Ex parte SYTEMA

Board of Patent Appeals and Interferences

Nov 30, 1998

08064440 (B.P.A.I. Nov. 30, 1998)

Application for patent filed May 21, 1993. 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journal and (2) is not binding precedent of the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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HERMAN SYTEMA
____________
Appeal No. 95-4371
Application No. 08/064,4401
____________
HEARD November 4, 1998
____________
Before McCANDLISH, Senior Adminstrative Patent Judge, PATE and
NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3 through 7, 9, 12, 13, 15, 17, 20, 25,
26 and 28. The only other claims still pending in the
Appeal No. 95-4371
Application No. 08/064,440
The copy of claim 20 in the appendix to appellant’s2
brief is incorrect. This claim is dependent from claim
17, not claim 12.
2
application have been withdrawn from consideration as not
being directed to the elected invention.
The invention disclosed in appellant’s application
relates to a belt assembly having a toothed belt and at least
one unit attached to the belt. According to appellant’s
specification, the unit comprises a carrier for advancing an
article such as a piece of mail S along a track T. In some of
the illustrated embodiments (see, for example Figure 14 for
appellant’s drawings) the unit acts as a connector for joining
free ends of the belt together to form an endless belt
structure.
Claims 1, 3 though 7, 9, 12, 13 and 15 are directed to
the belt assembly comprising the combination of the belt and
the unit. Claims 17, 20, 25, 26 and 28 are directed to the
unit per se.
A copy of the appealed claims is appended to
appellant’s brief.2
Appeal No. 95-4371
Application No. 08/064,440
Translation attached.3
3
The following references are relied upon by the
examiner in support of his rejections under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103:
Rost et al. (Rost) 2,687,209 Aug. 24, 1954
Garden 3,274,707 Sept. 27, 1966
German Patent
(Feighofen) 803,689 Apr. 9, 19513
Russian Patent
(Bogomazov) 1,668,225 Aug. 7, 19913
The grounds of rejection are as follows:
1. Claims 1, 3 through 7 and 9 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Feighofen (the cited
German reference).
2. Claims 12 and 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Feighofen in view of Rost.
3. Claim 15 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Feighofen in view of Rost and Garden.
4. Claims 17 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Feighofen in view of Bogomazov (the
cited Russian reference).
Appeal No. 95-4371
Application No. 08/064,440
4
5. Claims 25 and 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over Feighofen in view of Bogomazov and
Rost.
6. Claim 28 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Feighofen in view of Bogomazov, Rost
and Garden.
Reference is made to the examiner’s answer for details of
these rejections.
Considering first the § 102(b) rejection of claim 1, it
is well establish patent law that for a reference to be
properly anticipatory, each and every element of the rejected
claim must be found either expressly described or under the
principles of inherency in the applied reference. See RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ. 385, 388 (Fed. Cir. 1984).
In the present case, the Feighofen reference discloses a
connector which is fastened to a V-belt for joining the free
ends b of the belt together to form an endless belt structure.
In the embodiment shown in Fieghofen’s Figure 1, the connector
comprises a pair of clamping plates d, a central filler member
a and a connecting screw or tie rod c. Each of the belt ends b
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Application No. 08/064,440
5
is confined between the central filler member and an adjacent
clamping plate. The connecting screw cooperates with a pair of
nuts to secure the belt ends in place. In the embodiment of
Figure 1, the narrow side of the V-belt is shown to have a
series of projections resembling teeth of uniform pitch. These
projections are described on page 5 of the accompanying
translation as defining a “waved contour” which interlock with
a corresponding configuration on the central filler member.
In support of patentability, appellant argues on page 10
of the main brief that Feighofen does not disclose that the
waved contours or profiles on the belt “function as teeth for
driving the belt.” Instead, appellant contends that the waved
profiles simply function to impart “flexibility to the belt.”
In further support of his position, appellant argues on
page 11 of the main brief that Feighofen “does not, therefore,
disclose a toothed belt, [sic] or, accordingly a unit fastened
on a toothed belt that retains belt teeth in adjacent portions
one [sic] either side of the unit as a whole multiple of the
pitch of successive teeth of each belt portion.” In addition,
appellant further contends on page 11 of the main brief that
Feighofen “does not disclose or suggest a device that
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6
positions ends of a toothed belt so that a tooth pitch
spanning across connected belt sections has a tooth pitch
[sic, has a value?] in a whole multiple of the pitch of the
belt teeth.”
The only other feature argued as a distinction over
Feighofen relates to the recitation of a “unit” in claim 1. At
oral hearing, appellant’s counsel argued that a unit is an
integral or one piece structure and thus differs from
Feighofen’s multi piece structure. Although this argument was
not made in either of appellant’s briefs with regard to claim
1, we will nevertheless consider it along with the other
arguments outlined supra.
Considering first the issue pertaining to teeth on the
belt, it is well established patent law that during patent
examination, claim language is given its broadest reasonable
interpretation consistent with appellant’s specification. See
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). It is also well established patent law that words
in a claim are to be given their ordinary and accustomed
meaning unless it appears that the inventor used them
differently in his specification. Lantech, Inc. v. Keip
Appeal No. 95-4371
Application No. 08/064,440
7
Machine Company, 32 F.3d 542, 546, 31 USPQ2d 1666, 1670 (Fed.
Cir. 1994).
According to its applicable, common ordinary meaning in
Webster’s Third New International Dictionary (G. & C. Merriam
Company, 1971) the word “tooth” is defined as a projection
resembling or suggesting a tooth. The projections on
Feighofen’s belt clearly resemble teeth. Thus, when the claim
language is given its broadest reasonable interpretation, the
recitation in claim 1 that the belt has a “toothed surface”
does not distinguish from Feighofen’s belt.
Admittedly, Feighofen does not disclose his teeth-like
projections as being driving teeth as argued on page 10 of the
main brief. However, claim 1 does not recite that the teeth on
the belt drive the belt or are driving teeth in any sense. In
short, features not claimed may not be relied upon to support
patentability. See In re Self, 671 F.2d 1344, 1348, 213 USPQ
1, 5 (CCPA 1982) and In re Richards, 187 F.2d 643, 645, 89
USPQ 64, 66 (CCPA 1951). We even fail to find any description
in appellant’s specification that the teeth on the belt drive
the belt.
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8
With regard to appellant’s argument concerning the pitch
of the teeth as set forth on page 11 of the main brief, claim
1 does not refer to any pitch or other distance “spanning
across connected belt sections.” Once again, features not
claimed may not be relied upon to support patentability. Id
Furthermore, appellant’s use of the term “pitch” in his
arguments does not appear to be in accord with its applicable
dictionary definition. According to Webster’s Third New
International Dictionary (G. & C. Merriam Company, 1971), the
word “pitch” is defined as the distance between a point on one
tooth and a corresponding point “on the next tooth” (emphasis
added). Given this definition of the word “pitch,” the
recitation in claim 1 that the pitch between teeth on one belt
portion and the pitch between teeth on the other belt portion
is “a whole multiple of the pitch of successive teeth of each
belt portion” does not distinguish from Feighofen’s belt,
inasmuch as the pitch between the teeth-like projections on
one of Feighofen’s two belt portions b and the pitch between
teeth-like projections on the other of the two belt portions b
are shown in Figure 1 of Feighofen’s drawings to be a whole
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9
multiple, namely a multiple of one, of the pitch of successive
teeth-like projections on each belt portion.
With regard to appellant’s argument concerning the
recitation of a unit in claim 1, we find nothing in the
applicable definition of this word (namely, a piece or complex
of apparatus serving to perform a particular function) that
limits a unit to an integral or one-piece structure.
Furthermore, appellant’s argument is even contradicted by his
own specification. According to the embodiment of Figures 11
and 12, the unit is a two-piece structure. Yet, it is
unequivocally described on pages 10 and 15 of the
specification as being a “unit.” It is noted that claim 1
broadly calls for a unit without any limitation as to its
function as a carrier for any purpose.
Based on the foregoing analysis, we are satisfied that
Feighofen expressly or inherently discloses all of the
limitations of claim 1 to anticipate the subject matter of
claim 1. Accordingly, we will sustain the § 102(b) rejection
of claim 1.
With regard to dependent claim 5, Feighofen’s belt ends b
are shown in Figure 1 to diverge away from each other in the
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sense that they extend in different directions from each other
like the branches of a Y (see Webster’s Third New
International Dictionary (G. & C. Merriam Company, 1971)).
Thus, we will also sustain the § 102(b) rejection of claim 5
inasmuch as the subject matter encompassed by this claim is
also anticipated by Feighofen.
In addition, we will sustain the § 102(b) rejection of
dependent claim 7. Contrary to appellant’s argument on pages
11 and 12 of the main brief, the space between Feighofen’s
central filler member and each clamping plate is a channel,
such that two channels are formed in Feighofen’s connecting
structure for receiving the belt end portions b. The open
flanks of these channels are clearly capable of enabling the
belt end portions to be slipped into and out of the unit which
is all that is required to meet the terms of claim 7. See,
inter alia, Standard Havens Products, Inc. v. Gencor
Industries, Inc., 953 F.2d 1360, 1370, 21 USPQ2d 1321, 1328-
29 (Fed. Cir. 1991).
We will also sustain the § 102(b) rejection of claims 3
and 4 because these claims have not been argued separately of
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11
claim 1, contrary to appellant’s statement on page 1 of the
reply brief.
We cannot sustain the § 102(b) rejection of claims 6 and
9. Although Feighofen’s belt ends b diverge from each other,
they do not extend in opposite directions to thus lie
diametrically opposite from each other as required by claim 6.
With regard to claim 9, Feighofen’s unit does not have an
underside facing the belt in an arrangement in which the belt-
receiving channels extend from that underside to be form-
closed in the longitudinal direction.
With regard to claim 12, which is rejected under § 103,
the recitation that the unit “comprises a carrier” does not
distinguish the claimed structure from Feighofen since
Feighogen’s connector unit is inherently capable of
functioning as a “carrier.” Claim 13 also does not distinguish
from Feighofen since an integral part of one of Feighofen’s
clamping plates is inherently capable of functioning as a
“carrier.” For these reasons we will sustain the § 103
rejection of claims 12 and 13, it being noted that the
rejection of these claims under § 103 is nonetheless proper
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12
since anticipation is the epitome of obviousness. See In re
May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
We will also sustain the § 103 of dependent claim 15. The
recitation of the supporting member does not distinguish from
the horizontally extending, lower belt-engaging end portion of
either of Feighofen’s clamping plates. Like the rejection of
claims 12 and 13, the § 103 rejection of claim 15 is also
proper. Id.
Finally, we must reverse the § 103 rejections of claims
17, 20, 25, 26 and 28. Independent claim 17 requires the belt
supporting contours to diverge in substantially opposite
directions such that at least a part of the bent belt is
supported in a position parallel to the belt path. The
Bogomazov reference, which is relied upon by the examiner for
a suggestion of this feature, discloses a connector for
joining together the free ends of what is described as a
“cable belt” having what appears to be a cable extending
through a belt portion 4. The exposed ends of the cable are
directed outwardly and are reversally bent by engagement with
a cover plate 2 to extend parallel to the horizontal belt
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flight so as to be clamped between plate 2 and structural
members 1.
We cannot agree with the examiner’s position (see page 6
of the answer) that, in substance, one of ordinary skill in
the art would have been motivated to substitute Bogomazov’s
clamping arrangement for Feighofen’s belt fastening structure
simply because the applied references are concerned with
devices for connecting the ends of a belt together. There is
nothing in the prior art to suggest such a complete
reconstruction of Feighofen’s connector. Indeed, the only way
the examiner could have arrived at his conclusion of
obviousness is through hindsight based on appellant’s
teachings. Hindsight analysis, however, is clearly improper.
In re Deminski, 796 F.2d 436, 443, 230 USPQ 313, 316 (Fed.
Cir. 1986).
The examiner’s decision rejecting the appealed claims is
affirmed with respect to claims 1, 3 though 5, 7, 12, 13 and
15, but is reversed with respect to claims 6, 9, 17, 20, 25,
26 and 28.
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Application No. 08/064,440
14
No period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
HEM/jlb
Appeal No. 95-4371
Application No. 08/064,440
15
Ronald L. Grudziecki
Burns, Doane, Swecker & Mathis
The George Mason Building
Washington & Prince Sts., P.O. Box 1404
Alexandria, VA 22313-1404