Ex parte Hubert

Board of Patent Appeals and Interferences

May 22, 1998

08302504 (B.P.A.I. May. 22, 1998)

We note that there is some discrepancy in the file as to1
appellant’s name. In the original declaration and in the
heading of papers, his name is given as “Chazelle Hubert,” but
in the supplemental declaration (Paper No. 9, filed January
17, 1996) and in the “Real Party in Interest” section of the
brief it is given as “Hubert Chazelle.”
Application for patent filed September 8, 1994.2
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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHAZELLE HUBERT1
_____________
Appeal No. 97-3754
Application 08/302,5042
______________
ON BRIEF
_______________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 97-3754
Application 08/302,504
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 13, all the claims in the application.
In the examiner’s answer, the examiner made a new
ground of rejection, in response to which appellant filed, on
November 13, 1997, a Supplemental Reply Brief on Appeal (Paper
No. 23), and an Amendment Under 37 CFR § 1.193(b)(Paper No.
24), amending independent claims 1 and 10. Claim 10 is illus-
trative of the subject matter in issue; as amended, it reads:
10. An apparatus for compacting and cutting volumi-
nous objects of strong elasticity, the apparatus comprising:
(a) means for cutting;
(b) a rectangular tunnel having a substantially
horizontally aligned top wall, a substantially horizontally
aligned bottom wall, the bottom wall parallel to the top
wall, and two substantially vertically aligned side walls,
each of the two side walls extending between the top wall and
the bottom wall, the tunnel further including an entrance and
an extremity, the tunnel being wider at the entrance than at
the extremity, the extremity of the tunnel in communication
with the means for cutting;
Appeal No. 97-3754
Application 08/302,504
3
(c) a corresponding plurality of rollers disposed on
and parallel to each of the top wall, the bottom wall and each
of the two side walls; and
wherein the plurality of rollers direct material fed
into the entrance of the tunnel towards the extremity thereof
and wherein the material is compressed within the tunnel and
then cut by the means for cutting.
The references relied upon by the examiner in re-
jecting the appealed claims are:
Kisielewski 3,911,772 Oct. 14,
1975 Baikoff 3,991,944 Nov.
16, 1976
Barclay 4,976,178 Dec. 11,
1990
The appealed claims stand rejected as follows:
(1) Claims 1, 4 to 6 and 8 to 10, unpatentable over
Barclay, under 35 U.S.C. § 103;
(2) Claims 2, 3 and 7, unpatentable over Barclay in
view of Baikoff, under 35 U.S.C. § 103;
(3) Claims 11 to 13, unpatentable over Barclay in
view of Kisielewski, under 35 U.S.C. § 103.
The Barclay patent discloses a tire shearing machine
in which the tire carcasses are delivered to the cutting means
13 through a tunnel (conveyor) 39. The converging upper and
Appeal No. 97-3754
Application 08/302,504
Amended Brief on Appeal (Paper No. 18, filed March 3,3
1997).
4
lower sides of the tunnel consist of rollers 41 which compress
the tire 11 as it is conveyed toward the cutter, while the
vertical, parallel sides of the tunnel consist of gripper
rollers 53 which move the tire and center it on the conveyor
39.
Appellant argues on page 5 of the brief and on page3
3 of the supplemental reply brief that Barclay does not dis-
close or
teach, inter alia, a tunnel having walls, as claimed. The
examiner takes the position, however, that (answer, pp. 5 to
6):
Appellant must be reading the term “wall”
too narrowly. Barclay’s sets of rollers
and roller drives clearly define four walls
in that they create a barrier that does not
permit the workpiece to pass thru, but
instead forces the workpiece down the tun-
nel.
Appeal No. 97-3754
Application 08/302,504
The American College Dictionary (Random House, 1970)4
defines “wall” as:
1. an upright work or structure of stone, brick, or
similar material, serving for enclosure, division,
support, protection, etc., as one of the upright
enclosing sides of a building or a room, or a solid
fence of masonry . . . 3. anything which resembles
or suggests a wall . . . 4. a wall-like enclosing
part, thing, mass, etc.
5
We do not consider this position to be well taken.
While Barclay’s arrays of rollers 41, 53 might, in some con-
texts, be considered “walls,” they cannot be in the present
case because the claims recite the walls and rollers as sepa-
rate elements. Thus, independent claims 1 and 10 call for a
tunnel having various walls in part (b) and a plurality of
rollers “disposed on and parallel to” each of the walls in
part (c). These limitations are not met by the rollers 41, 53
of Barclay, because Barclay’s rollers clearly cannot at the
same time both constitute the walls and be “disposed on and
parallel to” the walls. The frames 51, 57, 59 on which
Barclay’s rollers are mounted are themselves not “walls.”4
In view of the foregoing, we conclude that Barclay
does not disclose or suggest the apparatus recited in claims 1
Appeal No. 97-3754
Application 08/302,504
6
and 10, and will not sustain the rejection of those claims, or
of claims 4 to 6, 8 and 9 dependent thereon. Also, since the
Baikoff and Kisielewski references do not supply the
deficiencies noted with regard to Barclay, we will not sustain
the rejections of claims 2, 3, 7 and 11 to 13.
Conclusion
The examiner’s decision to reject claims 1 to 13 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-3754
Application 08/302,504
7
Arnold S. Weintraub
Weintraub Duross & Brady
3020 Telegraph Road Suite 444
Bingham Farms, MI 48025-4505