Ex parte DEMASI

Board of Patent Appeals and Interferences

Oct 9, 1998

08355599 (B.P.A.I. Oct. 9, 1998)

Application for patent filed December 14, 1994.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DOUGLAS D. DEMASI
__________
Appeal No. 97-1702
Application 08/355,5991
___________
REHEARING
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Before MEISTER, NASE, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
ON REQUEST FOR REHEARING
The appellant requests that we reconsider our decision
mailed on March 31, 1998 wherein we (1) affirmed the rejection
of claims 6, 7, 16 and 17 under 35 U.S.C. § 102(b), (2)
affirmed the rejection of claims 8 and 18 under 35 U.S.C. §
103, (3) reversed the rejections of claims 9-15, 19 and 20
Appeal No. 97-1702
Application 08/355,599
2
under 35 U.S.C. § 103 and (4) entered a new rejection of
claims 19 and 20 under 35 U.S.C. § 112, second paragraph. The
request is directed to our affirmance of claims 6, 7, 16 and
17 under 35 U.S.C. § 102(b) and claims 8 and 18 under 35
U.S.C. § 103. We have carefully reconsidered our decision in
light of the arguments advanced; however, we decline to alter
our decision in any respect.
The appellant's arguments are based on the position that
the claimed "cover" must be an element which is entirely
separate and distinct from the ball. In support of this
position the appellant has cited various dictionary
definitions; however, as we pointed out on pages 4 and 5 of
our decision, it is well settled that the terminology in a
pending application's claims is to be given its broadest
reasonable interpretation (In re Morris, 127 F.3d 1048, 1056,
44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and 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 (Sjolund v. Musland, 847 F.2d
1573, 1581-82, 6 USPQ2d 2020, 2027 (Fed. Cir. 1989)).
Appeal No. 97-1702
Application 08/355,599
Webster's Third New International Dictionary of the English Language,2
Unabridged, G. & C. Merriam Co., Springfield, MA, 1971.
3
Webster's dictionary defines " cover" as -- 2(c): an overlay2 2
or outer layer esp. for protection . . .(emphasis ours).
Clearly, the outermost portion the segments 4 of Finn form a
layer which (in light of this definition) can be considered to
be a "cover," much as the outermost layer or skin of a
baseball is commonly referred to as its cover. We also
observe that the examiner throughout the prosecution of this
case has maintained that the Finn's segments 4 comprise a
cover and, thus, the appellant had ample opportunity to amend
the claims to clearly define that the cover is an entirely
separate member, but chose not to do so until after final
rejection (at which point the examiner refused to consider
such an amendment as presenting a new issue - see Paper Nos. 6
and 10, which refusal was upheld on petition (see Paper No.
12)). In effect, the appellant is asking us to read into the
claims a limitation which he tried to add by way of an
amendment after final rejection (the entry of which was
denied). This, we decline to do.
Appeal No. 97-1702
Application 08/355,599
4
As to claim 7, the outermost and innermost surfaces which
define the cavities in Finn form inner and outer walls as
broadly claimed.
The appellant's request is granted to the extent of
reconsidering our decision, but is denied with respect to
making any changes therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Appeal No. 97-1702
Application 08/355,599
5
Administrative Patent Judge )
) APPEALS AND
)
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
JMM:kis
Joseph B. Taphorn
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