Ex parte Von Holdt

Board of Patent Appeals and Interferences

May 22, 2000

08145867 (B.P.A.I. May. 22, 2000)

The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN W. VON HOLDT
____________
Appeal No. 1997-4013
Application No. 08/145,867
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 26 to 33 and 38 to 40, as amended subsequent to
the final rejection. Claims 1 to 9 and 12 to 24 have been
allowed. Claims 34 to 37 have been objected to as depending
from a non-allowed claim. Claims 10, 11 and 25 have been
canceled.
We REVERSE.
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Application No. 08/145,867
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Application No. 08/145,867
In determining the teachings of Teraoka, we will rely on1
the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a mold for use in a
molding press. A copy of the claims under appeal is set forth
in the appendix to the appellant's reply brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bruder 3,867,080 Feb. 18,
1975
Saumsiegle et al. 4,077,759 March 7,
1978
(Saumsiegle)
Teraoka 61-163820 July 24,1
1986
(Japan)
Claims 38 and 39 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Bruder.
Claims 38 and 39 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Teraoka.
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Claims 26 to 33 and 40 stand rejected under 35 U.S.C. §
103 as being unpatentable over Bruder in view of Saumsiegle.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 18,
mailed May 13, 1997) for the examiner's complete reasoning in
support of the rejections, and to the revised brief (Paper No.
17, filed February 10, 1997) and reply brief (Paper No. 19,
filed July 17, 1997) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejections
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Application No. 08/145,867
We will not sustain the rejection of claims 38 and 39
under 35 U.S.C. § 102(b) as being anticipated by Bruder.
Likewise, we will not sustain the rejection of claims 38 and
39 under
35 U.S.C. § 102(b) as being anticipated by Teraoka.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991). In addition, it is well established
that an anticipation rejection cannot be predicated on an
ambiguous reference. Rather, statements and drawings in a
reference relied on to prove anticipation must be so clear and
explicit that those skilled in the art will have no difficulty
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The law of anticipation does not require that the2
reference teach what the appellant is claiming, but only that
the claims on appeal "read on" something disclosed 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)).
in ascertaining their meaning. See In re Turlay, 304 F.2d
893, 899, 134 USPQ 355, 360 (CCPA 1962).
With regard to claim 38, the appellant argues (revised
brief, pp. 15-18; reply brief, pp. 6-7) that both Bruder and
Teraoka lack the claimed leader pins (i.e., "a pluarality of
leader pins which extend through corresponding holes [in] each
of said first, second and third plates for support of said
first runner plate, said leader pins extending from said
second mold core plate to said third mold core plate in a
mold-open position"). The examiner's position with regard to
the leader pins limitations of claim 38 is that these
limitations are readable on Bruder's guide pins 50 and2
Teraoka's tie-bars 1a.
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Bruder does not anticipate claim 38 since the claimed
leader pins are not readable on Bruder's guide pins 50. In
that regard, Bruder does not disclose that his guide pins 50
extend from the second mold core plate to the third mold core
plate in the mold-open position. Likewise, Bruder does not
disclose that his guide pins 50 extend through corresponding
holes in each of the second and third plates for support of
the first runner plate. While Figure 3 of Bruder does
illustrate one of the guide pins 50, Bruder does not discuss
the actual length of the guide pins 50. Thus, we cannot, with
any degree of certainty, ascertain whether the leader pins as
recited in claim 38 are readable on Broder's guide pins.
Under these circumstances we cannot agree with the examiner
that Broder anticipates the subject matter of claim 38.
Teraoka does not anticipate claim 38 since the claimed
leader pins are not readable on Teraoka's tie-bars 1a. In
that regard, Teraoka does not disclose that his tie-bars 1a
extend through corresponding holes in each of the second and
third plates for support of the first runner plate. While
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Figures 1 and 2 of Teraoka do illustrate the tie-bars 1a,
Teraoka does not discuss whether or not the tie-bars 1a extend
through corresponding holes in the second and third plates
(i.e., that the tie-bars extend through holes in the female
molds 3). Thus, we cannot, with any degree of certainty,
ascertain whether the leader pins as recited in claim 38 are
reader on Teraoka's tie-bars 1a. Under these circumstances we
cannot agree with the examiner that Teraoka anticipates the
subject matter of claim 38.
For the reasons set forth above, the decision of the
examiner to reject claim 38, and claim 39 which depends
therefrom, under 35 U.S.C. § 102(b) is reversed.
The obviousness rejection
We will not sustain the rejection of claims 26 to 33 and
40 under 35 U.S.C. § 103. Upon evaluation of all the evidence
before us (i.e., the applied prior art), it is our conclusion
that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness.
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In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
In this case, we agree with the appellant's argument
(revised brief, pp. 13-15 & 19; reply brief, pp. 4-6) that the
applied prior art does not suggest the claimed subject matter.
All the claims subject to the rejection under 35 U.S.C.
§ 103 require the first, second and third plates be generally
rectangular but having at least one projection as set forth in
claim 26 or claim 40. While Saumsiegle does teach a plate
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having the claimed shape, it is our view that Saumsiegle would
not have
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suggested modifying the plates of Bruder absent the use of
hindsight knowledge derived from the appellant's own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the
examiner to reject claims 26 to 33 and 40 under 35 U.S.C. §
103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 38 and 39 under 35 U.S.C. § 102(b) is reversed and the
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decision of the examiner to reject claims 26 to 33 and 40
under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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ALLEGRETTI & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
CHICAGO, IL 60606
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