Ex Parte Skvorecz

Board of Patent Appeals and Interferences

Mar 28, 2007

09772278 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ROBERT J. SKVORECZ
_______________

Appeal 2006-1989
Application 09/772,2781
Patent 5,996,948
Technology Center 3600
_______________

Decided: March 28, 2007
_______________

Before BRADLEY R. GARRIS, FRED E. MCKELVEY, and
ALLEN R. MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

AFFIRMED-IN-PART
1 Application filed March 15, 2001, seeking to reissue U.S. Patent
5,996,948, issued December 7, 1999, based on application 09/005,787, filed
January 12, 1998 as a continuation-in-part of application 08/864,562, filed
May 28, 1997. The real party in interest is Appellant (Brief at page 1).
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STATEMENT OF CASE
Applicant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1-5 and 7. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The only independent claim under appeal reads as follows: 2
1. A wire chafing stand comprising a first [an upper] rim of wire steel
which forms a closed geometrical configuration circumscribing a first
surface area, [a lower rim of wire steel forming a closed geometrical
configuration circumscribing a second surface area with said first surface
area being larger than said second surface area] and having at least two [a
plurality of] wire legs with each wire leg having two upright sections
interconnected to one another [at a location below the lower rim] in a
configuration forming a base support for the stand to rest upon with each
upright section extending upwardly from said base support to form an angle
equal to or greater than 90° with respect to a horizontal plane through said
base support and being affixed to the first [upper] rim adjacent one end
thereof [and to said lower rim at a relatively equal distance below the point
of attachment to said upper rim] and further comprising a plurality of offsets
located either in said upright sections of said wire legs or in said first [upper]
rim for laterally displacing each wire leg relative to said first [upper] rim to
facilitate the nesting of a multiplicity of stands into one another without
significant wedging.
The Examiner rejected claims 1-5 and 7 under 35 U.S.C. § 251 as
being an improper recapture of surrendered subject matter (Final 2-6). The

2 Underlining indicates additions and [brackets] indicate deletions by
amendment.
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Examiner also rejected claims 1, 2, and 5 under 35 U.S.C. § 102(b) (Final
6-7).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Buff US 5,503,062 Apr. 2, 1996
(Filed Jan. 5, 1994)

The Examiner indicated that claim 6 is allowable (Final 7).
A copy of the claims 1-3, 5, and 7 under appeal is set forth in the
Claim Appendix of Appellant’s Brief. The copy of claim 4 in the appendix
is in error. Contrary to the appendix, claim 4 as filed and appealed contains
a spelling error (“defing” rather than “defining”) which has yet to be
corrected.
The Examiner concluded that (1) under the three step Pannu process
Appellant’s amendment and statement in the patented file resulted in
surrender of subject matter relating to the lower rim (Final 3-5); and (2) Buff
discloses the limitations of claims 1, 2, and 5 (Final 6-7). See Pannu v. Storz
Instruments, Inc., 258 F.3d 1366, 1371, 59 USPQ2d 1597, 1600 (Fed. Cir.
2001).
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Appellant contends the Examiner has erred because (1) “there was
never any surrender of subject matter relating to the lower rim aspect of the
invention during the prosecution of the original application” (Br. 14); and
(2) the Examiner has failed to demonstrate the prior art teaches or suggests
each claim limitation (Br. 7).
We affirm the decision of the Examiner rejecting claims 1 and 2 under
35 U.S.C. § 102(b). We reverse the decision of the Examiner rejecting claim
5 under 35 U.S.C. § 102(b). We reverse the decision of the Examiner
rejecting claims 1-5 and 7 under 35 U.S.C. § 251. We use our authority
under 37 C.F.R. § 41.50(b) to enter a new ground of rejection of claims 1-5
and 7.
ISSUES
The issues before the Board are:
(1) Whether Appellant has established the Examiner erred in finally
rejecting claims 1-5 and 7 under 35 U.S.C. § 251 because Appellant
has rebutted the Examiner’s initial prima facie showing of recapture?
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(2) Whether Appellants have established the Examiner erred in rejecting
claims 1, 2, and 5 under 35 U.S.C. § 102(b) because claimed
limitations are not taught by Buff?
FINDINGS OF FACT
The following findings of fact are believed to be supported by a
preponderance of the evidence.
A. The Invention
1. Appellant invented a wire chafing stand. The wire chafing
stand permits multiple wire chafing stands to be nested and readily separated
from one another without causing wedging. (Specification, col. 1, ll. 51-53).
2. Appellant states at column 3, lines 21-27, that:
FIG. 1-6 . . . illustrate a pair of nested wire chafing stands 10 of
identical construction with each stand 10 including an upper
rim 12 of any desired geometry, such as oval, square or
rectangular, and a lower rim 14 of a geometry substantially
identical to that of the upper rim 12.
3. Appellant states at column 3, lines 29-32, that:
The upper rim 12 is spaced apart from the lower rim 14 by wire
legs 16 so that the upper and lower rims are in a substantially
parallel relationship.
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4. Appellant states at column 3, lines 60-63, that:
Each wire leg 16 is preferably bent from a single straight wire
rod into a somewhat "U" shaped configuration having two sides
19 and a base 20 with the sides 19 extending outwardly from
the base 20 of the leg 16.
5. Appellant states at column 4, lines 7-10, that:
To readily facilitate nesting between wire stands 10 each side
19 of each wire leg 16 includes at least one offset 30 located
near the upper end 18 of the wire leg 16 which displaces the
side 19 of the wire leg 16 laterally.
6. Appellant states at column 4, lines 13-20, that:
The offset 30 indents the wire leg 16 so as to cause a lateral
displacement of each side 19 of each wire leg 16 in a
substantially horizontal direction from a predetermined location
below the upper rim 12. This enables the wire legs 16 of a
single wire chafing stand 10 to readily nest within another wire
chafing stand 10 without interference and minimizes one wire
stand 10 from wedging within another.
7. Appellant states at column 4, lines 47-50, that:
FIGS. 7, 8 and 9 show another embodiment of the present
invention having only two wire legs 26 for supporting the
chafing stand 10 from its opposite ends along its longitudinal
axis.
8. Appellant states at column 4, lines 50-53, that:
Each wire leg 26 is formed from a single wire rod by a series of
bending operations. Each wire leg 26 includes two somewhat
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"U" shaped sections 29 connected through an intermediate
section 15 extending therebetween.
9. Appellant states at column 4, lines 53-55, that:
The intermediate section 15 forms a handle for holding the
chafing stand 10 from its opposite ends.
10. Appellant states at column 4, lines 55-58, that:
Each of the "U" shaped sections 29 has a configuration
substantially identical to that of one of the wire legs 16 in the
first two embodiments of FIGS. 1-6 . . .
11. Appellant states at column 5, lines 9-19, that:
Another embodiment is shown in FIGS. 10-11 in which the
wire legs 26 contain offsets 40 and 41 located at the point of
interconnection of the wire leg 26 and the upper rim 12 of the
stand 10. The offsets 40 and 41 support the upper rim 12 to
enhance the weld 33 between the upper rim 12 and the wire legs
26 as shown in FIG. 11 forming a structurally sound frame for
the stand 10. The offsets 40 and 41 also facilitate the nesting of
multiple wire chafing stands. A variation of this embodiment is
shown in FIGS. 12-13 in which offsets 42 are formed in the
upper rim 14 of the chafing stand 10.

B. Prosecution history of the original application
12. As noted earlier, the patent sought to be reissued was based on
application 09/005,787 ("original application"), filed January 12, 1998 as a
continuation-in-part of application 08/864,562, filed May 28, 1997.
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13. As filed, the original application contained claims 1-7.
14. As filed, claim 1 was as follows:
A wire chafing stand comprising an upper rim of wire
steel which forms a closed geometrical configuration
circumscribing a first surface area, a lower rim of wire steel
forming a closed geometrical configuration circumscribing a
second surface area with said first surface area being larger than
said second surface area and having a pair of wire legs of equal
length affixed at one end thereof to the upper rim and affixed to
the lower rim at an equal location substantially approximate the
opposite end of each wire leg such that the upper rim and the
lower rim lie in substantial parallel alignment to one another
with the wire legs extending equal distances below the lower
rim to uniformly support the stand at opposing ends thereof and
having a plurality of offsets in the upper rim of said stand or in
the wire legs at the point of interconnection therebetween.
15. On April 23, 1999, the Examiner entered a Non-final Office
action.
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16. Claim 1-3 were rejected under 35 U.S.C. § 102 as being
unpatentable over Andrews, US Patent 1,688,864, issued in October 1928.
Claim 1 was rejected under 35 U.S.C. § 102 and claims 2-7 were rejected
under 35 U.S.C. § 103 as being unpatentable over Fordyce, US Patent
4,718,402, issued in January 12, 1988.
17. Andrews and Fordyce are prior art vis-à-vis applicant under
35 U.S.C. § 102(b).
18. On July 26, 1999, Appellant filed an Amendment (“the
amendment”) responding to the Examiner's first Office action.
19. The amendment amended claims 1, 2, 5, and 6, and cancelled
claim 7. After entry of the amendment, the application claims were 1-6.
20. Claim 1 was amended as follows (underlining indicates
additions and [brackets] indicate deletions):
A wire chafing stand comprising an upper rim of wire
steel which forms a closed geometrical configuration
circumscribing a first surface area, a lower rim of wire steel
forming a closed geometrical configuration circumscribing a
second surface area with said first surface area being larger than
said second surface area and having a plurality of wire legs with
each wire leg having two upright sections interconnected to one
another at a location below the lower rim in a configuration
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forming a base support for the stand to rest upon with each
upright section extending upwardly from said base support to
form an angle equal to or greater than 90° with respect to a
horizontal plane through said base support and being affixed to
the upper rim adjacent one end thereof and to said lower rim at
a relatively equal distance below the point of attachment to said
upper rim and further comprising a plurality of offsets located
either in said upright sections of said wire legs or in said upper
rim for laterally displacing each wire leg relative to said upper
rim to facilitate the nesting of a multiplicity of stands into one
another without significant wedging [ pair of wire legs of equal
length affixed at one end thereof to the upper rim and affixed to
the lower rim at an equal location substantially approximate the
opposite end of each wire such that the upper rim and the lower
rim lie in substantial parallel alignment to one another with the
wire legs extending equal distances below the lower rim to
uniformly support the stand at opposing ends thereof and
having a plurality of offsets in the upper rim of said stand or in
the wire legs at the point of interconnection therebetween].
21. In the amendment at page 4, Appellant stated three points as
follows:
Additionally, claim 1 requires each wire leg to have two upright
sections which are interconnected at a location below the lower
rim in a configuration forming a base support for the stand to
rest upon.
Furthermore, each upright section of the wire chafing stand as
now defined in cla[i]m 1 extends upwardly from the base
support at an angle equal to or greater than 90° with respect to a
horizontal plane through the base.
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[Wedging] is overcome by the use of a plurality of offsets
located either in the upright sections of the wire legs or in the
upper rim. The offset construction laterally displace[s] each
wire leg relative to the upper rim . . .
22. On August 12, 1999, the Examiner entered a Notice of
Allowability and Examiner’s Amendment indicating claims 1-6 were
allowable.
23. Consistent with Office practice, the claims were re-numbered in
the course of preparing the original application for issue, all as follows:
Chronological by original claim
Original claim number Claim as re-numbered
1 1
2 2
3 3
4 4
5 6
6 5
7 Cancelled

24. On October 14, 1999, Appellant filed an Amendment under
37 C.F.R. § 1.312 to correct Figures 12 and 13. As filed, the offsets in the
upper rim of Figures 12 and 13 do not laterally displace each wire leg
relative to said upper rim as required by amended claim 1. The amendment
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sought to reverse the direction of the offset from toward the center of the
upper rim to away from the center.
25. U.S. Patent 5,996,948 issued December 7, 1997, based on the
original application and contained claims 1-6 with originally filed Figures 12
and 13.
26. On January 20, 2000, the Examiner notified Appellant that
entry of the Amendment under 37 C.F.R. § 1.312 was disapproved as the
new “away from the center” direction of the offset was not supported by the
original disclosure.

C. Prosecution of reissue application
27. Applicant filed reissue application 09/772,278 on March 15,
2001, seeking to reissue U.S. Patent 5,996,948.
28. Applicant presented amended versions of original patent claims
1 and 3 along with new reissue application claim 7 for consideration.
29. A copy of reissue application claims 1-7 appears in the Claim
Appendix of Appellant’s Brief.
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30. The Examiner has rejected reissue application claims 1-5 and 7
under 35 U.S.C. § 251 maintaining that the claims seek to "recapture"
subject matter surrendered in obtaining allowance of the claims which
appear in the patent sought to be reissued (Final 2-6).
31. The Examiner also rejected claims 1, 2, and 5 under
35 U.S.C. § 102(b) (Final 6-7). The prior art relied upon by the Examiner
in rejecting the claims on appeal is Buff, US 5,503,062, issued April 2, 1996.
32. Reissue application claims 1-5 and 7 are before the Board in the
appeal.
33. The Examiner based the rejection of claims 1-5 and 7 on the
grounds that when faced in the original application with a rejection under
35 U.S.C. § 102 and 35 U.S.C. § 103 over Andrews, Appellant made two
significant amendments:
(1) First, Appellant amended originally filed claim 1 to add a
limitation reading “each wire leg having two upright sections interconnected
to one another at a location below the lower rim in a configuration forming a
base support for the stand to rest upon.”
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(2) Second, Appellant amended originally filed claim 1 to
add a limitation reading “affixed to the upper rim adjacent one end thereof
and to said lower rim at a relatively equal distance below the point of
attachment to said upper rim.”

D. Examiner’s Rejections
(1)
35 U.S.C. § 251
34. The Examiner rejected reissue application claims 1-5 and 7 as
being unpatentable under 35 U.S.C. § 251 for recapturing subject matter
surrendered in obtaining allowance of claims during prosecution of the
application which matured into the patent sought to be reissued.
35. The Examiner applied the three step Pannu test to determine
recapture.
36. The Examiner reasoned as set forth in pages 2-6 of the Final
Office Action entered December 30, 2004. Particularly, the Examiner
reasoned that the following broadened (by deletion) aspects of reissue claim
1, related to surrendered subject matter:
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(1) “a lower rim of wire steel forming a closed geometrical
configuration circumscribing a second surface area with said
first surface area being larger than said second surface area;”
(2) “at a location below the lower rim;” and
(3) “and to said lower rim at a relatively equal distance below the
point of attachment to said upper rim.”
37. The record supports the Examiner's findings with respect to
what limitations do not appear in reissue application claim 1 which were
present in claim 1 of the original application, as allowed.

(2)
35 U.S.C. § 102(b)
38. The Examiner rejected claims 1, 2, and 5 under
35 U.S.C. § 102(b) as being anticipated by Buff (Final 6-7).
39. The Examiner reasoned as follows (see the Final Office Action
entered December 30, 2004, pages 6-7):
Regarding claim 1, Buff, IV discloses a wire support
(Fig.2) comprising a first rim (40) of wire steel which forms a
closed geometrical configuration circumscribing a first surface
area, and having at least two wire legs (49, Fig. 2) with each
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wire leg having two upright sections interconnected to one
another in a configuration forming a base support for the stand
to rest upon with each upright section extending upwardly from
the base support to form an angle greater than 90 degrees with
respect to a horizontal plane through the base support and being
affixed to the first rim adjacent one end thereof, and further
comprising a plurality of offsets (52) located either in the
upright sections of the wire legs or in the first rim for laterally
displacing each wire leg relative to the first rim. The offsets can
facilitate the nesting of a multiplicity of stands into one another
without significant wedging (see Col. 5, lines 13-16 and lines
30-34).
Regarding claim 2, Fig. 2 of Buff, IV also shows the
plurality of offsets (52) being in the upright section and divided
each upright section into two sections lying in different planes
relative to one another.
Regarding claim 5, Fig. 2 of Buff, IV also appears to
show the plurality of offsets being welded or coupled to the
wire legs at the separation (separation between the legs and the
handle 38) of the upright section into segments. Nevertheless,
referring to the process step such as welding is not accorded
patentable weight in the product-by-process claim. It is well
settled that the patentability of a product does not depend on its
method of production. Product -by-process claims are not
construed as being limited to the product formed by the specific
process recited. In re Hirao et al., 535 F2d 67, 190 USPQ 15.
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DISCUSSION – REJECTION UNDER 35 U.S.C. § 251

A. The Prima Facie Case
Our Findings of Fact 33-36 set out the basis upon which the Examiner
made a recapture rejection. As noted in Finding 37, the record supports the
Examiner’s findings.
Contrary to Appellant’s position at page 6 of the Reply Brief, we
conclude that the Examiner’s rejection sets forth a prima facie case of
reissue recapture. That is, the Examiner has established a rebuttable
presumption of recapture. Appellant may rebut the Examiner’s prima facie
case by showing, based on the record, that at the time the amendment was
made, an “objective observer” could not reasonably have viewed the subject
matter broader than any narrowing amendment as having been surrendered.
See Ex parte Willibald Kraus, Appeal 2005-0841, 2006 WL 3939191,
(Bd.Pat.App & Int., Sep. 21, 2006) for a discussion of reissue recapture.
B. Appellant’s Response To The Examiner’s Case
Appellant argues (Br. 14) that during prosecution of the original
application the defined relationship of the lower rim was not narrowed.
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Rather, it was broadened or unaffected by the amended language. We
agree.
While at first blush we find support for the Examiner’s prima facie
showing of recapture, a closer review finds Appellant’s position to be
correct. First, as to the limitation “a lower rim of wire steel forming a closed
geometrical configuration circumscribing a second surface area with said
first surface area being larger than said second surface area,” this limitation
was part of claim 1 as originally filed and was not added by amendment.
Therefore, there can be no surrender with respect to this limitation.
Second, as to the added limitation “at a location below the lower rim,”
this limitation is redundant to the limitation that follows it in the claim (“in a
configuration forming a base support for the stand to rest upon”) which
inherently requires interconnection of the uprights be below every other
element of the chafing stand. Therefore, removal of this limitation does not
in fact broaden the claim.
Third, as to the added limitation “and to said lower rim at a relatively
equal distance below the point of attachment to said upper rim,” this
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limitation is merely a restatement of an original claim limitation (“the upper
rim and the lower rim lie in substantial parallel alignment to one another”)
and is not in fact a limitation added by amendment.
We find the record of the original application would lead an objective
observer to conclude with respect to limitations related to the lower rim that
no deliberate surrender happened in order to avoid an obstacle to
patentability. Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323,
80 USPQ2d 1495, 1502 (Fed. Cir. 2006).
We conclude that while the Examiner has initially demonstrated a
prima facie case of reissue recapture, the Appellant has rebutted that prima
facie case by showing the broader “lower rim” aspects of the reissued claim
do not relate to surrendered subject matter.
DISCUSSION – REJECTION UNDER 35 U.S.C. § 102

A. The Prima Facie Case
Finding of Fact 39 sets forth the Examiner’s prima facie case for
anticipation with respect to claims 1, 2, and 5.
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B. Claim 1 - Appellant’s response to the Examiner’s case
First, Appellant argues at pages 7-8 of the Brief that the Examiner has
erred because the claimed “offset” is a lateral displacement and Buff only
teaches a longitudinal displacement. That is, claim 1 is patentable because
Buff fails to teach offsets from the lateral sides (short axis). We disagree.
Findings of Fact 4-6 and Appellant’s Figures 1-3 contradict
Appellant’s argument. Appellant describes each leg 16 as “U” shaped with
two sides 19. Each side 19 is described as including an offset 30 which
causes a lateral displacement. Figures 1-3 clearly show a first side 19 of
each leg is attached to a long axis side of a rim and a second side 19 of each
leg is attached to a short axis side of the rim. Thus, Appellant’s disclosed
lateral displacement includes in a longitudinal direction. Appellant’s
Specification never limits the term “lateral” to describing the short axis side.
Rather, Appellant’s Specification only uses “lateral” in the broader sense of
sideways from either the long axis or short axis.
Second, at pages 8-9 of the Brief, Appellant argues the Examiner has
erred because:
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Since the offsets 52 in Buff ‘062 are disposed or formed over
the support wire 40, they cannot be “located either in the
upright sections (19) of the wire legs (16) or in said first rim
(12)” but can only be located at the coupling between the
handles 38 and support members 50 as Buff ‘062 teaches. Thus
the members 52 cannot be located in the specified alternative
locations called for in reissue claim 1.
We disagree.
As shown by Findings of Fact 8 and 9, Appellant describes his handle
15 as part of leg 26. Thus, it is reasonable to view the offset between Buff’s
handle 38 and support member 50 as being located in an upright section of a
wire leg since both 38 and 50 can form part of the leg.
Third, at pages 9-10 of the Brief, Appellant argues the Examiner has
erred because while Buff has offsets the Examiner fails to show that Buff
has offsets “to facilitate the nesting of a multiplicity of stands into one
another without significant wedging” as recited in claim 1. We disagree.
Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977). “When the PTO shows sound basis for
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believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the
prima facie case can be rebutted by evidence showing that the prior art
products do not necessarily possess the characteristics of the claimed
product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
(Fed. Cir. 1985).
The Examiner correctly found that Buff established a prima facie case
of anticipation. At that point, the burden shifted to Appellant to show that
the prior art structure did not inherently possess the functionally defined
limitations of his claimed apparatus. In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997). Appellant has failed to
demonstrate that the functional characteristics of his claimed invention are
not inherent in the structure disclosed by Buff.
Fourth, Appellant argues at page 10 of the Brief that the Examiner has
erred because Buff fails to disclose the claimed “at least two wire legs (16)
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with each wire leg (16) having two upright sections (19) interconnected to
one another in a configuration forming a base support (20) for the stand to
rest upon” (numbers added by Appellant). We disagree.
Appellant’s Specification describes two major embodiments. The
first embodiment (see Fig. 1) has four legs 16 with each leg having two
upright sections 19. Two of the four legs are found at each end of the long
axis. The second embodiment (see Fig. 7) has two legs 26 with each leg
having four upright sections 19. One of the two legs is found at each end of
the long axis. Appellant’s claim 1 is broader than either embodiment as is
requires only “at least two legs” each having “two uprights.” We turn to
Buff’s Figure 2 where we find two legs (formed by item 49, two upright
ends 50 (see Buff’s Fig. 1), two offsets 52, and at least the lower section of
handles 38) with each leg having two upright sections (aforementioned 50,
52, and 38). This arrangement is on its face a configuration forming a base
support for the stand to rest upon. Although the legs in Buff run along the
long axis of the base rather than across the end of the long axis as disclosed
by Appellant, such is not precluded by Appellant’s claim language.
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Therefore, we conclude Appellant has not shown that the Examiner
erred with respect to this rejection under 35 U.S.C. § 102.
C. Claim 2 – Appellant’s response to the Examiner’s case
At page 11 of the Brief, Appellant again argues that the Examiner has
erred because Buff fails to disclose each wire leg having two upright
sections. Again we disagree for the reasons supra. No additional arguments
are presented.
Therefore, we conclude Appellant has not shown that the Examiner
erred with respect to this rejection under 35 U.S.C. § 102.
D. Claim 5 – Appellant’s response to the Examiner’s case
At page 11 of the Brief, Appellant again argues that the Examiner has
erred because in Buff “the separation of the upright sections into segments
has no correlation to the device taught in Buff ‘062.” We agree.
Claim 5 is limited by it terms (“said plurality of offsets are welded to
said wire legs”) to only one of the two offset embodiments of claim 1.
Specifically, the embodiment with “a plurality of offsets located . . . in said
upper rim.” Although Buff does teach an offset in the rim, Buff’s offset in
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the rim has not been shown to be “for laterally displacing each wire leg
relative to said upper rim” as required by claim 1.
Therefore, we conclude Appellant has shown that the Examiner erred
with respect to this rejection under 35 U.S.C. § 102.

DISCUSSION – NEW GROUNDS OF REJECTION

A. Rejection under 35 U.S.C. § 112, Second Paragraph
Claim 5 is 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 applicant regards as the invention.
Claim 5 recites “at the separation of the upright sections into
segments.” The meaning of this recitation is indefinite because there is no
antecedent basis for “the separation” and because it is unclear what is being
described by the term “segments.”
B. Rejection under 35 U.S.C. § 112, First Paragraph
Claims 1-5 and 7 are rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement. The claims
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Application 09/772,278
Patent 5,996,948

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contain subject matter which was not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention.
Claim 1 recites “a plurality of offsets located . . . in said first rim for
laterally displacing each wire leg relative to said first rim.” This limitation
has no support in Appellant’s Specification as filed. While the Appellant’s
originally filed Figures 12 and 13 describe offsets in the rim, those offsets do
not laterally displace the wire leg relative to the rim. Rather, offsets in the
rim which do laterally displace the wire leg relative to the rim are only
described in amended Figures 12 and 13 found in the Amendment to the
drawings filed October 14, 1999. The original Examiner found those
amended figures to be new matter and entry of the Amendment was denied
(Appellant notified January 20, 2000).
Claim 5 recites a further limitation of the offsets in the rims.

Appeal 2006-1989
Application 09/772,278
Patent 5,996,948

- 27 -
DECISION
The decision of the Examiner rejecting claims 1-5 and 7 under
35 U.S.C. § 251 based on recapture is reversed; the decision of the Examiner
rejecting claim 5 under 35 U.S.C. 102(b) is reversed; and the decision of the
Examiner rejecting claims 1 and 2 under 35 U.S.C. § 102(b) is affirmed.
We have entered new grounds of rejection against claims 1-5 and 7
under 37 C.F.R. § 41.50(b) (2005).
37 C.F.R. § 41.50(b) provides that, “new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(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 grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) (2005)) as to the rejected
claims:
(1) Submit an appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner …

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Application 09/772,278
Patent 5,996,948

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(2) Request that the proceeding be reheard under 37 C.F.R. § 41.52
by the Board upon the same record …

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

tdl

ANDERSON, KILL & OLICK, P.C.
1251 AVENUE OF THE AMERICAS
NEW YORK, NY 10020-1182