Ex parte Saraceno

Board of Patent Appeals and Interferences

Jan 29, 1999

08115187 (B.P.A.I. Jan. 29, 1999)

Application for patent filed August 31, 1993.1
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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EUGENE A. SARACENO, JR.
__________
Appeal No. 98-1238
Application 08/115,1871
__________
ON BRIEF
__________
Before COHEN, MEISTER, and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Eugene A. Saraceno, Jr. (the appellant) appeals from the
final rejection of claims 1-9, the only claims present in the
application.
Appeal No. 98-1238
Application No. 08/115,187
Although not argued by the appellant, this reference2
does not appear to qualify as prior art under 35 U.S.C. § 102.
This reference was made of record in the Office action3
mailed on November 17, 1993 (Paper No. 4).
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), we will enter new rejections
of claims 1, 5, 8 and 9.
The appellant's invention pertains to a wire position
support bracket and to a method of using such a bracket.
Independent claims 1 and 8 are further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the brief.
The references relied on by the examiner are:
Knell 2,023,083 Dec. 3, 1935
Huehnel 2,867,681 Jan. 6, 1959
Brislin 4,345,381 Aug. 24, 1982
Uhrin et al. 5,491,902 Feb. 20, 19962
(Uhrin) (filed Aug. 23, 1994)

An additional reference of record relied on by this
merits panel of the Board is:3
Hubbard 4,550,451 Nov. 5, 1985
Appeal No. 98-1238
Application No. 08/115,187
On page 3 of the answer the examiner states that the4
"rejection of claims 1-9 over Dunlap, Simek, Keppler, [and]
Hertensteiner as applied in the Final Rejection is withdrawn."
3
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:4
Claims 1-8 as being unpatentable over Knell in view of
Huehnel.
Claim 9 as being unpatentable over Knell in view of
Huehnel and either Brislin or Uhrin.
Both of these rejections are bottomed on the examiner's
view that it would have been obvious to make the wire
positioning support bracket of Knell out of an insulating
material in view of the teachings of Huehnel. However, even
if we were to agree with the examiner that such a modification
of Knell would have been obvious in view of the teachings of
Huehnel, we find ourselves in agreement with the appellant's
argument on page 9 of the reply brief that the "two-piece"
hanger bar or support bracket of Knell cannot be considered to
be "an elongated flat planar strip" of material as expressly
required by independent claims 1 and 8. Knell's support
bracket includes two sections 11, 12 that slidably engage one
another in a telescoping manner. Each
Appeal No. 98-1238
Application No. 08/115,187
It is well settled that terms in a claim should be5
interpreted in a manner consistent with the specification and
construed as those skilled in the art would construe them (In
re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990), Specialty Composites v. Cabot Corp., 845 F.2d 981, 986,
6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)).
4
section includes a perpendicularly extending fastening portion
or "ledge" 24 and lateral turned-in flanges (13 and 14 in the
case of the section 12, and 15 and 16 in the case of section
11).
Consistent with the appellant's specification, we can think5
of no circumstances under which one of ordinary skill in this
art would construe the Knell's two-piece support bracket or
hanger to correspond to the claimed "elongated flat planar
strip" of material. As the examiner apparently recognizes,
there is nothing in the secondary reference to Huehnel, and
either Brislin or Uhrin (which have been applied only against
claim 9) that would overcome this deficiency of Knell.
In view of the foregoing, the rejections under 35 U.S.C.
§ 103 of claims 1-8 based on the combined teachings of Knell
and Huehnel, and claim 9 based on the combined teachings of
Knell, Huehnel and either Brislin or Uhrin are reversed.
Appeal No. 98-1238
Application No. 08/115,187
5
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 1 and 5 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Hubbard. Initially we note that a prior
art reference anticipates the subject matter of a claim when
that reference discloses every feature of the claimed
invention, either explicitly or inherently. Hazani v. U.S.
Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
If a prior art device inherently possesses the capability of
functioning in the manner claimed, anticipation exists
regardless of whether there was a recognition that it could be
used to perform the claimed function. In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
See also In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990): “The discovery of a new property or use of a
previously known composition, even when that property and use
are unobvious from prior art, can not impart patentability to
claims to the known composition.”
Appeal No. 98-1238
Application No. 08/115,187
6
Here, Hubbard teaches a support bracket for positioning a
member that is to be installed between wall support structures
comprising an elongated flat planar strip 36 of electrically
insulating material (i.e., "plastic" - see column 2, line 9)
including mounting surfaces (see Fig. 1) and an array of
apertures 48,46 spaced along the length of the strip.
Although the strip of Hubbard is illustrated as positioning
and supporting pipe, it clearly has the capability of being
used to position and support wire in the claimed manner.
After all, the support bracket of Hubbard would not undergo a
metamorphosis to a new support bracket simply because it was
used to position and support wire, rather than pipe. See In
re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974)
and Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int.
1987).
Claim 8 is rejected under 35 U.S.C. § 103 as being
unpatentable over Hubbard in view of Knell. Hubbard teaches
the claimed method except that the elongated flat planar strip
or support bracket is used to position and support pipe rather
than a wire as claimed. Knell, however, teaches an elongated
support bracket 10 with spaced apertures 20 that are used to
Appeal No. 98-1238
Application No. 08/115,187
The test for obviousness is not whether the features of6
a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art.
7
position and support wires between a pair of wall structures
(see Figs. 1 and 2). Applying the test for obviousness as6
set forth in In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981), we are convinced that the combined teachings
of Hubbard and Knell would have fairly suggested to one of
ordinary skill in this art to modify the method of Hubbard by
positioning and supporting wire, rather than pipe.
Claim 9 is rejected under 35 U.S.C. § 103 as being
unpatentable over Hubbard in view of Knell as applied in claim
8 above, and further in view of Brislin. Brislin teaches that
when wall material is placed on support structures in order to
form a completed wall, openings are formed in the wall
material in order to accommodate wiring that has been
positioned and supported in the interior of the wall.
Accordingly, it would further have been obvious to one of
ordinary skill in this art when performing the method of
Hubbard, as modified by Knell, to complete the wall by (a)
Appeal No. 98-1238
Application No. 08/115,187
It should be noted that there is no presumption of any7
definite sequence of method steps unless the claims are so
limited as to require it. Ex parte Jackman, 44 USPQ 171, 173
(Bd. App. 1938).
8
covering the support structures with wall material, (b)
forming an opening in the wall where a wire is located, and
(c) passing the wire through the opening formed in the wall
material as suggested by Brislin. 7
The appellant argues that Brislin is deficient in that
there is no showing therein of forming an opening in the wall
material "at the selected aperture" in the support structure.
Nevertheless, this reference teaches that the opening in the
wall material should be located where the wire has been
positioned in the wall. It is the method of Hubbard, as
modified by Knell, which provides for the wire to be
positioned "at the selected aperture" in support structure.
Accordingly, one of ordinary skill in this art following the
combined teachings of Hubbard, Knell and Brislin would form
the opening in the wall material where the wire has been
positioned in the wall (i.e., "at the selected aperture" in
support structure).
In summary:
Appeal No. 98-1238
Application No. 08/115,187
9
The examiner's rejections of claims 1-9 under 35 U.S.C.
§ 103 are reversed.
New rejections of claims 1 and 5 under 35 U.S.C. § 102(b)
and of claims 8 and 9 under 35 U.S.C. § 103 have been made.
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(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 grounds of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 98-1238
Application No. 08/115,187
-10-
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Irwin Charles Cohen )
Administrative Patent Judge )
)
)
)
James M. Meister ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Charles E. Frankfort )
Administrative Patent Judge )
tdc
Charles Hieken
Fish & Richardson
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