Ex Parte Wise

Board of Patent Appeals and Interferences

Sep 24, 2008

10391540 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte ROBERT W. WISE 8
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Appeal 2008-4085 11
Application 10/391,540 12
Technology Center 3600 13
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Decided: September 24, 2008 16
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and FRED A. 19
SILVERBERG, Administrative Patent Judges. 20
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SILVERBERG, Administrative Patent Judge. 22
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DECISION ON APPEAL 25
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STATEMENT OF THE CASE 27
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 28
of claim 3. This is the only claim remaining in the application. We have 29
jurisdiction under 35 U.S.C. § 6(b) (2002).30
Appeal 2008-4085
Application 10/391,540

2
Appellant invented a mobile saw stand comprising a substantially 1
hand-truck shaped main frame, wherein the hand-truck shaped main frame 2
has a bed movable between a stowed position and a raised position. 3
The only claim under appeal reads as follows: 4
3. A mobile saw stand, comprising: 5
a substantially hand-truck shaped main frame having a 6
handle portion and a distal bottom end portion including a pair 7
of wheels rotatably connected to the bottom end portion for 8
transporting the stand; 9
a pair of swing out legs pivotally connected to the main 10
frame adjacent to the handle portion, the legs being movable 11
between a stowed position and a raised position with respect to 12
the main frame; 13
a bed pivotally connected to the main frame adjacent to the 14
handle portion for removably receiving a powered saw, the bed 15
being movable between a stowed position and a raised position 16
with respect to the main frame; and 17
a movable bed support for selectively supporting the bed in 18
a raised position and in a stowed position with respect to the 19
main frame, wherein the bed support has one end pivotally 20
connected to the main frame and a distal end slidably connected 21
to the bed, whereby the powered saw is usable on the bed in 22
either the raised or stowed position, and wherein the wheels are 23
rotatably connected to the bottom end portion by an elongated 24
axle and wherein the one end of the movable bed support is 25
pivotally connected to the main frame by being rotatably 26
connected about the axle. 27
28
The Examiner rejected claim 3 under 35 U.S.C. § 102(b) (2002). 29
The prior art relied upon by the Examiner in rejecting the claim on 30
appeal is: 31
Lewallen US 4,284,286 Aug. 18, 1981 32
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Application 10/391,540

3
Appellant contends that the legs (toe blade extender) 20 cannot be 1
slidably attached to the underside of the table (work surface) 22 (Br. 4, 5). 2
The Examiner contends that the distal or top end of the bed support 20 is 3
slidably connected to the bed 22 by being slidably connected or inserted in 4
the notch 22b (Answer 3). 5
We reverse. 6
7
ISSUES 8
Has Appellant shown that the Examiner erred in rejecting the claim, 9
because Lewallen does not teach a bed support having one end pivotally 10
connected to the main frame and a distal end slidably connected to the bed? 11
12
FINDINGS OF FACT 13
Appellant invented a mobile saw stand 30 having a substantially hand-14
truck shaped main frame 38 having a handle portion 34 and a distal bottom 15
end portion 40 including a pair of wheels 46 rotatably connected to the 16
bottom end portion 40 for transporting the stand. A bed 32 is pivotally 17
connected to the main frame 38 adjacent to the handle portion 34 for 18
removably receiving a table saw (not shown). The bed is movable between 19
a stowed position and a raised position with respect to the main frame 38. A 20
movable bed support consisting of members 48 each for selectively 21
supporting the bed in a raised position and in a stowed position with respect 22
to the main frame 38 are provided. The bed support members 48 each have 23
one end pivotally connected to the main frame 38 at end 40. Each member 24
48 has a distal end slidably connected to an underside of the bed 32 by track-25
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like members 64 connected to the bed 32. In this way, the table saw, other 1
powered saw or the like is usable on the bed in either the raised or stowed 2
position. See also Figures 4b and 4d, which illustrate track-like member 64 3
connected to the underside of bed 32. 4
Lewallen discloses, in Figure 1, a combination handtruck and portable 5
work table comprising a handtruck main frame having a handle portion 14, a 6
pair of wheels 17, a pair of swing out legs 24, a bed (work surface) 22, a 7
movable toe blade extender (bed support) 20 with one end pivotally 8
connected to the main frame in the area of element 21 and a distal end (top 9
edge) 20a (col. 2, l. 26) connected to the bed via a notch 22b (col. 2, ll. 53-10
55 and col. 3, ll. 12-14) in the bottom of the bed and wherein the wheels are 11
rotatably connected to the bottom end portion by an elongated axle 16, 12
wherein the one end of the movable bed support is pivotally connected to the 13
main frame by being rotatably connected about the axle. 14
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PRINCIPLES OF LAW 16
On appeal, Appellant bears the burden of showing that the Examiner 17
has not established a legally sufficient basis for rejecting claim 3 over 18
Lewallen. 19
Anticipation is established only when a single prior art reference 20
discloses, expressly or under the principles of inherency, each and every 21
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., 22
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no 23
difference between the claimed invention and the reference disclosure, as 24
viewed by a person of ordinary skill in the field of the invention. Scripps 25
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 26
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Application 10/391,540

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1991). It is not necessary that the reference teach what the subject 1
application teaches, but only that the claim read on something disclosed in 2
the reference, i.e., that all of the limitations in the claim be found in or fully 3
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 4
218 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). 5
When construing claim terminology in the United States Patent and 6
Trademark Office, claims are to be given their broadest reasonable 7
interpretation consistent with the specification, reading claim language in 8
light of the specification as it would be interpreted by one of ordinary skill in 9
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 10
2004). 11
12
ANALYSIS 13
The Examiner correctly shows where all the claimed elements appear 14
in the Lewallen prior art reference. 15
The Examiner correctly states that Appellant’s argument regarding 16
Lewallen’s work table not being intended to continuously support a heavy 17
load is more specific than the claimed language. 18
The Examiner further states that the distal or top end of the bed 19
support 20 is slidably connected to the bed 22 (work surface) when the bed 20
support 20 distal end is connected or inserted in the notch 22b upon 21
movement from a stowed position to a raised position (Answer 6). 22
However, Appellant correctly points out that the legs (toe blade extender) 20 23
cannot be slidably attached to the underside of the table (work surface) 22 24
since the working table (work surface) must be over rotated so that the 25
crossbar (toe blade extender) can fit into a detent at the distal end of the 26
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table. We are not persuaded that Lewallen’s connection, that is, the 1
engagement of the distal end portion of the toe blade extender with the notch 2
22b provided in the bottom of the work surface to thereby support the work 3
surface is a slidable connection so as to slidably connect the distal end of the 4
toe blade extender to the work surface 22. Terms in a claim should be given 5
their broadest reasonable interpretation consistent with the specification, 6
reading claim language in light of the specification as it would be interpreted 7
by one of ordinary skill in the art. (See In re Am. Acad. of Sci. Tech. Ctr.). 8
Merriam-Webster’s Collegiate Dictionary (10th ed. 1993) defines the term 9
connect as “to become joined.” Therefore, the term “slidably connected” 10
requires that the distal end of the bed support be joined to the bed in a 11
manner permitting relative sliding between the bed support and the bed 12
during movement between the raised position and the stowed position of the 13
bed, which is consistent with the track arrangement shown in Fig. 4b of 14
Appellant’s application. This is not true of the arrangement shown by 15
Lewallen, in which the bed and bed support do not appear to be slidable 16
relative to one another when joined (connected) (i.e., when top edge 20a is 17
engaged in notch 22b). Accordingly, we determine that the Examiner has 18
not shown all claimed elements were taught by Lewallen. On the record 19
before us, it follows that the Examiner erred in rejecting Claim 3 under 20
§ 102(b) as anticipated by Lewallen. 21
22
CONCLUSION OF LAW 23
On the record before us, Appellant has shown that the Examiner has 24
not shown that Lewallen teaches all of the elements of the claim, that is, a 25
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bed support having one end pivotally connected to the main frame and a 1
distal end slidably connected to the bed. 2
3
DECISION 4
The Examiner's rejection of claim 3 is reversed. 5
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REVERSED 7
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hh 15
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