Ex Parte Deonarine

Board of Patent Appeals and Interferences

Feb 16, 2007

09683353 (B.P.A.I. Feb. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VICTOR I DEONARINE,
__________

Appeal 2006-3282
Application 09/683,353
Technology Center 2800
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Decided: February 16, 2007
__________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and JAY P.
LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. 134 from the Final Rejection of
Application No. 09/683353. A copy of the claims under appeal was
submitted on July 26, 2006. Appellant’s brief was filed February 27, 2004;
Appellant Supplemental Brief was filed September 22, 2004 and Appellant’s
Reply Brief was filed May 17, 2005. The Examiner mailed his Answer on
April 15, 2005.

Appeal 2006-3282
Application 09/683,353

INVENTION
Appellant’s invention relates to an apparatus for indicating the
temperature of a material, useful in welding. The invention includes a
connector for holding a pair of temperature indicator sticks, where each
indicator stick melts at a different temperature. These indicator sticks are
rated to measure a given temperature, which is generally not the same value,
during welding, heat treatment, and metal fabrication processes. The
connector is further configured to removably hold the indicator sticks
together, and includes a convenient pocket clip.
Claims 1 and 16 are representative of the claimed invention and are
reproduced as follows:
1. A dual temperature indicator stick assembly comprising:

a first indicator stick housing positioned along a first axis and
configured to hold a compound which melts at a first given
temperature;

a second indicator stick housing positioned along a second axis
and configured to hold a second compound which melts at a second
given temperature; and

a one-piece connector physically connecting the first and
second indicator stick housings along different axes.

16. A dual temperature indicator stick apparatus comprising:

first means for indicating a first temperature;

second means for indicating a second temperature; and

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means for retaining the first means to the second means in a
side-by-side relationship to form an indicator stick assembly capable
of indicating at least two temperatures.

REFERENCES
The references relied on by the Examiner are as follows:
Peterson US 1,603,713 Oct. 19, 1926
Kirk US 3,564,668 Feb. 23, 1971
Aronson US 4,244,660 Jan. 13, 1981
Kossnar US 6,022,159 Feb. 20, 2000
Omega®Engineering Inc., “The Temperature Handbook”, Vol. 29, pg. F10
(Omegamarker® Temperature Test Kit), 1995 (OMEGA®)

REJECTIONS AT ISSUE
Claims 1, 6, 8, 16 and 18 to 20 stand rejected under 35 U.S.C. § 102b
as being anticipated by OMEGA®.
Claims 1, 3, and 6 stand rejected under 35 U.S.C. § 102b as being
anticipated by Kossnar.
Claims 1, 3, 5, 6, 8, and 9 stand rejected under 35 U.S.C. § 102b as
being anticipated by Kirk.
Claims 1, 3, 5, 6, and 8 stand rejected under 35 U.S.C. § 102b as
being anticipated by Aaronson.
Claim 17 stands rejected under 35 U.S.C. § 103a as being obvious
over the combination of OMEGA® in view of Peterson.
The rejection of claims 2, 4, 7, and 10 to 15 has been withdrawn.
ISSUES
The Examiner contends that the OMEGA®, Kossnar, Kirk and
Aaronson references demonstrate that the various claims, as indicated in the
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rejections itemized above, are anticipated by or rendered obvious over the
prior art.
The Appellant respectfully disagrees, and argues that the Examiner
has misread the teachings of the art and mistakenly applied them to the
claimed subject matter.
The issue before us is whether the Examiner erred in rejecting the
claims over the references as applied above.
PRINCIPLES OF LAW
This application presents questions of anticipation and obviousness.
In examination before the USPTO, the Examiner bears the burden of
presenting a prima facie case for the obviousness,[ or anticipation,] of the
claimed subject matter. See In re Rinehart, 531 F2d 1048, 189 USPQ 143
(CCPA 1976).
The ultimate determination of whether an invention would have been
obvious is a legal conclusion based on underlying findings of fact. In re
Dembiczak, 175 F.3d 994, 998 [50 USPQ2d 1614] (Fed. Cir. 1999).

FINDINGS OF FACT
We find the following facts:
1. Pursuant to 35 U.S.C. 102, Examiner has read the elements of
claims 1, 6, 8, 16 and 18 to 20 on the reference OMEGA®.
Appellant argues that the claims 1 and 16 call for a dual
temperature indicator stick assembly and apparatus, and the
OMEGA® reference shows a series of temperature indicator
sticks in a case. Although the weight to be accorded to the
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terms in the preamble has been argued, we find that the
OMEGA® reference does disclose an assembly or apparatus of
multiple temperature indicator sticks that comprises the recited
elements. Appellant argues that the use of the markers in the
reference requires them to be removed from the case, thus
obviating the reference. Such argument reads a non-existent
use limitation into the preamble term, which cannot be given
weight. (See In re Paulsen, 31 USPQ2d 1671, 1673 (Fed Cir
1994). The three elements of claim 1, the two housings and the
connector, are clearly demonstrated in OMEGA®. Also
disclosed in OMEGA® is the connector’s snap fit of the
indicator stick housings as recited in claim 8, as the term is
generally understood. No special definition of “snap fit” is
found in the specification. (See In re Phillips, 75 USPQ2d
1321 (Fed Cir 2005)). We further find the temperature
indicator sticks as recited in claim 18, and the tubular members
secured by a connector of claim 19, as indicated by the
Examiner. We do not find the elements of claims 6 and 20 in
OMEGA®.
2. The examiner has read the elements of claims 1, 3 and 6 on the
pen holder of Kossnar. As the Kossnar reference does not
mention temperature indicator sticks, the issue of the weight to
be given to the terms “dual temperature indicator stick
assembly” in the preamble, and “configured to hold a
compound that melts …” in the elements comes clearly to the
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forefront. Considering the latter phrase first, we consider
whether “configured to hold a compound…” is a “…mere
direction of activities to take place in the future, or whether the
language imparts a structural limitation …” to the stick housing.
(See In re Venezia, 189 USPQ 149, 151 (CCPA 1976)). We
find that the language does impart structure to the housing,
namely sufficient structure to hold something. The claim,
however, does not recite the thing that is held, namely a
“compound which melts…” as an element of the claim.
(Appose this to claim 2, which does positively recite indicator
sticks, and has not been rejected.) The elements of the claim
thus include two housings, each positioned specially and
configured to hold something. Consider, now, the preamble
which recites “A dual temperature indicator stick assembly
comprising…” The Kossnar reference discloses a dual pen
holder, with elements corresponding to all of the claimed
elements in claims 1, 3 and 6, as applied by the Examiner. We
find the recitation in the claim preamble of “A dual temperature
indicator stick assembly comprising …” to be merely a
statement of the purpose and intended use of the assembly. The
assembly recited in the structure of the claims is found in
Kossnar, albeit holding a different type of writing utensil.
Specifically we find in Kossnar a teaching of longitudinal
member 20a (and 20b) with curved ends (at 46) to hold the
housings of the writing utensils. This teaching is also applicable
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to claim 20, which claims the curved ends integrally molded to
each of the tubular members. We find the teaching includes the
writing utensils being “slidingly secured” in a side-by-side
relationship.
3. Examiner has further rejected claims 1, 3, 5, 6, 8, and 9 as being
anticipated by Kirk. We find that Kirk presents the claimed
elements, when viewed consistently with the findings above in
#2. Kirk teaches a holder for pens, pencil and the like, which
the Examiner has chosen as another prior art teaching of the
claimed assembly. As the Examiner explains, element 10 can
be read as a clip member, configured with the structure as
recited in the claims.
4. Examiner has further, as expressed by Appellant, duplicatively
rejected claims 1, 3, 5, 6 and 8 as being anticipated by
Aaronson. Viewing Aaronson’s Figure 1 and the supporting
text in the patent we indeed find that the claimed elements are
present in that reference. The arguments expressed in Finding
#2 above are applied to the interpretation of the claims.
5. Examiner has rejected claim 17 for being obvious over the
combination of OMEGA® in view of Peterson. Examiner
proposes that OMEGA® teaches all of the claimed elements of
claim 17, except for means for controlling movement of the
“first and second” means. Peterson teaches a mechanism for
controlling such movement, in a casing we find to be similar to
that claimed by the Appellant. The holder of Peterson is for a
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Application 09/683,353

marking crayon used in industry. We find that one skilled in the
art at the time of the invention who would search for a means
for controlling movement of the temperature indicating means
of OMEGA® would look to the old teaching of Peterson and
combine them. Thus we find that the elements of claim 17
would be obvious over the cited references.
ANALYSIS
The elements of claims 1, 3, 5, 6, 8, 9, 16 and 20 are present in the
prior art, as demonstrated by the references OMEGA®, Kossnar, Kirk and
Aronson, in a manner to anticipate the claims as presented.
Claim 17 is rendered obvious over the prior art OMEGA® in view of
Peterson.

NEW GROUND OF REJECTION
The following new rejection of claim 20 is entered under the
provisions of 37 CFR § 41.50 (b).
Claim 20 is rejected under 35 U.S.C. § 102 (b) for being anticipated
by Kossnar. Figure 2 of Kossnar indicates elements 20a and 20b which are
longitudinal members with curved ends integrally molded therein, as
claimed.
OTHER ISSUES
Examiner is reminded that USPTO procedures require that rejections
be fully repeated in the Examiner’s Answer, and that the Board not be
referenced to other actions (e.g. Final Rejections) in the file. See MPEP
1207.02. In the interest of reasonable dispatch of this appeal the procedure
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was overlooked; however in future appeals an administrative remand would
be appropriate.
CONCLUSIONS OF LAW
In view of the foregoing discussion, we sustain the Examiner’s
rejection under 35 U.S.C. § 102(b) of claims 1, 3, 5, 6, 8, 9, 16, and 18 to 19
under the various references as itemized above. We have sustained the
rejection under 35 U.S.C. §103(a) of claim 17.
The Examiner’s rejection of claim 20 is reversed.
We have entered a new ground of rejection for claim 20.
ORDER
The rejections are AFFIRMED in PART as indicated above.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

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Application 09/683,353

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART

PGC/GW

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