Ex parte Liveoak et al.

Board of Patent Appeals and Interferences

Mar 24, 1998

08359562 (B.P.A.I. Mar. 24, 1998)

Application for patent filed December 20, 1994. According to1
appellant, this application is a Continuation-In-Part of design application
29/012,296 filed August 30, 1993, now U.S. Patent No. D353,573, issued
December 20, 1994.
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(2) is not binding precedent of the Board.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 TALMADGE W. LIVEOAK
__________
Appeal No. 97-0331
Application 08/359,5621
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Talmadge W. Liveoak (the appellant) appeals from the final
rejection of claims 1-14. Claim 15, the only other claim present
in the application, stands allowed.
Appeal No. 97-0331
Application 08/359,562
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter a new rejection of claims
1, 8 and 9.
The appellant’s invention pertains to a hand-held paddle
that is particularly adapted for use with a small, shallow draft
recreational boat, such as a kayak. Independent claim 1 is
further illustrative of the appealed subject matter and reads as
follows:
1. A hand paddle comprising:
a paddle blade of a length shorter than its width
and having an upper side and a lower side,
an extended-in-length brace having corresponding
upper and lower sides as said paddle, with a
generally flattened end opposed from said paddle
blade for bearing against a forearm of a user at a
point near an elbow thereof,
a first opening in said brace for receiving a hand
of a user, so that in use said upper side of said
paddle blade bears against a hand of the user, and
a lower side of said brace bears against said
forearm.
The references relied on by the examiner are:
Malm 2,109,429 Feb. 22, 1938
Whipple 2,745,119 May 15, 1956
Girden 3,529,313 Sep. 22, 1970
Claims 1, 2, 8 and 9 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Malm.
Claims 3 and 10 stand rejected under 35 U.S.C. § 103 as
Appeal No. 97-0331
Application 08/359,562
3
being unpatentable over Malm in view of Whipple.
Claims 4-7 and 11-14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Malm in view of Girden.
Each of the above-noted rejections is based on the
examiner’s view that
the part of the paddle of MALM designated as the brace
- that part extending from opening 5 to the left end in
figure 2 - has upper and lower sides and a generally
flattened end. The generally flattened end is formed
by the flat undersurface of the left end of the paddle.
The paddle of MALM also has the opening 5 for receiving
the hand of the user. Appellant may argue that the
examiner is only speculating that the undersurface of
the paddle shown in figure 1 of MALM just above the
forearm will bear against the forearm if the swimmer’s
hand is pivoted upwardly by the force of the water, but
such an argument ignores the dynamics of the water
being pushed by the paddle and the dynamics of the
pivoting of a swimmer’s hand upwardly due to this
force, or pivoted upwardly for any reason.
Observation of figure 1 of MALM and the position
of both the hand and paddle makes it clear that
pivoting of the swimmer’s hand upwardly will bear the
end of the paddle located above the forearm in figure 1
onto the forearm. [Answer, pages 7 and 8.]
As to the limitation in independent claims 1 and 8 that an
end of the paddle bears “against a forearm of the user near an
elbow thereof,” the answer further states that
“near” is a term of relativity. Some of the
definitions of “near” given in The Random House
Dictionary are: at or to a place a relatively short
distance away from a specified person or thing; being
close by; and being relatively closer. This is why the
Appeal No. 97-0331
Application 08/359,562
4
examiner feels that the end of the paddle of MALM shown
in figure 1 and above the forearm of the swimmer is at
a point near the elbow. [Page 9.]
While we agree with the examiner that the paddle of Malm
(when used in the manner depicted in Fig. 1) has the capability
of being pivoted such that the end thereof will bear against the
forearm of the user, it is readily apparent that the end of the
paddle will bear against the user’s forearm at a point a short
distance above the wrist. While we appreciate the various
dictionary definitions cited by the examiner, we must point out
that the indiscriminate reliance on definitions found in
dictionaries can often produce absurd results. See In re Salem,
553 F.2d 676, 682, 193 USPQ 513, 518 (CCPA 1977). Instead, terms
in a claim should be interpreted in a manner consistent with the
specification and construed as those skilled in the art would
construe them (see In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566,
1567 (Fed. Cir. 1990), Specialty Composites v. Cabot Corp., 845
F.2d 981, 986, 6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)).
Here, viewing Fig. 1 of the appellant's drawing, it is readily
apparent that the end of the paddle bears against the forearm of
the user a very short distance from the elbow and the
specification on page 8 states that the fact that the end of the
Appeal No. 97-0331
Application 08/359,562
5
paddle bears against the forearm of the user near the elbow
provides (1) support for the wrist of the user and (2) leverage
between the elbow and hand. Consistent with the appellant’s
specification, we do not believe that the artisan would consider
the end of the paddle, in the arrangement depicted by Malm in
Fig. 1 (wherein the end of the paddle would bear against the
forearm of a user only a very short distance above the wrist when
the wrist is flexed in the manner described by the examiner), to
bear against the forearm “near” the elbow as claimed. This being
the case, we will not sustain the rejection of claims 1, 2, 8 and
9 under 35 U.S.C. § 102(b) based on the reference to Malm for the
reasons stated by the examiner.
As to the rejections under 35 U.S.C. § 103 of (1) claims 3
and 10 based on the combined teachings of Malm and Whipple and
(2) claims 4-7 and 11-14 based on the combined teachings of Malm
and Girden, we have carefully reviewed the references to Whipple
and Girden but find nothing therein which would overcome the
deficiencies that we have noted above with respect to Malm.
Accordingly, we will not sustain the rejections of claims 3-7 and
10-14 under 35 U.S.C. § 103.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Appeal No. 97-0331
Application 08/359,562
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Claims 1, 8 and 9 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Malm. Initially we note that anticipation
by a prior art reference does not require either the inventive
concept of the claimed subject matter or the recognition of
inherent properties that may be possessed by the prior art
reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987), cert. denied, 484
U.S. 827 (1987). 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 Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellant is claiming, but only
that the claims on appeal "read on" something disclosed in the
reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772,
218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984)).
Viewing Fig. 2 of Malm, it is readily apparent that the hand
of a user may be inserted through opening 5 in such a manner that
Appeal No. 97-0331
Application 08/359,562
7
the hand overlies the left-hand portion of the paddle and the
right-hand portion of the paddle overlies the forearm. When used
in such a manner, it is also readily apparent that the right-hand
end of the paddle would bear against the user’s forearm near the
elbow when the user’s wrist is flexed upwardly. While of course
there is no teaching in Malm of using the paddle in this manner,
it is well settled that 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,
e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-
32 (Fed. Cir. 1997). See also LaBounty Mfg. v. Int’l Trade
Comm’n, 958 F.2d 1066, 1075, 22 USPQ2d 1025, 1032 (Fed. Cir.
1992) (in quoting with approval from Dwight & Lloyd Sintering Co.
v. Greenawalt, 27 F.2d 823, 828 (2d Cir. 1928)):
The use for which the [anticipatory] apparatus was
intended is irrelevant, if it could be employed without
change for the purposes of the patent; the statute
authorizes the patenting of machines, not of their
uses. So far as we can see, the disclosed apparatus
could be used for "sintering" without any change
whatever, except to reverse the fans, a matter of
operation.
Here, the question of whether Malm’s paddle actually is or might
be used in the above-noted manner, merely depends upon the
Appeal No. 97-0331
Application 08/359,562
8
performance or non-performance of a future act of use, rather
than upon a structural distinction in the claims. Stated
differently, the paddle of Malm would not undergo a metamorphosis
to a new paddle simply because it was used in the manner which we
have noted above. 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).
We observe that on page 7 of the brief the appellant argues
that the opening 5 of Malm is sized only to accommodate a portion
of the hand of a user. We must point out, however, not only does
Malm in Fig. 1 depict the hand of the user being accommodated in
the opening 5, but it is expressly stated in Malm that “the
opening [5] is to receive the hand of the user.” Moreover, even
if the opening 5 of Malm only accommodated a portion of the hand
of the man depicted in Fig. 1, the hand of a smaller person, such
as a woman or child, would obviously be accommodated by this
opening.
In summary:
The examiner’s rejections of claims 1-14 are all reversed.
A new rejection of claims 1, 8 and 9 under 35 U.S.C.
§ 102(b) has been made.
This decision contains a new ground of rejection pursuant to
Appeal No. 97-0331
Application 08/359,562
-9-
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 that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
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 (§ 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. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Appeal No. 97-0331
Application 08/359,562
-10-
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0331
Application 08/359,562
-11-
Steven M. Clodfelter
235 High Road
Madison, AL 35758