Ex parte Oyamada

Board of Patent Appeals and Interferences

Jun 19, 2001

08966788 (B.P.A.I. Jun. 19, 2001)

1 The oral hearing scheduled for June 13, 2001 was vacated
(Paper No. 30, faxed June 4, 2001). In view of this decision, a
hearing is not considered necessary. See 37 CFR § 1.194(c), last
sentence.
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for publication and is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TAKASHI OYAMADA
____________
Appeal No. 2001-1266
Application No. 08/966,788
____________
ON BRIEF1
____________
Before CALVERT, STAAB, 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 6 to 25, which are all of the claims
pending in this application.
We REVERSE.
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Application No. 08/966,788
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BACKGROUND
The appellant's invention relates to a casing structure
of communication equipment used for a wireless communications
base station (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellant's
brief.
Claims 6 to 25 stand rejected under 35 U.S.C. § 101
because the claimed invention is not supported by either a
scientific asserted utility or a well established utility.
Claims 6 to 25 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in
the specification in such a way as to enable one skilled in the art
to which it pertains, or with which it is most nearly connected, to
make and/or use the invention.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 23,
mailed October 2, 2000) for the examiner's complete reasoning
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in support of the rejections, and to the brief (Paper No. 22,
filed July 24, 2000) and reply brief (Paper No. 24, filed
December 18, 2000) 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, and to the respective positions articulated by the
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
The three independent claims on appeal read as follows:
6. A communication equipment comprising: a casing
including a base, a cover attached to the base by two
hinges that permit the opening and closing of the casing,
and at least one electrical component housed within said
casing; and a handle of an electrically non-conductive
material on said casing, said handle providing electrical
insulation of said casing from a messenger wire.
14. A communication equipment suspended from a messenger
wire, comprising: a base; a cover attached to the base by
two hinges; and a handle of an electrically non-
conductive material arranged between and supported by at
least part of said hinges.
20. A method of mounting a communication equipment on a
messenger wire, said method comprising the steps of:
positioning the wire above a non-conductive handle of the
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communication equipment; and clamping the messenger wire
to the handle using a warped metal plate.
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The 35 U.S.C. § 101 Rejection
We will not sustain the rejection of claims 6 to 25 under
35 U.S.C. § 101.
The basis for this rejection (answer, p. 3) is that
"[t]he claimed invention lacks patentable utility." However,
the examiner has not pointed out how the claimed invention
(e.g., claims 6, 14 and 20) lacks patentable utility. It is
our view that the claimed invention clearly has the same well
established utility as the known prior art (e.g., Japan Kokai
2-62103 and Japan Kokoku 1-34365).
The examiner (answer, pp. 3-5) has only pointed out how
the disclosed invention would have the same problem
(electrically conducting state between the communication
equipment and the messenger wire) that the known prior art
has. Even if this were true, we fail to see how this violates
the utility requirement of 35 U.S.C. § 101. Moreover, we
agree with the appellant (brief, pp. 3-6) that a person
skilled in the art would easily understand from the original
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disclosure, as a whole, that the appellant's communication
equipment is insulated from the messenger wire due to the
electrically insulating handle. Thus, a person skilled in the
art would understand that Figure 2 has a clearly evident
drawing error (the groove 21 being positioned below the right
hinge 13 which would result in the messenger wire C contacting
the right hinge 13).
For the reasons set forth above, the decision of the
examiner to reject claims 6 to 25 under 35 U.S.C. § 101 is
reversed.
The 35 U.S.C. § 112, first paragraph, Rejection
We will not sustain the rejection of claims 6 to 25 under
35 U.S.C. § 112, first paragraph.
This basis for this rejection (answer, p. 5) is that
since the claimed invention is not supported by either a
scientific asserted utility or a well established utility for
the reasons set forth in the rejection under 35 U.S.C. § 101,
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one skilled in the art clearly would not know how to use the
claimed invention.
For the reasons set forth above in our discussion of the
rejection under 35 U.S.C. § 101, it is our view that the
claimed invention has a well established utility.
Accordingly, the decision of the examiner to reject claims 6
to 25 under 35 U.S.C. § 112, first paragraph, is reversed.
CONCLUSION
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To summarize, the decision of the examiner to reject
claims 6 to 25 under 35 U.S.C. §§ 101 and 112, first
paragraph, is reversed.
REVERSED
IAN A CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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