Ex Parte Sewalt

Board of Patent Appeals and Interferences

Dec 7, 2010

10204207 (B.P.A.I. Dec. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CAREL SEWALT
____________________

Appeal 2009-008693
Application 10/204,207
Technology Center 3700
____________________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008693
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STATEMENT OF THE CASE
Carel Sewalt (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 12, 13, 15, 16, 19 and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to child resistant roll and
press gas lighters requiring sufficient pressure to rotate a spark-wheel
against a flint (Spec. 1: 9-11 and Spec. 4: 8-16)2.
Claim 12, reproduced below, is representative of the subject matter on
appeal.
12. A child-resistant lighter of the roll and press type,
comprising a wheel assembly mounted for rotation on a lighter
body and including at least one thumbwheel and a spark-wheel
attached thereto, the spark-wheel engaging against a flint, the
wheel assembly a being mounted such that it is only impeded
frictionally and permanently frictionally impeded and, so that
rotation thereof to ignite the lighter is achievable only by the
application of sufficient rotational force to overcome the
frictional impediment, the application of said sufficient
rotational force being within the capability of an adult in
normal use of the lighter but beyond the capability of a child of
five years in age.

2 All references to the Specification (Spec.) are to the Substitute
Specification submitted on September 27, 2004, denoted as being entered in
the non-final Office action mailed March 22, 2005.
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Application 10/204,207

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THE REJECTIONS3
The following rejections by the Examiner are before us for review:
1. Claims 12, 13, 15, 16, 19 and 20 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 12, 13, 15, 16, 19 and 20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bisbee (US 4,822,276, issued Apr.
18, 1989).4

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that the invention called for in independent claim 12 does not comply with
the written description requirement of 35 U.S.C. § 112, first paragraph (App.
Br. 5); and (2) whether the Examiner erred in finding that Bisbee describes a
child-resistant lighter wheel assembly mounted for rotation to ignite the
lighter only by the application of sufficient rotational force to overcome a
frictional impediment, as called for in independent claim 12 (App. Br. 9).

3 The objection to claim 12 is not within the jurisdiction of the Board (Ans.
5). See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
4 While the heading of the prior art rejection of the claims references 35
U.S.C. § 103, the body of the prior art rejection addresses 35 U.S.C. § 102
(Ans. 5). We find that the prior art rejection is a rejection under 35 U.S.C.
§ 102. Accordingly, for purposes of this appeal, (1) we will treat the prior
art rejection of the claims as a rejection under 35 U.S.C. § 102 anticipated by
Bisbee, and (2) we will treat the patent to Delp (US 3,999,021, issued Dec.
21, 1976) as an evidence patent.
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ANALYSIS
35 U.S.C. § 112, first paragraph rejection
The Examiner found that there is no support in the originally filed
Specification for the recitation “such that it is only impeded frictionally and
permanently frictionally impeded” called for in independent claim 12 (Ans.
4).
Appellant contends that there is support in the originally filed
Specification for the claimed recitation (App. Br. 6). In support thereof,
Appellant cites in the Specification to, inter alia, page 7, lines 18-23; and
page 8, lines 2-7. Appellant contends that the permanent frictional
impediment language is supported by the Specification on page 8, line 3
(App. Br. 9).
The Examiner found (1) that while page 8, line 3 of the Specification
uses the term “permanent” in the context of Figures 2a and 2b, it does not
provide support for the claimed recitation (Ans. 7), and (2) that “the
thumbwheel is intermittently, not permanently impeded by frictional
engagement with the lever portion” (Ans. 8).
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). This
inquiry is a question of fact. Id.
The claimed subject matter need not be described “in haec verba” in
the original specification in order to satisfy the written description
requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
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Appellant’s Specification describes that:
As is shown in FIGS. 1a and 1b, the shaft 31 of the wheel
assembly 13 is corrugated at 33, as are the bearing holes 32 in the
ears 30. There is therefore a macroscopic frictional engagement
between the shaft and the bearing holes, and a force large enough
to overcome this friction must be exerted before the wheel
assembly will turn.
(Emphasis added) (Spec. 7: 16-21).
Appellant’s Specification further describes that:
FIGS. 2a and 2b show a second lighter . . . In this lighter, the
thumb-wheels 16 comprise extended teeth 40 which engage on a
friction pad or indentation 41 located below it, preferably on the
upper side of the lever 12. The thumbwheels 16 are in permanent
engagement with this indentation 41; for example the lever 12 may
be resiliently mounted to press upwards against the thumbwheels.
As before, the frictional engagement of the thumb-wheel prevents
the wheel assembly from rotating until sufficient force is applied to
overcome the friction.
(Emphasis added) (Spec. 7: 24-Spec. 8: 7).
We find that the portions of the Specification noted supra describe
that a person having ordinary skill in the art would understand that the
inventor had possession of the claimed subject matter as of the filing date.
In particular, we find that there is support in the originally filed Specification
for the recitation “such that it is only impeded frictionally and permanently
frictionally impeded” called for in independent claim 12. Regarding the
embodiment of Figures 1a and 1b, we find that by its construction, the
cooperating corrugations on the shaft 31 and in holes 32 are in constant
contact, that is, in permanent engagement with each other, and as such
impede the rotation of the shaft 31. Further, we find no other impediment to
rotation of the wheel assembly of Figures 1a, 1b other than friction.
Regarding the embodiment of Figures 2a and 2b, we find that since the lever
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12 is resiliently mounted to press upwards against the thumbwheels 16, the
extended teeth 40 on the thumbwheels 16 are in permanent, not intermittent,
engagement (constant contact) with the indentation 41. Further, we find that
the constant contact impedes the rotational movement of the thumbwheels
16. Still further, we find no other impediment to rotation of the wheel
assembly of Figures 2a, 2b other than friction.
We reverse the 35 U.S.C. § 112, first paragraph, rejection of
independent claim 12, and claims 13, 15, 16, 19 and 20, which depend
therefrom.

35 U.S.C. § 102(b) rejection
Appellant contends Bisbee does not describe a child-resistant lighter
wheel assembly mounted for rotation to ignite the lighter only by the
application of sufficient rotational force to overcome a frictional
impediment, as called for in independent claim 12 (App. Br. 9).
The Examiner found that Bisbee describes the child-resistant lighter
as called for in independent claim 12 (Ans. 5). In particular, the Examiner
found that “a large enough rotational pressure to the spark wheel would
inherently and necessarily result in rotation of the wheel,” wherein “[s]uch a
‘sufficient pressure’ would overcome the contact force between frictional
elements (22, 32), even without the aide of the actuator (42)” (emphasis
added) (Ans. 5-6). To support this conclusion, the Examiner cited the prior
art patent to Delp, which describes that the application of pressure alone to a
finger operated wheel assembly 14 overcomes a spring biased detent means
16 (Ans. 6).
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Appellant contends that in Bisbee the spring loaded clutch is not
intended to be overcome by sufficient rotational force (App. Br. 10).
Appellant contends that a person having ordinary skill in the art would
conclude that Bisbee’s wheel assembly would not be susceptible to rotation
without depression of the actuator 42, unless a wholly disproportionate
force, sufficient to destroy the clutch mechanism, were applied (App. Br.
11).
Bisbee describes a cigarette lighter 1 having a friction wheel 20, the
friction wheel 20 having a rotatable clutch element 22, a reticulated element
32, an axle 30, a compression coil spring 34, and a button 42 (col. 2, l. 47
and col. 3, ll. 10-30, and fig. 2). Bisbee describes (1) that the friction wheel
20 is not free to rotate on axle 30 due to the clutch element 22 engaging
reticulated element 32 (col. 3, ll. 10-14), (2) the clutch element 22 and the
reticulated element 32 might be considered as intermeshing crown gears
(col. 3, ll. 18-22), (3) that pressing button 42 to overcome the pressure of the
spring 34 disengages the clutch element 22 from the mating reticulated
element 32 to allow the friction wheel 20 to rotate about axle 30 (col. 3, ll.
31-40), and (4) that “[w]hen the force on the button 42 is removed, the
biasing element 34 returns the assembly to the locked position of FIG. 2”
(emphasis added) (col. 3, ll. 40-42).
Bisbee is silent as to whether the clutch element 22 and the reticulated
element 32, without the aid of depressing button 42, can become disengaged
when sufficient rotational force is applied and still function as described.
Bisbee does describe the mating cooperating relationship between the clutch
element 22 and reticulated element 32 might be considered as intermeshing
crown gears; and that when the force on the button 42 is removed, the clutch
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element 22 and reticulated element 32 are in a locked position.
Accordingly, we find that due to the cooperating relationship between
Bisbee’s clutch element 22 and reticulated element 32 as set forth supra,
Bisbee’s lighter 1 would be destroyed if sufficient rotational force were
applied to overcome the cooperating clutch 22 and reticulated element 32
without the aid of depressing button 42. Hence, we find the Examiner’s
position that a large enough rotational pressure would result in the rotation
of Bisbee’s friction wheel 20 to be mere speculation. We conclude that the
rejection is an anticipation rejection over Bisbee, wherein Bisbee’s
cooperating clutch 22 and reticulated element 32 are not inherently capable,
absent destruction, of becoming disengaged by a rotational force without the
aid of depressing button 42. Thus, we find that Delp cannot provide support
that Bisbee’s cooperating clutch 22 and reticulated element 32 are inherently
capable of becoming disengaged by a rotational force without the aid of
depressing button 42. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”)
We reverse the anticipation rejection of independent claim 12, and
claims 13, 15, 16, 19 and 20, which depend therefrom.

CONCLUSIONS
The Examiner has erred in finding that the invention called for in
independent claim 12 does not comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Appeal 2009-008693
Application 10/204,207

9
The Examiner has erred in finding that Bisbee describes a child-
resistant lighter wheel assembly mounted for rotation to ignite the lighter
only by the application of sufficient rotational force to overcome a frictional
impediment, as called for in independent claim 12.

DECISION
The decision of the Examiner to reject claims 12, 13, 15, 16, 19 and
20 is reversed.

REVERSED

mls

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