Ex Parte Rastegar

Board of Patent Appeals and Interferences

Nov 1, 2006

10244336 (B.P.A.I. Nov. 1, 2006)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte JAHANGIR S. RASTEGAR
___________

Appeal No. 2006-0974
Application No. 10/244,336
Technology Center 3600
___________

ON BRIEF
___________

Before FRANKFORT, OWENS, and BAHR, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 56-63. Claims 1-
55 and 64-114 have been canceled.
THE INVENTION
The appellant claims a structural beam having a cavity
containing a non-compressible material which, the appellant
states (specification, page 1, lines 5-10), provides rigidity
and/or vibration dampening. Claim 56 is illustrative:
56. A structural beam comprising:
an upper surface;
a lower surface;
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Appeal Number: 2006-0974
Application Number: 10/244,336
a first and second wall connecting the upper and
lower surface, the volume between the walls defining a cavity;
and
a non-compressible material disposed in the cavity;
wherein
the walls are shaped such that a first compressive
force tending to compress the beam by a first deflection causes
an amplified second deflection of the walls into the non-
compressible material, exerting a second compressive force
against the non-compressible material, resulting in a
resistance to the first deflection and the force tending to
compress the beam.

THE REFERENCES
Fox 4,019,301 Apr. 26, 1977
Konsevich 4,566,231 Jan. 28, 1986
Rivin 5,533,309 Jul. 9, 1996
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 102(b) as
follows: claims 56-63 over Rivin, claims 56, 57, 59 and 61-63
over Konsevich, and claims 56-59 over Fox.1
OPINION
We enter a new rejection under 37 CFR § 41.50(b) of
claims 56-63 under 35 U.S.C. § 112, second paragraph, affirm the
rejection over Rivin, and reverse the rejections over Konsevich
and Fox.
New rejection under 35 U.S.C. § 112, second paragraph
Claims 56-63 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.

1 In the examiner’s answer rejections under 35 U.S.C. § 102(b) of claims 56-63
over US 5,338,783 to Olsen and claim 60 over Fox are withdrawn (pages 2-3).
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Appeal Number: 2006-0974
Application Number: 10/244,336
Claim 56, which is the sole independent claim, requires
“an amplified deflection of the walls”. “The walls” are the
first (104) and second (103) wall, each of which actually is a
pair of opposing walls (figures 1B and 1C). The appellant’s
specification, however, only indicates that the first wall (104)
has a concave shape that causes an amplified second deflection
of that wall (page 12, line 15 - page 13, line 7). The second
wall (103), which preferably is opposing plates (specification,
page 11, line 23), is not indicated as deflecting.
Therefore, the meaning of “the walls” in “an amplified
deflection of the walls” is unclear. Accordingly, claim 56 and
its dependent claims 57-63 are rejected under 35 U.S.C. § 112,
second paragraph.
In some instances, it may be impossible to determine
whether or not claimed subject matter is anticipated by or would
have been obvious over references because the claims are so
indefinite that considerable speculation and assumptions would
be required regarding the meaning of terms employed in the
claims with respect to the scope of the claims. See In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). In
other instances, however, it is possible to make a reasonable,
conditional interpretation of claims adequate for the purpose of
resolving patentability issues to avoid piecemeal appellate
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Appeal Number: 2006-0974
Application Number: 10/244,336
review. In the interest of administrative and judicial economy,
this course is appropriate wherever reasonably possible. See Ex
parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993);
Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
In the present case, we consider such a reasonable,
conditional interpretation to be possible. This interpretation
is that “the walls” in “an amplified deflection of the walls”
refers only to the first wall in the appellant’s claim 56 which,
the appellant’s specification indicates, is a pair of opposed
concavely shaped walls (104) which undergo an amplified second
deflection (page 12, lines 15-20).
Rejection over Rivin
Rivin discloses a structural beam comprising a tubular
element (101) having the cross-sectional shape shown in
figure 2. That figure can be visualized as comprising two
walls, one above and one below an approximately 45° line drawn
downwardly from left to right through the figure. Each of those
walls is concave toward the other. A transformable material
(102) such as water fills the tubular element (col. 3, lines 40-
42).
The appellant argues that Rivin’s structural beam has only
a single wall (brief, page 6). That argument is not persuasive
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Appeal Number: 2006-0974
Application Number: 10/244,336
because each of the opposing surfaces of Rivin’s tubular element
reasonably can be considered a wall.
The appellant argues that a compressive force will not
cause an amplified second deflection of Rivin’s wall into
Rivin’s transformable material (ice) as required by the
appellant’s claim 56, and that the ice can cause the walls to
buckle outwardly because water expands when transformed from the
liquid to the solid phase (brief, page 6). We are not convinced
by that argument because the fact that Riven’s walls 101 are
concave like the appellant’s walls 104 indicates that before
Rivin’s water is frozen, Riven’s structural beam, like that of
the appellant, meets that claim requirement.
For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claims 56-63 over Rivin.
Hence, we affirm that rejection.
Rejection over Konsevich
Konsevich discloses a printed wiring board vibration
dampening stiffener beam having thin metal foil strips (32)
bonded to each other and to a stiffening web (24) by a
viscoelastic adhesive (34) (col. 3, line 22; col. 4, lines 1-4).
The examiner argues that “[b]y its very nature and shape
Konsevich would ‘react’ such that a first compressive force,
(along any of the sides), tending to compress the beam by a
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Appeal Number: 2006-0974
Application Number: 10/244,336
first deflection causes an amplified second deflection of the
walls into the non-compressible material, exerting a second
compressive force against the non-compressible material,
resulting in a resistance to the first deflection and the force
tending to compress the beam” (answer, page 5). The appellant’s
second deflection is amplified due to the concave shape of the
opposing walls 104 (specification, page 12, lines 15-20). The
examiner has not established that Konsevich’s planar walls which
lack this concave shape nevertheless are capable of undergoing
an amplified second deflection.
Consequently, the examiner has not carried the burden of
establishing a prima facie case of anticipation of the
appellant’s claimed invention by Konsevich.
Rejection over Fox
Fox discloses a structural member having around it a
protective encasement member made of a material such as
fiberglass bonded to the structural member by a filler of inert
material such as concrete or epoxy resin (col. 1, lines 10-13
and 59-66; col. 2, lines 22-31; col. 4, lines 1-6).
The examiner argues that “[b]y its very nature and shape
Rivin [sic, Fox] would ‘react’ such that a first compressive
force, (along any of the sides), tending to compress the beam by
a first deflection causes an amplified second deflection of the
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Appeal Number: 2006-0974
Application Number: 10/244,336
walls into the non-compressible material, exerting a second
compressive force against the non-compressible material,
resulting in a resistance to the first deflection and the force
tending to compress the beam.” The examiner does not explain
how Fox’s planar encasement member walls, which lack the
appellant’s concave shape, are capable of undergoing an
amplified second deflection.
The examiner, therefore, has not established a prima facie
case of anticipation of the appellant’s claimed invention by
Fox.
DECISION
The rejection under 35 U.S.C. § 102(b) of claims 56-63 over
Rivin is affirmed. The rejections under 35 U.S.C. § 102(b) of
claims 56, 57, 59 and 61-63 over Konsevich and claims 56-59 over
Fox are reversed. Under the provisions of 37 CFR § 41.50(b) a
new ground of rejection of claims 56-63 has been entered.
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
within two months from the date of the original decision of the
Board."
In addition to affirming the examiner's rejection(s) of one
or more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, 69
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Appeal Number: 2006-0974
Application Number: 10/244,336
Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner
. . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record . . .

Should the appellant elect to prosecute further before the
examiner pursuant to 37 CFR § 41.50(b)(1), in order to preserve
the right to seek review under 35 U.S.C. §§ 141 or 145 with
respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
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Appeal Number: 2006-0974
Application Number: 10/244,336
abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for
rehearing thereof.
AFFIRMED, 37 CFR § 41.50(b)

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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Appeal Number: 2006-0974
Application Number: 10/244,336
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