Ex Parte Rice

Board of Patent Appeals and Interferences

Aug 9, 2002

08837668 (B.P.A.I. Aug. 9, 2002)

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written for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRIAN J. RICE
____________
Appeal No. 2001-1682
Application No. 08/837,668
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection
of claims 1, 4 through 14 and 17 through 22. Claims 2, 3, 15 and
16 have been canceled.
As noted on page 1 of the specification, appellant's
invention relates to a door security device which mechanically
prevents a door from being opened. Of particular importance to
appellant in the present application is the use of chemical
bonding means to secure the receiving means or attachment block
Appeal No. 2001-1682
Application No. 08/837,668
2
assembly (500) of the invention to a wooden or wooden core door
without compromising the fire-rating of the door. A correct copy
of independent claims 1 and 14 on appeal can be found in Paper
No. 12, filed August 6, 1999, and in the Appendix to the
examiner's answer (Paper No. 23, mailed December 19, 2000).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bursk 4,644,696 Feb. 24, 1987
Rice 5,364,140 Nov. 15, 1994
Ludwig 5,441,224 Aug. 15, 1995
Claims 1, 4 through 9, 11 through 14 and 17 through 22 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rice
'140 in view of Ludwig.
Claims 1 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bursk in view of Rice '140 and Ludwig.
Rather than reiterate the examiner's entire statement of the
above-noted rejections and the conflicting viewpoints advanced by
the examiner and appellant regarding those rejections, we make
reference to the Office action mailed June 16, 2000 (Paper No.
Appeal No. 2001-1682
Application No. 08/837,668
1 The supplemental examiner's answer (Paper No. 27) is not
listed above since it specifically notes on page 1 thereof that
the only changes therein vis-a-vis the examiner's answer (Paper
No. 23) relate to inclusion of claim 18, which like claims 1, 5,
and 14 contained errors as presented in the Appendix to
appellant's brief.
3
19) and the examiner's answer (Paper No. 23, mailed December 19,
2000) for the reasoning in support of the rejections, and to
appellant's brief (Paper No. 18, filed April 14, 2000),
supplemental brief (Paper No. 21, filed November 9, 2000) and
reply brief (Paper No. 24, filed January 23, 2001) for the
arguments thereagainst.1
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner's
above-noted rejections will not be sustained. Our reasons
follow.
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Application No. 08/837,668
4
We look first to the examiner's rejection of claims 1, 4
through 9, 11 through 14 and 17 through 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Rice '140 in view of Ludwig.
In considering Rice '140, the examiner has pointed to Figure 6
and urged that this embodiment of the patent discloses a door
security device including a support bar (20), a blocking means
(30), an attaching means (52), receiving means (60, 62), and an
actuator. What is said to be lacking in Rice '140 is that it
does not specifically teach that the receiving means (60, 62)
therein are fastened using chemical bonding means, as required in
appellant's claims on appeal. To address this deficiency in Rice
'140, the examiner turns to Ludwig, urging that Ludwig teaches an
adhesive (42) for securing an item to another structure in an
impenetrable manner using a chemical bonding means to increase
the ease of installation. Based on the combined teachings of the
applied patents, the examiner concludes (Paper No. 19, page 3)
that "it would have been an obvious matter of design choice to
provide Rice ['140] with an adhesive as an alternative fastening
structure as taught by Ludwig."
Appellant argues, inter alia, that the receiving means (60)
of Rice '140 seen in Figure 6 is not disclosed as comprising "a
Appeal No. 2001-1682
Application No. 08/837,668
5
base plate and an attachment block" as required in independent
claims 1 and 14 on appeal. In this regard, appellant urges that
the use of attachment blocks as specifically seen in Figures 13
through 20 of the present application is not disclosed by Rice
'140. In the answer (Paper No. 23, page 4), the examiner again
points to the receiving means (60) of Rice '140 urging that "the
rejection is based on the breadth of the claims" and that it is
believed that the receiving means of Rice '140 shows a plate and
eyelet (62) which "read on the claims as broadly recited."
Each of independent claims 1 and 14 on appeal includes a
recitation of "receiving means for engagement by the attaching
means, the receiving means comprising a base plate and an
attachment block, the base plate being surface mounted in an
impenetrable manner to the entry structure by a chemical bonding
means." In understanding this limitation and the claim as a
whole we believe that resort to appellant's specification is
necessary, particularly with respect to the recitation directed
to "an attachment block." In our opinion, the term "attachment
block" as used in the claims on appeal is a coined term and,
absent resort to appellant's specification, does not itself
impart a clear understanding of what structure is being set forth
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Application No. 08/837,668
6
in appellant's claims on appeal. Thus, we look to the
specification of the present application to derive an
understanding of what constitutes an "attachment block."
On pages 43 through 46 of the specification, appellant has
defined the "receiving means" set forth in the claims on appeal
as comprising "a base plate and an attachment block" and directs
attention to drawing Figures 18-20 of the application for a
showing of such a means. In viewing Figures 18 through 20 we see
that the receiving means includes a surface mountable base plate
(501) and an "attachment block" (560) affixed to the base plate
by mechanical fasteners (502). The "attachment block" portion of
the receiving means is specifically described, at page 45 of the
specification, as including a base (506) and two parallel side
plates (507) which support a pin (508) therebetween. The pin
(508) is indicated to be engagable by the engagement portions
(356) of the hooks (352) of the support bar as depicted for
example in Figure 13.
It has been a long standing maxim of patent law that, during
examination, "claims are to be given their broadest reasonable
interpretation consistent with the specification" and, in
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Application No. 08/837,668
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addition, that the "claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill
in the art." In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(Fed. Cir. 1983)(emphasis added). Our Court of review has also
informed us that the drawings included in the application may aid
in the interpretation of claim limitations, in that the "drawings
alone may provide a 'written description' of an invention as
required by § 112." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1556, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Thus, in those
instances where a visual representation can flesh out words, as
in the present application, drawings can and should be used like
the written specification to provide evidence relevant to claim
interpretation and used to interpret what the inventor intended
by the claim terms. Applying these precepts to the present
application, we find that, when the claim language "an attachment
block" is read in light of the present application disclosure as
such would be interpreted by the hypothetical person possessing
ordinary skill in the art, such claim language requires an
element as described in the specification, i.e., one including a
base (506) and two parallel side plates (507) which a support pin
(508) therebetween, and wherein the base (506) of the attachment
block is attached to the surface mountable base plate (501).
Appeal No. 2001-1682
Application No. 08/837,668
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This claim interpretation is consistent with appellant's
arguments as presented in the brief and reply brief.
Having construed the claims on appeal as being limited to a
base plate and "an attachment block" as disclosed in the present
application, we are in agreement with appellant that Rice '140
does not disclose or teach any such structure. More
particularly, given our narrow interpretation of the structure
set forth in the claims on appeal, we must disagree with the
examiner's determination that the eyelet (62) seen in Figure 6 of
Rice '140 can be read as an "attachment block," since the eyelet
(62) clearly does not include a base and two parallel side plates
which support a pin therebetween, and wherein the base is
attached to a surface mountable base plate. Nor does anything in
the Ludwig patent disclose or teach a structure like that
required in appellant's claims on appeal (i.e., a securing means
in the form of a base plate and an "attachment block").
Given the foregoing, we are compelled to conclude that the
examiner has not made out a prima facie case of obviousness, and
for that reason we must refuse to sustain the examiner's
rejection of claims 1, 4 through 9, 11 through 14 and 17 through
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Application No. 08/837,668
9
22 under 35 U.S.C. § 103(a) as being unpatentable over Rice '140
in view of Ludwig. Claims 4 through 9 and 11 through 13 depend
from claim 1, while claims 17 through 22 depend from claim 14.
Further, given our interpretation of the language
"attachment block" as noted above and its direct applicability to
the examiner's rejection of claims 1 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Bursk in view of Rice '140
and Ludwig, we will likewise not sustain that rejection either.
A review of the collective teachings of Bursk, Rice '140 and
Ludwig does nothing to provide for or overcome the above-noted
deficiency in the prior art with regard to disclosure of a
receiving means in the form of a base plate and an "attachment
block" as required in claims 1 and 10 on appeal.
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Application No. 08/837,668
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Since neither of the rejections posited by the examiner has
been sustained, it follows that the decision of the examiner
rejecting claims 1, 4 through 14 and 17 through 22 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2001-1682
Application No. 08/837,668
11
BARNES & THORNBURG
600 ONE SUMMIT SQUARE
FORT WAYNE, IN 46802
Lesley
Appeal No. 2001-1682
Application No. 08/837,668
APJ FRANKFORT
APJ COHEN
APJ NASE
DECISION: REVERSED

Prepared: September 25, 2003
Draft Final
3 MEM. CONF. Y N
OB/HD GAU 3600
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