Ex parte Pritchard

Board of Patent Appeals and Interferences

Feb 29, 2000

08449682 (B.P.A.I. Feb. 29, 2000)

1
Paper No. 21
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(2) is not binding precedent of the Board.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 GERALD PRITCHARD
______________
Appeal No. 1998-0340
Application 08/449,682
______________
HEARD: FEBRUARY 10, 2000
_______________
Before KRASS, LALL and GROSS, Administrative Patent Judges.
LALL, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134
from the Examiner's final rejection of claims 1-6, 8 and 9,
claim 7 having been canceled.
The disclosed invention is directed to an antenna for
a radio or a cell phone. The antenna comprises a flexible
sheet which is preferably constructed of Mylar and is also
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Application 08/449,682
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preferably transparent. A transparent metal oxide coating
covers one side of the sheet. An elongated strip of
electrically conductive material is provided along one side of
the sheet. The strip is in contact with the metal oxide
coating. The strip is further connected to the radio or
cellular phone antenna whereupon the device forms an antenna.
Representative claim 1 is reproduced as follows:
1. An antenna for a radio comprising:
a flexible plastic sheet,
a metallic oxide coating on said sheet,
an elongated strip extending along at least one side of
said sheet, said strip being in contact with said metal oxide
coating and having a high electrical conductivity, and
means for connecting said strip to the radio.
The Examiner relies on the following reference:
Inaba et al. (Inaba) 4,768,037 Aug. 30, 1988
Claims 1-3, 5, 6, 8 and 9 stand rejected under
35 U.S.C. § 102 as being anticipated by Inaba, while claim 4
stands rejected under 35 U.S.C. § 103 as being obvious over
Inaba.
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Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed Appellant’s arguments set forth in the briefs.
It is our view that claims 1-3, 5, 6, 8 and 9 are
anticipated by Inaba, while claim 4 is not obvious over Inaba.
Accordingly, we affirm-in-part.
We now consider the two rejections.
In our analysis, we are guided by the precedence of our
reviewing court. Claims are to be construed in the light of
Appellant’s disclosure and not in a vacuum. However, the
limitations from the disclosure are not to be imported into
the claims. In re Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA
1957); In re Queener, 796 F.2D 461, 230 USPQ 438 (Fed. Cir.
1986). We are also mindful of the requirements of
anticipation under
35 U.S.C. § 102. Anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses,
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either expressly or under the principles of inherency, each
and every element of a claimed invention. See RCA Corp. v.
Applied Digital Data Sys., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). While applying the test of obviousness,
we keep in mind the guidelines of our reviewing court. The
pertinent general proposition is that in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
Rejection of under 35 U.S.C. § 102
Claims 1-3, 5, 6, 8 and 9 are rejected as being
anticipated by Inaba. We take for our analysis independent
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claim 1 which is also representative of this grouping of the
claims. The crux of the issue is whether element 21 in
Inaba’s Fig. 3 can be considered a “sheet” as recited in claim
1. See answer, page 4, paragraphs 3 and 4, brief, page 4,
paragraph 2 and reply brief, page 1, last paragraph bridging
to page 2. The Examiner contends that element 21 of Inaba can
be considered a sheet on which is applied the conductive
coating 20 to serve as an antenna, whereas Appellant argues
that said element 21 is a film, not a sheet. To support his
position, Appellant argues [reply brief, pages 1 to 2] that
“[r]ather, it is crystal clear from the Inaba et al. patent
that it is the glass panes which support the polyester film 21
and conductive film 20 of Inaba et al. A glass sheet,
however, is not ‘flexible’ and that limitation is clearly and
definitely set forth in the appeal claims.”
We are not persuaded by Appellant’s arguments. We find
no language in claim 1 which calls for the sheet as
“supporting the metal oxide film” as Appellant argues. Claim
1 calls for “a metal oxide coating on said sheet”. Inaba does
show that, see col. 4, lines 1 to 2. Furthermore, we do not
agree with Appellant’s argument regarding the distinction
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between the terms “sheet” and “film.” It is true that Inaba
talks about its element 21 as a film, however, the meaning of
film in Inaba is not the same as Appellant alleges. The term
“film” is defined by “The American Heritage Dictionary”,
second college edition, as “[a] thin, generally flexible
transparent sheet, as of plastic used in wrapping or
packaging” (emphasis added). Clearly, the term “film” is not
restricted to a coating. This is also borne out by the manner
in which element 21 is described in Inaba. For example,
Inaba, at col. 4, lines 1 to 5, states that “[t]he transparent
conductive film 20 is coated on ... film 21, and the laminate
... is sandwiched ... between glass sheets 12 and 14.” The
term “laminate” is defined, by the supra dictionary, as “[a]
laminated product, as plywood.” Thus, Inaba implies that the
laminate of elements 20 and 21 is a sheet which is sandwiched
between the glass sheets and the interlayers 16 and 16'.
Furthermore, since element 20 is disclosed to be just a
coating (Inaba, col. 4, line 2), element 21 of Inaba has to be
a sheet, and we so conclude. Thus, we sustain the
anticipation rejection of claim 1 and, hence, claims 2, 3, 5,
6, 8 and 9 over Inaba.
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Rejection under 35 U.S.C. § 103
Claim 4 is rejected as being obvious over Inaba. The
Examiner contends [answer, page 3] that “[i]t would have been
an obvious matter of design choice to mount the antenna to an
interior side of a roof of a vehicle, since applicant has not
disclosed ... any particular purpose and it appears that the
invention would perform equally well with the antenna being
mounted to a window of a vehicle as taught by Inaba et al.”
Appellant argues [brief, page 5] that “the Patent Examiner has
engaged in impermissible piecemeal reconstruction of
Applicant’s invention.” Appellant further argues [reply
brief, page 2] that “since the entire Inaba et al. patent is
directed to a ‘vehicle window glass antenna using transparent
conducting film’, to discard the glass sheets as suggested by
the Examiner would be entirely contrary to the teachings of
the Inaba et al. patent.”
Here we are persuaded by Appellant’s arguments. The
Examiner has not presented any evidence, other than alleging
that it would be “a matter of design choice”, to modify Inaba
to meet the structure recited in claim 4. It appears to us
that the Examiner is indulging in reconstructing the claimed
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structure by using Appellant’s invention as a blue print.
That is not permitted within the meaning of obviousness under
35 U.S.C. § 103. Therefore, we do not sustain the obviousness
rejection of claim 4 over Inaba.
In conclusion, we have sustained the rejection of claims
1-3, 5, 6, 8 and 9 under 35 U.S.C. § 102, while we have not
sustained the rejection of claim 4 under 35 U.S.C. § 103.
Accordingly, we affirm-in-part.
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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).
AFFIRMED IN PART
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )

PSL/cam
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