Ex parte BLAYNER et al.

Board of Patent Appeals and Interferences

Sep 3, 1998

08124834 - (D) (B.P.A.I. Sep. 3, 1998)

Application for patent filed September 21, 1993. 1
Filed July 16, 1998.2
Effective Dec. 1, 1997, 37 CFR § 1.197(b) was amended to3
change the term "reconsideration" to "rehearing." See the
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journal and (2) is not binding precedent of the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. 49
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD J. BLAYNER and CHARLES L. MATHEWS
____________
Appeal No. 95-4407
Application No. 08/124,8341
____________
ON BRIEF
____________
Before PATE, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to the appellants' request for
rehearing of our decision mailed June 18, 1998, wherein we2,3
Appeal No. 95-4407 Page 2
Application No. 08/124,834
final rule notice published at 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)).
affirmed the examiner's rejection of claims 52 to 55, 62 to 65,
70 to 73, 76 and 77 under 35 U.S.C. § 112, first paragraph,
affirmed the examiner's rejection of claims 68, 69, 74 and 75
under 35 U.S.C. § 102(b), reversed the examiner's rejection of
claim 69 under 35 U.S.C.
§ 112, first paragraph, and reversed the examiner's rejection of
claims 52 to 54, 62 to 64, 70 to 72 and 76 under 35 U.S.C. §
103. The appellants seek rehearing only with respect to the
affirmance of the examiner's rejection of claims 52 to 55, 62 to
65, 70 to 73, 76 and 77 under 35 U.S.C. § 112, first paragraph.
We have carefully considered the arguments raised by the
appellants in their request for rehearing, however, those
arguments are only persuasive with respect to claims 70 and 76.
The first argument (p. 2) raised by the appellants is that
terms "uniform grain size" (claim 70) and "uniform . . . grains"
(claim 76) find literal support in the appellants' specification
Appeal No. 95-4407 Page 3
Application No. 08/124,834
as originally filed. The original disclosure does teach that
the surface of the metal has a uniform, small grain size to
resist corrosion (see pages 19, 20 and 43). Since the "uniform
grain size" (claim 70) and "uniform . . . grains" (claim 76)
find literal support in the appellants' specification as
originally filed, the decision of the examiner to reject claims
70 and 76 under 35 U.S.C. § 112, first paragraph, is reversed.
Accordingly, our interpretation of "uniform grain size" (claim
70) and "uniform
. . . grains" (claim 76) to mean that all the grains in the
metal are uniform (i.e., always the same, unvarying, without
variation) found in footnote 4 (p. 5) of our decision is
withdrawn.
The second argument (pp. 3-5) raised by the appellants is
that term "uniform grain size throughout the metal" (claims 52
and 62) would have been understood by one skilled in the art of
metallurgy. In that regard, the appellants do not agree with
our definition of "uniform" to mean always the same, unvarying,
without variation. The appellants argue (p. 4) that
Appeal No. 95-4407 Page 4
Application No. 08/124,834
[o]ne skilled in the art of metallurgy, particularly lead-
based products, would appreciate the uniform grain size
produced by the extrusion method of the present invention,
especially when compared to the non-uniform grain size
resulting from cast lead grids such as those shown in Figs.
7-12 of the Prengaman Declaration.
It is our determination that the limitation that the grain
size is uniform throughout the metal is not an inherent property
of the originally disclosed structure for extruding the
composite wire. The declaration of R. David Prengaman (¶ 15-17)
states that disclosed structure for extruding the composite wire
produces "a uniform crystalline grain structure." The
declaration of R. David Prengaman (¶ 18) refers to micrographs
(Figures 1-6 of Exhibit 4) that show the grain structure of an
extruded lead coating made according to the method disclosed in
this application. However, those micrographs do not show a
grain size that is uniform (i.e., always the same, unvarying,
without variation) throughout the metal. The micrographs
(Figures 1-6 of Exhibit 4 of the Prengaman declaration) show a
more uniform grain structure than the micrographs (Figures 7-12
of Exhibit 4 of the Prengaman declaration). However, claims 52
and 62 recite that the grain size is uniform throughout the
Appeal No. 95-4407 Page 5
Application No. 08/124,834
Attorney's arguments in a brief cannot take the place of4
evidence. In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641,
646 (CCPA 1974).
metal, not that the grain size is more uniform when compared to
another product. Furthermore, the appellants have not presented
any evidence that would establish that one skilled in the wire4
art would not have understood "uniform" to mean always the same,
unvarying, without variation. Accordingly, the specification,
as originally filed, does not provide support for "uniform grain
size throughout the metal" (claims 52 and 62).
Appeal No. 95-4407 Page 6
Application No. 08/124,834
In light of the foregoing, the appellants' request for
rehearing is granted only to the extent that the decision of the
examiner to reject claims 70 and 76 under 35 U.S.C. § 112, first
paragraph, is reversed.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REQUEST FOR REHEARING - GRANTED-IN-PART
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 95-4407 Page 7
Application No. 08/124,834
JVN/gjh
Appeal No. 95-4407 Page 8
Application No. 08/124,834
WALL MARJAMA BILINSKI & BURR
217 MONTGOMERY STREET
HILLS BUILDING, 7TH FLOOR
SYRACUSE, NY 13202
ON REQUEST FOR REHEARING
APPEAL NO. 95-4407 - JUDGE NASE
APPLICATION NO. 08/124,834
APJ NASE
APJ CRAWFORD
APJ PATE
DECISION: GRANTED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 11 Aug 98
FINAL TYPED: