Ex parte Piltingsrud

Board of Patent Appeals and Interferences

Feb 8, 2000

08837242 (B.P.A.I. Feb. 8, 2000)

Application for patent filed April 10, 1997.1
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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEPHEN M. PILTINGSRUD
_____________
Appeal No. 2000-0078
Application 08/837,2421
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
4, 8 to 14, and 25 to 29. Claims 5 to 7, 15 to 24 and 30 to
37, the
Appeal No. 2000-0078
Application No. 08/837,242
In the final rejection (Paper No. 5), claims 1 to 372
were rejected under 35 U.S.C. § 112, second paragraph. After
an amendment was filed on October 19, 1998 (Paper No. 7), the
examiner issued an Advisory Action (Paper No. 9) to the effect
that that rejection had been overcome, but that claims 26 to
28 remained rejected under § 112, second paragraph, on another
ground.
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other claims in the application, have been indicated as
allowable. 2
The claims on appeal are drawn to an assembly for use
with a window. Claim 26 is representative, and reads:
26. An assembly for use with a window including a window
sash movably mounted to a window jamb, the assembly for
selectively locking the window sash closed against the window
jamb, the assembly comprising:
a cam member for securing to the window jamb;
a keeper for mounting to the window sash and being
movable relative to the window sash;
drive means for mounting to the window sash for operably
controlling movement of said keeper to selectively engage the
keeper with the cam member when the window sash is
substantially closed against the window jamb.
The references applied in the final rejection are:
Douglas 4,500,122 Feb. 19, 1985
Nolte et al. (Nolte) 4,991,886 Feb. 12, 1991
Miilu 5,058,939 Oct. 22, 1991
Wydler et al. (Wydler) 5,480,198 Jan. 2, 1996
Appeal No. 2000-0078
Application No. 08/837,242
3
The appealed claims stand finally rejected on the
following
grounds:
(1) Claims 26 to 28, unpatentable for failure to comply with
35 U.S.C. § 112, second paragraph;
(2) Claims 1, 8, 10, 11, 26 and 29, anticipated by Miilu,
under 35 U.S.C. § 102(b);
(3) Claim 26, anticipated by Douglas, under 35 U.S.C. §
102(b);
(4) Claims 1 to 4, 8 to 14, 25, 26 and 29, unpatentable over
Nolte in view of Wydler, under 35 U.S.C. § 103(a).
Rejection (1)
As stated in In re Dossel, 115 F.3d 942, 946, 42 USPQ2d
1881, 1885 (Fed. Cir. 1997), quoting In re Donaldson Co., 16
F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994):
[a]lthough paragraph six [of 35 U.S.C. § 112]
statutorily provides that one may use means-plus
function language in a claim, one is still
subject to the requirement that a claim
“particularly point out and distinctly claim”
the invention. Therefore, if one employs
means-plus-function language in a claim, one
must set forth in the specification an adequate
disclosure showing what is meant by that language.
Appeal No. 2000-0078
Application No. 08/837,242
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If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed
to particularly point out and distinctly
claim the invention as required by the
second paragraph of section 112.
In the present case, the examiner contends that claim 26 does
not comply with § 112, second paragraph, because “[i]t is not
clear what structure applicant’s limitation of `drive means, .
. . for
operably controlling movement of said keeper’ refers to”
(final rejection, page 3), and the specification “does not
allow the
exact scope and meaning of the claimed ‘drive means’ to be
determined” (answer, page 3).
We do not agree with the examiner. As pointed out by
appellant on page 8 of the brief, page 6 of the specification,
lines 2 and 3, discloses that motor 64 has an output drive
shaft 66 operatively connected to keeper 48 via reduction gear
set 68. We also note that it is disclosed in lines 20 to 23
of the same page that operation of the motor causes the keeper
48 to selectively engage the cam member 26 to lock the sash 12
in a closed position, and in lines 2 to 6 of page 8 that motor
64 is controlled by control 120 to raise and lower the keeper
Appeal No. 2000-0078
Application No. 08/837,242
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48. In view of this disclosure, in particular, we consider
that the specification adequately shows what is meant by the
claimed “drive means,” since it shows that the “corresponding
structure
. . . described in the specification” (§ 112, sixth paragraph)
which performs the recited function of the “drive means” is
the control 120, motor 64, and reduction gear set 68
(including rack 96).
Accordingly, rejection (1) will not be sustained.
Rejection (2)
The Miilu patent, on which this rejection is based,
discloses apparatus for latching an automobile convertible top
110 to the windshield header 112. A motor 214 mounted on a
rail 202 of the top causes a keeper 234 to pivot, thereby
engaging the
header at 236 when the top is closed against the header (Fig.
2). The examiner identifies Miilu’s element 236 as
corresponding to the appellant’s recited cam member.
Appellant’s arguments are set forth on pages 9 to 13 of
the brief and pages 3 and 4 of the reply brief. In essence,
appellant argues that the claims are not anticipated because
Appeal No. 2000-0078
Application No. 08/837,242
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the recitations concerning the window sash and window jamb
must be given weight.
It is fundamental that in order to anticipate a claim, “
a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997). However, “[i]t is well settled that the
recitation of a new intended use for an old product does not
make a claim to that old product patentable.” Id. The law of
anticipation does not require that a reference “teach” what
appellant teaches, but only that the claims “read on”
something disclosed in the reference. Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 722,
218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
Applying these principles with regard to the recitations
in
claim 26, it is evident that, as outlined above, Miilu
discloses
a cam member 236, a keeper 234, and a drive means consisting
Appeal No. 2000-0078
Application No. 08/837,242
Appellant also attaches to his brief a copy of § 16A of3
Landis On Mechanics of Patent Claim Drafting (4th Ed. 1996),
but no decisional or other authority is cited therein, and it
is not persuasive; in fact, in the summary on page III-11,
Landis recommends inferentially claiming elements not likely
to be made and/or sold by the patentee, because “[t]his
broadens the claim scope by not including [such] elements.”
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of motor 214, gear train 216, etc., for controlling movement
of the keeper to selectively engage it with the cam member.
Miilu does not disclose that the cam member is secured to a
window jamb, or that the keeper and drive means are mounted on
a window sash, but the claim does not recite that these
elements are so secured or mounted, but only that the cam
member is “for securing to the window jamb” and the keeper and
drive means are “for mounting to the window sash.” Appellant
argues that the references in the claims to the window sash
and jamb are “positive limitations as to the structure and
function of the invention” and “not simply statements of an
intended use of the product” (brief, page 11),
citing In re Stencel, 828 F.2d 751, 4 USPQ2d 1071 (Fed. Cir.
1987). However, in Stencel, which involved a question of3
obviousness rather than anticipation, the claims (claim 1 is
reproduced) did not recite that the various elements were
“for”
Appeal No. 2000-0078
Application No. 08/837,242
Although not argued by appellant, we note that the drive4
means disclosed by Miilu, i.e., motor 214, gear train 216,
etc., is the equivalent, under § 112, sixth paragraph, of
appellant’s disclosed drive means. See Donaldson, supra.
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certain uses, whereas present claim 26 does so. In our view,
the recitations of “for securing” and “for mounting” are no
more than statements of intended use of the claimed cam
member, keeper, and drive means, which do not make a claim to
the combination of those items patentable. In re Schreiber,
supra. We note moreover with regard to the drive means that
an element expressed in terms of a means plus function is
anticipated by structure in a reference which is capable of
performing the functional limitation of the claimed means. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228
(1984). Here it appears evident that the drive means
disclosed by Miilu would be capable of performing the function
therefor recited in claim 26, since it operates to engage the
keeper 234 with the cam member 236 when the top is closed
against the header and a switch
(col. 2, lines 38 to 42) is activated.4
Accordingly we conclude that claim 26, and claim 29
Appeal No. 2000-0078
Application No. 08/837,242
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dependent thereon, are anticipated by Miilu. For similar
reasons, claims 1 and 11 are likewise anticipated, the various
elements recited therein being disclosed by Miilu.
Claim 8, dependent on claim 1, recites “a frame, . . . ,
said motor and said operably connecting means disposed in said
frame.” Miilu discloses a “simple generally flat mounting
base 204" (col. 2, lines 26 and 27) connected to the side rail
202 and having upstanding bosses 212, 222 and 224. As shown
in Fig. 2,
the motor 214 extends from boss 212, the gear train is located
between bosses 212 and 224, and the threaded spindle 228
extends between bosses 222 and 224, with other parts 226, 228,
etc. of the apparatus connecting the motor to the keeper 234
extending
above and beyond boss 222 and guide block 230. Assuming that
members 204, 212, 222, 224 and 230 of Miilu constitute a
“frame”
(the examiner refers only to element 212), we do not consider
that Miilu’s motor and connecting means can be considered to
be “disposed in said frame” (emphasis added), as recited in
claim 8.
Appeal No. 2000-0078
Application No. 08/837,242
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We therefore will not sustain rejection (2) as to claim
8, or as to its dependent claim 10, but will sustain rejection
(2) as to claims 1, 11, 26 and 29.
Rejection (3)
The sixth paragraph of 35 U.S.C. § 112 provides that if a
claim contains an element expressed as a means plus function,
the claim “shall be construed to cover the corresponding
structure
. . . described in the specification and equivalents thereof”;
this provision is applicable to claims before the Patent and
Trademark Office. Donaldson, supra. As discussed in
connection with rejection (1), appellant’s disclosed structure
which corresponds to the drive means recited in claim 26 is
the controller 120, motor 64, and reduction gear set 68.
Turning to the Douglas reference applied in rejection
(3), we will assume arguendo that, as postulated by the
examiner, the edge of 14 constitutes a “cam member,” and hole
26 (more accurately, moveable rail 23 containing keyhole
opening 25) is a “keeper.” The rail 25 is moved by manual
operation of handle 29, which rotates spindle 30. These items
do not constitute the claimed “drive means” unless they are
Appeal No. 2000-0078
Application No. 08/837,242
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus.5
Inc., 145 F.3d 1303, 46 USPQ2d 1752 (Fed. Cir. 1998).
11
equivalents under § 112, sixth paragraph, of appellant’s
controller, motor and reduction gear set. In Odetics, Inc. v.
Storage Technology Corp.,
185 F.3d 1259, 1267, 51 USPQ2d 1225, 1230 (Fed. Cir. 1999),
the court stated:
Structural equivalence under § 112, ¶ 6 is met only
if the differences are insubstantial, see
Chiuminatta,[ ] 145 F.3d at 1308, 46 USPQ2d at 1756;5
that is, if the assertedly equivalent structure
performs the claimed function in substantially the
same way to achieve substantially the same result as
the corresponding structure described in the
specification. See 35 U.S.C. § 112, ¶ 6 (means-plus
function claim literally covers “the corresponding
structure, material, or acts described in the
specification and equivalents thereof” (emphasis
supplied)).
Applying this test in the instant case, we do not consider
that the differences between appellant’s disclosed controller,
motor and reduction gear set arrangement and Douglas’
manually-operated handle and spindle are insubstantial.
Douglas therefore does not disclose an equivalent of
appellant’s structure which corresponds to the claimed “drive
means,” and consequently does not anticipate claim 26.
Rejection (3) accordingly will not be sustained.
Appeal No. 2000-0078
Application No. 08/837,242
In fact, it appears from page 1, lines 21 to 23 of the6
specification that such motorized apparatus was already known
in the art when the application was filed.
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Rejection (4)
In making this rejection, the examiner asserts that it
would have been obvious to provide the Nolte window latch
assembly with a motor and gear reduction in view of Wydler,
and further to mount the keeper assembly on the sash and the
cams on the jamb, instead of the reverse arrangement disclosed
by Nolte, this being a mere reversal of the essential working
parts of a device which involves only routine skill in the art
(citing In re Einstein,
46 F.2d 373, 8 USPQ 166 (CCPA 1931)).
We agree with the examiner that, in view of Wydler, it
would have been obvious to motorize the Nolte apparatus so
that the keeper 40 would be moved by a motor acting through a
reduction gear set. However, we do not agree with the6
examiner that it would have been obvious to locate Nolte’s
keeper 40 on sash 16, and cams 100, 110 on the jamb 14. While
it has been held in such cases as Einstein, supra, In re
Gazda, 219 F.2d 449, 452,
104 USPQ 400, 402 (CCPA 1955), and In re Weber, 312 F.2d 810,
Appeal No. 2000-0078
Application No. 08/837,242
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813, 136 USPQ 442, 444 (CCPA 1963), that the reversal of the
operation of parts is an obvious expedient, the Court has
cautioned that such “obvious expedient” findings must be based
upon a determination of obviousness under § 103, and not upon
a “mechanical rule.” In re Wright, 343 F.2d 761, 769-70, 145
USPQ 182, 190 (CCPA 1965). In the present case, it is, first,
not apparent to us that putting Nolte’s keeper on the sash and
cams on the jamb could be accomplished without modification of
the parts involved; for one thing, the handle 10 would have to
be relocated so that it would not project from the outside of
the sash, an obviously undesirable location. Second,
appellant argues on page 15 of his brief that it would not
have been obvious to locate the movable parts, including the
motor, on the sash, in view of the fact that suitable power
would have to be provided to the motor. Considering the
record as a whole, we conclude that there would have been no
motivation for one of ordinary skill to locate the keeper
apparatus of Nolte, motorized as suggested by Wydler, on the
sash of the window, and thus that
such an arrangement would have been unobvious to one of
Appeal No. 2000-0078
Application No. 08/837,242
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ordinary skill in the art.
We therefore will not sustain rejection (4).
Conclusion
The examiner’s decision to reject claims 1, 8, 10, 11, 26
and 29 as anticipated by Miilu under 35 U.S.C. § 102 (b) is
affirmed as to claims 1, 11, 26 and 29, and reversed as to
claims 8 and 10. The examiner’s decision to reject claims 1 to
4, 8 to 14 and 25 to 29 on the various other grounds specified
herein is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART

IAN A. CALVERT )
Administrative Patent Judge )
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
)
Appeal No. 2000-0078
Application No. 08/837,242
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IAC:lmb
IAC:lmb
Appeal No. 2000-0078
Application No. 08/837,242
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WOOD, PHILLIPS, VAN SANTEN, CLARK
AND MORTIMER F. WILLIAM McLAUGHLIN
500 WEST MADISON STREET
SUITE 3800
CHICAGO, IL 60661