Ex parte JUERGENS et al.

Board of Patent Appeals and Interferences

Apr 28, 1998

08235332 (B.P.A.I. Apr. 28, 1998)

Application for patent filed April 29, 1994.1
Claims 1 and 15 have been amended subsequent to final2
rejection.
1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ALBERT M. JUERGENS, III
______________
Appeal No. 97-3064
Application 08/235,3321
_______________
ON BRIEF
_______________
Before MEISTER, STAAB and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Albert M. Juergens III (the appellant) appeals from the
final rejection of claims 1 and 15, the only claims remaining
in the application. 2
Appeal No. 97-3064
Application 08/235,332
The examiner in the answer noted that the appellant3
stated in the brief that claims 1 and 15 “stand or fall
together” and, accordingly, confined the arguments in the
answer to only apparatus claim 15. We must point out,
however, that in the reply brief (which the examiner entered)
on pages 3 and 4 the appellant presented separate arguments as
to method claim 1 and urged that the argument and cases relied
on by the examiner “are not applicable to method claim 1 which
2
We AFFIRM-IN-PART.
The appellant’s invention pertains to a method and
apparatus for transporting an elongated flexible resilient
strip having a nominally curved lateral cross section. Copies
of claims 1 and 15 may be found in the appendix to the brief.
The reference relied on by the examiner is:
Wittel 1,933,783 Nov. 7,
1933
Claims 1 and 15 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Wittel.
The examiner’s rejection is explained on pages 4 and 5 of
the answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 6-
8 of the brief, pages 1-4 of the reply brief and pages 5-7 of
the answer.3
Appeal No. 97-3064
Application 08/235,332
can rightly be distinguishable over prior art because of
functional and operational limitations” (page 3, footnote 2).
3
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner in the answer. As a consequence of this review,
we will sustain the rejection of claim 15. We will not,
however, sustain the rejection of claim 1.
Considering first the rejection of claim 15 under 35
U.S.C. § 102(b) as being anticipated by Wittel, it is the
examiner’s position that
Wittel meets the structural limitations of the
apparatus as claimed and, thus, would inherently
accommodate such an elongated flexible resilient
strip of nominally curved lateral cross section and
the characteristics of such [i.e., “snap to . . .”
and “snap back . . .”] would be exhibited if such a
strip is placed in the apparatus. Moreover, Wittel
discloses the ability of the apparatus to handle
various types of film . . . . [Answer, pages 6 and
7; emphasis ours.]
The appellant does not contest the examiner’s assertion
Appeal No. 97-3064
Application 08/235,332
Claim 15 in subparagraph b) sets forth “drive means for4
longitudinally advancing the strip along the arcuate path . .
. to bend . . . and by that bending cause the nominally curved
lateral cross section to snap to a flat lateral cross
section.” We observe, however, the drive means (i.e., rollers
20,21) is simply the mechanism which causes the strip to
advance, it is the tracks which guide the advancing strip
along the arcuate path that actually performs the function of
causing the advancing strip to “snap” as claimed. In the
event of further prosecution before the examiner, this
informality should be corrected. For purposes of the § 102(b)
rejection, we will consider subparagraphs a) and b) to
collectively define a means for advancing and guiding the
strip which causes the advancing strip to bend and “snap” in
the required manner.
4
that the device of Wittel would inherently “accommodate” a
flexible resilient strip of nominally curved lateral cross
section and that the claimed characteristics would therefore
be “exhibited.” Instead, the appellant argues that
Wittel does not suggest that the bending of his
strip in its arcuate path is sufficient to snap a
laterally curved strip into a flat lateral cross
section.
If the only point of difference between claim 15
and Wittel was that the claimed apparatus is
operated with a laterally curved strip whereas
Wittel operates his apparatus with a laterally flat
strip, then the Examiner’s argument might have some
merit. However, that is not the case. The point of
distinction is in element (b) of apparatus claim 15,
which is a permissible means plus function
structural limitation, requiring the arcuate path be4
Appeal No. 97-3064
Application 08/235,332
5
such as to achieve longitudinal bending to a degree
causing the laterally curved strip to snap laterally
flat. [Reply brief, page 3.]
We are unpersuaded by the appellant’s arguments. A
prior art reference anticipates the subject matter of a claim
when that reference discloses every feature of the claimed
invention, either explicitly or inherently. See Hazani v.
Int’l Trade Comm’n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361
(Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
If a prior art device inherently possesses the capability of
functioning in the manner claimed, anticipation exists
regardless of whether there was a recognition that it could be
used to perform the claimed function. See In re Schreiber,
128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
See also In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990):
“The discovery of a new property or use of a
previously known composition, even when that
property and use are unobvious from prior art, can
not impart patentability to claims to the known
composition.”
Here, as the examiner has noted, Wittle discloses guide
Appeal No. 97-3064
Application 08/235,332
Where, as here, there is a sound basis to believe that5
the critical function for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of
the prior art device, it is incumbent upon an appellant to
6
tracks or gates 17, 18 that define a curved guide path through
which film 16 (i.e., a flexible resilient strip) is advanced
by a driving mechanism 34. Comparing Fig. 1 of Wittle and
Fig. 2 of the appellant’s device, it is readily apparent that
Wittle’s curved guide path is remarkably similar to the
appellant’s curved guide path. The tracks or gates 17, 18 of
Wittle are stated to be spaced apart by a distance of two film
thicknesses (page 1, line 35; page 2, lines 58 and 59) and,
thus, the guide path defined by these tracks or gates clearly
has the capability
of guiding a longitudinally advancing strip which has a
“nominally curved lateral cross section.” In view of the
remarkable similarity of the guide path of Wittle to that of
the appellant, there is a reasonable basis to conclude that if
the device of Wittle was used to guide and advance a strip
having a “nominally curved lateral cross section,” Whittle’s
device would inherently function to cause the strip to “snap”
in the claimed manner. Whether Wittle’s device actually is5
Appeal No. 97-3064
Application 08/235,332
prove that the prior art device does not in fact possess the
characteristics relied on. See, e.g., In re Spada, supra; In
re Fitzgerald,
619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re Glass,
474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973) and In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67 (CCPA 1971).
7
or might be used to guide a strip having a nominally curved
lateral cross section depends upon the performance or non-
performance of a future act of use, rather than upon a
structural distinction in claim 15. Stated differently, the
strip advancing and guiding device of Wittle would not undergo
a metamorphosis to a new device simply because it was used to
advance and guide a strip having such a cross section. See In
re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974)
and Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int.
1987).
In view of the foregoing, we will sustain the rejection
of claim 15 35 U.S.C. § 102(b) as being anticipated by Wittle.
Turning to the rejection of claim 1 under 35 U.S.C. §
102(b) as being anticipated by Wittle, this claim expressly
requires the step of “advancing the strip [i.e., the strip
having a ‘nominally curved lateral cross section’ as set forth
Appeal No. 97-3064
Application 08/235,332
8
in the preamble] longitudinally toward the processing station
. . . .” There is absolutely nothing in Wittle which would
either teach or suggest a strip having such a cross section.
Throughout Whittle’s disclosure the strip only broadly
referred to as a “film,” with no disclosure whatsoever as to
its lateral cross section. Since each and every feature set
forth in claim 1 cannot be found in Wittle, either explicitly
or under the principles of inherency, we will not sustain the
rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Wittle.
In summary:
The rejection of claim 1 under 35 U.S.C. § 102(b) is
reversed.
The rejection of claim 15 under 35 U.S.C. § 102(b) is
affirmed.
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
Appeal No. 97-3064
Application 08/235,332
9
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 97-3064
Application 08/235,332
10
Charles J. Brown
Brown, Kelleher,
Zwickel & Wilhelm
Main Street, Box 489
Windham, NY 12496
JMM/cam