Ex parte Mermell

Board of Patent Appeals and Interferences

May 12, 1998

08562853 (B.P.A.I. May. 12, 1998)

Application for patent filed November 27, 1995.1
Claims 1 and 12 have been amended subsequent to final rejection.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for publication in a law journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MELVIN W. MERMELL
_____________
Appeal No. 97-4205
Application 08/562,8531
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Melvin W. Mermell (the appellant) appeals from the final
rejection of claims 1-12, the only claims present in the
application.2
WE REVERSE.
Appeal No. 97-4205
Application 08/562,853
In the final rejection claims 1-12 were also rejected under 35 U.S.C. §3
112, second paragraph. In view of the lack of mention of this rejection in the
answer, we presume that the examiner has withdrawn the final rejection of claims
1-12 on this ground. See Ex parte Emm, 118 USPQ 180 (Bd.App. 1957).
2
The appellant’s invention pertains to a firearm safety
storage box. Independent claim 1 is further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the appellant’s brief.
The prior art relied on by the examiner is:
Luisada 3,655,087 Apr. 11, 1972
Veenema 3,989,157 Nov. 2, 1976
Markovich 4,446,900 May 8, 1984
Sacks 5,149,203 Sep. 22, 1992
The answer states that the following rejections are
applicable to the claims on appeal:3
Claims 1-7 and 10-12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Luisada in view of Veenema and Markovich.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Luisada in view of Veenema, Markovich and
"Official Notice."
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Luisada in view of Veenema Markovich and Sacks.
The examiner’s rejections are explained on pages 5-7 of the
answer. The arguments of the appellant and examiner in support
Appeal No. 97-4205
Application 08/562,853
3
of their respective positions may be found on pages 4-10 of the
brief, pages 1-3 of the reply brief and pages 8-12 of the answer.
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. This review leads us to conclude that the prior
art relied on by the examiner fails to establish the obviousness
of the appealed subject matter within the meaning of 35 U.S.C.
§ 103. Accordingly, we will not sustain any of the above-noted
rejections.
Initially, we note that the brief contains arguments
concerning the propriety of the examiner’s requirement for
correction of the drawings. Under 35 U.S.C. § 134 and 37 CFR
§ 1.191, appeals to the Board of Patent Appeals and Interferences
are taken from the decision of the primary examiner to reject
claims. We exercise no general supervisory power over the
examining corps and decisions of primary examiners to require
corrections to the drawings are not subject to our review. See
Manual of Patent Examining Procedure (MPEP) §§ 1002.02© and 1201
Appeal No. 97-4205
Application 08/562,853
4
(6th ed., Rev. 3, Jul. 1997); cf. In re Mindick, 371 F.2d 892,
894, 152 USPQ 566, 568 (CCPA 1967) and In re Deters, 515 F.2d
1152, 1156, 185 USPQ 644, 648 (CCPA 1975). Thus, the relief
sought by the appellant would have properly been presented by a
petition to the Commissioner under 37 CFR § 1.181.
Each of the above-noted rejections is bottomed on the
examiner’s view that:
It would have been obvious to one having
ordinary skill in the art in view of Veenema
and Markovich to modify the container of
Luisada so the wall panels are permanently
secured to the frame structure as taught by
Veenema and also to include foam beddings
within the container as taught by Markovich
to safely secure the firearm and prevent the
contents from sliding during handling.
[Answer, page 6.]
The examiner also opines that:
Luisada clearly discloses the removable
access panel (114) having a body (116), size
and shape similar to the other panels
(Figures 1 and 10; column 4, lines 13-17).
Luisada also discloses a latch means (89, 92,
96, 98) affixed to the removable access panel
for securing the container. It is submitted
that once the other panels are affixed to the
frame, they are affixed permanently until
disassembled. It would have been obvious to
one having ordinary skill in the art to
eliminate latch means from the container of
Luisada so the removable access panel is not
Appeal No. 97-4205
Application 08/562,853
5
visually distinct from the other panels to
prevent others from readily determining which
side to open. The omission of an element and
its function, for example to make something
less expensive to manufacture would appear
obvious to one working in this art. There
does not appear to be anything unobvious
about using the teaching of providing
adhesive for permanently securing the other
panels to the frame structure as taught by
Veenema (column 2, lines 48-68) in the
container of Luisada to provide a secure
container and also prevent the others getting
access to the container contents. [Answer,
pages 8 and 9.]
Initially, as to the examiner’s contention that the panels
of Luisada can be considered to be ?affixed permanently until
disassembled,? we observe that it is well settled that terms in a
claim should be construed 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, the examiner is attempting to expand the meaning to be
given to the claimed ?means for permanently securing? beyond all
reason. Contrary to the examiner’s position that Luisada’s
panels are permanently secured, Luisada expressly states that the
Appeal No. 97-4205
Application 08/562,853
6
panels are releasably secured (see column 1, line 64). We can
think of no circumstances under which the artisan, consistent
with the appellant's specification, would construe Luisada’s
releasable connection to correspond to the claimed means for
permanently securing.
Turning to the examiner’s contention that it would have been
obvious to permanently secure the panels of Luisada to the frame
structure in view of the teachings of Veenema, we observe that
the entire thrust of Luisada’s invention is to provide a
lightweight knockdown container wherein the various panels are
releasably held in assembled position on a pallet or base (see
column 1, lines 44-69). Thus, we do not believe that it would
have been obvious to make such a modification since to do so
would destroy the invention upon which Luisada was based, namely,
providing a knockdown container with releasably secured panels.
See Ex parte Hartmann, 186 USPQ 366, 367 (Bd.App. 1974).
Moreover, even if all the rather extensive modifications
proposed by the examiner were made, the claimed invention would
not result. That is, independent claim 1 does not simply require
that the various panels not be visually distinct from one other
as the examiner apparently believes. Instead, independent claim
1 expressly requires that the means for removably securing the
Appeal No. 97-4205
Application 08/562,853
7
access panel not be visually distinct from the means for
permanently securing the remaining panels. Turning to the
teachings of Luisada, the removable access panel or top 114 is
secured by three separate means, i.e., (1) the arrangement in
Fig. 12 wherein the securement of the removable access panel 114
to the back panel 28 is illustrated, (2) the arrangement in Fig.
10 wherein the securement of the removable access panel 114 to a
side panel 102 is illustrated and (3) the arrangement in Fig. 7
wherein the securement of the removable access panel 114 to the
front panel 64 is illustrated. While the securing means
illustrated in Fig. 12 is visually similar to the means for
securing the back, side, front and bottom panels, the securing
means illustrated in Figs. 10 and 7 are not. That is, as
illustrated in Fig. 12 the securement means includes an angle
member 120, 122 which is spaced from the back panel by a visually
discernable gap or space. The means for securing the back, side,
front and bottom panels together all similarly have a visually
discernable gap or space. On the other hand, the securing means
illustrated in Figs. 10 and 7 have no such visually discernable
gap or space. Furthermore, (1) the securing means illustrated in
Fig. 10 includes a downwardly extending plate 126 that extends a
significant distance downwardly at a location near the back 28,
Appeal No. 97-4205
Application 08/562,853
8
which plate none of the other securing means has and (2) the
securing means illustrated in Fig. 7 includes a plate 130 that
appears to extend all the way along the front panel and projects
downwardly past the juncture of the removable access panel 114
and the front panel 64. This being the case, the securing means
illustrated in Figs. 7 and 10 are visually distinguishable from
the remaining securing means. We have carefully reviewed the
teachings of Veenema, Markovich and Sacks but find nothing
therein which would overcome these deficiencies of Luisada.
In view of the foregoing, we will not sustain any of the
above-noted rejections and the decision of the examiner is
reversed.
REVERSED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Appeal No. 97-4205
Application 08/562,853
9
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Arnold S. Weintraub
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