Ex Parte O'Dea

Board of Patent Appeals and Interferences

Oct 28, 2004

10026033 (B.P.A.I. Oct. 28, 2004)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Kevin A. O'Dea
____________
Appeal No. 2004-2103
Application No. 10/026,033
____________
ON BRIEF
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2 and 6.
Claims 1, 3 to 5 and 7 are pending but not the subject of this appeal. No claim has
been canceled.
We AFFIRM.
Appeal No. 2004-2103
Application No. 10/026,033
Page 2
1 Issued February 22, 2000.
BACKGROUND
The appellant's invention relates to a system and method for proportioning
braking between front and rear wheels (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
Claims 2 and 6 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
U.S. Patent No. 6,027,1821 to Nakanishi et al. (Nakanishi).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 11, mailed April 15, 2004) for the examiner's complete reasoning in support
of the rejection, and to the brief (Paper No. 10, filed February 17, 2004) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied patent to Nakanishi, and to the
Appeal No. 2004-2103
Application No. 10/026,033
Page 3
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
Claims 2 and 6 read as follows:
2. The brake circuit of claim 1 wherein the apply valve is a linear solenoid
valve.
6. The method of claim 4 wherein the apply valve is a linear solenoid valve.
Appeal No. 2004-2103
Application No. 10/026,033
Page 4
In the rejection under appeal, the examiner determined that the claimed linear
solenoid valve was readable on holding valve 36 of Nakanishi. Nakanishi teaches
(column 9, lines 50-53) that the holding valve 36 is a two-position solenoid valve which
is normally open and is closed when a drive signal is supplied by an electronic control
unit 10.
The appellant argues that holding valve 36 of Nakanishi is a two-position valve
not a "linear" valve as claimed. The appellant asserts that "linear" as used in claims 2
and 6 means that the valve has a variety of positions between fully closed and fully
open.
The United States Patent and Trademark Office (USPTO) applies to the
verbiage of the claims before it the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the appellant's specification. In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). See also In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Appeal No. 2004-2103
Application No. 10/026,033
Page 5
In this case, the appellant has provided no evidence that "linear" as used in
claims 2 and 6 would be understood by one of ordinary skill in the art to mean that the
valve has a variety of positions between fully closed and fully open. Attorney argument
in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974). As such, we find ourselves in basic agreement with the
position of the examiner as set forth in the answer (pp. 4-5).
The specification does not provide any definition of "linear" nor does it otherwise
provide any enlightenment as to the meaning of "linear." Figure 1 does not depict the
linear solenoid apply valve 60 as having a variable orifice. Thus, we believe that the
broadest reasonable meaning of "linear" as used in claims 2 and 6 as it would be
understood by one of ordinary skill in the art is that the valve moves in a straight line.
Since the holding valve 36 of Nakanishi is a two-position valve that moves in a straight
line, the claimed linear solenoid valve is readable thereon.
For the reasons set forth above, the decision of the examiner to reject claim
claims 2 and 6 under 35 U.S.C. § 102(b) is affirmed.
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Application No. 10/026,033
Page 6
CONCLUSION
To summarize, the decision of the examiner to reject claims 2 and 6 under
35 U.S.C. § 102(b) is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2004-2103
Application No. 10/026,033
Page 7
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