Ex parte Fregien et al.

Board of Patent Appeals and Interferences

Feb 27, 1998

08080890 (B.P.A.I. Feb. 27, 1998)

Application for patent filed June 22, 1993.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES A. FREGIEN and EARL J. SHANABROOK
__________
Appeal No. 97-1646
Application 08/080,8901
__________
ON BRIEF
__________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge, and CRAWFORD, Administrative Patent
Judge.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 6,
8 to 11 and 13, all the claims remaining in the application.
The claims involved are reproduced in the appendix to
appellants’ brief. Claims 8 and 10 are illustrative of the
subject matter in issue:
Appeal No. 97-1646
Application 08/080,890
2
8. An apparatus for reducing the size of block propellant
material comprising a means for remotely positioning a block of
propellant between a cutting means and a means for remotely
causing the cutting means to pass through the block of propellant
thereby creating two or more smaller blocks of propellant.
10. A method of reducing block propellant comprising:
placing a propellant block between a cutting means and a
retaining means, and
remotely causing the block propellant to contact the cutting
means and forcing the cutting means to pass through said block
propellant.
The references applied by the examiner in rejecting the
claims are:
Lamb 3,217,768 Nov. 16, 1965
Costarelli 4,483,226 Nov. 20, 1984
Kühnert et al. 5,386,318 Jan. 31, 1995
(Kühnert) (filed May 12, 1993)
An additional reference, of record, applied in rejections
herein pursuant to 37 CFR § 1.196(b), is:
Nix 4,020,723 May 3, 1977
The claims on appeal stand rejected as follows:
(1) Claims 1 to 6, 8 to 11 and 13, unpatentable for failing to
comply with 35 U.S.C. § 112, second paragraph;
Appeal No. 97-1646
Application 08/080,890
Rejections (4) and (5) are new grounds of rejection first2
raised in the examiner’s answer. Appellants filed a reply brief
in response.
This ground of rejection would seem to be more aptly3
based on the first paragraph (lack of written description) of
§ 112.
3
(2) Claims 1, 8 and 9, unpatentable over Costarelli in view of
Lamb, under 35 U.S.C. § 103;
(3) Claims 5, 10, 11 and 13, unpatentable over Costarelli, under
35 U.S.C. § 103;
(4) Claims 2 to 4, unpatentable over Costarelli in view of Lamb
and Kühnert, under 35 U.S.C. § 103;
(5) Claim 6, unpatentable over Costarelli in view of Kühnert,
under 35 U.S.C. § 103.2
Rejection (1)
The examiner asserts that the claims on appeal do not comply
with the second paragraph of § 112 in that they are indefinite on
a number of different grounds.
(a) The examiner contends that various limitations in
claims 1, 5, 8 and 11 are confusing and unclear because they
imply that, contrary to appellants’ disclosure, the cutting
blades are not stationary. For example, the examiner points to3
the expression “a remotely controlled means for causing said
Appeal No. 97-1646
Application 08/080,890
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cutting blades to pass through the block of energetic material”
in claim 1, lines 8 and 9.
We do not regard this language as indefinite. A statement
such as “causing the cutting blades to pass through the block” is
generic to any situation where there is relative movement between
the cutting blades and the block. The blades are no less caused
to move through the block because the block is moved (as in
appellants’ disclosed apparatus) than they would be if the blades
were moved.
(b) The examiner finds the “means for moving said aligned
block” recited in lines 6 to 9 of claim 2 to be confusing because
“it appears to be the same previously recited ‘remotely
controlled means for positioning ... said retainer’” (answer,
page 6). We do not agree. The “means for moving” in claim 2 is
not recited as being in addition to the “remotely controlled
means” recited in parent claim 1, but rather is claimed as a
component thereof. Thus, claim 2 recites (numbers in brackets
added):
2. The apparatus of claim 1 wherein the means
for remotely positioning the block of energetic
material between the cutter and the retainer comprises
[1] a carousel ... , and [2] a means for moving said
aligned block ....
Appeal No. 97-1646
Application 08/080,890
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We do not consider that there is any confusion about what claim 2
covers, particularly when it is read in light of the
specification, as it must be. In re Merat, 519 F.2d 1390, 1396,
186 USPQ 471, 476 (CCPA 1975).
(c) The examiner considers claims 6 and 9 to be indefinite
in that the terms “the cutter” in claim 6 and “the means for
remotely forcing” in claim 9 lack clear antecedent basis. Also,
“claim 6 is a method claim but it is unclear what additional
methods [sic] steps are being recited” (answer, page 6). Since
the appellants did not address these grounds in their brief, the
rejection will be sustained as to claims 6 and 9.
(d) The final basis for the § 112 rejection is (answer,
page 6, original emphasis):
Claim 8 is vague and indefinite and is of undue
breadth since only a single means is positively
recited, i.e., “a means for...positioning”.
The examiner further elaborates on page 12 of the answer that:
The “cutting means” and “the means for remotely causing
the cutting means to pass through the block of
propellant” are not positively recited. Therefore, the
claim is a single means claim which is vague and
indefinite and of undue breadth.
We will not sustain this ground of rejection. Claim 8
recites three means, i.e., “a means for remotely positioning,” “a
cutting means” and “a means for remotely causing.” While the
Appeal No. 97-1646
Application 08/080,890
We also note that it has been held that a single means4
claim is properly rejected under the first paragraph of § 112,
rather than the second paragraph. In re Hyatt, 708 F.2d 712,
714, 218 USPQ 195, 197 (Fed. Cir. 1983).
All references herein to appellants’ brief are to the5
brief filed on May 2, 1996 (Paper No. 15).
6
latter two means might be more positively recited, the claim
requires all three means, and therefore we do not consider that
it amounts to a “single means” claim.4
Rejection (2)
The basis of this rejection is fully set forth on pages 6
and 7 of the examiner’s answer. Appellants argue that (brief,
pages 7 to 8):5
Costarelli nether explicitly or implicitly suggests
such a [remote positioning] device and to expect
someone to examine the food art to find a reference
[Lamb] which at the very best discloses a quasi remote
controlled device for loading material for cutting is
neither fair, just or within the law.
To the extent that this may constitute an argument that Lamb is
nonanalogous art, we do not agree. Even if Lamb may not satisfy
the first part of the two-part test set forth in In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979), it satisfies the
second part in that it is reasonably pertinent to the particular
problem with which the inventor was involved.
Appeal No. 97-1646
Application 08/080,890
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After considering the record in light of the arguments
presented by appellants and the examiner, we conclude that the
apparatus recited in claims 1, 8 and 9 would have been obvious
over Costarelli in view of Lamb. While a remote positioning
device would not be required to protect the operator of the
Costarelli apparatus from the inert material being cut thereby,
the use of such a device for loading the material M into the
Costarelli apparatus would have been suggested, as the examiner
states, “in order to eliminate the need for the operator to
contact and position the work between the cutter and the
retainer” (answer, page 7), and to “eliminate the need for an
operator to manually feed and position the work between the
retainer and cutting means” (id., page 13). While this
motivation for modifying Costarelli by adding a remotely
controlled positioning means as disclosed by Lamb might be
different from appellants’ purpose in using such a means, such
difference in purpose does not affect the obviousness of
combining the references. In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688,
693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rejection (2) will
therefore be sustained.
Appeal No. 97-1646
Application 08/080,890
By contrast, we have sustained Rejection (2), supra,6
because the recitation of energetic or propellant material does
not distinguish the claimed apparatus over the prior art. See In
re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967) and In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997) (recitation of a new intended use for an old product
does not make a claim to that old product patentable).
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Rejection (3)
We will not sustain this rejection. Method claims 5, 10, 11
and 13 are drawn to methods of cutting block explosives or
reducing block propellant. Costarelli, the only reference
applied in this rejection, discloses a method of cutting
thermoplastic waste materials, and does not teach or suggest
using the method to cut material of the type recited in these
claims. The fact that the Costarelli apparatus could be used to
cut blocks of energetic material as argued by the examiner, does
not make it obvious to do so, absent some suggestion thereof in
the prior art. Cf. In re Osplack, 195 F.2d 921, 923, 93 USPQ6
306, 307 (CCPA 1952).
Rejections (4) and (5)
These rejections are grounded on the examiner’s finding that
it would have been obvious to provide the apparatus of Costarelli
with a remotely controlled carousel in view of the disclosure of
such a carousel by Kühnert.
Appeal No. 97-1646
Application 08/080,890
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After considering the rejections as stated in the examiner’s
answer in view of the arguments in the reply brief and in the
supplemental examiner’s answer, we conclude that these rejections
are not sustainable.
Appellants argue that Kühnert is nonanalogous art, and that
the examiner has engaged in improper hindsight reconstruction in
combining the references. Assuming, of which we are doubtful,
that Kühnert is analogous art, we perceive no teaching,
suggestion or motivation for one to use a carousel to supply the
thermoplastic waste material to Costarelli’s shearing machine.
The examiner asserts that this would avoid frequent feeding of
blocks M to the machine, but such blocks would still have to be
loaded into the carousel. The Kühnert carousel is a somewhat
complex device which is disclosed as being used to supply
biological or other specimens to a microscope for inspection. In
our view, one of ordinary skill would not derive therefrom any
suggestion to use such a device for supplying blocks of
thermoplastic waste to a shearing machine.
Rejections Pursuant to 37 CFR § 1.196(b)
(1) Claims 1 and 8 to 10 are rejected under 35 U.S.C. § 102(b)
as anticipated by Nix, which discloses an apparatus and method
for remotely cutting blocks of propellant material. A block of
Appeal No. 97-1646
Application 08/080,890
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propellant 42 is positioned by remotely controlled cylinder 26
onto cutting surface 70 between cutter 18 and retainer 24.
Remotely controlled cylinder 12 causes cutter 18 to pass through
the block, creating a multitude of pieces consisting of a sample
(Fig. 4) and excess cuttings (col. 3, line 1). With regard to
the “one or more cutting blades” recited in claim 1, it is noted
that Nix discloses that the cutter has a cutting surface (col. 2,
lines 11 to 13), and a skilled artisan would know that such a
cutting surface would inherently constitute a cutter blade in the
shape of the sample, similar to a cookie cutter. Cf. In re
Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir.
1995), cert. denied, 116 S.Ct. 1362 (1996).
2. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Nix. Whether cutter 18 of Nix moves and retainer 24 remains
stationary, or vice versa, would be simply an obvious matter of
design choice.
Conclusion
The examiner’s decision to reject the claims on appeal (1)
under 35 U.S.C. § 112, second paragraph, is affirmed as to claims
6 and 9, and reversed as to claims 1 to 5, 8, 10, 11 and 13, and
(2) under 35 U.S.C. § 103 is affirmed as to claims 1, 8 and 9 and
Appeal No. 97-1646
Application 08/080,890
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reversed as to claims 2 to 6, 10, 11 and 13. Claims 1 and 8 to
11 are rejected pursuant to 37 CFR § 1.196(b).
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 appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new 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. . . .
Appeal No. 97-1646
Application 08/080,890
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(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 appellants 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 appellants elect 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 of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 97-1646
Application 08/080,890
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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, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
HARRISON E. McCANDLISH )
Senior ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 97-1646
Application 08/080,890
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Alan C. Cohen
United Technologies Corporation
Patent Department - MS 524
Hartford, CT 06101