Ex Parte Trott

Board of Patent Appeals and Interferences

Jul 22, 2002

09130383 (B.P.A.I. Jul. 22, 2002)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte SAUNDRA TROTT
______________
Appeal No. 2000-2168
Application 09/130,383
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1-3.
Representative claim 1 is reproduce below:
1. A guard to prevent water from splashing on cabinetry
including a sink, said cabinetry including a horizontal counter
top mounting the sink, vertically disposed cabinet faces disposed
below the counter top and a counter top lip projecting forwardly
of the cabinet faces, the sink having a near boundary dimension,
the guard comprising:
Appeal No. 2000-2168
Application 09/130,383
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a panel having a longitudinal dimension substantially co-
extensive with the near boundary dimension of the sink, a
longitudinally extending, horizontal upper margin to overlay the
lip and disposed at an acute angle relative to the panel and a
trough at the lower margin to, when the panel is attached to the
lip to direct the panel rearwardly to locate the trough adjacent
the cabinet faces; and
means for temporarily securing the panel to dispose the
upper margin co-extensive and proximate the sink near boundary to
position the panel over the cabinetry faces.
The following references are relied on by the examiner:
Gray 1,234,658 July 24, 1917
Piper 1,857,328 May 10, 1932
Laird 4,620,332 Nov. 4, 1986
Carroll 5,381,564 Jan. 17, 1995
Independent claims 1 and 3 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Piper or Carroll or Gray. Claim
2 stands rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner relies upon Carroll in view of Laird
for one rejection, with an additional rejection based upon Gray
in view of Carroll, further in view of Laird.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
Appeal No. 2000-2168
Application 09/130,383
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OPINION
For the reasons set forth by the examiner in the answer, we
sustain each of the three rejections of independent claims 1 and
3 under 35 U.S.C. § 102 but, on the other hand, we reverse both
rejections of dependent claim 2 under 35 U.S.C. § 103.
For each of the rejections of claims 1 and 3 under 35 U.S.C.
§ 102, the examiner provides detailed correspondence to the
elements recited in representative claim 1 as taught and shown in
Piper, Carroll and Gray at pages 4-6 of the answer. Inasmuch as
we agree with this correspondence, we see no need to repeat the
examiner's position here. Similarly, we are in agreement with
the examiner's positions set forth at pages 7 and 8 of the answer
which are in response to appellant's arguments set forth with
respect to these rejections at pages 4-6 of the brief.
Like the examiner, we agree with the examiner's assessment
that the subject matter of the independent claims 1 and 3 on
appeal essentially sets forth only the claimed guard per se with
the other features that are recited in the claims being merely of
an intended use. To expand upon this reasoning, we note that in
the representative independent claim 1 preamble, the features
relating to the cabinetry are recited in the present tense,
whereas the use of the guard in association with the cabinetry
Appeal No. 2000-2168
Application 09/130,383
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in the preamble is recited merely in the future tense such as by
the use of the words "to prevent" at line one of claim 1. The
preamble ends with the recitation of "the guard comprising." The
body of the claim does recite the guard's features in the present
tense including the panel itself comprising the guard, the upper
margin thereof along with its associated acute angle, the trough
in the lower margin of the panel and a broadly defined means for
temporarily securing the panel. However, even as each of the
features recited with respect to the guard itself are recited in
the present tense, their respective relationship to the details
of the cabinetry recited in the preamble are recited in a
potential or future tense such as by the use of the words "to
overlay"; "when the panel is attached to the lip, to direct";
"for temporarily securing"; "to dispose"; and "to position." As
asserted by the examiner in the answer, representative claim 1
defines, positively, the features of the guard per se, and not
any present tense interaction of it with the cabinetry itself as
set forth in the preamble. The interactions recited are
futuristic and may never occur. The guard itself is claimed in
the body of the claim only in the context or environment of use
of the sink or cabinetry of the preamble. Correspondingly, there
is no positive recitation in representative claim 1 on appeal of
Appeal No. 2000-2168
Application 09/130,383
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the features of the cabinetry and sink to the guard. Signifi-
cantly, appellant's arguments as to each of the three rejections
under 35 U.S.C. § 102 do not traverse any of the examiner's
positions relative to the intended use of the claimed guard.
A different intended use of the same structure as in the
prior art does not prohibit a statutory anticipation rejection,
for example. Indeed, it has been stated by our reviewing court
that "the absence of a disclosure relating to function does not
defeat the Board’s finding of anticipation. It is well settled
that the recitation of a new intended use for an old product does
not make a claim to that old product patentable (case citations
omitted)." In re Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997). The court concludes at 128 F.3d 1477,
44 USPQ2d 1431-32, that "Schrieber’s contention that his
structure will be used to dispense popcorn does not have
patentable weight if the structure is already known, regardless
of whether it has ever been used in any way in connection with
popcorn (emphasis added)." Such reasoning obviously applies to
rejections under 35 U.S.C. § 103. Schrieber confirms the
guidance provided in Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat.
App. & Int. 1987), that a recitation with respect to the manner
in which a claimed apparatus is intended to be employed does not
Appeal No. 2000-2168
Application 09/130,383
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differentiate the claimed apparatus from a prior art apparatus
satisfying the claimed structural limitations. Note also
Ex parte Wikdahl, 10 USPQ2d 1546, 1548 (Bd. Pat. App. & Int.
1989) and In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238, CCPA
1967).
We therefore sustain the rejection of claims 1 and 3 as
being anticipated under 35 U.S.C. 102 by Piper, and by Carroll,
and by Gray, separately.
On the other hand, we do not sustain the rejection of
dependent claim 2 under 35 U.S.C. § 103. Even if we were to
agree with the examiner's position as to the combinability of
Laird with Carroll, and with the separate combinability of Gray
in view of Carroll, further in view of Laird, we would not have
arrived at the subject matter of dependent claim 2 on appeal. We
are in agreement with appellant's position set forth at pages 8
and 9 of the brief that none of the respective references relied
on by the examiner to reject dependent claim 2 under 35 U.S.C.
§ 103 contain any teaching or suggestion of the securing means at
the end of independent claim 1 on appeal comprising a hook and
pile fastener.
We also cannot agree either with the examiner's assertion
with respect to Laird's teaching as applicable to Carroll and in
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Application 09/130,383
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turn applicable to the combination with Gray, that Laird's
teaching of contact adhesive in any way indicates a hook and pile
fastener. As such, we do not agree with the examiner's view
expressed at page 6 of the answer that "a hook and pile fastener
is one type of contact adhesive." Essentially, the examiner's
reasoning is based on backward reasoning and therefore improper
hindsight because the examiner has not taken prospectively the
teachings in Laird of contact adhesive to persuasively indicate
to us along with any other teachings and suggestions of all the
other references in combination for each of these rejections
under 35 U.S.C. § 103 of a hook and pile fastener. The
examiner's reasoning just quoted is reversed from what an
acceptable line of reasoning must be within 35 U.S.C. § 103. As
stated, it is clearly based upon prohibited hindsight.
In view of the foregoing, we have sustained the rejection of
independent claims 1 and 3 on appeal. We have reversed the
rejection of dependent claim 2 under 35 U.S.C. § 103. As such,
the decision of the examiner rejecting claims 1-3 on appeal is
affirmed-in-part.
Appeal No. 2000-2168
Application 09/130,383
8
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
James D. Thomas )
Administrative Patent Judge )
)
)
)
Kenneth W. Hairston ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )

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