Ex Parte Oxley

Board of Patent Appeals and Interferences

Jul 25, 2007

09731437 (B.P.A.I. Jul. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RANDY OXLEY
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Appeal 2007-1920
Application 09/731,437
Technology Center 3700
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Decided: July 25, 2007
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Before HUBERT C. LORIN, LINDA E. HORNER, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/731,437

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STATEMENT OF THE CASE
Randy Oxley (“Appellant”) seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1, 6-10, 13, 21, 22, 24-26, 28, and 29. We
have jurisdiction under 35 U.S.C. § 6(b) (2002). We reverse.1
THE INVENTION
Appellant claims a holder adapted to support a stringed bow in a generally
horizontal position outwardly from a hunter’s body at a position below the hunter’s
waist (Specification 7:18-21). Claim 1, the only independent claim, is
representative of the subject matter on appeal.
1. A holder adapted to support a stringed bow in a
generally horizontal position outwardly from a hunter's
body at a position below the hunter's waist comprising:
a support member;
a spacing member combined with the support
member and extending generally inwardly and upwardly
therefrom; and
an engagement member combined with said
spacing member and being disposed generally above and
inward from the support member;
the support member comprising an inward section
and an outward section, said sections forming an
upwardly concave surface.

1 Only those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to make in
the Briefs have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
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Application 09/731,437

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Jones US 5,248,072 Sep. 28, 1993

Claims 1, 6-10, 13, 21, 22, 24-26, 28, and 29 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Jones.

ISSUE
The issue before us is whether Appellant has shown that the Examiner erred
in rejecting claims 1, 6-10, 13, 21, 22, 24-26, 28, and 29 under 35 U.S.C. 102(b) as
anticipated by Jones. The issue turns on whether Jones discloses a “spacing
member” as required by each of the appealed claims.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).
1. The Specification describes a spacing member that is “adapted to
combine the engagement member and the spacing member so that the
supporting member is held in a position generally below the engagement
member and outwardly from the hunter’s body” (Specification 9:20-
10:2).
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2. According to the Specification, “[w]hat is clear is that the holder must
provide for a means to support a bow, extend this support at a selected
distance from a hunter's body and below the hunter's waist and allow for
the direct or indirect engagement of the holder with the hunter or the
hunter's apparel” (Specification 12:2-5).
3. Jones does not disclose a spacing member as required by each of the
appealed claims (Jones, passim).

PRINCIPLES OF LAW
“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. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). Analysis
of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins
with a determination of the scope of the claim. We determine the scope of the
claims in patent applications “not solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). The properly interpreted claim must
then be compared with the prior art.
To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily
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present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.
Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted) (internal quotation marks omitted).

ANALYSIS
We first construe the meaning of the phrase “spacing member” as used by
the Appellant in claim 1, from which all appealed claims depend. The
Specification makes clear that the “spacing member” holds the support member in
a position generally below the engagement member and outwardly from the
hunter’s body (Finding of Fact 1). The Specification further includes language that
the “spacing member” must “extend th[e] support at a selected distance from a
hunter's body and below the hunter's waist and allow for the direct or indirect
engagement of the holder with the hunter or the hunter's apparel.” (Finding of Fact
2). Giving the claims their broadest reasonable construction in light of the
Specification as it would be interpreted by one of ordinary skill in the art, we
therefore construe “spacing member” to mean a member that extends the support
member a selected distance from a hunter’s body and below the hunter’s waist.
This is consistent with the plain language of the claim that the spacing member
extends generally inwardly and upwardly from the support member.
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Based on the above claim construction, the rejection of claims 1, 6-10, 13,
21, 22, 24-26, 28, and 29 as anticipated by Jones is improper, because Jones does
not disclose each and every limitation as set forth in claims 1, 6-10, 13, 21, 22, 24-
26, 28, and 29, either expressly or inherently. In particular, Jones fails to anticipate
independent claim 1, because it does not teach a spacing means (Finding of
Fact 3). The Examiner marked up Figure 3 of Jones to show where he believes the
engagement member, spacing member, and support member are disclosed
(Answer, Appendix). However, the spacing member described by the Examiner in
Jones does not hold the supporting member generally below the engagement
member and outwardly from the hunter’s body as required by each of the appealed
claims. Because Jones fails to disclose each limitation of independent claim 1, it
also fails to anticipate dependent claims 6-10, 13, 21, 22, 24-26, 28, and 29.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in rejecting
claims 1, 6-10, 13, 21, 22, 24-26, 28, and 29 under 35 U.S.C. § 102(b) as
anticipated by Jones.
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DECISION
The decision of the Examiner to reject claims 1, 6-10, 13, 21, 22, 24-26, 28,
and 29 is reversed.

REVERSED

hh

James C. Nemmers
P.O. Boc 2107
Cedar Rapids, IA 52406