However, an element which is defined functionally
may be unpatentable if the functional limitation is an inher-
ent characteristic of the prior art. In re Schreiber, 128
F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997). Here, elements 218 are
simply coplanar arms which are equidistantly located on wheel
212, and on which bars 220 are pivotally mounted (col. 9,
lines 40 to 46). Assuming that 212 and 218 may be designated
the “face plate” called for by claim 1, there is no teaching
or suggestion in Symon that one of the arms 218 would perform,
or could be modified to perform, the recited function of
engaging the drive pulley of an engine which was connected to
the face plate. Alternatively, it does not appear that one of
the arms 218 of Symon would inherently perform the recited
Appeal No. 98-0007
Application 08/440,907
See 37 CFR § 1.83(a).3
5
function of engaging the drive pulley of an engine connected
to the face plate.
We therefore conclude that a prima facie case of
obviousness has not been established.
Rejections Under 37 CFR § 1.196(b)
The following rejections are entered pursuant to the
provisions of 37 CFR § 1.196(b):
(A) Claims 1 to 10 are rejected for failure to comply with
the provisions of the second paragraph of 35 U.S.C. § 112.
Claim 1, lines 8 and 9, recites “a flange protruding
outwardly from the engine block for driving a fan blade.”
Although this language was present in original claim 1 and is
found on page 4, lines 13 and 14 of the specification, no such
flange
driving a fan blade is shown in the drawings, nor described3
in the detailed description on pages 5 to 9. Moreover, it is
not clear what is meant by a flange driving a fan blade. In
view of the lack of disclosure, one of ordinary skill in the
Appeal No. 98-0007
Application 08/440,907
6
art attempting to read the claims in light of the specifica-
tion could not determine their scope with any reasonable
degree of precision. Cf. In re Cohn, 438 F.2d 989, 993, 169
USPQ 95, 98 (CCPA 1971).
(B) Claim 6 is rejected for failure to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph.
Claim 6 recites that “said face plate defines a load
bearing surface area to engage with such a flange protruding
outwardly from the engine block.” As discussed above in
rejection (A), there is no detailed description in the
specification of the recited “flange,” and thus there is no
disclosure which would enable one of ordinary skill to provide
a load bearing surface on the face plate to engage the flange.
The only disclosure of any relevance would seem to be on page
8, lines 9 to 12, where it is stated that the fan blade
assembly can be removed and the mounting studs of the fan
blade assembly can abut the confronting surface of the face
plate, but there is nothing in this
Appeal No. 98-0007
Application 08/440,907
7
disclosure about a flange (for driving a fan blade) engaging
the face plate, as recited in claim 6.
Conclusion
The examiner’s decision to reject claims 1 to 10 is
reversed. Claims 1 to 10 are rejected pursuant to 37 CFR
§ 1.196(b).
This decision contains new grounds of rejection pur-
suant 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 appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 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
Appeal No. 98-0007
Application 08/440,907
8
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. . . .
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a). REVERSED 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )

Appeal No. 98-0007
Application 08/440,907
9
Clifford A. Poff
P.O. Box 1185
Pittsburgh, PA 15230-1185