Ex parte ALLEN

Board of Patent Appeals and Interferences

May 6, 1998

08328159 (B.P.A.I. May. 6, 1998)

Application for patent filed October 24, 1994. According1
to the appellant, the application is a continuation of
Application No. 08/066,788, filed May 24, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD B. ALLEN
____________
Appeal No. 97-0925
Application No. 08/328,1591
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 5 through 9, 11 and 13 through 16,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 97-0925 Page 2
Application No. 08/328,159
BACKGROUND
The appellant's invention relates to an umbrella for use in
a stadium. An understanding of the invention can be derived from
a reading of exemplary claims 1 and 9, which appear in the
appendix to the appellant's brief.
The prior art reference of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102(b) and
obviousness under 35 U.S.C. § 103 is:
Rowsey, Jr. 4,271,604 June 9, 1981
(Rowsey)
Claims 1, 3, 5 through 9, 11 and 13 through 16 stand
rejected under 35 U.S.C. § 112, first paragraph, as failing to
provide an enabling disclosure.
Claims 1, 3, 5 through 9, 11 and 13 through 16 stand
rejected under 35 U.S.C. § 112, as being indefinite for failing
to particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1 and 9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Rowsey.
Appeal No. 97-0925 Page 3
Application No. 08/328,159
Claims 1, 5, 9 and 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Rowsey.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper No.
10, mailed April 24, 1996) and the examiner's answer (Paper No.
13, mailed October 21, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 12, filed September 23, 1996) 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 reference, 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 enablement issue
Appeal No. 97-0925 Page 4
Application No. 08/328,159
We will not sustain the examiner's rejection of claims 1, 3,
5 through 9, 11 and 13 through 16 under 35 U.S.C. § 112, first
paragraph, as failing to provide an enabling disclosure.
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc., 857
F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art as
of the date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. The threshold step in resolving
this issue is to determine whether the examiner has met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement. This the examiner has not done. In fact, the
examiner has only pointed to claim language that is unclear in
the examiner's opinion. If the language of a claim is unclear,
Appeal No. 97-0925 Page 5
Application No. 08/328,159
the rejection of such a claim lies under the second paragraph of
35 U.S.C. § 112, not the first paragraph thereof. Accordingly,
we will treat the basis for this rejection as having been made
under the second paragraph of 35 U.S.C. § 112 in the next section
of this decision. Since the examiner has not advanced any
reasoning inconsistent with enablement, we reverse the examiner's
rejection of claims 1, 3, 5 through 9, 11 and 13 through 16 under
35 U.S.C. § 112, first paragraph, as failing to provide an
enabling disclosure.
The indefiniteness issue
We will not sustain the examiner's rejection of claims 1, 3,
5 through 9, 11 and 13 through 16 under 35 U.S.C. § 112, as being
indefinite for failing to particularly point out and distinctly
claim the subject matter which the appellant regards as the
invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
Appeal No. 97-0925 Page 6
Application No. 08/328,159
determination, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in
the manner of expression and the aptness of terms is permitted
even though the claim language is not as precise as the examiner
might desire. If the scope of the invention sought to be
patented cannot be determined from the language of the claims
with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate.
The examiner's bases for this rejection are: (1) In claim 1,
it is unclear what constitutes the edge of the ribs or the cover
or the cylindrical portion; (2) In claim 9, it is unclear what
Appeal No. 97-0925 Page 7
Application No. 08/328,159
the combined vertical dimension of the cover is; (3) In claim 1,
the term "said cylindrical portion" lacks antecedent basis;
(4) In claim 1, it is unclear to which preceding term (e.g.,
ribs, cover, cylindrical portion) the term "which" refers back
to; (5) In claim 1, the phrase "the edge of which is parallel to
the axis of the center pole" is unclear as to where the edge is
being located and which element's edge is being recited; and
(6) In claim 9, there is no antecedent basis for "the combined
vertical dimension of the umbrella."
For the reasons set forth by the appellant (brief, pp. 7-
11), we conclude that the claims are definite since the scope of
the claims would be reasonably ascertainable by those skilled in
the art. Since the scope of the invention sought to be patented
can be determined from the language of the claims with a
reasonable degree of certainty, the examiner's rejection of
claims 1, 3, 5 through 9, 11 and 13 through 16 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The anticipation issue
We will not sustain the examiner's rejection of claims 1 and
9 under 35 U.S.C. § 102(b) as being anticipated by Rowsey.
Appeal No. 97-0925 Page 8
Application No. 08/328,159
To support a rejection of a claim under 35 U.S.C. § 102(b),
it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single
prior art 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).
Claim 1 is directed to an umbrella whose cover in the open
mode assumes a cylindrical shape with a hemispherically shaped
top. Claim 9 is directed to an umbrella which, when in the open
mode, assumes a shape wherein the lowermost portion is cylin-
drical and the uppermost portion is hemispherical or dome-shaped.
Rowsey discloses a portable planetarium having the shape,
structure, and utility of an extended umbrella while serving the
dual and more important function of being an educational tool
usable to ascertain the location of planets and stars throughout
the year. The planetarium includes a frame having a
configuration defined by a frustrum of a cone with a
substantially hemispherical cap attached thereon. A pole is
aligned with the center axis of the frustrum of the cone and
extends through the top of the hemispherical cap, with the
Appeal No. 97-0925 Page 9
Application No. 08/328,159
The inquiry as to whether a reference anticipates a claim2
must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth
by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or 'fully met' by it."
intersection of the pole and the top of the hemispherical cap
utilized as a reference point denoting the north star or Polaris.
A covering is secured to the frame and a plurality of markings
are selectively applied to the covering using Polaris as the
reference point.
For the reasons set forth by the appellant (brief, pp. 4-6
and 14-17), we conclude that claims 1 and 9 are not anticipated
by Rowsey. We agree with the appellant that the claimed
configuration (i.e., a cylindrical shape with a hemispherically
or dome shaped top) does not "read on" Rowsey's configuration2
(i.e., a frustrum of a cone shape with a hemispherically or dome
shaped top). Since each element of claims 1 and 9 is not found,
either expressly described or under principles of inherency, in
Rowsey, the examiner's rejection of claims 1 and 9 under
35 U.S.C. § 102(b) is reversed.
Appeal No. 97-0925 Page 10
Application No. 08/328,159
The obviousness issue
We will not sustain the examiner's rejection of claims 1, 5,
9 and 13 under 35 U.S.C. § 103 as being unpatentable over Rowsey.
Obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references before
him to make the proposed combination or other modification. See
In re Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by
some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual 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).
Rejections based on § 103 must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the
invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In re
Appeal No. 97-0925 Page 11
Application No. 08/328,159
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
The examiner in the rejection of claims 1, 5, 9 and 13 under
35 U.S.C. § 103 determined (final rejection, pp. 3-4) that
it would have been obvious to one skilled in the art to
modify Rowsey's canopy by forming the canopy into a
cylindrical shape.
For the reasons set forth by the appellant (brief, pp. 11-
17), we conclude that claims 1, 5, 9 and 13 are not obvious over
Rowsey. It is our view, after a careful review of the teachings
of Rowsey, that in searching for an incentive for modifying the
shape of the planetarium/umbrella of Rowsey, the examiner has
impermissibly drawn from the appellant's own teachings and fallen
victim to what our reviewing Court has called "the insidious
effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher." W. L. Gore &
Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Since we
have determined that the subject matter of independent claims 1
and 9 would not have been suggested by the teachings of the
applied prior art, it follows that we will not sustain the
Appeal No. 97-0925 Page 12
Application No. 08/328,159
examiner's rejection of appealed independent claims 1 and 9, or
claims 5 and 13 which depend therefrom, under 35 U.S.C. § 103.
Appeal No. 97-0925 Page 13
Application No. 08/328,159
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 3, 5 through 9, 11 and 13 through 16 under 35 U.S.C. § 112,
first and second paragraphs, is reversed; the decision of the
examiner to reject claims 1 and 9 under 35 U.S.C. § 102(b) is
reversed; and the decision of the examiner to reject claims 1, 5,
9 and 13 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0925 Page 14
Application No. 08/328,159
WILLIAM F. PINSAK
WOLK & MAZIARZ
74 TOWER HILL ROAD
MOUNTAIN LAKES, NJ 07046
APPEAL NO. 97-0925 - JUDGE NASE
APPLICATION NO. 08/328,159
APJ NASE
APJ ABRAMS
APJ CALVERT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 04 May 98
FINAL TYPED: