Ex parte DE GROOT

Board of Patent Appeals and Interferences

Mar 26, 1998

08380661 (B.P.A.I. Mar. 26, 1998)

Application for patent filed January 30, 1995. According to appellant,1
this application is a divisional of application 08/045,875, filed April 15,
1993, now U.S. Patent No. 5,391,114, issued February 21, 1995.
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KLASS W. DE GROOT
__________
Appeal No. 97-2222
Application 08/380,6611
__________
ON BRIEF
__________
Before COHEN, MEISTER, and STAAB, Administrative Patent
Judges.
Meister, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 12,
14, 15 and 17. Claims 13 and 16, the only other claims
Appeal No. 97-2222
Application 08/380,661
Page 2 of the answer states that “claims 13 and 16 are allowable as2
amended in the Supplemental After Final Amendment.” By “Supplemental After
Final Amendment,” the examiner is apparently referring to the amendment filed
concurrently with the brief. We observe, however, that this amendment has
neither been given a separate paper number nor clerically entered.
2
remaining in the application, stand allowed.2
The appellant’s invention pertains to a nail element
which is used for fastening together nailable building
components. Independent claim 12 is further illustrative of
the appealed subject matter and reads as follows:
12. A nail element comprising:
a plate-shaped body in a strip-form having head
end edges and lateral edges;
a plurality of elongated elements, wherein at
least a number of said plurality of elongated
elements are fixedly secured against the lateral
edges of the plate-shaped body at a point
located between opposite ends of said elongated
elements such that said elongated elements
sufficiently protrude from opposite surfaces of
said plate-shaped body to function as the nail
element.
The reference relied on by the examiner is:
Atwell 1,511,711 Oct. 14,
1924
Additional references relied on in this decision are:
Hallock (Hallock '967) 3,466,967 Sep. 16,
1969
Hill 3,950,816 Apr. 20,
Appeal No. 97-2222
Application 08/380,661
3
1976
Hallock (Hallock '802) 4,031,802 Jun. 28,
1977
Claims 12, 14, 15 and 17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Atwell.
The examiner’s rejection is explained on page 3 of the
final rejection. The arguments of the appellant and examiner
in
support of their respective positions may be found on pages 4-
8 of the brief and pages 4-6 of the answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and by the examiner in
the answer. As a consequence of this review, we will (1)
sustain the rejection of claims 12 and 14, (2) reverse the
rejection of claims 15 and 17 and (3) pursuant to our
Appeal No. 97-2222
Application 08/380,661
4
authority under the provisions of 37 CFR § 1.196(b), enter a
new rejection of claims 15 and 17 under 35 U.S.C. § 103.
Considering first the rejection of claims 12 and 14, it
is the examiner’s position that
Atwell discloses a nail element comprising a plate-
shaped body (5, 6 or 11) having head edges (the ends
of the members facing in and out of the page) and
lateral edges. A plurality (two) of elongated
members (1, 2) each attached at a middle region
between their ends to the lateral edges of the
plate-shaped body member such that they protrude
therefrom to function as a nail. [Final rejection,
page 3.]
It is the appellant’s position that
The ATWELL reference describes a twin nail
system that detachably connects two nails 1, 2 to
each other through the use of frangible, break-away
cross-bars 10, 11 or 5, 6 (column 1, lines 32-38 and
95-102). The crossbars are “only lightly secured to
the nails 1 and 2 (page 1, lines 95-103 and page 2,
lines 50-54).
Hence, the cross bars in ATWELL do not form a part
of the operable nail element, but rather serve only
to function as a spacer for the two nails (page 1,
lines 33-38).

In ATWELL, only the embodiment of
Figures 4 and 5 make use of rigidly secured cross
bar 10. However, the cross bar 10 is secured to the
nails immediately below the nail heads (page 2,
lines 40-44). As shown in ATWELL’s drawing figures,
the nails 1, 2 are all attached to the head-end
edges of the bars 5,6, 10 and 11. As stated in
Appeal No. 97-2222
Application 08/380,661
5
ATWELL, it is the extremities of the bars 5, 6 which
are only lightly secured to the nails (page 1, lines
95-97). [Brief, pages 4 and 5.]
We are unpersuaded by the appellant's arguments. The
terminology in a pending application's claims is to be given
its broadest reasonable interpretation (see In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)) and
limitations from a pending application's specification will
not be read into the claims (see Sjolund v. Musland, 847 F.2d
1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir. 1988)).
Moreover, anticipation by a prior art reference does not
require either the inventive concept of the claimed subject
matter or the recognition of inherent properties that may be
possessed by the prior art reference. See Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). A prior
art reference anticipates the subject matter of
a claim when that reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
Appeal No. 97-2222
Application 08/380,661
6
v. Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997)); however, the law of anticipation does
not require that the reference teach what the appellant is
claiming, but only that the claims on appeal "read on"
something disclosed in the 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)).
It is true that in Atwell the elongated elements or nails
1, 2 are only temporarily secured to the “plate-shaped bodies”
or bars 5, 6 or 11 and do not form a part of the “nail
element” in its final assembled state. We must point out,
however, there is no claim limitation which would preclude
Atwell’s arrangement and it is well settled that features not
claimed may not be relied upon in support of patentability.
In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
That is, independent claim 12 only broadly requires that the
plurality of elongated elements be “fixedly secured” against
the lateral edges of the plate-shaped body, and the mere fact
that the bars or plate-shaped bodies 5, 6 or 11 of Atwell are
described as being “lightly secured,” does not preclude them
Appeal No. 97-2222
Application 08/380,661
The American Heritage Dictionary, Second College Edition, 1982,3
Houghton Mifflin Company, Boston, MA, defines “fix” as -- b. To make fast to;
attach --.
7
from also being “fixedly secured.” In this regard Atwell,3
while stating that the extremities (i.e., the lateral edges)
of the bars 5, 6 (i.e., plate-shaped bodies) are only “lightly
secured” to the nails 1 and 2, further states that these bars
or plate-shaped bodies (1) serve to hold the two elongated
elements or nails together during initial driving until such
time that the bars or plate-shaped bodies come into contact
with the shingles or sheathing into which they are being
driven and (2) upon further driving, the bars or bodies are
broken away, thus allowing the elongated elements or nails to
become fully seated (see page 1, lines 95-105; page 2, lines
18-31). Clearly, bars or bodies which are sufficiently
“secured” to hold the elongated elements or nails together
during initial driving and only “break away” when the bars or
bodies contact the surface of the article into which the nails
are being driven, can be considered to be “fixedly secured” as
broadly claimed.
In view of the foregoing, we will sustain the rejection
Appeal No. 97-2222
Application 08/380,661
8
of claims 12 and 14 under 35 U.S.C. § 102(b) as being
anticipated by Atwell.
Turning to the rejection of claims 15 and 17 under 35
U.S.C. § 102(b) as being anticipated by Atwell, the appellant
argues that Atwell’s elongated elements or nails are not
“beveled asymmetrically” as claimed. On the other hand, the
examiner contends that
The right edge forming the tip of the nail in each
said figures is shown to extend a slightly shorter
distance towards the head of the nail than the one
on the left thus making the edge where the right
side of the tip meets the shaft slightly more angled
and hence the tip asymmetrically beveled.

Furthermore, nails are
mass produced with the pointed ends being formed
thereon in a less than precise cutting step which
leads to at least a slight asymmetric beveling.
Exact symmetry is not cost effective and generally
not critical. Since Atwell is silent on the
formation of the nail ends it would be a reasonable
assumption that the ends were formed in the
“conventional” manner thus making them
asymmetrically beveled. [Emphasis ours.]
We will not support the examiner’s position. Atwell
neither states nor clearly shows that the ends of his nails
are asymmetrically beveled. As to the examiner’s “assumption”
Appeal No. 97-2222
Application 08/380,661
9
that the Atwell’s nail ends are made in a “conventional”
manner which would inherently result in a “slight asymmetric
beveling,” we must point out that inherency may not be
established by probabilities or possibilities (In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)) and the fact
that a certain thing
may result from a given set of circumstances is not sufficient
to
establish inherency (In re Rijckaert, 9 F.3d 1531, 1534, 28
USPQ2d 1955, 1957 (Fed. Cir. 1993)). Since each and every
element set forth in dependent claims 15 and 17 cannot be
found either explicitly or under the principles of inherency
in Atwell (see Hazani v. Int’l Trade Comm’n, supra), we will
not sustain the examiner's rejection of claims 15 and 17 under
35 U.S.C. 102(b).
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 15 and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Atwell in view of Hallock ’967, Hill
Appeal No. 97-2222
Application 08/380,661
The conclusion of obviousness may be made from "common knowledge and4
common sense" of the person of ordinary skill in the art. See In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)).
Indeed, Hill even expressly recognizes such an advantage (see column 4,5
lines 44-47).
10
and Hallock ’802. As we have noted above, there is no clear
teaching in Atwell of an asymmetric bevel on the ends of his
elongated elements or nails 1, 2. However, Hallock ’967 at 23
(Fig. 13), Hill at 32 (Fig. 4) and Hallock ’802 at 40 (Figs. 8
and 9) collectively establish that it was well-known in the
art to provide an asymmetric bevel on the ends of elongated
fastening elements such as nails. In view of these teachings,
the artisan would have found it obvious as a matter of common
sense to 4
provide an asymmetric bevel on the ends of the elongated
elements 1, 2 of Atwell if, for no other reason, than to
achieve the self-evident advantage of ease of manufacture5
vis-à-vis Atwell’s “pointed” ends.
In summary:
The rejection of claims 12 and 14 under 35 U.S.C. §
Appeal No. 97-2222
Application 08/380,661
11
102(b) is affirmed.
The rejection of claims 15 and 17 under 35 U.S.C. §
102(b) is reversed.
A new rejection of claims 15 and 17 is made under 35
U.S.C. § 103.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(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
Appeal No. 97-2222
Application 08/380,661
12
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment
or a second appeal, this case should be returned to the Board
Appeal No. 97-2222
Application 08/380,661
13
of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judg ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-2222
Application 08/380,661
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Appeal No. 97-2222
Application 08/380,661
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