Ex parte Steffen

Board of Patent Appeals and Interferences

Jul 15, 1999

08732285 (B.P.A.I. Jul. 15, 1999)

Application for patent filed October 28, 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publication in a law journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FRIEDHELM STEFFEN
__________
Appeal No. 99-0210
Application 08/732,2851
___________
ON BRIEF
___________
Before McCANDLISH, Senior Administrative Patent Judge, MEISTER
and ABRAMS, Administrative Patent Judge.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 13-33, which constitute all of the
claims remaining of record in the application.
Appeal No. 99-0210
Application 08/732,285
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The appellant's invention is directed to an elastic
sealing apparatus for use in mounting a window glass or the
like. The
invention is illustrated by reference to claim 13, which reads
as follows:
13. An elastic sealing apparatus comprising an anchoring
wedge, a profiled base connected to the anchoring wedge, a
sealing pad provided on the profiled base, and a sealing lip
adjacent the sealing pad and the profiled base.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Kautschuk 8534283.1 Mar. 4, 1986
(German Patent)
Frisoplast 9207608.4 Aug. 10, 1992
(German Patent)
THE REJECTIONS
Claims 13-33 stand 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 the
appellant regards as the invention.
Appeal No. 99-0210
Application 08/732,285
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Claims 13 and 15-26 stand rejected under 35 U.S.C. §
102(b) as being anticipated by German ‘283.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over German ‘283.
Claims 27-33 stand rejected under 35 U.S.C. § 103 as
being unpatentable over German ‘283 in view of German ‘608.
The rejections are explained in the Examiner’s Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
The Rejection Under 35 U.S.C. § 112, Second Paragraph
The first portion of this rejection is directed to claims
13-33 and states, in its entirety (Answer, page 4):
Sufficient structure of the various elements has not
been provided. The elements have merely been listed
in the claims.
We do not agree with the examiner’s conclusion. From our
perspective, the structure and interrelationship of structure
are sufficient to define the invention. The claims may be
broad, but broadness does not, in and of itself, constitute
Appeal No. 99-0210
Application 08/732,285
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indefiniteness. We will not sustain this portion of the
Section 112 rejection.
The examiner also holds claim 15 to be indefinite because
“it cannot be determined whether appellant intends to claim
the subcombination of a sealing apparatus, or a sealing
apparatus in combination with a closure” (Answer, page 4). We
see no reason why including in the elastic sealing apparatus a
semi-finished enclosure having a groove causes the claim to
become indefinite, for it simply adds structure and therefore
narrows the scope. From our perspective, the scope of the
claim is clear. This portion of the rejection is not
sustained.
We also will not sustain the portion of this rejection
that is applied against claim 22. The appellant has defined
element 3 as a profile[d] base and element 11 as a ridge. In
Figure 1 the base is horizontal. In Figure 2 it is bent
outward (downward, as shown) in the direction of the anchoring
wedge, which enlarges the two chambers at the expense of the
hollow portion of the anchor. We do not agree that this
language cannot be understood.
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Application 08/732,285
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As for claim 23, we agree with the examiner that “the
nose strip” lacks antecedent basis, and therefore we will
sustain the Section 112 rejection against this claim.
We find ourselves in agreement with the appellant,
however, that the “cores” recited in claim 30 are different
from the reinforced walls of claim 28, as explained on pages
10 and 11 of the specification, and therefore this is not a
valid ground for a rejection on the basis of indefiniteness.
This portion of the rejection is not sustained.
In summary, only the rejection of claim 23 under Section
112 is sustained.
The Rejection Under 35 U.S.C. § 102(b)
Claims 13 and 15-26 stand rejected as being anticipated
by German ‘283. 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-
81, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Anticipation by a prior art reference does not require either
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Application 08/732,285
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the inventive concept of the claimed subject matter or
recognition of inherent properties that may be possessed by
the reference. See Verdegaal Bros. Inc. v. Union Oil Co. Of
California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.)
cert. denied, 484 U.S. 827 (1987). The law of anticipation
does not require that the reference teach what the applicant
is claiming, but only that the claim 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). It is only
necessary that the reference include structure capable of
performing the recited function in order to meet the
functional limitations of the claim. See In re Mott, 557 F.2d
266, 269, 194 USPQ 305, 307 (CCPA 1977).
It is our view that the subject matter of claims 13, 15,
17-21 and 26 is anticipated by the seal disclosed in this
reference, while that of claims 16, 22-25 is not. In this
regard, we consider that in Figure 2 the reference shows an
anchoring wedge 7, a profiled base 5, a sealing pad 6 separate
from and parallel to a sealing lip 11 (claims 13 and 20), a
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closure having a groove 9 (claim 15), a separate hollow
chamber in the sealing pad (the unnumbered lower chamber;
claims 17, 19 and 21), a separate hollow chamber in the
sealing lip (the unnumbered upper chamber; claims 18, 20 and
21), and a foot 8 in the anchoring wedge (claim 26).
The examiner has not provided us with an explanation of
how the subject matter recited in claims 16 and 22-25 can be
read upon the seal disclosed in German ‘283, and we are at a
loss to determine this on our own. We therefore will not
sustain the Section 102 rejection of these claims.
The Rejections Under 35 U.S.C. § 103
A prima facie case of obviousness is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). This is not to say, however, that the
claimed invention must expressly be suggested in any one or
all of the references, rather, the test for obviousness is
what the combined teachings of the references would have
suggested to one of ordinary skill in the art (see Cable Elec.
Prods. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881,
Appeal No. 99-0210
Application 08/732,285
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886-87 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference (see In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)),
with skill being presumed on the part of the artisan, rather
than the lack thereof (see In re Sovish, 769 F.2d 738, 742,
226 USPQ 771, 774 (Fed. Cir. 1985)). Insofar as the
references themselves are concerned, we are bound to consider
the disclosure of each for what it fairly teaches one of
ordinary skill in the art, including not only the specific
teachings, but also the inferences which one of ordinary skill
in the art would reasonably have been expected to draw
therefrom (see In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968)).
Claim 14 stands rejected as being unpatentable over
German ‘283. It is the examiner’s position that the use of
thermoplastic rubber material for the elastic sealing
apparatus, the feature added to claim 13 by claim 14, would
have been obvious to one of ordinary skill in the art. We
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agree, considering that the applied reference teaches using
plastic elastomers (translation, page 4) and the appellant
admits on page 1 of the specification that prior art seals
were made of “microcellular rubber or some similar material
that when positioned against the glass pane will press against
it sufficiently.” We also take note that the claimed material
would have suggested itself to one of ordinary skill in the
art on the basis of the known advantages thereof, skill being
presumed on the part of the artisan, rather than the lack
thereof. See In re Sovish, supra.
Claims 27-33 stand rejected as being unpatentable over
German ‘283 in view of German ‘608. Claim 27 adds to claim 26
(which depends from claim 13) the additional requirement that
the foot recited in claim 26 is “open on a side opposite that
of the profiled base.” German ‘608 is directed to a
supporting insulation for windows, doors or the like. It is
the examiner’s view that it would have been obvious to utilize
an open foot instead of the closed one disclosed in German
‘283 in view of the teachings of German ‘608. We agree,
observing that German ‘608 states on page 10 of the
translation that the use of an opening (notch 13) in the
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anchor (foot) allows it to be “forced with relative ease into
the supporting groove,” which would have been explicit
suggestion to one of ordinary skill in the art to make the
modification. The subject matter of claims 13 and 26, from
which claim 27 depends, having been disclosed in German ‘283,
the addition of the teachings of German ‘608 establishes a
prima facie case of obviousness with regard to the subject
matter recited in claim 27, and we shall sustain this
rejection.
Claim 28, which also depends from claim 26, states that a
foot is provided on a wall of the anchoring wedge and that the
wall is reinforced with a plastic having a high Shore
hardness, and claim 29 further requires that the wall be of a
40 D/60 A plastic material. German ‘608 teaches that the legs
should consist of a material that is “substantially harder”
than the material of the rest of the seal, which provides
several improvements (translation, pages 3 and 14). It is our
view that one of ordinary skill therefore would have found it
obvious to reinforce the foot with a harder material such as
is recited in claim 28, and thus we will sustain the
rejection of claim 28. It is our further view that it then
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Application 08/732,285
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follows that the selection of the particular material recited
in claim 29 would have been within the purview of one of
ordinary skill in the art, and we also will sustain the
rejection of claim 29.
We will not, however, sustain the rejection of claim 30,
which depends from claim 28, or of claims 31-33, which depend
from claim 30. Claim 30 requires that there be cores in the
wall and foot of hard, stretch-proof material. This structure
is not taught by the applied references, and therefore they do
not establish a prima facie case of obviousness with respect
to these claims.
In arriving at the conclusions set forth above, we have
carefully considered all of the arguments advanced by the
appellant. However, as to those rejections that we have
sustained, the appellant has not persuaded us that the
positions taken by the examiner were in error. With regard to
the argument suggesting that the examiner utilized hindsight
in combining the references, any judgment on obviousness is in
a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
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Application 08/732,285
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claimed invention was made, and does not include knowledge
gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971). In those cases
where we have sustained the examiner’s rejections, we have
pointed out where suggestion was found in the references or in
the skill that must be attributed to the artisan.
SUMMARY
The rejection of claim 23 under 35 U.S.C. § 112, second
paragraph, is sustained.
The rejection of claims 13-22 and 24-33 under 35 U.S.C.
§ 112, second paragraph, is not sustained.
The rejection of claims 13, 15, 17-21 and 26 under 35
U.S.C. § 102(b) is sustained.
The rejection of claims 16 and 22-25 under 35 U.S.C.
§ 102(b) is not sustained.
The rejection of claim 14 under 35 U.S.C. § 103 is
sustained.
The rejection of claims 27-29 under 35 U.S.C. § 103 is
sustained.
Appeal No. 99-0210
Application 08/732,285
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The rejection of claims 30-33 under 35 U.S.C. § 103 is
not sustained
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 99-0210
Application 08/732,285
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