08814299 (B.P.A.I. Aug. 19, 1999)

Ex parte Rich

Board of Patent Appeals and InterferencesAug 19, 1999

08814299 (B.P.A.I. Aug. 19, 1999)

Application for patent filed March 10, 1997. 1 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 15 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DONALD S. RICH ____________ Appeal No. 1999-1751 Application No. 08/814,2991 ____________ ON BRIEF ____________ Before McCANDLISH, Senior Administrative Patent Judge, NASE and GONZALES, Administrative Patent Judges. NASE, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the refusal of the examiner to allow claims 1 to 4 and 30, as amended subsequent to the final rejection. Claims 24 to 29, the other claims pending in this application, have been allowed. Appeal No. 1999-1751 Application No. 08/814,299 We AFFIRM-IN-PART. Appeal No. 1999-1751 Page 3 Application No. 08/814,299 BACKGROUND The appellant's invention relates to a device for transporting workpieces. An understanding of the invention can be derived from a reading of exemplary claims 1 and 30, which appear in the appendix to the examiner's answer. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Laverriere 4,389,064 June 21, 1983 Claeskens et al. 4,480,780 Nov. 6, 1984 (Claeskens) Hawkswell 4,624,050 Nov. 25, 1986 Claims 1 and 2 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Hawkswell. Claim 30 stands rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Laverriere. Appeal No. 1999-1751 Page 4 Application No. 08/814,299 Claims 3 and 4 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hawkswell in view of Claeskens. Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant regarding the above-noted rejections, we make reference to the final rejection (Paper No. 6, mailed September 2, 1998) and the answer (Paper No. 14, mailed February 4, 1999) for the examiner's complete reasoning in support of the rejections, and to the brief (Paper No. 13, filed December 24, 1998) for the appellant's arguments thereagainst. OPINION 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 issues Appeal No. 1999-1751 Page 5 Application No. 08/814,299 We sustain the rejection of claim 30 under 35 U.S.C. Â§ 102(b) but not the rejection of claims 1 and 2. Initially we note that anticipation by a prior art reference does not require either the inventive concept of the claimed subject matter or the recognition of inherent properties that may be possessed by the prior art reference. See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). A prior art reference anticipates the subject of a claim when the reference discloses every feature of the claimed invention, either explicitly or inherently (see Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the law of anticipation does not require that the reference teach what the appellants are claiming, but only that the claims on appeal "read on" something disclosed in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984)). Appeal No. 1999-1751 Page 6 Application No. 08/814,299 Claims 1 and 2 These claims recite a device for transporting workpieces including, inter alia, a first vacuum head element, a reciprocating spindle having a helical rack and a helical pinion driven by an output shaft of a rotary motor meshing with the pinion. The examiner's rejection is based on his belief (answer, pp. 4-5) that the claimed helical rack and helical pinion are readable on Hawkswell's drive nut 38 and lead screw 72, respectively. The appellant disagrees (brief, p. 5). We find that the claimed helical rack and helical pinion are not readable on Hawkswell's drive nut 38 and lead screw 72. In that regard, it is well known that the distinction between helical gearing and worm gearing may be stated as follows: If the number of threads, or teeth, on the pitch cylinder is such that no one thread makes a complete turn, the gear is called a helical gear. If on the other hand, a thread makes a complete turn, the result is a worm and the mating Appeal No. 1999-1751 Page 7 Application No. 08/814,299 See "Mechanics of Machinery," Third Edition, C. W. Ham2 and E. J. Crane, McGraw-Hill Book Company, Inc., 1948, pp. 123-127. gear is called a worm gear. Since Hawkswell's drive nut 382 and lead screw 72 inherently include a thread making a complete turn, it is inappropriate to consider either Hawkswell's drive nut 38 to be a helical rack or Hawkswell's lead screw 72 to be a helical pinion. Since all the limitations of claims 1 and 2 are not found in Hawkswell for the reasons stated above, the decision of the examiner to reject claims 1 and 2 under 35 U.S.C. Â§ 102(b) is reversed. Claim 30 This claim recites a device for transporting workpieces including, inter alia, a first vacuum head element, a reciprocating spindle, a housing having a radially-oriented surface, and a porous foam member overlying the radially- oriented surface wherein the porous foam member conforms to a Appeal No. 1999-1751 Page 8 Application No. 08/814,299 See, for example, column 3, line 68; column 4, lines 24-3 25; and column 5, lines 4-15. surface of an article to be transported upon engagement therewith. We agree with the examiner's determination (final rejection, pp. 2-3, and answer, pp. 5-6) that claim 30 is anticipated by Laverriere. We find that the appellant's arguments (brief, pp. 7-8) as to why claim 30 is not anticipated by Laverriere unpersuasive for the following reasons. First, the appellant argues that Laverriere uses closed cell foam rather than open cell foam. However, claim 30 does not require that the porous foam member be an open cell foam. Moreover, Laverriere clearly teaches that his foam 3 is an open cell foam.3 Second, the appellant argues that suction passes only through the openings 4 of Laverriere's foam 3. However, Appeal No. 1999-1751 Page 9 Application No. 08/814,299 See column 4, lines 29-39.4 It is well settled that, in proceedings before the PTO,5 claims in an application are to be given their broadest reasonable interpretation consistent with the specification, and that 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). Moreover, limitations are not to be read into the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Laverriere clearly teaches that his foam 3 permits suction to pass in addition to the openings 4. Moreover, claim 30 only4 requires the foam member to be porous, which is met by openings 4 in the foam 3 as well as the foam 3 being an open cell foam. Third, the appellant argues that Laverriere lacks both the radially-oriented surface and the porous foam member overlying the radially-oriented surface as set forth in claim 30. We do not agree. It is our determination that when the phrase radially-oriented surface is given its broadest reasonable meaning, that limitation is readable on Laverriere's5 Appeal No. 1999-1751 Page 10 Application No. 08/814,299 structure 5 since structure 5 extends radially in all directions from its midpoint. Thus, Laverriere's foam 3 does overly a radially-oriented surface as set forth in claim 30. Since all the limitations of claim 30 are found in Laverriere, the decision of the examiner to reject claim 30 under 35 U.S.C. Â§ 102(b) is affirmed. The obviousness issue We will not sustain the rejection of claims 3 and 4 under 35 U.S.C. Â§ 103. We have reviewed the reference to Claeskens additionally applied in the rejection of claims 3 and 4 (dependent on claim 2) but find nothing therein which makes up for the deficiencies of Hawkswell discussed above regarding claims 1 and 2. Accordingly, we cannot sustain the examiner's rejection of appealed claims 3 and 4 under 35 U.S.C. Â§ 103. CONCLUSION Appeal No. 1999-1751 Page 11 Application No. 08/814,299 To summarize, the decision of the examiner to reject claims 1 and 2 under 35 U.S.C. Â§ 102(b) is reversed; the decision of the examiner to reject claim 30 under 35 U.S.C. Â§ 102(b) is affirmed; and the decision of the examiner to reject claims 3 and 4 under 35 U.S.C. Â§ 103 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR Â§ 1.136(a). AFFIRMED-IN-PART HARRISON E. McCANDLISH ) Senior Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT JEFFREY V. NASE ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JOHN F. GONZALES ) Administrative Patent Judge ) Appeal No. 1999-1751 Page 12 Application No. 08/814,299 CHARLES E. TEMKO TEMKO AND TEMKO 19 WEST 44TH STREET NEW YORK, NY 10036 APPEAL NO. 1999-1751 - JUDGE NASE APPLICATION NO. 08/814,299 APJ NASE APJ GONZALES SAPJ McCANDLISH DECISION: AFFIRMED-IN-PART Prepared By: Gloria Henderson DRAFT TYPED: 17 Aug 99 FINAL TYPED: