Ex parte ALLERS et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08534692 (B.P.A.I. Jun. 29, 1998)

Application for patent filed September 27, 1995. 1
Claims 1, 3-6, 8-10 and 22-26 were amended subsequent to2
the final rejection.
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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRIAN S. ALLERS
and
EDWARD W. RIDER JR.
____________
Appeal No. 97-3555
Application No. 08/534,6921
____________
ON BRIEF
____________
Before CALVERT, NASE, and CRAWFORD, 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 through 28 and 30 through 32, which are all
of the claims pending in this application.2
Appeal No. 97-3555
Application No. 08/534,692
We REVERSE.
Appeal No. 97-3555 Page 3
Application No. 08/534,692
BACKGROUND
The appellants' invention relates to a container for
stabilizing a food dish. An understanding of the invention can
be derived from a reading of exemplary claims 1, 15, 26 and 28,
which appear in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Baraban 547,759 Oct. 15, 1895
Cannell 3,770,115 Nov. 6, 1973
Schlaupitz et al. 5,269,430 Dec. 14, 1993
(Schlaupitz)
Edwards et al. 5,339,973 Aug. 23, 1994
(Edwards)
Claims 1 through 28 and 30 through 32 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellants regard as the invention.
Claims 1 through 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cannell in view of Baraban and
Schlaupitz.
Appeal No. 97-3555 Page 4
Application No. 08/534,692
Claims 11 through 28 and 30 through 32 stand rejected under
35 U.S.C. § 103 as being unpatentable over Cannell in view of
Baraban, Schlaupitz and Edwards.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper No.
10, mailed January 27, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 9, filed November 4, 1996) and reply brief
(Paper No. 11, filed February 28, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
Appeal No. 97-3555 Page 5
Application No. 08/534,692
We will not sustain the examiner's rejection of claims 1
through 28 and 30 through 32 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellants
regard as the invention.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the metes
and bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958, 189 USPQ 149, 151 (CCPA 1976).
The examiner determined (answer, p. 5) that it was unclear
whether the food dish or pie tin itself is also being claimed
along with the container. We do not agree.
We turn first to independent method claim 28 which recites
as the first step thereof "placing a food dish within a receiving
shell." This clearly incorporates the food dish into the claimed
subject matter. Thus, claim 28 and its dependent claims (i.e.,
claims 30 to 32) are not indefinite under 35 U.S.C. § 112, second
paragraph.
Appeal No. 97-3555 Page 6
Application No. 08/534,692
Next we turn to independent claim 1 which recites a
container for stabilizing a food dish wherein the bottom of the
food dish is suspended above the floor of the receiving shell
when seated within the receiving shell. This limitation, in our
view, "breathes life and meaning into the claim" and is
"essential to point out the invention defined by the claim." See
generally Kropa v. Robie, 187 F.2d 150, 155-59, 88 USPQ 478,
483-87 (CCPA 1951) and the authority cited therein, and cases
compiled in 2 Chisum, Patents § 8.06[1][d] (1991). We note that
our view is consistent with (1) the appellants' arguments that
the prior art applied under 35 U.S.C. § 103 fails to suggest this
limitation, and (2) the examiner's view that Cannell discloses
the claimed invention but for this limitation. Thus, it is our
determination that claim 1 incorporates the food dish into the
claimed subject matter and defines the metes and bounds of a
claimed invention with a reasonable degree of precision and
particularity. Accordingly, claim 1 and its dependent claims
(i.e., claims 2 to 14) are not indefinite under 35 U.S.C. § 112,
second paragraph.
We now turn to independent claim 26 which recites a
container for stabilizing a pie tin wherein the bottom of the pie
Appeal No. 97-3555 Page 7
Application No. 08/534,692
tin is suspended above the floor of the receiving shell when
seated within the receiving shell. This limitation, in our view,
"breathes life and meaning into the claim" and is "essential to
point out the invention defined by the claim" for the same
reasons stated above with respect to claim 1. Thus, it is our
determination that claim 26 incorporates the pie tin into the
claimed subject matter and defines the metes and bounds of a
claimed invention with a reasonable degree of precision and
particularity. Accordingly, claim 26 and its dependent claim 27
are not indefinite under 35 U.S.C. § 112, second paragraph.
Lastly, we turn to independent claim 15 which recites a
monolithic container for stabilizing a food dish. It is our
determination that the references to the food dish in claim 15
merely recite the intended use of the container since claim 15
does not depend on the food dish for completeness (as does claim
1). Thus, it is our determination that claim 15 does not
incorporate the food dish into the claimed subject matter and
defines the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. Accordingly,
claim 15 and its dependent claims (i.e., claims 16 to 25) are not
indefinite under 35 U.S.C. § 112, second paragraph.
Appeal No. 97-3555 Page 8
Application No. 08/534,692
The obviousness issues
We will not sustain the examiner's rejection of claims 1
through 28 and 30 through 32 under 35 U.S.C. § 103.
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 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
Appeal No. 97-3555 Page 9
Application No. 08/534,692
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 Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
The teachings of the prior art applied by the examiner in
the rejection of the claims on appeal are set forth in the
appellants' brief (pp. 9 and 21) and the examiner's answer (pp.
5-8).
With regard to independent claims 1 and 26, we agree with
the appellants' argument (brief, pp. 10-15 and 25-26) that the
applied prior art does not suggest suspending the bottom of the
food dish or pie tin above the floor of the receiving shell.
Accordingly, the subject matter of claims 1 and 26 and their
dependent claims (i.e., claims 2 to 14 and 27) would not have
been prima facie obvious under 35 U.S.C. § 103.
With regard to independent claim 15, we agree with the
appellants' argument (brief, pp. 21-22) that the applied prior
Appeal No. 97-3555 Page 10
Application No. 08/534,692
In proceedings before the PTO, claims in an application3
are to be given their broadest reasonable interpretation
consistent with the specification, and that claim language should
be read in light of the specification as it would be interpreted
by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
art does not suggest the claimed hinge member. In that regard,
we note that Edwards' flanges 38 and 40 surround the perimeters
of his tray 12 and cover 14, respectively. Thus, the flanges are
not part of Edwards' hinge 16 which connects the tray 12 to the
cover 14. Edwards does not disclose or suggest providing the
first and second flanges of his hinge 16 with the protrusion and
recess as recited in claim 15. Accordingly, the subject matter
of claim 15 and its dependent claims (i.e., claims 16 to 25)
would not have been prima facie obvious under 35 U.S.C. § 103.
With regard to independent claim 28, we agree with the
appellants' argument (brief, p. 27) that the applied prior art
does not suggest the claimed step of providing an entrapment
force upon a partial circumference. In that regard, we note that
Cannell provides an annular groove 24 which provides an
entrapment force upon the entire circumference. Consistent with
the appellants' disclosure, we interpret "partial circumference"3
to mean not the total circumference. Thus, Cannell's groove 24
Appeal No. 97-3555 Page 11
Application No. 08/534,692
does not provide an entrapment force upon a partial circumference
as recited in claim 28. Accordingly, the subject matter of claim
28 and its dependent claims 30 to 32 would not have been prima
facie obvious under 35 U.S.C. § 103.
Appeal No. 97-3555 Page 12
Application No. 08/534,692
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 through 28 and 30 through 32 under 35 U.S.C. § 112, second
paragraph is reversed and the decision of the examiner to reject
claims 1 through 28 and 30 through 32 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3555 Page 13
Application No. 08/534,692
WALTER D. FIELDS
HESLIN & ROTHENBERG
5 COLUMBIA CIRCLE
ALBANY, NY 12203
APPEAL NO. 97-3555 - JUDGE NASE
APPLICATION NO. 08/534,692
APJ NASE
APJ CALVERT
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 19 Jun 98
FINAL TYPED: