Ex parte Singh et al.

Board of Patent Appeals and Interferences

May 9, 2001

08619672 (B.P.A.I. May. 9, 2001)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUMANJIT SINGH, STUART E. BLACKET,
TREVOR B. JONES and HOWARD J. LITHERLAND
____________
Appeal No. 2000-0084
Application No. 08/619,672
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 9, 11-13
and 15-18, which are all of the claims pending in this application.
We REVERSE and enter a new rejection under 37 CFR 1.196(b).
Appeal No. 2000-0084 Page 2
Application No. 08/619,672
BACKGROUND
The appellants’ invention relates to a self-penetrating fastening device. An
understanding of the invention can be derived from a reading of exemplary claim 9, which
appears in the appendix to the appellants’ Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Bray 203,815 May 21, 1878
Cummings 414,682 Nov. 12, 1889
Schleicher 5,621,961 Apr. 22, 1997
South Africa Published 918,340 Oct. 18, 1991
Patent Application (Ariel)
Claims 9 and 11-13 stand rejected under 35 U.S.C. § 102(a) as being anticipated
by Ariel.
Claims 15, 16 and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Ariel in view of Schleicher.
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ariel
in view of either Cummings or Bray.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Answer (Paper
No. 18) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 17) and Reply Brief (Paper No. 19) for the appellants’ arguments thereagainst.
Appeal No. 2000-0084 Page 3
Application No. 08/619,672
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The Rejection Under 35 U.S.C. § 102(a)
Independent claim 9 stands rejected as being anticipated by Ariel. Anticipation is
established only when a single prior art reference discloses, either expressly or under the
principles of inherency, each and every element of the claimed invention. See In re
Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Claim 9 requires, inter alia, that the rivet include “a substantially rounded transition
region having a radius and extending from said shank [of the rivet] to a bottom of said rivet
head.” The examiner is of the view that this is disclosed in Ariel by virtue of the curved
portion that the examiner believes is shown at the point of joinder between the rivet head
and shank in Figures 2-5. While it is our view that a problem exists with regard to the
definiteness of this language of the claim, in the interest of judicial economy we shall pass
judgement on the propriety of the examiner’s rejection. In this regard, the issue of
indefiniteness arises with regard to the manner in which the rounded transition region is
Appeal No. 2000-0084 Page 4
Application No. 08/619,672
set forth in the claim. However, it is present in the claim, and this feature can be evaluated
in view of the teachings of the applied prior art.
We begin our analysis by pointing out that there is no explicit description in Ariel of
the portion of the rivet that is located at the intersection of the head and the shank. We
thus are left only to the drawings to determine whether it is curved, as the examiner has
urged. As we view the drawings, in which the rivets are shown in side elevation, the
juncture between the rivet head and the shank appears to be rounded in Figures 2, 3, 7,
and 8, not to be rounded in Figures 4, 10, 11, and rounded on one side and not rounded
on the other side in Figures 13 and 14. In Ariel’s description of the drawings, it is stated
that Figure 2 illustrates a rivet in accordance with the invention and that the rest of the
Figures illustrate the same rivet (for example, Figures 3, 4 and 5 illustrate “the self-piercing
rivet of Figure 2”). Since a multitude of the Figures illustrate the rivet shown in Figure 2,
and they differ in their presentation of this particular portion, it is our conclusion that it
cannot be determined with certainty that Ariel teaches that there is a substantially rounded
transition region having a radius extending from the shank to the head. This being the
case, the rejection of independent claim 9 and dependent claims 11-13 under Section 102
cannot be sustained.
Appeal No. 2000-0084 Page 5
Application No. 08/619,672
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The first of the rejections under this section of the statute is that claims 15, 16 and
18 are unpatentable over Ariel and Schleicher. As we concluded above, Ariel does not
establish that it was known in the art at the time of the appellants’ invention to provide a
substantially rounded transition section having a radius between the rivet head and the
stem. Moreover, we fail to perceive any teaching, suggestion or incentive in Ariel which
would have led one of ordinary skill in the art to provide the rivet disclosed therein with such
a construction. Nor do we find such in Schleicher, which
Appeal No. 2000-0084 Page 6
Application No. 08/619,672
was cited by the examiner for its showing of a particular counterpressure tool structure.
The combined teachings of these two references therefore fail to establish a prima facie
case of obviousness with regard to claims 15, 16 and 18 which, of course, incorporate all
of the limitations of claim 9, from which they depend. This rejection will not be sustained.
We reach the same conclusion with regard to the rejection of claim 17 on the basis
of Ariel in view of either Cummings or Bray, for the secondary references also do not
alleviate the shortcoming in Ariel.
New Rejection Made By The Board
Pursuant to our authority under 37 CFR 1.196(b), we enter the following new
rejection:
Claims 9, 11-13 and 15-18 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite in that they fail to particularly point out and distinctly claim the subject
matter which the appellants regard as their invention.
While we are mindful that the appellants are free to claim their invention in broad
terms and are entitled to the broadest reasonable interpretation of the claim language,
because a patentee has the right to exclude others from making, using and selling the
invention covered by the patent (35 U.S.C. §154), the public must be apprised of exactly
what the patent covers, so that those who would approach the area
Appeal No. 2000-0084 Page 7
Application No. 08/619,672
circumscribed by the claims of a patent may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of infringement and
dominance. It is to this that the second paragraph of 35 U.S.C. § 112 is directed. See In
re Hammack 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
It is our opinion that two instances of indefiniteness appear in claim 9. The first is
that it is not clear as to which of the three elements named in the opening lines are
intended to be covered by the claim. The claim states that the invention is “[a] self-
penetrating fastening device including a rivet impacted by a punch and a counterpressure
tool” (lines 1 and 2, emphasis added). It goes on to recite only the structure of the rivet.
Claim 9 thus could be interpreted as not positively reciting the punch and the
counterpressure tool. However, the rivet has been described in the specification as “a
component of the self-penetrating fastening device” (page 3, line 10), which would imply
that the “device” includes all three elements. This conclusion is supported by the fact that
details of “said counterpressure tool” are recited in dependent claims 13-16 and 18.
Consideration should be given to changing “device” to “system” in appropriate places in
the specification and claims, and deleting “impacted by” from claim 9.
The second instance is in regard to the closing lines of claim 9, which recite:
a substantially rounded transition region having a radius and extending from
said shank to a bottom of said rivet head.
Appeal No. 2000-0084 Page 8
Application No. 08/619,672
The rivet head is not defined with particularity in the claim. We therefore look to the
specification for clarification, for deciding whether the claims set out and circumscribe a
particular area with a reasonable degree of precision and particularity requires that the
language employed in the claims be analyzed, not in a vacuum, but in light of the teachings
of the prior art and of the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art. See In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In the present case, the specification
states in line 7 at page 4 that the bottom of the rivet head is denoted by the numeral 11, the
lead line of which appears to point to the intersection between radius R1 and radius R2.
However, in the next sentence the specification informs the artisan that the “rivet head” has
a height “H” (see Figure 1), which is “determined from the beginning of the transition from
rivet shank 6 to outwardly directed radius R1" (lines 9 and 10). From this it would appear
that the “transition region” recited in claim 9 actually is part of the rivet head, for it falls
within height “H.” This flies in the face of the language of the claim, which states that the
transition region extends from the shank to “a bottom of the head,” thus indicating that the
transition region is not part of the head. The situation is further complicated by relating the
transition region in the claim to “a bottom of said head” (emphasis added) rather than the
bottom of the head, for the former implies that there is more than one bottom of the head.
Appeal No. 2000-0084 Page 9
Application No. 08/619,672
For these reasons, the metes and bounds of the claim are indeterminable, in our
view, and form the basis for a rejection under the second paragraph of Section 112.
CONCLUSION
The three rejections made by the examiner are not sustained, and therefore the
decision of the examiner is reversed.
However, a new rejection of all of the pending claims under 35 U.S.C. § 112,
second paragraph, has been entered by the Board under 37 CFR 1.196(b).
This decision contains a new ground 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 appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
Appeal No. 2000-0084 Page 10
Application No. 08/619,672
with respect to the new ground 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. . . .
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0084 Page 11
Application No. 08/619,672
NEA:pgg
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