Ex Parte Bernhardt

Board of Patent Appeals and Interferences

Jan 22, 2004

09017959 (B.P.A.I. Jan. 22, 2004)

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for publication and is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. BERNHARDT
____________
Appeal No. 2002-0962
Application No. 09/017,959
____________
HEARD: Nov. 5, 2003
____________
Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
David A. Bernhardt (appellant) appeals from the examiner’s
final rejection of claims 17-28, all the claims currently pending
in the application.
This is the second appeal to this Board involving the present
application. In a decision mailed January 30, 2001, a merits panel
of this Board affirmed the examiner’s rejection of claims 1-16, all
the claims then pending in the application, under 35 U.S.C.
Appeal No. 2002-0962
Application No. 09/017,959
1This is the same Stevens patent applied against the claims
in the prior appeal.
2
§ 102(b) as being anticipated by U.S. Design Pat. 97,360 to
Stevens, but reversed the examiner’s rejection of claims 1-16 under
the second paragraph of 35 U.S.C. § 112.
Appellant’s invention pertains to a device to be positioned on
a bowler’s index finger to enable the bowler to impart spin to a
bowling ball. The claims on appeal are reproduced in Appendix A of
appellant’s main brief. Independent claim 17 is representative of
the appealed subject matter and reads as follows:
17. A bowling accessory, comprising:
a mechanism for retaining the accessory to a bowler’s
finger;
a pad having one or more projections for contacting a
bowling ball, said pad associated with said retaining mechanism,
and said pad having an arcuate surface, said projections having
desired configuration such that tips of said projections define a
curve which has a curvature substantially like a curvature of the
bowling ball when force is exerted by the bowler on the ball, the
projections flatten providing a larger surface to grip the ball
enabling the bowler to better initiate rotation as the bowling ball
is released.
The sole reference applied in the final rejection is:
Stevens1 Des. 97,360 Oct. 29, 1935
Appeal No. 2002-0962
Application No. 09/017,959
2In the final rejection, claims 17-28 were also rejected
under 35 U.S.C. § 112, second paragraph, however, this rejection
has since been withdrawn. See pages 4 and 6 of the answer.
3
Claims 17-28 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Stevens.2
Reference is made to appellant’s main and reply briefs (Paper
Nos. 25 and 27) and to the final rejection and examiner’s answer
(Paper Nos. 20 and 26) for the respective positions of appellant
and the examiner regarding the merits of this rejection.
Discussion
At the outset, appellant’s statement that claims 17-20 stand
or fall together and that claims 21-28 stand or fall together is
not reflective of the arguments made by appellant in the main and
reply briefs regarding the merits of the examiner’s anticipation
rejection of the appealed claims. Rather, appellant has argued the
examiner’s anticipation rejection without reference to any
particular claim. Thus, the appealed claims will stand or fall as
a group. See In re Wiseman, 596 F.2d 1019, 1021-22, 201 USPQ 658,
660 (CCPA 1979); In re Burckel, 592 F.2d 1175, 1178-79, 201 USPQ
67, 70 (CCPA 1979); In re Hellsund, 474 F.2d 1307, 1309-10, 177
USPQ 170, 172 (CCPA 1973). For purposes of this appeal, we
consider independent claim 17 as representative of appellant’s
Appeal No. 2002-0962
Application No. 09/017,959
4
claimed subject matter, and will decide the appeal on the basis
thereof, with claims 18-28 standing or falling therewith.
The test for anticipation is whether a prior art reference
discloses every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). The law of anticipation does
not require that the reference “teach” what appellant teaches; all
that is necessary is that the claims “read on” something disclosed
in the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
We consider that the Stevens patent, which discloses a finger
toothbrush, meets these requirements. Considering the Stevens
reference in relation to the structure recited in claim 17, Stevens
discloses a mechanism in the form of a body with a central bore for
retaining the device on a wearer’s finger, a pad at the bottom of
the device (as shown in Figs. 1, 2 and 3) having one or more
projections and associated with the retaining mechanism, the pad
having an arcuate surface as shown in Fig. 2. As for the
recitations in claim 17 that the projections are configured “such
that tips of said projections define a curve which has a curvature
substantially like a curvature of the bowling ball when force is
Appeal No. 2002-0962
Application No. 09/017,959
5
exerted by the bowler on the ball” (emphasis added) and that the
projections “flatten providing a larger surface to grip the ball
enabling the bowler to better initiate rotation as the bowling ball
is released,” the examiner states on page 3 of the final rejection
(Paper No. 20):
While it can be argued that one is not certain of the
material of the projections in Stevens, it is clear that
they are not rigid since they are intended to be used on
brushing teeth which would require some degree of
softness. It follows that placing force on the
projections of any type of brush by an object (such as a
bowling ball) would force them to flatten in compressed
and/or bent over fashion.
Appellant does not specifically disagree with the examiner’s
position that the projections of Stevens “are not rigid” and are
required to have “some degree of softness” based on their intended
use for brushing teeth. Appellant also does not specifically
disagree with the examiner’s position that placing force on the
projections of a brush “by an object (such as a bowling ball) would
force them to flatten in compressed and/or bent over fashion.”
Rather, appellant is understood to argue on page 4 of the main
brief and page 1 of the reply brief that Stevens does not
illustrate, disclose or suggest that the projections of Stevens are
configured such that their tips would define a curve having a
Appeal No. 2002-0962
Application No. 09/017,959
6
curvature substantially like a curvature of a bowling ball when
force is exerted by the bowler on the ball.
Admittedly, Stevens does not expressly disclose or describe
that the projections are configured such that tips define a curve
which has a curvature substantially like a curvature of a bowling
ball when force is exerted by a bowler (wearer) on the ball, as
recited in claim 17, or that the projections would flatten
providing a larger surface to grip a bowling ball enabling a bowler
(wearer) to better initiate rotation as the bowling ball is
released, as also recited in claim 17. However, “a prior art
reference may anticipate when the claim limitation or limitations
not expressly found in that reference are nonetheless inherent in
it.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51
USPQ2d 1943, 1946 (Fed. Cir. 1999). The above-quoted statement
from page 3 of the final rejection (Paper No. 20) is, in effect, a
finding by the examiner that the projections of Stevens are
configured such that they would inherently define a curvature
substantially like the curvature of a bowling ball “when force is
exerted by the bowler [wearer] on the ball” as called for in claim
17, and such that they would inherently be capable of flattening in
the manner called for in claim 17. Given the structure and
intended use of Stevens, we consider this finding to be
Appeal No. 2002-0962
Application No. 09/017,959
3The examiner also found (answer, page 5) that “Fig. 2 of
Stevens clearly shows projections with ‘a curvature substantially
like a curvature of the bowling ball’ (cl. 17, ln. 6),” a finding
with which we do not agree. This circumstance is of no moment,
however, in that a finding that the projections of Stevens have a
curvature substantially like the curvature of a bowling ball
independent of their being pressed by the bowler against the ball
is not required in order to sustain the standing rejection of the
appealed claims.
7
reasonable.3 The burden then shifted to appellant to shown that
the Stevens structure did not inherently possess the limitations in
question, In re Schreiber, 128 F.3d at 1477, 144 USPQ2d at 1432,
but no evidence to that effect has been presented.
Appellant argues in the reply brief (pages 1-2) that the
limitation of configuring the projections such that they define a
curvature like that of a bowling ball when force is exerted by a
bowler on the ball is not inherent, citing In re Weiss, 26 USPQ2d
1885 (Fed. Cir. 1993) for the proposition that the mere fact that a
certain thing may result from a given set of circumstances is not
sufficient to establish inherency. In re Weiss is an unpublished
opinion and therefore is not citable as precedent. In any event,
the proposition for which Weiss is cited does not mandate a
contrary conclusion, but rather is consonant with the principles of
inherency developed by case law. See, for example, In re
Appeal No. 2002-0962
Application No. 09/017,959
8
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971) where
the Court stated:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may,
in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.
In the present case, the examiner’s findings relative to the nature
of the projections of Stevens constitute sound technical reasoning
that establishes the reasonableness of the examiner’s belief that
the functional limitations of claim 17 are inherent characteristics
of the reference device, which reasoning, on the record before us,
stands uncontroverted by appellant.
Appellant also argues (reply brief, page 2) that Stevens does
not inherently disclose appellant’s invention because Stevens does
not teach the result of applying spin on a bowling ball. This
argument fails because, as noted above, the law of anticipation
does not require that the reference “teach” what appellant teaches;
all that is necessary is that the claims “read on” something
disclosed in the reference. Kalman v. Kimberly-Clark Corp., 713
F.2d at 772, 218 USPQ at 789.
Appeal No. 2002-0962
Application No. 09/017,959
4For example, the requirement of claim 17 that the tips of
the projections define a curve which has a curvature
substantially like a curvature of the bowling ball when force is
exerted by the bowler on the ball.
9
Concerning the functional limitations argued by appellant, as
stated by the Court in Schreiber, 128 F.3d at 1478, 44 USPQ2d at
1432, a patent applicant is free to recite features of an apparatus
either structurally or functionally, but choosing to define an
element functionally, i.e., by what it does, carries with it the
risk of having the functionally recited element asserted to be
critical for establishing novelty to be an inherent characteristic
of the prior art. In this case, as in Schreiber, we have
considered the functional limitations of the claims on appeal
argued by appellant4 and agree with the examiner that they do not
lend patentable weight to the presently claimed subject matter and
that such limitations are in fact inherent characteristics of the
device of Stevens.
Finally, appellant argues (main brief, page 4; reply brief,
page 2) that the disclosure of Stevens is not sufficient to have
placed the claimed invention in possession of a person of ordinary
skill in the art. We do not agree, since we consider that Stevens
would put one of ordinary skill in possession of the structure
recited in, for example, claim 17, which is all that is required
Appeal No. 2002-0962
Application No. 09/017,959
10
for anticipation under § 102(b). Stevens, being a design patent,
does not contain a detailed description of the device shown in its
drawings, but that does not impair its ability to anticipate
appellant’s claims, since a claimed invention may be anticipated or
rendered obvious by a reference drawing. In re Meng, 492 F.2d 843,
847, 181 USPQ 94, 97 (CCPA 1974). See also In re Aslanian, 590
F.2d 911, 913, 200 USPQ 500, 502 (CCPA 1979) (“numerous decisions
have indicated that design patents can be properly cited as the
basis for an anticipation rejection of claims in an application for
a utility patent”). Since, for the reasons discussed above,
Stevens expressly or inherently discloses all the limitations of
claim 17, we conclude that claim 17 is anticipated by Stevens.
Accordingly, the anticipation rejection of claim 17 will be
sustained. Likewise, the anticipation rejection of claims 18-28
will also be sustained since the appealed claims stand or fall as a
group.
Recommendation Pursuant to 37 CFR § 1.196(c)
Our decision supra affirming the examiner’s anticipation
rejection is predicated on the fact that appellant’s claims call
for the tips of the projections to define a curve which has a
curvature substantially like a curvature of a bowling ball when
force is exerted by the bowler on the ball, a claim interpretation
Appeal No. 2002-0962
Application No. 09/017,959
5Support for this condition of the tips of the projections
is found at page 3, lines 17-19, of appellant’s specification.
6Appellant’s counsel at oral hearing was understood to be
amenable to such changes.
11
that was conceded by appellant’s counsel at oral hearing to be
correct. However, it is our view that a different outcome would
result if the claims were amended to set forth that the tips of the
projections define a curve which has a curvature substantially like
a curvature of a bowling ball independent of a force being exerted
by the bowler on the ball.5 In light of this and under the
provisions of 37 CFR § 1.196(c), we recommend that the standing
anticipation rejection based on Stevens shall be overcome if claims
17 and 21 are amended as follows (with underlining indicating
additions and bracketing indicating deletions)6:
17. A bowling accessory, comprising . . .
a pad having one or more projections for
contacting a bowling ball, said pad associated with said
retaining mechanism, and said pad having an arcuate
surface, said projections having desired configuration
such that tips of said projections define a curve which
has a curvature substantially like a curvature of the
bowling ball, and when force is exerted by the bowler on
the ball[,] the projections flatten providing a larger
surface to grip the ball enabling the bowler to better
initiate rotation as the bowling ball is released.
21. A bowling finger grip, comprising . . .
Appeal No. 2002-0962
Application No. 09/017,959
12
a gripping surface on said tubular member, a
plurality of gripping members on said gripping surface
for contacting a bowling ball, said gripping surface
being curved, said gripping members comprising
projections having desired configurations such that tips
of said projections define a curve which has a curvature
substantially like a curvature of the bowling ball, and
when force is exerted by the bowler on the ball[,] the
gripping members flatten providing a larger surface to
grip the ball enabling the bowler to better initiate
rotation as the bowling ball is released.
Summary
The decision of the examiner rejecting claim 17-28 as being
anticipated by Stevens is affirmed.
A recommendation pursuant 37 CFR § 1.196(c) as to how the
above affirmed rejection can be overcome is made.
Appeal No. 2002-0962
Application No. 09/017,959
13
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
37 CFR § 1.196(c)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS/lp
Appeal No. 2002-0962
Application No. 09/017,959
14
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