Ex parte Smythe, Jr.

Board of Patent Appeals and Interferences

Jul 21, 1998

08541947 (B.P.A.I. Jul. 21, 1998)

Application for patent filed October 10, 1995. According to1
appellant, this application is a continuation-in-part of application
08/505,797, filed July 21, 1995, now U.S. Patent No. 5,644,892, issued
July 8, 1997.
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not binding precedent of the Board.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 TIMOTHY D. SMYTHE, JR.
_____________
Appeal No. 97-3218
Application 08/541,947 1
______________
ON BRIEF
_______________
Before COHEN, NASE and CRAWFORD, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow
claim 1, as amended subsequent to the final rejection (Paper
Appeal No. 97-3218
Application 08/541,947
On page 1 of the answer (Paper No. 12), the examiner indicated that2
the amendment would be entered.
2
No. 9) , and from the final rejection of claims 2 and 7. 2
However, in the answer (page 2), the examiner, in effect,
withdrew the final rejection of claims 2 and 7 by indicating
that they are allowed. Claims 3 through 6 and 8 through 14,
all of the other claims in the application, likewise have been
allowed by the examiner. Based upon the above, only the
rejection of claim 1 is before us on appeal.
Appellant’s invention pertains to an adjustable
prefabricated drywall corner. Claim 1 reads as follows.
An adjustable prefabricated drywall corner
comprising, in combination, a plurality of
substantially flat sides foldably attached
to form at least two seams, one of said
flat sides adjustably foldable to form a
third seam at a chosen angle with respect
to said orthogonal seams.
As evidence of anticipation, the examiner relies upon the
document specified below.
Rillo 3,350,825 Nov. 07, 1967
Appeal No. 97-3218
Application 08/541,947
3
The following rejection is before us for review.
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Rillo.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the first
office action and answer (Paper Nos. 2 and 12), while the
statement of appellant’s argument can be found in the main and
reply briefs (Paper Nos. 11 and 13 ).

OPINION
In reaching our conclusion on the anticipation issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claim 1, the applied
patent to Rillo, and the respective viewpoints of appellant
and the examiner. As a consequence of our review, we make the
determination which follows.
We affirm the examiner’s rejection of claim 1 under 35
U.S.C. § 102(b).
Appeal No. 97-3218
Application 08/541,947
4
Anticipation under 35 U.S.C. 102(b) is established only
when a single prior art reference discloses, either expressly
or under principles of inherency, each and every element of a
claimed
invention. See In re Paulsen, 30 F.3d 1475, 1478-1479, 31
USPQ2d
1671, 1675 (Fed. Cir. 1994), In re Spada, 911 F.2d 705, 708,
15
USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). However, the law of anticipation does
not require that the reference teach specifically what an
appellant has disclosed and is claiming but only that the
claims on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984).
Appeal No. 97-3218
Application 08/541,947
5
The Rillo patent, assessed in its entirety, reveals to us
that the drywall corner of appellant’s claim 1 reads on the
wallboard corner of the patent. More specifically, it is
quite clear to this panel of the board that a side of the
corner taught by Rillo is capable of being adjustably foldable
to form a third seam at a chosen angle with respect to the
other seams, e.g., the top side of the Rillo corner, intended
for securement to the ceiling, is capable of being folded in
half to form a seam and thereby effecting upwardly angled side
halves. Alternatively, we
readily perceive that with one side of the standard three-
sided corner piece of Rillo slit as disclosed by the patentee
(from straight edge to apex), a side portion (formed by the
slitting)
is capable of being adjustably foldable to form a third seam
at a chosen angle with respect to the other two seams. Thus,
claim 1 is anticipated by the teaching of Rillo.
Appeal No. 97-3218
Application 08/541,947
6
We are not persuaded by the argument of appellant as to
the patentability of claim 1.
Appellant’s focus is upon the perceived rigidity of the
plastic drywall corner of Rillo (main brief, pages 10 and 11
and reply brief, page 2) which drywall corner appellant views
as inherently “unfoldable” (main brief, page 12) or
“impossible” to be adjustably foldable (reply brief, page 2).
Like the examiner (answer, pages 4 and 5), we do not
share appellant’s point of view as to the rigidity of the
corner of Rillo or its being inherently unfoldable, as
explained, infra.
Initially, we recognize that appellant instructs us
(specification, page 9) that the present invention can be
practiced with the corner made of plastic material of a
thickness
from “under 2 or 3 mils to well over 25 mils” (under .002 inch
or .003 inch to well over .025 inch). Thus, a thickness of
Appeal No. 97-3218
Application 08/541,947
7
plastic material within the aforementioned range permits a
side of the
corner to be adjustably foldable to form a third seam at a
chosen angle, as claimed.
Turning to the Rillo teaching, we find that the patentee
specifies a plastic corner piece with the basic thickness of
the plastic being, e.g. .005NN to .010NN (column 1, lines 50
through 53 and column 2, lines 37 through 40). Thus, the
plastic material of Rillo falls on the low, thinner end of the
acceptable thickness range specified by appellant for the
present invention. Clearly, as was the case with the material
thickness for appellant’s corner, the plastic material
thickness of the Rillo patent would permit a slit side of the
corner to be adjustably foldable to form a third seam at a
chosen angle, as now claimed. For this reason, we simply
cannot agree with the argued and unsupported viewpoint of
appellant as to the adjustable foldability of the corner of
Rillo being “impossible”.
Appeal No. 97-3218
Application 08/541,947
8
In summary, this panel of the board has affirmed the
rejection of claim 1 under 35 U.S.C. § 102(b) as being
anticipated by Rillo.
The decision of the examiner is affirmed.
AFFIRMED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3218
Application 08/541,947
9
Clifford H. Kraft
320 Robin Hill Drive
Naperville, IL 60540