Ex parte SCOTT

Board of Patent Appeals and Interferences

Aug 31, 1998

08383191 (B.P.A.I. Aug. 31, 1998)

Application for patent filed February 3, 1995.1
Claims 1, 16 and 27 have been amended subsequent to final rejection by2
an amendment filed on November 5, 1996 (Paper No. 13). Although the examiner
has indicated that this amendment "has been entered" (see answer, page 2), we
note that no clerical entry thereof has in fact been made.
1
Paper No. 25
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JAMES B. SCOTT
______________
Appeal No. 98-0605
Application 08/383,1911
_______________
ON BRIEF
_______________
Before CALVERT, COHEN and MEISTER, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
12, 14, 16, 19, 20 and 27. Claims 13, 15, 17 and 18 have2
Appeal No. 98-0605
Application 08/383,191
2
been indicated as being allowable subject to the requirement
that they be rewritten to include all the subject matter of
the claims from which they depend. Claims 21-26, the only
other claims present in the application, stand withdrawn from
further consideration under the provisions of 37 CFR §
1.142(b) as being directed to
a nonelected invention.
The appellant's invention is directed to a method and
apparatus for renewing a roof system. Independent claims 1,
16 and 27 are further illustrative of the appealed subject
matter and copies thereof may be found in the appendix to the
appellant's brief.
The references relied on by the examiner are:
Ohlsson 3,633,659 Jan. 11, 1972
Whitman 5,176,316 Jan. 5, 1993
Pigg 5,487,247 Jan. 30,
1996
(Filed June 11, 1994)
Claims 1-3, 5, 7-10, 16, 19, 20 and 27 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Whitman.
Claims 4, 6 and 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Whitman in view of Ohlsson.
Appeal No. 98-0605
Application 08/383,191
3
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Whitman in view of Pigg.
The examiner's rejections are explained on pages 2-4 of
the final rejection. The arguments of the appellant and
examiner in support of their respective positions may be found
on pages 5-13 of the brief, pages 1-6 of the reply brief and
pages 4-8 of the answer.
OPINION
Having carefully considered the respective positions
advanced by the appellant in the brief and reply brief and the
examiner in the answer, it is our conclusion that none of the
above-noted rejections are sustainable.
Considering first the rejection of claims 1-3, 5, 7-10,
16, 19, 20 and 27 under 35 U.S.C. § 102(b) as being
anticipated by Whitman, we initially note that in order to
establish antici-pation, a prior art reference must disclose
every feature of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44
Appeal No. 98-0605
Application 08/383,191
4
USPQ2d 1429, 1431 (Fed. Cir. 1997) and Hazani v. Int’l Trade
Comm’n, 126 F.3d 1473, 1477,
44 USPQ2d 1358, 1361 (Fed. Cir. 1997). Here, the apparatus
claims (independent claims 1 and 16) and the method claim
(independent claim 27) require that the apparatus for, or step
of, blowing air (1) be "substantially free of conduits which
are internal to the roof system" and (2) that "substantially
all" of the quantity of the blown air be forced "directly into
the roof system at a location in the roof system immediately
adjacent either "the exhaust port seal" (claim 1), "the
housing seal" (claim 16) or the "the area from which
insulation was removed" (claim 27). With respect to these
limitations it is the examiner's position that:
If one of ordinary skill in the art of roof renewal,
were to take away the conduits of Whitman, one would
expect the same results as in amended claim 1.
Furthermore, figure 3 of Whitman shows that
substantially all of the quantity of air forced into
the roof system passes directly into the roof system
at a location in the roof system immediately
adjacent the exhaust port seal. Therefore the
features of "substantially free of conduits" and
"substantially all of the air passes directly to the
roof system" are anticipated by Whitman. (Answer,
page 6).
We are at a loss to understand the examiner's position.
Appeal No. 98-0605
Application 08/383,191
5
If the artisan were to "take away" the conduits of Whitman as
the examiner suggests, a modification of Whitman's apparatus
and method would result. Thus, Whitman cannot be considered
to either explicitly or inherently disclose such an
arrangement.
As to the examiner's reliance upon Fig. 3 of Whitman, even if
we were to agree with the examiner that substantially all of
the quantity of air passes directly into the roof system at a
location immediately adjacent either "the exhaust port seal"
(claim 1), "the housing seal" (claim 16) or the "the area from
which insulation was removed" (claim 27), Fig. 3 plainly shows
conduits 400 extending into the roof system. Thus, Whitman
cannot be considered to teach a method and apparatus which are
"substantially free of conduits internal to the roof system"
as claimed.
Since each and every feature set forth in independent
claims 1, 16 and 27 cannot be found either explicitly or
inherently in Whitman, we will not sustain the rejection of
claims 1-3, 5,
7-10, 16, 19, 20 and 27 under 35 U.S.C. § 102(b) based on this
reference.
Appeal No. 98-0605
Application 08/383,191
Revised as of December 1, 1997.3
6
Turning to the rejections under 35 U.S.C. § 103 of claims
4, 6 and 14 as being unpatentable over Whitman in view of
Ohlsson and claims 11 and 12 as being unpatentable over
Whitman in view of Pigg, we have carefully reviewed the
teachings of Ohlsson and Pigg but find nothing therein which
would overcome the above-noted deficiencies in the examiner's
position in regard to the teachings of Whitman. This being
the case, we will not sustain the rejections under 35 U.S.C. §
103 of claims 4, 6 and 14 based on the combined teachings of
Whitman and Ohlsson and of claims 11 and 12 based on the
combined teachings of Whitman and Pigg.
Under the provisions of 37 CFR § 1.196(b) we make the3
following new rejections.
Claims 1-20 and 27 are rejected under 35 U.S.C. § 112,
first paragraph, as being based upon an original disclosure
which fails to provide descriptive support for the subject
matter now being claimed. We initially observe that the
description requirement found in the first paragraph of 35
U.S.C. § 1l2 is separate from the enablement requirement of
Appeal No. 98-0605
Application 08/383,191
7
that provision. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In
re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied, 434 U.S. 1238 (1978). With respect to the
description requirement, the court in Vas-Cath, Inc. v.
Mahurkar at 935 F.2d 1563-64, 19 USPQ2d 1117 stated:
35 USC 112, first paragraph, requires a "written
description of the invention" which is separate and
distinct from the enablement requirement. The
purpose of the "written description" requirement is
broader than to merely explain how to "make and
use"; the applicant must also convey with reasonable
clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of
the invention. The invention is, for purposes of
the "written description" inquiry, whatever is now
claimed.
. . . drawings alone may be
sufficient to provide the "written description of
the invention" required by § 112, first paragraph.
It is also well settled that the question of whether a
modification is an obvious variant of that which is originally
disclosed is irrelevant insofar as the written description
requirement is concerned. See, e.g., Lockwood v. American
Airlines Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997) and In re Wohnsiedler, 315 F.2d 934, 937, 137
Appeal No. 98-0605
Application 08/383,191
8
USPQ 336, 339 (CCPA 1963). See also In re Barker, 559 F.2d at
593, 194 USPQ at 474, wherein the court, in quoting with
approval from In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129,
131 (CCPA 1975) set forth: “That a person skilled in the art
might realize from reading the disclosure that such a step is
possible is not a sufficient indication to that person that
the step is part of appellants’ invention.” Moreover,
negative limitations which do not appear in the specification
as filed, may introduce new concepts and hence violate the
description requirement of the first paragraph of § 112. Ex
parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983), aff'd.
mem., 738 F.2d 453 (Fed. Cir. 1984).
With these authorities in mind, we have carefully
reviewed the original disclosure and fail to find descriptive
support therein for the recitations in independent claims 1,
16 and 27 that apparatus for, or step of, blowing air (1) be
"substantially free of conduits which are internal to the roof
system" (emphasis ours) and (2) that "substantially all"
(emphasis ours) of the quantity of the blown air be forced
"directly into the roof system." By setting forth
Appeal No. 98-0605
Application 08/383,191
9
"substantially" in recitation (1), the appellant implies the
permissible inclusion of some conduits in the roof system.
Similarly, with respect to recitation (2), the appellant
implies the permissible exclusion of some of the air being
forced directly into the roof system. Clearly, there is no
descriptive support in the original disclosure for the
inclusion of some conduits in the roof system and the
exclusion of some of the air being forced directly into the
roof system. According to the original disclosure, there are
no conduits in the roof system and all of the air is forced
directly into the roof system.
With respect to independent claim 1, there is
additionally no descriptive support for the recitation of "the
blower having a seal" (line 10) or "the exhaust port seal"
(line 22). According to the original disclosure, the blower
14 and housing 12 are separate, distinct elements (see
specification, page 1; Figs. 1 and 2) and the "seal" is
effected by "flashing 84 which is bonded to the lower edges of
the housing 12 and extends beneath the covering 36 adjacent
the housing . . ." (specification, page 12, lines 4-6). Thus,
Appeal No. 98-0605
Application 08/383,191
10
the seal is between the housing 12 and the covering 36 and
there is no descriptive support for the limitations of "the
blower having a seal" and "the exhaust port seal."
Claims 1-20 and 27 are rejected under 35 U.S.C. § 112,
second paragraph. In order to satisfy the requirements of the
second paragraph of § 112, a claim must accurately define the
invention in the technical sense. See In re Knowlton, 481
F.2d 1357, 1366, 178 USPQ 486, 492-93 (CCPA 1973). Here,
independent claims 1, 16 and 27 do not accurately define the
invention in the technical sense since, as we have noted above
with respect to the rejection under the first paragraph of §
112, there are no conduits in the roof system (rather than the
roof system being "substantially free" from conduits) and all
(rather than "substantially all") of the air is forced di-
rectly into the roof system.
As we have also noted above with respect to the rejection
of claims 1-15 under the first paragraph of § 112, the seal is
between the housing 12 and the covering 36, rather than "the
blower having a seal" and an "exhaust port seal" as set forth
Appeal No. 98-0605
Application 08/383,191
In rejecting independent claim 1 (and the claims which depend4
therefrom) under § 103, we base our understanding of the subject matter set
forth in independent claim 1 upon the following interpretation of the
terminology appearing therein. In line 10 (as it appears in the appendix to
the brief) we interpret "the blower having a seal" to be -- a housing
surrounding the blower and the housing having a seal --. Additionally, in
line 22, we interpret "the exhaust port seal" to be -- the housing seal --.
11
in independent claim 1. We also observe that in line 22 of
independent claim 1, "the exhaust port seal" has no clear
antecedent basis.
Claims 1-10, 16, 19 and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Whitman. Initially, we note4
that all of the disclosures in a reference must be evaluated
for what they fairly teach one having ordinary skill in the
art (In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966)) and, in evaluating such references, it is proper to
take into account not only the specific teachings of the
references, but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom (In re
Preda, 401 F.2d 825, 826,
Appeal No. 98-0605
Application 08/383,191
12
159 USPQ 342, 344 (CCPA 1968)). Moreover, the issue of obvi-
ousness is not only determined by what the references ex-
pressly state, but also is determined by what they would
fairly suggest to those of ordinary skill in the art. See,
e.g., In re Delisle, 406 F.2d 1386, 1389, 160 USPQ 806, 808-09
(CCPA 1969) and In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549-50 (CCPA 1969).
Whitman discloses a method and apparatus for renewing or
drying a roof system (column 1, lines 66-68) having a deck 30,
insulation material 25 and a roof covering comprising a rubber
sheath 10 (column 3, lines 54 and 55). To this end, Whitman
provides a housing (elements 100,105 - see Fig. 3), a blower
fan 120 for exhausting substantially all of the air blown
thereby into the roof system between the roof covering and the
insulation, and vents 800A-D. Viewing Figs. 3 and 7, and
taking into consideration the nature of Whitman's method and
apparatus, the artisan would reasonably infer that the roof
covering 10 is sealed to the housing 100,105. The method and
apparatus of Whitman are not "substantially free of conduits
which are internal to the roof system" as claimed. However,
Appeal No. 98-0605
Application 08/383,191
13
in discussing the prior art, Whitman states that it is known
to provide "simple ventilating systems that do nothing more
than direct air currents over a portion of the insulation
layer" (column 1, lines 37 and 38). In light of this prior
art teaching, the artisan would have found it obvious as a
matter of "common sense" (see In re Bozek, supra) to omit the
conduits in the method and apparatus of Whitman (where the
size and nature of the roof permits) in order to achieve the
advantage of simplicity as taught by the prior art.
Claim 14 is rejected under 35 U.S.C. § 103 as being
unpatentable over Whitman in view of Ohlsson. Whitman does
not teach a heater for heating the quantity of air that is
forced into the roof system. Ohlsson, however, teaches that
in roof ventilating systems the air being circulated should be
heated for the "reason it has a low relative moisture content"
(column 2, lines 15 and 16). Notwithstanding the appellant's
arguments that the teachings of Ohlsson are only applicable to
"new" roof construction as opposed to "renewing" roofs, we are
of the opinion that a combined consideration of Whitman and
Ohlsson would have fairly suggested to one of ordinary skill
in this art to provide the method and apparatus of Whitman
Appeal No. 98-0605
Application 08/383,191
14
with a heater as taught by Ohlsson in order to achieve
Ohlsson's expressly stated advantage of providing air with a
"low relative moisture content."
In summary:
The rejection of claims 1-3, 5, 7-10, 16, 19, 20 and 27
under 35 U.S.C. § 102(b) as being anticipated by Whitman is
reversed.
New rejections of claims 1-20 and 27 under 35 U.S.C. §
112, first and second paragraphs, have been made.
New rejections of claims 1-10, 14, 16, 19 and 20 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
Appeal No. 98-0605
Application 08/383,191
15
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. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 98-0605
Application 08/383,191
16
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)

IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES M. MEISTER )
Administrative Patent Judge )

Appeal No. 98-0605
Application 08/383,191
17
Appeal No. 98-0605
Application 08/383,191
18
David E. Crawford
Senniger, Powers, Leavitt & Roedel
One Metropolitan Square, 16th Floor
St. Louis, MO 63102
JMM/cam