Ex parte ANDERSON et al.

Board of Patent Appeals and Interferences

May 28, 1998

08567617 (B.P.A.I. May. 28, 1998)

Application for patent filed December 5, 1995.1
1
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(2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLAUDIA M. ANDERSON,
DAVID A. CAMPBELL
and
FRED G. SCHROEDER
_____________
Appeal No. 97-4248
Application 08/567,6171
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 97-4248
Application 08/567,617
By amendment following the final rejection (filed 2
February 14, 1997), appellants cancelled claim 2 and amended
claims 1 and 8.
In reviewing the appealed claims, we note that claim 103
recites “cage means” in line 4, but then recites a “cage” in the
remainder of the claim (lines 4, 13, 19 and 21). This
discrepancy should be corrected in any further prosecution of the
case.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
and 3 to 10, all the claims remaining in the application.2
The invention in issue concerns a quick-connect tubular
coupling. A copy of the appealed claims is contained in the
Appendix to appellants’ brief.3
The references applied in the final rejection are:
Frye 4,715,624 Dec. 29, 1987
McConnell 5,094,494 Mar. 10, 1992
Claims 1 and 3 to 10 stand finally rejected on the
following grounds:
(1) Claims 1 and 3 to 8, anticipated by McConnell, under
35 U.S.C. § 102(b);
Appeal No. 97-4248
Application 08/567,617
3
(2) Claims 9 and 10, unpatentable over McConnell in view of Frye,
under 35 U.S.C. § 103.
The McConnell patent discloses a tubular coupling
similar to appellants’, but having two O-rings 46, 48. The
examiner takes the position that McConnell anticipates claim 1
because, although there is no express disclosure in McConnell of
any transition portions, pivot points or contact points, the
region at the end 25 of first (inner) tube 12 and fitting 14
constitutes the claimed second contact point, the region near
the end of second (outer) tube 28 (i.e., near the end of ramp
portion 38) is a transition portion of tube 28 and the claimed
first contact point, and, as shown in the drawing, O-ring 46 is
at the midpoint of the distance between these two contact points.
Appellants do not dispute the location of the second contact
point, but argue that in McConnell, the first contact point and
transition region are at the inner end of the second tube’s
outwardly flared portion 40 (i.e., just to the right of reference
numeral 40 as shown in Fig. 3), so that the midpoint of the
distance between this first contact point and the second contact
Appeal No. 97-4248
Application 08/567,617
4
point, i.e., the pivot point, will be located at a point between
McConnell’s two O-rings.
In order to anticipate a claim, a reference must
disclose 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). However, the reference
need not “teach” the invention, as long as the claims read on
something disclosed therein. Kalman v. Kimberly-Clark Co.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
In the present case, assuming that the portion of
McConnell’s ramp portion 38 identified by the examiner is a
“transition portion,” McConnell does not expressly disclose that
it is a point of contact between the first and second tubes.
Since McConnell also does not expressly identify a pivot point of
the coupling, claim 1 is not anticipated unless there will
inherently be contact between the tubes at area 38.
In order for a reference to anticipate a claimed limi-
tation by way of inherency, that limitation must inevitably be
present in the reference; the fact that it may be present is not
sufficient, as inherency cannot be established by probabilities
Appeal No. 97-4248
Application 08/567,617
5
or possibilities. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). Looking at McConnell’s Fig. 3, we do not
consider that it can be said that the two tubes will inevitably
contact each other at area 38. When fitting 14 of tube 12 moves
clockwise relative to tube 28, it appears to be more likely, or
at least equally as likely, that it would contact tube 28 at the
transition portion identified by appellants in the vicinity of
flared portion 40. Thus it cannot be concluded that McConnell
discloses an O-ring which is inherently located at the pivot
point (as defined in claim 1), and the rejection under § 102(b)
therefore will not be sustained.
The rejection of claims 9 and 10 under 35 U.S.C. § 103
will likewise not be sustained since the additional reference,
Frye, does not supply the deficiencies noted above with regard to
McConnell.
Conclusion
The examiner’s decision to reject claims 1 and 3 to 10
is reversed.
REVERSED
Appeal No. 97-4248
Application 08/567,617
6
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-4248
Application 08/567,617
7
Raymond L. Coppiellie
Ford Motor Company
One Parklane Boulevard
911 East Parklane Towers
Dearborn, MI 48126