Ex parte SHAW et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08575830 (B.P.A.I. Sep. 11, 1998)

Application for patent filed December 20, 1995.1
Of all the amendments filed after the final rejection, only the last-filed2
amendment (filed September 17, 1996) involving only claims 4 and 8 has been entered. See
page 2 of the examiner’s answer.
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publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD J. SHAW and MARK R. SHAW
__________
Appeal No. 97-2483
Application 08/575,8301
___________
ON BRIEF
___________
Before McCANDLISH, Senior Administrative Patent Judge, and
FRANKFORT and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 8. No other claims are pending2
in the application.
Appeal No. 97-2483
Application 08/575,830
2
Appellants’ claimed invention relates to an automobile
gas cap removal tool having a housing (3), channel-defining
walls (4) in the housing, a handle (1) and a shaft (2)
connecting the handle to the housing. According to the
invention as disclosed in appellants’ specification, a gas cap
ridge 6 is received in a channel defined by walls 4 when the
housing is placed over the gas cap to permit the user to turn
the gas cap by grasping the handle.
A copy of claim 1, which is illustrative of the claimed
subject matter, is appended to this decision.
The following references are relied upon by the
examiner in support of his rejections under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103:
Grote 3,186,263 Jun. 1, 1965
Rosenberg 5,439,338 Aug. 8, 1995
Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Grote, and claims 2, 3 and 5 through 8
Appeal No. 97-2483
Application 08/575,830
3
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Grote in view of Rosenberg. Claim 7 additionally stands
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellants regard as
their invention.
Considering first the rejection of dependent claim 7
under the second paragraph of § 112, the examiner’s difficulty
with the claim language centers on the recitation in parent
claim 2 that there are two channels in the tool housing and on
the conflicting recitation in claim 7 that there is “at least
one said channel” such that the language of claim 7 is broad
enough to encompass a tool having just one channel.
Appellants’ arguments traversing the examiner’s
rejection under the second paragraph of § 112 as set forth on
page 8 of the brief are unpersuasive. In the first place, the
amendments made to claim 7 after the final rejection were not
entered by the examiner. Thus, contrary to appellants’
contention, claim 7 was not amended in the manner stated.
Appeal No. 97-2483
Application 08/575,830
4
With regard to the only other argument challenging the
rejection under the second paragraph of § 112, the issue is
not whether there is descriptive support for the subject
matter of claim 7 in the original disclosure. Instead, the
issue under the second paragraph of § 112 is whether claim 7
defines the metes and bounds of the invention with a
reasonable degree of precision. See In re Venezia, 530 F.2d
956, 958, 189 USPQ 149, 151 (CCPA 1976).
In the present case, it is not clear how the tool can
be limited to two channels (parent claim 2) and yet have no
more than one channel (dependent claim 7). The recitation in
claim 2 that the tool “comprises two channels” and the
recitation in claim 7 that the tool “comprises at least one
said channel,” and thus may have no more than one channel,
simply amounts to a contradiction of terms. In short, it is
not possible to have two channels, on the one hand, and yet
have no more than one channel, on the other hand. Furthermore,
dependent claim 7 cannot be viewed independently of claim 2
because, by statute, “[a] claim in dependent form shall be
construed to incorporate by reference all of the limitations
Appeal No. 97-2483
Application 08/575,830
The shape of the housing recited in claim 1 has not been argued as a3
difference over the Grote patent. In any event, this limitation, when given its broadest
reasonable interpretation, does not distinguish from Grote.
5
of the claim to which it refers.” 35 U.S.C. § 112, fourth
paragraph.
For the foregoing reasons, claim 7 does not define the
metes and bounds of the invention with a reasonable degree of
precision as required in Venezia. We will therefore sustain
the rejection of claim 7 under the second paragraph of § 112.
With regard to the § 102(b) rejection of claims 1 and
4, the only arguments supporting patentability of these claims
as set forth on page 12 of brief are as follows:3
In view of above citations, the disclosure in
the patent of Grote, should be compared to the
claims 1 and 4 of this present application.
TABLE 1
GROTE DISCLOSES APPLICATION CLAIMS
(see G1 et seq.) (CLAIMS 1 & 4)
Col. 1, lines 30-33; -tool No resilient member
Appeal No. 97-2483
Application 08/575,830
6
provides a resilient member claimed or mentioned
forming a - - for receiving
an automotive radiator cap
having ears extending there- No ears extending
from. therefrom; ridge of
gas cap fits in channel
No channel walls disclosed Channel walls claimed
Col. 1, line 37 - skirt is No flexible skirt.
flexible.
No shaft connecting housing Shaft connecting handle to
to handle. housing.
Col. 2, line 56-57; - A Handle attached to shaft
handle 39 extends from the
backing member 31 and is
attached thereto by fast-
eners such as screws 40.

Appellants’ first and third arguments regarding the
absence of a “resilient member” and a “flexible skirt” in
their claimed invention are without merit. By reciting that
the tool comprises various elements, claims 1 and 4 are open
to the inclusion of elements not recited in the claims. See In
re Fenton, 451 F.2d 640, 642, 171 USPQ 693, 695 (CCPA 1971)
and In re Hunter, 288 F.2d 930, 932, 129 USPQ 225, 226 (CCPA
1961). Consequently, claims 1 and 4 do not exclude the
Appeal No. 97-2483
Application 08/575,830
The recitation of “said channels” lacks antecedent basis. For reviewing the4
examiner’s art rejection, we have interpreted claim 4 to mean that the channels are
defined by the channel walls of claim 1.
7
presence of other elements such as a resilient member or a
flexible skirt.
Appellants’ second argument regarding the particular
construction of the gas cap itself is also without merit. In
the first place, claims 1 and 4 are directed to the removal
tool per se and therefore are not limited to a particular gas
cap construction. Furthermore, there is no recitation in claim
1 of any “channels.” Instead, this claim merely calls for
“channel walls.”
Contrary to appellants’ additional position, Grote’s
pockets 35 are in the form of two diametrically aligned, open
ended channels which are delimited by structures in the form
of walls to meet the limitation in claim 1 of “channel walls”
and also the limitation in claim 4 of “said channels.” With4
further regard to claim 4, the recitation that a gas cap ridge
is “more narrow” than the channels does not distinguish from
Appeal No. 97-2483
Application 08/575,830
8
Grote inasmuch as Grote’s members 18, 19 define radially
projecting ridges on the Grote's cap is a radiator cap
periphery and are more narrow than Grote’s channels.
Furthermore, the argument that the “ridge of [the] gas
cap fits in channel [sic]” is equally unavailing inasmuch as
neither claim 1 nor claim 4 recites that the gas cap ridge
"fits" in one or more channels. In this regard, it is well
established patent law that features not claimed may not be
relied upon to support patentability. See In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982) and In re Richards, 187
F.2d 643, 644-45, 89 USPQ 64, 66 (CCPA 1951).
With regard to appellants’ arguments about the shaft
and the handle, our reviewing court stated in In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) that
“[d]uring patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow.” It
also has been held that words in a claim are to be given their
ordinary and accustomed meaning unless it appears that the
inventor used them differently in his specification. Lantech,
Appeal No. 97-2483
Application 08/575,830
9
Inc. v. Keip Machine Company, 32 F.3d 542, 546-47, 31 USPQ2d
1666, 1670 (Fed. Cir. 1994). See also In re Barr, 444 F.2d
588, 597, 170 USPQ 330, 339 (CCPA 1971).
According to its applicable, common ordinary meaning in
Webster’s Third New International Dictionary (G. & C. Merriam
Company, 1971), the word “handle” is defined as “a part that
is designed esp. to be grasped by the hand or that may be
grasped by the hand.” According to this dictionary authority,
a shaft is “a long slender part.” According to these
definitions, the handle recited in claim 1 is broad enough to
read on the free end portion of Grote’s member 39, and the
claimed shaft is broad enough to read on the portion of
Grote’s member 39 extending from the free end portion to the
back of the housing 31. It is noted that neither claim 1 nor
claim 4 requires the handle to be disposed at an angle with
respect to the shaft in the manner shown in the application
drawings. The claimed subject matter is therefore broad enough
to read on Grote’s structure.
Based on the foregoing analysis of the Grote patent, we
Appeal No. 97-2483
Application 08/575,830
10
are satisfied that this reference meets all of the limitations
in claims 1 and 4 to thus anticipate the subject matter of
claims 1 and 4. See RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
We will therefore sustain the § 102(b) rejection of these
claims.
We will also sustain the § 103 rejection of claims 5
and 6. Appellants’ argument on page 17 of the brief that their
invention lacks a flexible skirt akin to Grote’s skirt 38 is
without merit. Like claims 1 and 4, claims 5 and 6 do not
exclude the presence of other elements such as a resilient
member or a flexible skirt. Furthermore, appellants have not
taken issue with the examiner’s finding on page 7 of the
answer that the properties of the claimed materials are known
in the art. Therefore, the choice of any of these materials
would have been prima facie obvious. See In re Ludtke, 441
F.2d 660, 664, 169 USPQ 563, 567 (CCPA 1971).
Unlike claims 1 and 4, claims 2, 3 and 8 recite that
the tool comprises two channels which cross at their centers.
Appeal No. 97-2483
Application 08/575,830
11
Grote does not teach this feature. Furthermore, we cannot
agree with the examiner that one of ordinary skill in the art
would have been motivated by the teachings of Rosenberg to
incorporate the crossing channels of Rosenberg into Grote’s
tool inasmuch as Grote’s modified tool would then be incapable
of removing a cap of the type shown in Grote’s drawings.
Accordingly, we will not sustain the § 103 rejection of claims
2, 3 and 8. In addition, we will not sustain the § 103
rejection of claim 7 since this claim is dependent on claim 2.
In summary, we have affirmed the rejection of claims 1
and 4 under § 102(b), we have affirmed the rejection of claims
5 and 6 under § 103, we have affirmed the rejection of claim 7
under the second paragraph of § 112, and we have reversed the
rejection of claims 2, 3, 7 and 8 under § 103.
The examiner’s decision rejecting the appealed claims
is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 97-2483
Application 08/575,830
12
§ 1.136(a).
AFFIRMED-IN-PART
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )

Robert T. Johnson
603 Collins Street
Plymouth, WI 53073
Appeal No. 97-2483
Application 08/575,830
13
APPENDIX
1. An automobile gas cap removal tool comprised of
a handle and a bell shaped housing and a shaft connecting said
handle to said housing and channel walls inside of said bell
shaped housing and extending downward for a distance less than
the height of said bell shaped housing.