Ex parte Grabis

Board of Patent Appeals and Interferences

Jul 17, 1998

08263015 (B.P.A.I. Jul. 17, 1998)

Application for patent filed June 20, 1994. According1
to the appellant, this application is a continuation of
08/047,165, filed April 14, 1993, now abandoned; which is a
continuation of 07/729,949, filed July 15, 1991, now
abandoned.
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not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DIETRICH W. GRABIS

_____________
Appeal No. 96-1619
Application 08/263,0151
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH and CARMICHAEL, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 96-1619
Application 08/263,015
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 22-26, which
constitute all the claims remaining in the application. An
amendment after final rejection was filed on May 4, 1995 and
was entered by the examiner.
The invention pertains to a method for forming a
shield and attaching it to the faceplate of a cathode ray
tube. The shield is formed from a transparent flat plastic
substrate having a thickness between 0.8mm and 1.2mm. The
plastic substrate is coated with a filter. The substrate is
attached to the faceplate of the cathode ray tube which causes
it to bend to substantially conform to the shape of the
faceplate.
Representative claim 22 is reproduced as follows:
22. A method for shielding a cathode ray tube having
a curved faceplate comprising the following steps:
providing a substantially flat transparent plastic
substrate having a thickness between about 0.8mm and 1.2mm,
said plastic substrate being composed of a polycarbonate or
acrylic material which when bent to conform to said curved
faceplate will bend without fracturing and also when bent
remains wrinkle free to preserve its optical properties;
Appeal No. 96-1619
Application 08/263,015
3
coating said flat plastic substrate on at least one
surface to provide a filter;
affixing said coated substrate to said faceplate
causing it to bend to substantially conform to the surface of
said curved faceplate.
The examiner relies on the following references:
Moritz et al. (Moritz) 3,582,189 June 01, 1971
Dickie et al. (Dickie) 4,686,576 Aug. 11, 1987
Kuhlman et al. (Kuhlman) 4,910,090 Mar. 20, 1990
Claims 22-26 stand rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the invention. Claims 22-26 also stand
rejected under 35 U.S.C. § 103. As evidence of obviousness
the examiner offers Kuhlman in view of Dickie or Moritz.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
Appeal No. 96-1619
Application 08/263,015
4
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that claims 22-26 particularly point out the
invention in a manner which complies with 35 U.S.C. § 112. We
are also of the view that the collective evidence relied upon
and the level of skill in the particular art would not have
suggested to one of ordinary skill in the art the obviousness
of the invention as set forth in claims 22-26. Accordingly,
we reverse.
We consider first the rejection of claims 22-26 under
the second paragraph of 35 U.S.C. § 112. The examiner’s
rejection states the following:
In claim 22, “said plastic substrate
being composed of a polycarbonate or
acrylic material which when bent to
conform to said curved faceplate will
bend without fracturing and also when
bent remains wrinkle free to preserve
its optical properties” is a desired
Appeal No. 96-1619
Application 08/263,015
5
result which does not state/claim what
type of or how the material is
designed for performing the result
[answer, page 3].
Appellant did not specifically respond to this rejection in
the original brief, but appellant did respond in the reply
brief which was entered by the examiner [Paper #31].
Appellant responds that the examiner has admitted that only
routine experimentation would be needed to achieve the claimed
properties, and the language in the claim is complementary to
the narrow thickness range recited in the claims [reply brief,
page 2].
Although appellant’s reference to routine
experimentation may seem misplaced in responding to a
rejection under the second paragraph of 35 U.S.C. § 112, it is
appropriate here because the last portion of the rejection
quoted above seems to question whether the material has been
adequately disclosed. To the extent that the examiner’s
rejection may be viewed as a challenge to the sufficiency of
the disclosure, we conclude that the examiner has presented no
evidence or analysis in support of this contention.
Appeal No. 96-1619
Application 08/263,015
6
In considering the second paragraph of 35 U.S.C. §
112, the general rule is that a claim must set out and
circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the
disclosure as it would be by the artisan. In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Acceptability
of the claim language depends on whether one of ordinary skill
in the art would understand what is claimed in light of the
specification. Seattle Box Co., v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
We find the recitation in lines 4-8 of claim 22 to
clearly recite a physical property of the material, and the
artisan would understand which materials meet this property.
Therefore, the artisan would have recognized the metes and
bounds of the invention recited in claim 22. Accordingly, the
rejection of claims 22-26 under the second paragraph of 35
U.S.C. § 112 is not sustained.
We now consider the rejection of claims 22-26 under 35
U.S.C. § 103 as unpatentable over the teachings of Kuhlman in
view of Dickie or Moritz. Appellant has indicated that the
Appeal No. 96-1619
Application 08/263,015
7
claims on appeal stand or fall together as a single group
[brief, page 3]. Therefore, all contested claims stand or
fall together. See In re King, 801 F.2d 1324, 1325, 231 USPQ
136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991,
217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will only
consider the rejection against independent claim 22 as
representative of all the claims on appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
Appeal No. 96-1619
Application 08/263,015
8
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
Kuhlman teaches the making of a shield for the
faceplate of a cathode ray tube. The shield of Kuhlman is
made from a plastic material composed of polycarbonate or
acrylic having a thickness between 1 and 50 mils (.0254mm to
1.27mm). The plastic material is coated with a filter layer
and a conductive layer. The coated material is then thermally
formed to conform to the specific dimensions of a desired
faceplate. Kuhlman does not disclose the manner of attaching
the formed shield to the faceplate of a CRT.
Dickie and Moritz were cited by the examiner as
examples of using a bezel to affix a shield to the faceplate
of a CRT. It is the position of the examiner that the Kuhlman
Appeal No. 96-1619
Application 08/263,015
9
shield is inherently flexible, and if the Kuhlman shield were
attached to a faceplate by a bezel as taught by Dickie or
Moritz, then the Kuhlman shield would inherently bend to
conform to the shape of the faceplate [answer, pages 4-6].
Appellant argues that there is no evidence that the
shield in Kuhlman is inherently flexible because the shield in
Kuhlman is shaped by thermal forming of the shield using a die
press, or applied pressure [brief, page 4]. We agree with
appellant that there is no evidence on this record that the
preformed shield in Kuhlman retains its flexibility after it
has been heated and formed and is ready for attachment to the
faceplate of a CRT. Since the shield in Kuhlman is designed
to be preformed to the shape of the faceplate before
attachment, there would be no reason why it needs to be
flexible. We find it incredible to assume that Kuhlman goes
to the trouble to thermoform his shield at high temperatures
if the material was naturally flexible at the time it is
placed on the faceplate. Thus, we find no evidence on this
record that the coated substrate of Kuhlman will be caused to
bend as the result of being affixed to the faceplate of a CRT
as recited in claim 22.
Appeal No. 96-1619
Application 08/263,015
10
Appellant also argues that the claimed range of
substrate thicknesses represents a narrow range in which the
invention unexpectedly works. According to appellant, the
Kuhlman substrate does not have the property that “when bent
to conform to said curved faceplate [it] will bend without
fracturing and also when bent remains wrinkle free to preserve
its optical properties” as recited in claim 22. There is
evidence on this record that the thermoformed shield of
Kuhlman will crack when bent. Based upon the examiner’s
rejection of the claim under the second paragraph of 35 U.S.C.
§ 112, the examiner noted that “no patentable weight” had been
afforded this recitation in the claim [answer, page 3].
It was error for the examiner to ignore this
limitation of claim 22. As we noted above in the discussion
of the rejection under Section 112, the properties of the
material recited in claim 22 are clear and such properties
cannot be ignored by the examiner. The examiner has failed to
convince us that the preformed shield in Kuhlman is
“inherently flexible” when attached to a faceplate and would
have the claimed non-fracture and wrinkle free properties at
this time. Thus, the examiner has failed to establish a prima
Appeal No. 96-1619
Application 08/263,015
11
facie case of the obviousness of independent claim 22. Since
all the claims stand or fall together, we do not sustain the
rejection of claims 22-26 under 35 U.S.C. § 103.
In summary, we have not sustained the rejection of
claims 22-26 under either 35 U.S.C. § 112 or § 103.
Accordingly, the decision of the examiner rejecting claims 22-
26 is reversed.
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
Appeal No. 96-1619
Application 08/263,015
12
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
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