Ex parte Kraus

Board of Patent Appeals and Interferences

Sep 23, 1998

08098516 (B.P.A.I. Sep. 23, 1998)

Application for patent filed July 28, 1993.1
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIBALD KRAUS

_____________
Appeal No. 96-1303
Application 08/098,5161
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 96-1303
Application 08/098,516
Any subsequent references in this decision to appel-2
lant’s brief are to the brief subsequently filed on August 7,
1997 (Paper No. 17).
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 30, all the claims remaining in the application.
The claims on appeal are drawn to a device for
holding a tube-shaped body, and are reproduced in Addendum A
of appel- lant’s brief filed August 9, 1995 (Paper No. 12).2
The references applied in the final rejection are:
Ellinwood 2,396,837 Mar. 19, 1946
Hopkins 3,126,183 Mar. 24, 1964
Cochran 3,163,712 Dec. 29, 1964
Nelson 4,264,047 Apr. 28, 1981
Santucci et al. (Santucci) 4,635,886 Jan. 13, 1987
Caveney et al. (Caveney) 4,919,373 Apr. 24, 1990
Kamiya et al. (Kamiya) 5,131,613 July 21, 1992
Milcent et al. (Milcent) 5,169,100 Dec. 8, 1992
The appealed claims stand finally rejected as fol-
lows:
Appeal No. 96-1303
Application 08/098,516
3
(1) Claims 1 to 30, unpatentable for failure to comply with
35 U.S.C. § 112, second paragraph;
(2) Claims 1 to 9 and 13 to 30, unpatentable under 35 U.S.C.
§ 103 over the following combinations of references:
(a) Claims 1 to 3, 8, 9, 13 to 17, 21 and 22, Hopkins
in view of Caveney;
(b) Claims 4 and 5, Hopkins in view of Caveney and Nelson;
(c) Claims 6 and 7, Hopkins in view of Caveney and
Ellinwood;
(d) Claims 18 and 19, Hopkins in view of Caveney and
Kamiya;
(e) Claim 20, Hopkins in view of Caveney and Milcent;
(f) Claims 23 to 27, 29 and 30, Hopkins in view of Caveney
and Cochran;
(g) Claims 23 and 28, Hopkins in view of Caveney and
Santucci.
Rejection (1)
Appeal No. 96-1303
Application 08/098,516
4
The examiner finds claim 1, the only independent
claim, to be indefinite because "the connected condition" in
the last line of the claim lacks proper antecedent basis. She
asserts on pages 3 and 4 of the answer that "there is no
[prior] positive recitation of 'a connected condition'," and
that "the connected condition" could be construed as being the
connection of the attachment portion recited in lines 3 and 4
of the claim.
A claim is definite (complies with the second
paragraph of § 112) if it "reasonably apprises those of skill
in the art of its scope." In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). In the present
case, the examiner focuses on "the connected condition," but
this phrase cannot be read in isolation; the part of claim 1
in which it appears recites "when
the catch means is in the connected position." Since claim 1
previously recites that the separate components of the
attachment portion are "selectively connectable by a catch
means" (line 14), it would be evident to one of ordinary skill
Appeal No. 96-1303
Application 08/098,516
5
in the art that "when the catch means is in the connected
position" means "when the separate components of the
attachment portion are connected by the previously-recited
catch means." We do not consider that one of ordinary skill
would have any doubt as to the meaning of "the connected
condition," even though that precise wording does not appear
elsewhere in claim 1, and would find the bounds of the claimed
subject matter to be distinct.
We therefore will not sustain rejection (1).
Rejection (2)(a)
In considering whether it would have been obvious to
combine Hopkins and Caveney in the manner proposed by the
examiner, we note that:
Obviousness cannot be established by
combining the teachings of the prior art to
produce the claimed invention, absent some
teaching or suggestion supporting the
combination. Under section 103, teachings
of references can be combined only if there
is some suggestion or incentive to do so.
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984)(original emphasis;
footnotes omitted).
Appeal No. 96-1303
Application 08/098,516
6
The basis of the examiner’s rejection is set forth on pages 3
and 4 of the final rejection (Paper No. 10), and need not be
repeated here. The motivation for combining the references,
i.e., for substituting Caveney’s attachment portion for
Hopkins’, would be, according to the examiner, "to provide
the latter’s device with an alternate attachment portion"
(final rejection, page 4), being "a mere substitution of
equivalents" (answer, page 5).
We do not consider this rejection to be well taken.
In Hopkins, the two parts 15,16 of the attachment portion are
brought into engagement by pivoting them around hinges 13
until shoulders 24,25 hook together, while in Caveney, the end
40 of strap 24 is connected to head 26 by inserting it through
slot 56 in the head for the teeth 30 on the strap to engage
the teeth 66 on the head. The manner in which Hopkins
connects the two parts of the attachment portion of his device
together, by pivoting them into side-by-side position (Fig.
4), is so different from Caveney’s insertion of the end of a
strap through a slot to make the connection that it is not
evident how one of ordinary skill would even approach
Appeal No. 96-1303
Application 08/098,516
7
substituting Caveney’s connection means for that of Hopkins,
as proposed by the examiner. The structure and operation of
the devices of these two references are so disparate
that in our view one of ordinary skill would derive no
suggestion or motivation from Caveney to modify the attachment
portion of Hopkins.
The rejection accordingly will not be sustained.
Rejections (2)(b) to (2)(g)
None of the additional references applied in these
rejections overcomes the deficiencies noted above in the
combination of Hopkins and Caveney. These rejections will
likewise not be sustained.
Conclusion
The examiner’s decision to reject claims 1 to 30 is
reversed.
REVERSED
IAN A. CALVERT )
Appeal No. 96-1303
Application 08/098,516
8
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1303
Application 08/098,516
9
Daniel G. Blackhurst
Fay, Sharpe, Beall, Fagan, Minnich & McKee
1100 Superior Avenue - Suite 700
Cleveland, OH 44114-2518