Ex parte Plomer

Board of Patent Appeals and Interferences

Sep 12, 2000

08428253 (B.P.A.I. Sep. 12, 2000)

Claims 14, 16 and 29 were amended subsequent to the1
final rejection.
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for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTON PLOMER
____________
Appeal No. 1998-2275
Application No. 08/428,253
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, 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 14-18, 20-27, 29 and 30, which are all of
the claims pending in this application.1
We REVERSE.
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Application No. 08/428,253
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Application No. 08/428,253
BACKGROUND
The appellant's invention relates to a method and system
for coating a traveling material web (specification, p. 1). A
copy of the claims under appeal is set forth in the appendix
to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hartog et al. 4,448,818 May 15,
1984
(Hartog)
Elvidge et al. 5,376,177 Dec.
27, 1994
(Elvidge)
Korhonen 5,397,601 Mar. 14,
1995
Alheid et al. GB 2, 103,115 Feb. 16, 1983
(Alheid)
Claims 14-18, 24 and 26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hartog.
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hartog.
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Application No. 08/428,253
The answer does not appear to have been signed by a2
primary examiner as required by 37 CFR § 1.193 and Manual of
Patent Examining Procedure (MPEP) § 1208.
Claims 20-23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hartog in view of either Korhonen or
Elvidge.
Claims 27, 29 and 30 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hartog in view of Alheid.
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. 18,2
mailed July 17, 1997) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 14,
filed June 13, 1997) and reply brief (Paper No. 19, filed
September 19, 1997) for the appellant's arguments
thereagainst.
OPINION
Appeal No. 1998-2275 Page 5
Application No. 08/428,253
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, 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 anticipation rejection
We will not sustain the rejection of claims 14-18, 24 and
26 under 35 U.S.C. § 102(b).
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
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Application No. 08/428,253
It is well-settled that under principles of inherency,
when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). As the
court stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212,
214, 40 USPQ 665, 667 (CCPA 1939)):
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. [Citations
omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the performance
of the questioned function, it seems to be well
settled that the disclosure should be regarded as
sufficient.
In this case, we agree with the appellant's argument that
the examiner's determination that the primary trough 6 of
Hartog includes "a positive pressure therein" as recited in
each of the independent claims on appeal (i.e., claims 14 and
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Application No. 08/428,253
15) is simply speculative. It is our opinion that the
examiner has not provided any evidence or scientific reasoning
to establish the reasonableness of his belief that the above-
noted limitation is an inherent characteristic of Hartog. In
addition, we find that it more likely than not that primary
trough 6 of Hartog is subject to "a negative pressure therein"
due to the action of fan 9.
For the reasons set forth above, Hartog does not meet the
above-noted limitation of claims 14 and 15 and therefore does
not anticipate claims 14 and 15. In light of the foregoing,
the decision of the examiner to reject claims 14 and 15, as
well as claims 16-18, 24 and 26 dependent thereon, under 35
U.S.C.
§ 102(b) is reversed.
The obviousness rejections
We will not sustain the rejection of dependent claims 20-
23, 25, 27, 29 and 30 under 35 U.S.C. § 103.
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Application No. 08/428,253
We have also reviewed the Korhonen, Elvidge and Alheid
references additionally applied in the rejection of the above-
noted claims under 35 U.S.C. § 103 but find nothing therein
which makes up for the deficiencies of Hartog discussed above.
Accordingly, we cannot sustain the examiner's rejection of
appealed claims 20-23, 25, 27, 29 and 30 under 35 U.S.C. §
103.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 14-18, 24 and 26 under 35 U.S.C. § 102(b) is reversed
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Application No. 08/428,253
and the decision of the examiner to reject claims 20-23, 25,
27, 29 and 30 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-2275 Page 10
Application No. 08/428,253
TODD T. TAYLOR
TAYLOR & AUST, P.C.
142 S. MAIN, P.C. DRIVE
P.O. BOX 560
AVILLA, IN 46710
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Application No. 08/428,253
JVN/dl