Ex parte Starr

Board of Patent Appeals and Interferences

Jan 27, 1999

08593070 (B.P.A.I. Jan. 27, 1999)

Application for patent filed January 29, 1996.1
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not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT J. STARR
_____________
Appeal No. 98-2446
Application 08/593,0701
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and PATE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 17, all the claims pending in
the application.
Appeal No. 98-2446
Application 08/593,070
Given our understanding of appellant’s invention as noted above, we2
understand the “cover” in line 6 of claim 1 as being the flat cover which
would normally be used on a standard open head container of the type mentioned
in claim 1 on appeal, and that such a flat cover is to be replaced with the
cover described and claimed in the present application. It would be prudent
for appellant and the examiner to clarify this minor informality during any
further prosecution of the application subsequent to this appeal.
2
Appellant’s invention is directed to a cover for use on a
standard open head container or drum used in the waste
industry to contain and store potentially hazardous waste
materials, such as waste oil. As noted on pages 1 and 2, and
pages 5 and 6, of the specification, such standard open head
containers are typically 55 gallon or 30 gallon drums, which
drums would normally have a flat cover of substantially the
same diameter as the drum sealably secured to the open end of
the drum. Typically, the cover is secured to the drum by
means of a bolt ring similar to that seen in Figure 6 of the
application drawings. The cover of the present invention,
best seen in Figures 1 through 5 of the application drawings,
is a replacement for the typical flat drum cover described
above. Independent claim 1 is representative of the subject
matter on appeal and a copy of that claim may be found in
Appendix I of appellant’s brief.2
Appeal No. 98-2446
Application 08/593,070
3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Green 1,948,263 Feb. 20,
1934
Lineweber 3,045,857 Jul.
24, 1962
Collier et al. (Collier) 4,411,371 Oct.
25, 1983
Kusta 4,982,864 Jan. 08,
1991
Seitz 5,439,935 Aug. 08,
1995
Claims 1 through 3, 8 and 15 through 17 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by each of Seitz
and Collier.
Claims 1 through 3, 8 and 15 through 17 stand
additionally rejected under 35 U.S.C. § 103 as being
unpatentable over Seitz in view of Lineweber and Kusta.
Claims 4 through 7 and 9 through 13 stand rejected under
35 U.S.C. § 103 as being unpatentable over Seitz in view of
Appeal No. 98-2446
Application 08/593,070
4
Lineweber and Kusta as applied above, and further in view of
Green.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Seitz, Lineweber, Kusta and Green as applied
above, and further in view of Collier.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by
the examiner and appellant regarding those rejections, we make
reference to the examiner's answer (Paper No. 10, mailed March
13, 1998) for the examiner's reasoning in support of the
rejec-tions, and to appellant’s brief (Paper No. 9, filed
January 2, 1998) for appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
Appeal No. 98-2446
Application 08/593,070
5
consequence of our review, we have made the determinations
which follow.
Turning first to the examiner's rejection of claims 1
through 3, 8 and 15 through 17 under 35 U.S.C. § 102(b) as
being anticipated by Seitz or Collier, we must agree with
appellant (brief, pages 4-6) that both Seitz and Collier fail
to show, disclose or teach a cover for a “standard open head
container” as in appellant’s claim 1 on appeal, wherein the
cover includes,
inter alia, a housing like that set forth in independent claim
1 with
“a sealing portion of said housing that is sealably
engageable to the second end of the elongated side
walls [of the standard open head container], such
that the housing passage is removably connected
to the container body cavity.”
Both Seitz and Collier disclose a ring/coaming or housing
(12 of Seitz, 34 of Collier) that is welded to the body of the
rail car therein and is clearly not removably connected
Appeal No. 98-2446
Application 08/593,070
6
thereto in the same sense that appellant’s cover is removably
connected to the container therein, e.g., via the bolt ring
(60) seen in Figures 3, 4 and 6 of the application drawings.
The examiner’s position that the hatch covers of Seitz and
Collier are removably connected to the rail car body therein
“by cutting the weld attachment” (answer, page 5) is
unreasonable and disregards the well settled maxim of our
Patent law that, in proceedings before the Patent and
Trademark Office, claims must be given their broadest
reasonable interpretation consistent with the specifi-cation,
and that the claim language cannot be read in a vacuum, but
instead must be read in light of the specification as it
would be interpreted by one of ordinary skill in the pertinent
art. See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(Fed. Cir. 1983),
It follows from the foregoing that the examiner’s
rejection of claims 1 through 3, 8 and 15 through 17 under 35
U.S.C.
Appeal No. 98-2446
Application 08/593,070
7
§ 102(b) as being anticipated by each of Seitz and Collier
will not be sustained.
We next look to the examiner’s rejection of claims 1
through 3, 8 and 15 through 17 under 35 U.S.C. § 103 as being
unpatent-able over Seitz in view of Lineweber and Kusta. In
this instance, we see no way that one of ordinary skill in the
art would have been led to make any combination of the totally
disparate rail-road car hatch cover of Seitz and the seal ring
arrangements of Lineweber and Kusta so as to arrive at a cover
for a “standard open head container” as in appellant’s claim 1
on appeal. In this regard, we are of the view that the
examiner’s position is based on impermissible hindsight
gleaned from appellant’s own disclosure and not from any fair
teaching or suggestion found in the applied prior art
references themselves.
More specifically, we consider that the examiner has used
appellant’s own disclosure and the claimed invention itself as
a blueprint for piecing together unrelated elements from
Appeal No. 98-2446
Application 08/593,070
8
disparate
references in the prior art so as to defeat patentability of
the invention as defined in appellant’s claims 1 through 3, 8
and 15 through 17 on appeal. Thus, the examiner's rejection
of those claims under 35 U.S.C. § 103 based on Seitz,
Lineweber and Kusta will not be sustained.
Turning now to the examiner's rejection of claims 4
through 7 and 9 through 13 under 35 U.S.C. § 103 based on
Seitz, Lineweber, Kusta and Green, and the rejection of claim
14 under 35 U.S.C. § 103 based on Seitz, Lineweber, Kusta,
Green and Collier, we find nothing in the added teachings of
either Green or Collier which would overcome or provide for
that which we have indicated above to be lacking in the basic
combination of Seitz, Lineweber and Kusta. Accordingly, we
will not sustain the examiner’s rejection of claims 4 through
7 and 9 through 13 under 35 U.S.C. § 103, or that of claim 14
under 35 U.S.C. § 103.
Appeal No. 98-2446
Application 08/593,070
9
In summary: none of the examiner’s rejections before us
on appeal has been sustained. Thus, the decision of the
examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
vsh
Appeal No. 98-2446
Application 08/593,070
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