Ex parte Primos

Board of Patent Appeals and Interferences

Dec 20, 2001

08902466 (B.P.A.I. Dec. 20, 2001)

Claims 62, 69, 76 and 83 have been amended subsequent to1
final rejection.
1
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not written for publication and is not binding precedent of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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILBUR R. PRIMOS
__________
Appeal No. 2001-1740
Application 08/902,466
___________
HEARD: November 29, 2001
___________
Before MCQUADE, NASE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Wilbur R. Primos appeals from the final rejection (Paper
No. 17) of claims 62 through 65, 69 through 72, 76 through 79
and 83 through 85, all of the claims pending in the
application.1
THE INVENTION
Appeal No. 2001-1740
Application 08/902,466
2
The invention relates to “game calls, and more
particularly, to modular game call systems for imitating
natural sounds of game
animals” (specification, page 1). Representative claim 62
reads as follows:
62. A game call apparatus, comprising:
a game call, comprising:
a tube having an upstream end and a downstream end;
a sound source operatively associated with the upstream
end of the tube;
a volume chamber coupled to the downstream end of the
tube, the volume chamber having an inlet, a single outlet, and
an intermediate section between the inlet and the outlet;
the volume chamber comprising a wall of substantially
constant thickness, the volume chamber being hollow and devoid
of structure other than the wall;
the volume chamber having an inlet inside diameter, an
outlet inside diameter, and an intermediate maximum inside
diameter, the intermediate maximum inside diameter being
larger relative to the outlet inside diameter and the inlet
inside diameter, the intermediate maximum inside diameter
located closer to the inlet inside diameter than the outlet
inside diameter.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Schofield 1,120,980 Dec. 15,
1914
Appeal No. 2001-1740
Application 08/902,466
In the final rejection (Paper No. 17), claims 62 through2
65, 69 through 72, 76 through 79 and 83 through 85 also stood
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite. The examiner (see the advisory action dated
August 18, 2000, Paper No. 19) has since withdrawn this
rejection in light of the amendments made subsequent to final
rejection (see n.1, supra).
3
Davis 3,971,098 Jul. 27,
1976
THE REJECTIONS
Claims 62 through 65, 69 through 72 and 83 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Schofield.
Claims 76 through 79, 84 and 85 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Schofield in view
of Davis.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 21 and 23) and to the examiner’s answer
(Paper No. 22) for the respective positions of the appellant
and the examiner with regard to the merits of these
rejections.2
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection of claims 62 through 65,
69 through 72 and 83 as being anticipated by Schofield
Appeal No. 2001-1740
Application 08/902,466
The record indicates that the appellant’s insertion of3
the “game call” language into the bodies of the claims was
prompted by the examiner’s refusal to accord patentable weight
4
Anticipation is established only when a single prior art
reference discloses, expressly or under 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).
Schofield discloses a cotton picking tube adapted to be
connected to a machine having a collection chamber and a means
for generating a vacuum within the tube. As shown in Figure
1, the tube comprises a tapered nozzle tip 17, a nozzle proper
14, a ball and socket joint 11 and 13, and a flexible conduit
10.
The preambles of independent claims 62, 69 and 83 set
forth a “game call apparatus.” The bodies of these claims
recite, inter alia, a “game call.” In applying Schofield as3
Appeal No. 2001-1740
Application 08/902,466
to the recitation in the preambles of a “game call structure.”
5
an anticipatory reference against these claims, the examiner
takes the position that “[t]he entirety of the [Schofield]
device can be taken to provide a game call structure, capable
of creating sounds sufficient to be heard by game animals”
(answer, page 4). The examiner further explains that
[g]iven the wide variety of game call techniques and
devices for their practice, the examiner cannot deem
the phrase “game call [apparatus]” (which has no
specific structure) to inherently require anything
beyond a sounding mechanism capable of capturing the
attention of a game animal. Examiner believes that
merely a sounding device that is capable of being
heard by a game animal is all that is required. As
stated above, the vacuum device of [Schofield] is
sufficient to provide inherent sounds capable of
being heard by a game animal [answer, page 5].
The preamble of a claim does not limit the scope of the
claim when it merely states a purpose or intended use of the
invention; however, terms appearing in a preamble may be
deemed limitations of a claim when they give meaning to the
claim and properly define the invention. See In re Paulsen,
30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Although no litmus test exists as to what effect should be
accorded to words contained in a preamble, review of a patent
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Application 08/902,466
6
application in its entirety should be made to determine
whether the inventors intended such language to represent an
additional structural limitation or mere introductory
language. Id.
A review of the record in the instant application, and
particularly the portions of the underlying specification
describing the background problems and objectives of the
appellant’s invention, clearly demonstrates that the appellant
intended the “game call apparatus” language in the preambles
of independent claims 62, 69 and 83 to represent a structural
limitation giving life and meaning to the claims. The
somewhat redundant recitation of a “game call” in the bodies
of these claims confirms this intent. Simply put, a person of
ordinary skill in the art would not view Schofield’s cotton
picking tube and machine as embodying a game call or a game
call apparatus.
The examiner’s determination to the contrary, which is based
solely on the premise that the Schofield apparatus is capable
Appeal No. 2001-1740
Application 08/902,466
7
of producing a sound which can be heard by game animals, is
manifestly unreasonable. Moreover, the record does not
contain any evidence that the Schofield apparatus is
inherently capable of functioning as a game call, i.e.,
capable of imitating the natural sounds of game animals.
Thus, Schofield does not disclose each and every element of
the invention set forth in claims 62, 69 and 83.
Consequently, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of independent claims 62, 69 and 83, and
dependent claims 63 through 65 and 70 through 72, as being by
Schofield.
II. The 35 U.S.C. § 103(a) rejection of claims 76 through 79,
84 and 85 as being unpatentable over Schofield in view of
Davis
Independent claim 76, from which claims 77 through 79
depend, is similar to independent claims 62, 69 and 83 in that
it recites a “game call apparatus” comprising, inter alia, a
“game call.” Claims 84 and 85 depend from independent claim
83. In short, Schofield’s deficiencies relative to the “game
call apparatus” and “game call” limitations in the independent
claims finds no cure in Davis’ disclosure of a gutter cleaning
nozzle.
Appeal No. 2001-1740
Application 08/902,466
8
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 76 through 79, 84 and 85 as
being unpatentable over Schofield in view of Davis.
SUMMARY
The decision of the examiner to reject claims 62 through
65, 69 through 72, 76 through 79 and 83 through 85 is
reversed.
REVERSED
JOHN P. MCQUADE )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JEFFREY V. NASE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-1740
Application 08/902,466
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