Ex parte SELG et al.

Board of Patent Appeals and Interferences

Sep 11, 2000

08431779 (B.P.A.I. Sep. 11, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DONALD W. SELG,
JOHN F. FAIRCHILD, STEVEN E. TURCH,
and WALTER J. HALBERG
__________
Appeal No. 1997-3482
Application No. 08/431,779
__________
ON BRIEF
__________
Before KRASS, JERRY SMITH, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-11, all of the claims pending in the present
Appeal No. 1997-3482
Application No. 08/431,779
2
application. An amendment after final rejection filed
September 9, 1996 was denied entry by the Examiner.
The claimed invention relates to a cartridge for a disk-
shaped storage medium, the cartridge having partition walls
formed by ribs which extend from the interior surface of each
half of the cartridge shell. More particularly, when the
cartridge half shells are assembled together, a protrusion in
one rib mates with a complementary shaped groove in the other
rib. The ribs, which do not meet but rather define a small
gap between them, are aligned to form a rib wall creating a
compartment which separates the disk-shaped storage medium
from the rest of the cartridge interior. Appellants assert at
page 4 of the specification that this rib wall serves to
prevent debris from entering the media storage compartment.
Claim 1 is illustrative of the invention and read as
follows:
1. A cartridge for a disk-shaped storage medium,
comprising:
a first cartridge shell having a first rib on an interior
surface thereof, the first rib having a top having a
groove therein extending along the length of the
first rib; and
a second cartridge shell having a second rib on an
interior surface thereof, the second rib having a
Appeal No. 1997-3482
Application No. 08/431,779
The Appeal Brief was filed December 13, 1996. In1
response to the Examiner’s Answer dated January 27, 1997, a
Reply Brief was filed February 25, 1997. The Examiner entered
the Reply Brief and submitted a supplemental Examiner’s Answer
dated April 11, 1997.
3
top having a protrusion therefrom extending along the
length of the second rib;
wherein the first and second cartridge shells are assembled
together with their interior surfaces facing each other,
wherein the two ribs are aligned with each other so that the
protrusion from the second rib is aligned with and extends
into the groove in the first rib, and wherein the tops of the
first and second ribs define a gap between them so that the
two ribs are not secured to each other.
The Examiner relies on the following prior art:
Weavers et al. (Weavers) 4,564,878 Jan.
14,
1986
Claims 1-5 and 7-9 stand finally rejected under 35 U.S.C.
§ 102(b) as being anticipated by Weavers. Claims 6, 10, and
11 stand finally rejected under 35 U.S.C. § 103 as being
unpatentable over Weavers.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Briefs and Answers for the1
respective details thereof.
OPINION
Appeal No. 1997-3482
Application No. 08/431,779
4
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the Examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth
in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the disclosure of Weavers fully meets the invention
as recited in claims 1-5 and 8. We reach the opposite
conclusion, however, with respect to claims 7 and 9. We are
also of the view that the evidence relied upon and the level
of skill in the particular art would not have suggested to one
of ordinary skill in the art the obviousness of the invention
set forth in claims 6, 10, and 11. Accordingly, we affirm-in-
part.
We consider first the rejection of claims 1-5 and 7-
9 under 35 U.S.C. § 102(b) as anticipated by Weavers.
Anticipation is established only when a single prior art
Appeal No. 1997-3482
Application No. 08/431,779
5
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claims 1 and 8, the Examiner
has indicated how the various limitations are read on the
disclosure of Weavers (Answer, page 4). In particular, the
Examiner points to Weavers’ Figure 5 illustration and
accompanying description at column 2, line 61 to column 3,
line 4. In the Examiner’s interpretation of Weavers, the
opening 56 extending along the length of rib extension 54 in
first cartridge shell 52 corresponds to the claimed “groove,”
and the element 62 extending from second shell 58 inclusive of
a protrusion 60 extending along its length corresponds to the
“second rib having a top having a protrusion...” as claimed.
Appeal No. 1997-3482
Application No. 08/431,779
6
In response, Appellants attack (Brief, page 8) the
Examiner’s characterization of Weavers’ opening 56 and mating
extension 60 as a “groove” and “rib,” respectively. After
careful review of the Weavers’ reference in light of the
arguments of record, we are in agreement with the Examiner’s
position as stated in the Answer. In our view, the Examiner’s
interpretation of “groove” and “rib,” buttressed by the
dictionary definitions supplied by the Examiner, is in
accordance with the accepted meaning of those terms. As
pointed out by the Examiner (Supplemental Answer, page 4),
Appellants have provided no definition in the specification
for the terms in question that would lead to an interpretation
other than their plain accepted meaning. When not defined in
the specification, the words of a claim must be given their
plain meaning, i.e., they must be read as they would be
interpreted by those of ordinary skill in the art. In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983).
We also find Appellants’ arguments directed to the
alleged frictional fit of Weavers’ rib tab 60 into rib chamber
56 to be unpersuasive. We agree with the Examiner that, in
Appeal No. 1997-3482
Application No. 08/431,779
7
the completed structure of Weavers’ cassette, the tab 60 and
chamber 56 are mated in a “near” friction fit resulting in the
creation of a gap and, thereby, in the words of claim 1, “not
secured to each other.”
For the above reasons, the Examiner’s 35 U.S.C. § 102(b)
rejection of independent claims 1 and 8 is sustained.
Dependent claims 2-5 have not been separately argued by
Appellants and, accordingly, these claims will be treated as
falling with their parent claims. See In re Young, 927 F.2d
588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987); and In re Wood, 582 F.2d
638, 642, 199 USPQ 137, 140 (CCPA 1978). Thus, it follows
that the examiner's rejection of claims 2-5 under 35 U.S.C. §
102(b) is also sustained.
We next consider the Examiner’s rejection of dependent
claims 7 and 9 as anticipated by Weavers. Unlike independent
claims 1 and 8 discussed supra, claims 7 and 9 include a
positive recitation of a disk-shaped storage medium included
in a cartridge shell. Claims 7 and 9 further recite:
wherein the two ribs form a rib wall defining
a compartment which separates the disk-shaped
Appeal No. 1997-3482
Application No. 08/431,779
8
storage medium from other portions of the
cartridge interior, ...
In concluding that Weavers discloses these limitations,
the Examiner refers to a passage at column 1, lines 49-52 of
Weavers which states:
[t]he invention also can be used for the breakout
tab of any recording cassette, cartridge or
magazine, all of which are below called “cassette”.
We agree with Appellants, however (Brief, page 10), that
this minimal disclosure of Weavers does not contemplate the
“disk-shaped storage medium” of claims 7 and 9 and most
certainly not the explicitly stated compartmental rib wall
separating structure limitations. Accordingly, the Examiner’s
35 U.S.C.
§ 102(b) rejection of dependent claims 7 and 9 is not
sustained.
Turning to the obviousness rejection of claims 6, 10, and
11, we note that in rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the Examiner to establish a factual basis
to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
Appeal No. 1997-3482
Application No. 08/431,779
9
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 1997-3482
Application No. 08/431,779
10
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
At the outset, we note that each of the dependent claims
6, 10, and 11 recites that the gap between the first and
second ribs has a specific dimension, i.e., about 0.2 mm or
0.1 mm. As the basis for the obviousness rejection, the
Examiner asserts (Answer, page 8) the obviousness to the
skilled artisan to provide a gap width, in Weavers, of the
presently claimed dimensions “through routine optimization and
experimentation.”
After reviewing the arguments in response, we are in
agreement with Appellants that the Examiner has not
established a prima facie case of obviousness. Appellants’
specification at page 6 describes the importance of the
Appeal No. 1997-3482
Application No. 08/431,779
11
particular claimed rib gap dimensions, i.e., prevention of
dust and debris from entering the interior of the cartridge
and harming the storage disk. We find no explicit disclosure
or any inference taken from the disclosure of Weavers that any
such problem existed in the system of Weavers. Further, the
Examiner has not provided any evidence or specific findings
that the Weavers reference as applied suggests modifying the
rib gap dimensions to obtain Appellants’ invention. The mere
fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F. 2d 1260, 1266 n. 14, 23
USPQ2d 1780, 1783-84 n. 14 (Fed. Cir. 1992). Thus, the
Examiner’s 35 U.S.C. § 103 rejection of claims 6, 10, and 11
is not sustained.
In conclusion, we have not sustained the rejection of
claims 7 and 9 under 35 U.S.C. § 102(b) nor the rejection of
claims 6, 10, and 11 under 35 U.S.C. § 103, but we have
sustained the rejection of claims 1-5 and 8 under 35 U.S.C. §
102(b). Accordingly, the decision of the Examiner rejecting
claims 1-11 is affirmed-in-part.
Appeal No. 1997-3482
Application No. 08/431,779
12
Appeal No. 1997-3482
Application No. 08/431,779
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph F. Ruggiero )
Administrative Patent Judge )

JFR:tdl
Appeal No. 1997-3482
Application No. 08/431,779
14
Eric D. Levinson
3M Office of Intellectual
Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427