Ex parte DOWZALL et al.

Board of Patent Appeals and Interferences

Mar 31, 1998

08295829 (B.P.A.I. Mar. 31, 1998)

Application for patent filed October 12, 1994. According1
to appellants, this application is a national stage application
under 35 U.S.C. § 371 of PCT/GB93/00510 filed March 11, 1993.
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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journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARTIN E. DOWZALL and VAZGEN J. HOUSSIAN
________________
Appeal No. 97-2148
Application 08/295,8291
________________
ON BRIEF
________________
Before ABRAMS, STAAB and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-12, all the claims in the application. We reverse.
Appeal No. 97-2148
Application 08/295,829
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Appellants’ invention pertains to an auxiliary nib unit
having a relatively thin nib for use in conjunction with a marker
implement having a relatively broad nib. When attached to the
marker implement, the relatively thin nib of the auxiliary unit
engages the nib of the marker implement to convert the implement
into one having a finer nib. Independent claim 1, a copy of
which is appended to appellants’ brief, is exemplary of the
claimed subject matter.
The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 103 are:
Yokosuka et al. (Yokosuka) 4,913,175 Apr. 3, 1990
Ayme 1,005,487 Sept. 22, 1965
(British Patent)
Levasseur 2,489,753 Mar. 12, 1982
(French Patent)
Fukui 2,148,200 May 30, 1985
(British Patent)
Claims 3, 5, 11 and 12 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 applicant regards as the invention” (answer, page 3).
Claims 1-8, 11 and 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ayme in view of Fukui and Yokosuka.
Appeal No. 97-2148
Application 08/295,829
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Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ayme in view of Fukui and Yokosuka, and
further in view of Levasseur.
The full text of the examiner’s rejections and response to
the argument presented by appellants appears on pages 3-6 of the
answer.
The opposing viewpoints of appellants are set forth on pages
5-14 of the brief.
The Rejection under 35 U.S.C. § 112, Second Paragraph
We will not sustain the rejection of claims 3, 5, 11 and 12
under 35 U.S.C. § 112, second paragraph.
Independent claim 1, from which rejected claims 3, 5, 11 and
12 depend, is directed to a nib conversion unit per se and does
not positively recite the main nib of the marker implement as a
part of the claimed conversion unit. Nevertheless, dependent
claims 3, 5, 11 and 12 each further describe, in one way or
another, the main nib of the inferentially recited marker
implement. For example, claim 5 reads “A nib unit as claimed in
claim 1, in which the main nib is formed from a plastics
material” (emphasis added).
Appeal No. 97-2148
Application 08/295,829
The examiner has not specifically identified, and it is2
not apparent to us, what “office guidelines” he is relying on in
support of his position.
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In explaining the 35 U.S.C. § 112, second paragraph,
rejection of these claims, the examiner makes the following
statement:
Claims 3, 5, 11 and 12 appear to be properly
rejected under office guidelines concerning
combination/subcombination claims. The combination[2]
of the nib unit and main nib is only positively claimed
in claims 8-10. The main nib is only recited in the
preamble in claim 1. [answer, page 4]
It thus appears that the examiner’s rejection is based on a
belief that the dependent claims do not pass muster under the
second paragraph of 35 U.S.C. § 112 because they do not place a
further limitation on the positively recited nib conversion unit.
While the second paragraph of 35 U.S.C. § 112 requires that
a claim must particularly point out and distinctly claim the
subject matter sought to be patented, it does not require the
claims to be in any particular form. In the present instance,
the examiner does not appear to have any difficulty understanding
the meaning of the claim language in question. Nor do we.
Instead, the examiner appears to take issue with the form of the
claims. However, in the absence of a clear explanation of how
the claim format results in a failure to particularly point out
Appeal No. 97-2148
Application 08/295,829
We note that the rejection here is not under the fourth3
paragraph of 35 U.S.C. § 112, which requires a dependent claim to
further limit the claim from which it depends. In any event, the
dependent claims in question further limit the subject matter of
independent claim 1 in the sense that they further describe or
limit the nib of the marker implement with which the claimed
conversion unit is to be used.
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and distinctly claim the subject matter sought to be patented,
the examiner’s position is not well taken.3
The Rejections under 35 U.S.C. § 103
We will not sustain the rejection of claims 1-12 under
35 U.S.C. § 103.
There appears to be no dispute that Ayme discloses the
subject matter of claim 1 except that the nib 14 of the auxiliary
nib unit is not movable axially of the auxiliary nib unit
housing, as called for in claim 1. According to the examiner, it
would have been obvious to mount Ayme’s nib 14 for axial movement
in the auxiliary housing in view of the teachings of Fukui and
Yokosuka, the motivation for so doing “[being] provided by the
secondary patents” (answer, page 4, line 1) and “to reduce wear
on the nib” (answer, page 4, last line).
Fukui discloses a marker having a single needle-like nib 2
mounted for axial sliding movement within a nib holder pipe 1.
The interior end of the nib 2 has bent sections 2a, 2b on each
end of a section 2c generally transverse to the nib. The bent
Appeal No. 97-2148
Application 08/295,829
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sections resiliently support the nib to permit it to move axially
within the holder pipe. Yokosuka discloses a liquid applying
device comprising a spring loaded actuator valve 41, and an
axially slidable liquid-applying member 3 for unseating the valve
so that liquid can flow forwardly from the reservoir 45 to the
tip of the device when it is desired to apply liquid.
In our view, the combined teachings of the applied
references would not have suggested mounting Ayme’s nib 14 for
axial movement in the auxiliary nib unit housing. The mere fact
that Fukui and Yokosuka disclose nib portions which are slidably
mounted is not sufficient in this regard. In Fukui, the purpose
for mounting the needle-like writing nib 2 for axial movement in
the holder pipe 1 is not entirely clear, although it may be
inferred that it helps to keep the holder pipe free of debris
(page 2, lines 79-81) and facilitates the smooth flow of ink
along the nib (page 2, lines 125-126). In Yokosuka, the purpose
for mounting the liquid-applying member 3 for axial movement is
to open the valve 41, which in turn causes the liquid in the
reservoir 45 to flow forwardly so that the application of liquid
can be achieved (column 2, lines 61-68). Neither of these
references, however, describe any advantage to having an axially
slidable nib that would appear to be applicable to Ayme. In the
Appeal No. 97-2148
Application 08/295,829
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same vein, Ayme provides no hint that such an arrangement might
be beneficial. Accordingly, the examiner’s statement that the
motivation for the proposed combination is found in the secondary
references is not understood. Likewise, the examiner’ rationale
that mounting the nib of Ayme’s auxiliary nib unit for axial
movement “to reduce wear on the nib” has no basis in the applied
references and is, at best, speculative. In this light, it is
apparent that the examiner has engaged in an impermissible
hindsight reconstruction of the claimed invention wherein the
appellants’ claims have been utilized as a template to
selectively piece together isolated disclosures in the prior art.
We therefore cannot sustain the 35 U.S.C. § 103 rejection of
claims 1-8, 11 and 12 as being unpatentable over Ayme in view of
Fukui and Yokosuka.
As to the Levasseur reference additionally cited by the
examiner against claims 9 and 10, we have carefully reviewed this
reference but find nothing therein which makes up for the
deficiencies of Ayme, Fukui and Yokosuka discussed above. Thus,
we also cannot sustain the 35 U.S.C. § 103 rejection of claims 9
and 10.
Appeal No. 97-2148
Application 08/295,829
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Summary
The 35 U.S.C. § 112, second paragraph, rejection of claims
3, 5, 11 and 12 is reversed.
The 35 U.S.C. § 103 rejection of claims 1-12 is reversed.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-2148
Application 08/295,829
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