Ex parte Herold

Board of Patent Appeals and Interferences

May 13, 1998

08381531 (B.P.A.I. May. 13, 1998)

Application for patent filed January 31, 1995.1
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WOLFGANG HEROLD

_____________
Appeal No. 97-2644
Application 08/381,5311
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-2644
Application 08/381,531
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1 through 3, 5 through 13 and 15
through 22. Claim 23, the only other claim remaining in the
application, stands allowed. Claims 4 and 14 have been can-
celed. On page 3 of the examiner's answer (Paper No. 16), it
is indicated that the rejection of the claims on appeal under
35 U.S.C. § 112, second paragraph, has been withdrawn and that
claims 12 and 22 are now objected to, but would be allowable
if rewritten in independent form including all the limitations
of the base claim and any intervening claims. Accordingly,
only claims 1 through 3, 5 through 11, 13 and 15 through 21
remain for our consideration on appeal.
Appellant's invention relates to a connecting pin
adapted for use in conjunction with belt fasteners of the type
having intermeshed coupling eyelets. See, for example, Figure
Appeal No. 97-2644
Application 08/381,531
3
1 of the application drawings, wherein the conveyor belt
sections (4) and (5) are connected together by a connecting
pin (1) of appellant's design which is passed through inter-
meshed coupling eyelets (e.g., 10 and 11). A copy of repre-
sentative independent claim 1 on appeal appears in Appendix A
to appellant's brief (Paper No. 15).
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Stolz 4,023,239 May 17,
1977
Schick 4,641,398 Feb. 10,
1987
Claims 1 through 3, 5, 13, 15 and 17 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Schick.
Claims 6, 7 and 16 stand rejected under 35 U.S.C. §
103 as being unpatentable over Schick.
Claims 8 through 11 and 18 through 21 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Schick in
view of Stolz.
Appeal No. 97-2644
Application 08/381,531
4
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 16, mailed February 19, 1997) for the exam-
iner's reasoning in support of the rejections, and to appel-
lant's brief (Paper No. 15, filed December 2, 1996) for appel-
lant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellant's specification and
claims, to the applied prior art references, and to the re-
spective positions articulated by appellant and the examiner.
As a consequence of our review, we have made the determination
that none of the examiner's rejections will be sustained. Our
reasoning in support of this determination follows.
Looking first at the examiner's rejection under
Appeal No. 97-2644
Application 08/381,531
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§ 102(b), we note that independent claim 1 defines the con-
necting pin as comprising, inter alia, a plurality of core
elements, with each of said core elements
being rigid, and having a cylindrical shape
extending along its length measured between
opposite ends thereof, which length is
greater than the distance between at least
two adjacent ones of the coupling eyelets.
Claim 1 further sets forth that the connecting pin
includes at least one casing element in which said core ele-
ments are closely received and retained in an end-to-end
relationship "to position each of said core elements through
more than two adjacent ones of the coupling eyelets" (emphasis
added).
Looking at Figures 1 and 2 of the application draw-
ings and at appellant's specification (e.g., pages 1 through
3), we observe that the core elements or pieces (2) are de-
scribed as being made of "high strength solid material" and as
being "cylindrical in shape." In addition, it is appellant's
stated intention that each of the core elements or pieces (2)
Appeal No. 97-2644
Application 08/381,531
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be "long enough to extend through a minimum of more than two
coupling eyelets" (page 1, lines 32-33) and/or have a length
that "is selected in such a manner that they always extend
through more than two adjacent ones of the coupling eyelets 10
and 11" (page 3, lines 17-19). With this as guidance, we
look to the language of independent claim 1 on appeal to
understand its metes and bounds.
As noted above, the first clause of appellant's
claim 1 sets forth a plurality of core elements, and then
defines those elements as each "being rigid, and having a
cylindrical shape extending along its length measured between
opposite ends thereof." We understand this claim language, in
light of appellant's disclosure, to require that each of the
core elements have a cylindrical shape over the entire length
of the core element measured from end-to-end, for example, as
seen in appellant's drawing Figures 1 and 2. This clause of
claim 1 also sets forth
Appeal No. 97-2644
Application 08/381,531
7
that the length of each of the core elements "is greater than
the distance between at least two adjacent ones of the cou-
pling eyelets." Given the guidance of appellant's specifica-
tion referred to above and the requirements of the recitations
found in the second clause of claim 1 on appeal, we understand
that the length of each of the core elements is such as to
allow each core element to extend through more than two adja-
cent ones of the coupling eyelets. In the language of the
specification, the core elements are each long enough to
extend through "a minimum of more than two coupling eyelets"
(page 1) or each have a length so that they "always extend
through more than two adjacent ones of the coupling eyelets"
(page 3).
The examiner contends (answer, pages 5-6 and 8-9)
that the subject matter of appellant's independent claim 1 is
anticipated under 35 U.S.C. § 102(b) by the connecting pin
seen in Figure 10 of Schick, wherein each of the rigid core
elements
Appeal No. 97-2644
Application 08/381,531
8
(1 or 1c) of the connecting pin is configured as seen in
Figure 6 of the patent. We do not agree. It is an essential
prerequisite that the scope and content of the claimed subject
matter be fully understood prior to the application of prior
art thereto. Given our understanding and interpretation of
the scope and content of
appellant's claim 1 on appeal as discussed supra, it is clear
to us that the connecting pin of Schick does not include a
plurality of core elements which are each shaped and config-
ured as required in claim 1 on appeal. Each of the core
elements (1) or (1c) of Schick (Figures 1, 4, 6 and 10) is
clearly not of a cylindrical shape along its entire length
measured from end-to-end, as is required in appellant's claim
1 on appeal. The examiner's attempt (answer, pages 8-9 and
Appendix A) to read one of the four segments of the core
elements (1) of Schick as being responsive to each of the core
elements defined and required in claim 1 on appeal is likewise
totally unavailing. Accordingly, the exam- iner's rejection
of claims 1 through 3, 5, 13, 15 and 17 under
Appeal No. 97-2644
Application 08/381,531
9
35 U.S.C. § 102(b) will not be sustained.
For the same reasons as indicated above, it is
apparent that the examiner's rejection of dependent claims 6,
7 and 16 under 35 U.S.C. § 103 based solely on Schick will
also not be sustained.
As for the examiner's rejection of claims 8 through
11 and 18 through 21 under 35 U.S.C. § 103 as being unpatent-
able over Schick in view of Stolz, we see nothing in the
patent to
Stolz which in any way provides for the deficiencies of Schick
as noted above. Thus, even if one of ordinary skill in the
art were to consider combining the teachings of the applied
patents in the manner urged by the examiner, a proposition
which we consider to be highly questionable, the result would
not be a connecting pin as now claimed by appellant in the
claims before us on appeal. Accordingly, the examiner's
Appeal No. 97-2644
Application 08/381,531
10
rejection of claims 8 through 11 and 18 through 21 under 35
U.S.C. § 103 will not be sustained.
Appellant's brief, at pages 15 and 16, makes refer-
ence to a declaration by the inventor, Mr. Harold (attached to
Paper No. 9, filed September 12, 1996). However, in view of
our dis- position of the anticipation and obviousness rejec-
tions above, we find no need to review this declaration. We
note in passing that the record of this application is some-
thing less than the model of clarity with regard to whether
this declaration was actually considered by the examiner or
not. See, particularly, the advisory action (Paper No. 11,
mailed September 19, 1996). The decision with regard to
appellant's petition filed November 20, 1996 (Paper No. 14,
mailed December 31, 1996), indicates that the declaration "was
not formally considered by the examiner as to content."
Based on the foregoing, the decision of the examiner
rejecting claims 1 through 3, 5, 13, 15 and 17 under 35 U.S.C.
§ 102(b) as anticipated by Schick, claims 6, 7, and 16 under
Appeal No. 97-2644
Application 08/381,531
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35 U.S.C. § 103 as being unpatentable over Schick, and claims
8 through 11 and 18 through 21 under 35 U.S.C. § 103 as being
unpatentable over Schick in view of Stolz, is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-2644
Application 08/381,531
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