Ex Parte Rodi

Board of Patent Appeals and Interferences

Mar 12, 2007

10116534 (B.P.A.I. Mar. 12, 2007)

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for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANTON RODI
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Appeal 2006-1490
Application 10/116,534
Technology Center 2800
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Decided: March 12, 2007
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Before JOSEPH F. RUGGIERO, HOWARD B. BLANKENSHIP, and
ALLEN R. MACDONALD, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 APJ MacDonald replaces original panel member APJ Jerry Smith, who has
retired from the USPTO. Legal support for substituting one Board member
for another can be found in In re Bose Corp., 772 F.2d 866, 869, 227 USPQ
1, 4 (Fed. Cir. 1985).
Appeal 2006-1490
Application 10/116,534

INTRODUCTION
Appellant’s Request for Rehearing (filed Oct. 14, 2006) contends that
we erred in our Decision on Appeal entered August 15, 2006, in which we
sustained the rejection of claims 1-16.

OPINION
In our Decision we sustained the Examiner’s rejection of the claims
because the Examiner’s findings supported the rejection, while Appellant’s
arguments, based on argued claims 1 and 9, failed to overcome the rejection.
In particular, we agreed with the Examiner that the sleeve-like housing and
device housing of Ernst, as identified by the Examiner, are secured to each
other in such a manner that functional surfaces or contours are aligned with
each other in the manner recited in the claimed invention. (Decision 4.) We
have considered Appellant’s further remarks in the Request and we remain
convinced that the Examiner’s rejection is well founded.
In the § 102(b) rejection of claim 1 the Examiner reads the “sleeve-
like housing” on housing 10 of Ernst, and the “device housing” on structure
including front plate 5 and table plate 1 of the reference.2 As described in
the detailed description and shown in Figures 1 and 2 of Ernst, sleeve-like
housing 10 of Ernst is fastened to device housing 5. Each of the housings
thus has a precisely machined functional surface that contacts the precisely
machined functional surface of the other.

2 For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every
element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
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Appeal 2006-1490
Application 10/116,534

The Examiner identifies other precisely machined functional surfaces
on the respective housings in Ernst that include, inter alia, lower portions
that support sealing lips 16 (on device housing 5) and sealing strips 17 (on
sleeve-like housing 10). Appellant’s disclosure does not distinguish
“precisely machined” surfaces from machined surfaces. The lower
functional surface of the sleeve-like housing 10 in Ernst is “precisely
machined” at least to the extent that, for proper functioning of the device, the
surface cannot interfere with the scanning unit 9.
Instant claim 1 recites that the device housing has functional surfaces
corresponding to the functional surfaces of the sleeve-like housing for
receiving the sleeve-like housing. Contrary to Appellant’s position, the
language does not implicitly require that the respective surfaces are in
contact with the corresponding surface. The claim could have been
amended with express language commensurate with Appellant’s arguments.
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). Moreover, our reviewing court has repeatedly warned against
confining the claims to specific embodiments described in the specification.
Phillips v. AWH Corp., 415 F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed.
Cir. 2005) (en banc).
Instant claim 9 is broader than claim 1 in the aspect of the device
housing having a (i.e., one) contour corresponding to a (i.e., one) precisely
machined contour of the sleeve-like housing, for receiving and fitting the
sleeve-like housing to the device housing. As we have noted, the sleeve-like
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Appeal 2006-1490
Application 10/116,534

housing 10 of Ernst is fastened to device housing 5; the corresponding
contours are in direct contact.
We remain of the view that Ernst supports the Examiner’s finding of
anticipation with respect to the subject matter of instant representative
claims 1 and 9.

CONCLUSION
In summary, we have granted Appellant’s request for rehearing to the
extent that we have reconsidered our decision sustaining the rejection of
claims 1-16, but we decline to modify the decision in any way.

DENIED

PGC

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