Ex parte HENDRICKSON

Board of Patent Appeals and Interferences

Aug 25, 1998

08456692 - (D) (B.P.A.I. Aug. 25, 1998)

Application for patent filed June 1, 1995. According to1
appellant, this application is a continuation-in-part of
Application 29/016,831 filed December 27, 1993, now U.S. Patent
No. D363,943 issued November 7, 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN HENDRICKSON
__________
Appeal No. 97-3661
Application No. 08/456,6921
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 23-44, which constitute all of the claims
remaining of record in the application.
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Application No. 08/456,692
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The appellant's invention is directed to a funnel (claims
23-27), a process for making a funnel (claims 28-32), a funnel
made by a particular process (claims 33-37), the combination of
separated walls defining a space and a funnel for directing
material into the space (claims 38-41), and the combination of a
form and a funnel for directing material into the form (claims
42-44). The subject matter before us on appeal is illustrated by
reference to claim 23, which has been reproduced in an appendix
to the Appeal Brief (Paper No. 10).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Hepburn 418,719 Jan. 7, 1890
Belden 657,080 Sep. 4, 1900
Melvin 2,827,931 Mar. 25, 1958
Joseph 2,940,298 Jun. 14, 1960
THE REJECTIONS
Claims 23-25, 38, 39 and 42-44 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Melvin.
Claims 28-30 and 33-35 stand rejected under 35 U.S.C. § 103
as being unpatentable over Melvin.
Appeal No. 97-3661
Application No. 08/456,692
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Claims 26, 27, 31, 32, 36, 37, 40 and 41 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Melvin in view
of Belden, Hepburn and Joseph.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
The Examiner’s Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984).
We find that all of the various walls, openings, sides and
ends which form the funnel recited in independent claims 23, 38
and 42 are disclosed in Melvin, in the relationship required in
these claims. We also find that the separated walls required by
claim 38, and the form of claim 42, are found in Melvin.
However, contrary to the position taken by the examiner, we agree
with the appellant that Melvin does not explicitly teach that the
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Application No. 08/456,692
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funnel be of a “unitary one-piece continuous construction,” as
also is required by these three independent claims. This being
the case, Melvin does not anticipate these claims, and the
rejection under Section 102(b) cannot be sustained. It then
follows that the like rejection of dependent claims 24, 25, 39,
43 and 44 cannot be sustained.
Additionally, we do not agree with the examiner that the
“recess” recited in claims 25 and 44 is present in Melvin, and
for this reason also claims 25 and 44 are not anticipated by
Melvin.
New Rejection By The Board Under 35 U.S.C. § 103
Pursuant to our authority under 37 C.F.R. § 196(b), this
panel of the Board enters the following new rejection:
Claims 23, 24, 38, 39, 42 and 43 are rejected under 35
U.S.C. § 103 as being unpatentable over Melvin.
The question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested to
one of ordinary skill in the art at the time the invention was
made. See Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) and In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). While
Appeal No. 97-3661
Application No. 08/456,692
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there must be some suggestion or motivation for one of ordinary
skill in the art to combine the teachings of the references, it
is not necessary that such be found within the four corners of
the references themselves; a conclusion of obviousness may be
made from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion
in a particular reference. See In re Bozek, 416 F.2d 1385, 1390,
163 USPQ 545, 549 (CCPA 1969). Further, in an obviousness
assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738, 742, 226 USPQ
771, 774 (Fed. Cir. 1985). Insofar as the references themselves
are concerned, we are bound to consider the disclosure of each
for what it fairly teaches one of ordinary skill in the art,
including not only the specific teachings, but also the
inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom. See In re Boe,
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966); and In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
As we stated above in our discussion of the Section 102
rejection of these claims, all of the elements of the funnel
recited in the claims are disclosed by Melvin in the relationship
set forth in the claims, and Melvin also discloses the separated
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walls of claim 38 and the form of claim 42. As far as the
limitation that the funnel be of a “unitary one-piece continuous
construction” is concerned, we agree that it is not explicitly
found in Melvin. Melvin does suggest, however, that the funnel
be made of plastic (column 2, line 62), and that mouth and the
spout be “integral” (column 2, lines 49-50). It is our opinion
that one of ordinary skill in the art would have found it obvious
to make the Melvin funnel of unitary one-piece continuous
construction for the self-evident advantages thereof, which would
have been known to the artisan working in this field, such as
ease of molding, strength and smoothness. Suggestion is found in
the common knowledge and common sense that should be accorded to
one of ordinary skill in the art. In re Bozek, supra.
As for claims 24, 29, 34, 39 and 43, we first point out that
during examination before the Patent and Trademark Office, the
pending claims in an application must be interpreted as broadly
as their terms reasonably allow, without reading any limitations
from the specification into the claims (see In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)), for if the
limitations in the specification were required to be read into
the claims there would be no need for claims and no basis for the
requirement of 35 U.S.C. § 112 that the specification conclude
Appeal No. 97-3661
Application No. 08/456,692
See, for example, Merriam Webster’s Collegiate2
Dictionary, Tenth Edition, 1996, page 1009.
7
with claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention (see
Sjolund v. Musland, 847 F.2d 1573, 1580, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988)). These claims add to their respective parent
claims the additional step of “a rim on the outer part of” the
sloping sides and ends of the funnel. The common definition of
“rim” is the outer edge or border of something. The outer edge2
of the Melvin funnel therefore constitutes a “rim,”, and thus the
terms of these claims also are met.
The Examiner’s Rejections Under 35 U.S.C. § 103
The first Section 103 rejection advanced by the examiner is
that claims 28-30 and 33-35 would have been obvious in view of
Melvin. Independent claim 28 is directed to a process for making
a funnel, and independent claim 33 to a funnel made by a
particular process. We begin our analysis by reiterating our
finding that all of the elements of the funnel recited in these
claims are disclosed in Melvin, and in the required relationship
to one another. We share the examiner’s view that it would have
been obvious to one of ordinary skill in the art to construct the
funnel in the manner set forth in claims 28 and 33, a conclusion
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which the appellant does not dispute, except for the step of
forming it to be of a “unitary one-piece continuous
construction.” With regard to this, as we expressed above in the
new rejection we entered, it is our opinion that one of ordinary
skill in the art would have found it obvious to make the claimed
funnel in such a fashion for the self-evident advantages thereof,
based upon the common knowledge and common sense that should be
accorded to one of ordinary skill in the art.
As we did above, we conclude that the teachings of Melvin,
considered in the light of the knowledge which must be accorded
to one of ordinary skill in the art, establish a prima facie case
of obviousness with regard to the subject matter of independent
claims 28 and 33, and we will sustain the rejection of these two
claims.
Claims 29 and 34 add to their respective parent claims the
additional step of “forming a rim on the outer part of” the
sloping sides and ends. Again referring to our new rejection,
the outer edge of the Melvin funnel constitutes a “rim,” and
therefore we shall sustain the rejection of claims 29 and 34.
We reach the opposite conclusion with regard to claims 30
and 35, which add a “recess.” As was the case above with regard
to the Section 102 rejection, this feature is not taught by
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Melvin, and we therefore will not sustain the rejection of these
claims.
The second Section 103 rejection made by the examiner is
that claims 26, 27, 31, 32, 36, 37, 40 and 41 are unpatentable
over the teachings of Melvin in view of Belden, Hepburn and
Joseph. Claims 26, 31, 36 and 40 add the limitation that the rim
in the claims from which they depend is “directed outwardly” from
the sloping sides and ends of the funnel. All three of the
secondary references here applied disclose rims extending
outwardly from the sloping sides of funnels. We agree with the
examiner that extending the rim of the Melvin funnel outwardly
from the sloping sides would have been an obvious expedient to
one of ordinary skill in the art for the self-evident advantages
thereof, such as structural rigidity, which would have been known
to the artisan. The rejection of these claims therefore is
sustained.
Claims 27, 32, 37 and 41 add the “recess” discussed above,
which in our view is not taught by Melvin. Nor do we find this
to be rendered obvious by Belden, Hepburn or Joseph. We
therefore will not sustain the rejection of these claims.
We have carefully considered the arguments presented by the
appellant as they apply to the examiner’s rejections and to the
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Application No. 08/456,692
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new rejection which we have entered. However, as to those
rejections we have sustained, as well as the new one, we have not
found these arguments to be persuasive. Our position with regard
to them should be apparent from the foregoing discussions.
SUMMARY
The examiner’s rejection of claims 23-25, 38, 39 and 42-44
as being anticipated by Melvin is not sustained.
The examiner’s rejection of claims 28, 29, 33 and 34 as
being unpatentable over Melvin is sustained.
The examiner’s rejection of claims 30 and 35 as being
unpatentable over Melvin is not sustained.
The examiner’s rejection of claims 26, 31, 36 and 40 as
being unpatentable over Melvin in view of Belden, Hepburn and
Joseph is sustained.
The examiner’s rejection of claims 27, 32, 37 and 41 as
being unpatentable over Melvin in view of Belden, Hepburn and
Joseph is not sustained.
Pursuant to 37 C.F.R. § 196(b), claims 23, 24, 38, 39, 42
and 43 are rejected under 35 U.S.C. § 103 as being unpatentable
over Melvin.
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Application No. 08/456,692
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No rejections stand against claims 25, 27, 30, 32, 35, 37,
41 and 44.
The decision of the examiner is affirmed-in-part.
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 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. . . .
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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 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 of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 97-3661
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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)
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 97-3661
Application No. 08/456,692
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Thomas W. Secrest
P.O. Box 1303
151 N. Market Boulevard
Chehalis, WA 98532