Ex parte Pienaar

Board of Patent Appeals and Interferences

Aug 29, 1997

08260058 (B.P.A.I. Aug. 29, 1997)

Application for patent June 15, 1994. According to appellant, this1
application is a continuation of Application 08/013,302, filed February 4, 1993,
now abandoned.
1
Paper No. 26
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SALMON PIENAAR
______________
Appeal No. 96-2302
Application 08/260,0581
_______________

ON BRIEF
_______________
Before COHEN, LYDDANE and CRAWFORD, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 9 through 11, as amended subsequent to the final
rejection. In the answer (page 1), the examiner indicated that
Appeal No. 96-2302
Application 08/260,058
2
claims 10 and 11 are objected to as being dependent upon a
rejected claim, but would be allowable if rewritten in
independent form including all of the limitations of the base
claim and any intervening claims. Claims 14 through 17 stand
allowed. Claims 19 through 34, the only other claims remaining
in the application, stand withdrawn from consideration by the
examiner pursuant to 37 CFR § 1.142(b). Based upon the above,
the sole claim under rejection and for review on appeal is
claim 9.
Appellant's invention pertains to a frame structure
suitable for packing vehicle bodies into a transport container.
Claim 9 addresses a frame structure comprising, inter
alia, a base, a vehicle support means which comprises a lower
vehicle support member and an upper vehicle support member, the
members being mounted across the base in a horizontally and
vertically spaced relationship relative to each other, the lower
vehicle support member being relatively close to the base in use
to support a lower end of a first vehicle body, and the upper
vehicle support member being relatively high from the base in use
to support an upper end of the first vehicle body, and attachment
means for securing the first vehicle body to both the upper
support member and the lower support member.
Appeal No. 96-2302
Application 08/260,058
3
In rejecting appellant's claims under 35 U.S.C.
§ 102(e), the examiner has relied upon the reference listed
below:
Preller et al. 5,213,458 May 25, 1993
(Preller) (effective filing date July 27, 1990)

The following rejection is the sole rejection on
appeal.
Claim 9 stands rejected under 35 U.S.C. § 102(e) as
being anticipated by Preller.
The full text of the examiner's rejection and response
to the argument presented by appellant appears in the answer
(Paper No. 19), while the complete statement of appellant's
argument can be found in the brief (Paper No. 18).
OPINION
In reaching our conclusion on the anticipation issue
raised in this appeal, this panel of the board has carefully
considered appellant's specification and claims, the applied
reference, and the respective viewpoints of appellant and the
examiner. As a consequence of our review, we make the
determination which follows.
Appeal No. 96-2302
Application 08/260,058
4
We do not sustain the examiner's rejection of
appellant's claim as being anticipated by the Preller patent.
This panel of the board is in accord with appellant's
viewpoint that the "attachment means for securing" recitation of
claim 9 is a sixth paragraph (35 U.S.C. § 112) means recitation
that must be construed to cover the corresponding structure
described in the specification and equivalents thereof. See
In re Donaldson, 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed.
Cir. 1994).
With the above in mind, we understand the afore-
mentioned means plus function recitation to cover the described
(specification, pages 2 and 5) two attachment members 13.1 (one
shown in Figure 1), each with one or more brackets for securing a
(first) vehicle body thereto. The attachment members secure the
first vehicle body to both the upper support member (12.4) and
the lower support member (12.3).
A review of the Preller patent reveals to us that this
document fails to address two attachment members, each with one
or more brackets for securing a first vehicle thereto, the
attachment members respectively securing the first vehicle body
Appeal No. 96-2302
Application 08/260,058
5
to both an upper support member and a lower support member, with
the support members being mounted across a base in a horizontally
and vertically spaced relationship relative to each other.
In light of our above determination, we cannot agree
with the examiner that Preller teaches structure that corresponds
to the structure (two attachment members, each with one or more
brackets) described and claimed by appellant.
The examiner appears to have alternatively concluded
(answer, page 3) that Preller teaches an equivalent of the
aforementioned attachment member structure described by
appellant. We note that an equivalent can result from an
insubstantial change which adds nothing of significance to a
structure disclosed in a specification. See Valmont Industries
Inc. v. Reinke Mfg. Co. Inc., 983 F.2d 1039, 1043-44, 25 USPQ2d
1451, 1455 (Fed. Cir. 1993). However, we do not perceive from
the teaching of Preller structure which denotes an insubstantial
change (an equivalent) of the two attachment members, each with
one or more brackets, described and claimed by appellant.
RECOMMENDATION
In accordance with 37 CFR § 1.196(d), we recommend
that the examiner reject claim 11, objected to but otherwise
considered allowable, under 35 U.S.C. § 112, second paragraph,
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Application 08/260,058
6
as being indefinite. The word "preferably", in the context in
which it is used in the claims, infers that the limitation set
forth in the claim may or may not be a positively recited part of
the claimed frame structure. As such, the scope and content of
this dependent claim is indeterminate, i.e., the metes and bounds
of the claimed invention cannot be fairly determined. We remand
this application to the examiner for consideration of this
matter.
Pursuant to the provisions of 37 CFR § 1.196(d), the
application is remanded to the Primary Examiner for consideration
of the above ground of rejection of allowed claim 11. A period
of two months is set in which the appellant may submit to the
Primary Examiner an appropriate amendment, or a showing of facts
or reasons, or both, in order to avoid the ground of rejection of
the identified allowed claim.
Upon conclusion of the proceedings before the Primary
Examiner on remand, this case should be returned to the Board by
the Primary Examiner so that the Board may either adopt its
decision as final or render a new decision on all of the claims
on appeal as it may deem appropriate. Such return is unnecessary
if the application is abandoned as the result of an unanswered
Office action, allowed or again appealed.
Appeal No. 96-2302
Application 08/260,058
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
WILLIAM E. LYDDANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 96-2302
Application 08/260,058
8
GEORGE A. CASHMAN
Stratton, Ballew & Richardson
105 South Third Street
Yakima, WA 98901
ICC/cam