Ex parte Miller et al.

Board of Patent Appeals and Interferences

Feb 25, 1998

08399571 (B.P.A.I. Feb. 25, 1998)

Application for patent filed March 7, 1995.1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VICKIE B. MILLER and TERRY A. MILLER
__________
Appeal No. 97-0972
Application 08/399,5711
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and FRANKFORT, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Vickie B. Miller and Terry A. Miller (the appellants) appeal
from the final rejection of claims 1-12, the only claims present
in the application.
Appeal No. 97-0972
Application 08/399,571
2
We AFFIRM-IN-PART. Additionally, pursuant to our authority
under the provisions of 37 CFR § 1.196(b), we will enter a new
rejection of claims 5 and 9-12 under 35 U.S.C. § 112, first
paragraph.
The appellants’ invention pertains to a hold-down device for
maintaining, in a substantially horizontal orientation, theater
seats that are normally biased to a substantially vertically
orientation. Independent claim 1 is further illustrative of the
appealed subject matter and reads as follows:
1. A theater seat hold-down device for maintaining a seat
member of at least one conventional theater seat in a
substantially horizontal orientation, said conventional
theater seat including an armrest assembly disposed on
either side of a seat member, the armrest assembly including
an armrest and an armrest support, the conventional theater
seat further including a biasing device for biasing the seat
member in a substantially vertical orientation when the seat
member is not in use, said theater seat hold-down device
comprising:
an elongated member adapted to extend between an
armrest assembly and a seat member, said elongated
member defining an armrest assembly engagement
portion and a seat engagement portion, said
armrest assembly engagement portion being
configured to engage the armrest assembly and said
seat engagement portion being configured to engage
at least one seat member adjacent to the armrest
assembly such that the seat member is maintained
in a substantially horizontal orientation.
The references relied on by the examiner are:
Devney 1,276,735 Aug. 27, 1918
Gardels 2,618,497 Nov. 18, 1952
Appeal No. 97-0972
Application 08/399,571
3
Reyes 5,290,003 Mar. 01, 1994
Claims 1-12 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Devney.
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gardels.
Claims 1-4, 6-8 and 10-12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Reyes.
The rejection under 35 U.S.C. § 112, second paragraph, is
explained on pages 2 and 3 of the final rejection. The various
rejections under 35 U.S.C. § 102(b) are explained on pages 3 and
4 of the answer.
OPINION
Considering first the rejection of claims 1-12 under 35
U.S.C. § 112, second paragraph, it is the examiner’s position
that:
There appears to be an inconsistency between the
language in the preamble and certain portion or
portions in the body of independent claims 1, 6, and
10; thereby makeing the scope of the claims unclear.
For example, the claim language of “a theater seat
hold-down device for maintaining a seat member . . .,
said theater seat hold-down comprising”, as recited in
Appeal No. 97-0972
Application 08/399,571
4
the preamble of claims 1 and 6, lines 1-7 and claim 10,
lines 1-6, clearly indicates that a subcombination is
claimed. This presents no problem as long as the body
of the claim also refers to the seat member and armrest
assembly functionally, such as, “adapted to extend in
between a seat member and an armrest assembly” or “for
attachment to a seat member and an armrest assembly.”

The problem arises when the seat member and
armrest assembly are positively recited within the body
of the claim, such as “an elongated member . . .
configured to engage said armrest assembly and . . .
configured to engage at least one said seat member.”
In this case there is an inconsistency within the
claim. The preamble indicates subcombination, while in
the body of the claim there is a positive recital of
structure indicating that the combination of a theater
seat hold-down device, a seat member, and an armrest
assembly are being claimed. [ Final rejection, pages 2
and 3.]
We do not agree with the examiner’s position. The examiner
apparently recognizes that the appellants, by setting forth
functional recitations such as that of the hold-down device being
“adapted” to engage the theater seat, have not positively recited
the theater seat as a part of the claimed combination.
Nevertheless, the examiner has taken the position that
limitations such as that of the of hold-down device being
“configured” (i.e, shaped) to engage a portion of a theater seat
(previously set forth in the preamble), positively claim the
theater seat as part of the claimed combination. We must point
out, however, that by reciting such language the appellants have
merely defined the hold-down member in terms of attributes it
Appeal No. 97-0972
Application 08/399,571
5
must possess and, therefore, this language is also functional in
character. That is, the appellants are merely defining the shape
or structural configuration of the hold-down device in terms of
its functional interrelationship with the theater seat when it is
used in its intended manner, rather than positively reciting the
theater seat as a part of the claimed combination. Since we are
not of the opinion that the theater seat has been positively set
forth as a part of the claimed combination, we find no
inconsistency between the preamble and the body of the claim as
the examiner asserts. This being the case, we will not sustain
the rejection of claims 1-12 under 35 U.S.C. § 112, second
paragraph.
Turning now to the various rejections under 35 U.S.C.
§ 102(b), we initially 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
Appeal No. 97-0972
Application 08/399,571
6
when that reference discloses, either expressly or under the
principles of inherency, each and every element of a claimed
invention. See RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Additionally, the law of anticipation does not require that the
reference teach what the appellants are 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).
Considering specifically the rejection of claims 1-12 under
35 U.S.C. § 102(b) as being anticipated by Devney, the examiner
has taken the position that “the function of the appellant’s
elongate member is not considered to be patentable in a utility
patent” (answer, page 5). This is incorrect. The various
functional limitations in the claims (e.g., that the elongated
member is “adapted to extend between an armrest assembly and a
seat member” as set forth in claim 1) set forth a function which
the apparatus must be structurally capable of performing (see,
e.g., In re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52
(CCPA 1976)) and such a functional statement must be given full
Appeal No. 97-0972
Application 08/399,571
7
weight and may not be disregarded in evaluating the patentability
of the claims (see, e.g., Ex parte Bylund, 217 USPQ 492, 498 (Bd.
App. 1981)).
As to the examiner’s contention that the device of Devney
could be used to extend between an armrest assembly and a seat
member, Devney’s invention is stated to relate
to advertising sign hangers, and has for its principal
object to provide simple means for the quick attachment
of advertising signs to door-knobs and the like, which
means will prevent the easy detachment of the sign by a
breeze and consequent loss of the same, but will allow
ready removal by a person. [Lines 9-16; emphasis ours.]
Devney’s advertising sign is thereafter described as being
constructed of “resilient material, such as celluloid, card
board, or paper” (lines 55 and 56). It is readily apparent from
the above description that the sign hanger of Devney is made of a
resilient material which is light-weight enough to be blown away
by a breeze. This sign hanger is also depicted in the various
cross-sectional views of Devney as being very thin in thickness.
Considering Devney’s disclosure as a whole, we do not
believe that there is a reasonable basis to include that the sign
hanger disclosed therein has sufficient strength and rigidity so
Appeal No. 97-0972
Application 08/399,571
8
as to be inherently capable of functioning to maintain a biased
theater seat in a “substantially horizontal orientation” as
required by each of the independent claims on appeal. See Ex
parte Levy, 17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990).
This being the case, we will not sustain the rejection of claims
1-12 under 35 U.S.C. § 102(b) as being anticipated by Devney.
Turning next to the rejection of claims 1-3, 6 and 7 under
35 U.S.C. § 102(b) as being anticipated by Gardels, the answer
states that:
Gardels teaches a member, as illustrated in
Figures 1-4 comprising of an elongated section (10)
. . . two wings (18, 24), and a slit (22) located
between the upper end of the elongate section (10) and
at a central location. [Page 4].
We also would add that, in the embodiment of Fig. 6 of Gardels,
the plate-like structure at the upper end of the hold-down member
110 has portions that extend to either side of the hold-down
member and, thus, these portions may be considered to form
“wings” as broadly claimed. Additionally, the hold-down member
of Gardels is described as being “strong” and “made of metal or
other suitable material” (column 2, lines 18 and 19).
The appellants concede that they have not claimed a theater
seat as a part of the claimed combination (see brief, page 4)
but, nevertheless, contend that the hold-down member of Gardels
Appeal No. 97-0972
Application 08/399,571
9
cannot be considered to anticipate the instant claims inasmuch as
there is no teaching therein that portions of the hold-down
member engage an armrest assembly and seat in the claimed manner.
This contention is unpersuasive. 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, in view of (1) the size of the hold-down member 10 or 110
of Gardels relative to the trunk of an automobile and (2) the
fact that Gardels’ hold-down member is stated to be “strong” and
made of “metal,” there is a reasonable basis to conclude that
Appeal No. 97-0972
Application 08/399,571
10
Gardels’s hold-down member is inherently capable of holding down
a theater seat in the claimed manner. Whether Gardels’ hold-down
member actually is or might be used to hold down a theater seat
depends upon the performance or non-performance of a future act
of use, rather than upon a structural distinction in the claims.
Stated differently, the hold-down device of Gardels would not
undergo a metamorphosis to a new device simply because it was
used to hold down a theater seat in the claimed manner. 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).
It is also the appellants’ contention that Gardels is non-
analogous art since Gardels’ device holds down the trunk of a
car, rather than a theater seat. We must point out, however,
that “the question whether a reference is analogous art is
irrelevant to whether that reference anticipates,” Schreiber, 143
F.3d at 1477, 44 USPQ2d at 1432.
As to claims 3 and 7 the appellants additionally argue that
the portions 18 and 24 (which the examiner considers to be the
wings) do not extend from opposing “sides” of the elongated
member. We observe, however, that the terminology in a pending
application's claims is to be given its broadest reasonable
Appeal No. 97-0972
Application 08/399,571
11
interpretation (see In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)) and limitations from a pending
application's specification will not be read into the claims (see
Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988). Accordingly, we are of the opinion that the
“wings” 18 and 24 of Gardels can be considered to extend from
opposite “sides” (i.e., the top side and the bottom side) as
broadly claimed. Moreover, as we have noted above, in the
embodiment of Fig. 6 of Gardels the plate-like structure at the
upper end of the hold-down member 110 has portions that extend to
either side of the hold-down member which may be broadly
considered to form “wings.”
In view of the above, we will sustain the rejection of
claims 1-3, 6 and 7 under 35 U.S.C. § 102(b) as being anticipated
by Gardels.
Considering next the rejection of claims 4, 5 and 8-12 under
35 U.S.C. § 102(b) as being anticipated by Gardels, we find
nothing in Gardels which would fairly suggest “two beveled
corners diagonally opposed one from the other” (emphasis ours) as
set forth in claims 4, 8 and 12. With respect to claims 5 and
9-12, the examiner is of the opinion that Gardels shows a slit at
22, however, we do not believe that the square opening 22 can be
Appeal No. 97-0972
Application 08/399,571
12
fairly construed to be a “slit.” Moreover, even if the opening
22 were construed to be a slit, these claims further require that
the slit provide access through an opening for closely receiving
the armrest support. Clearly, no such structure is taught by
Gardels. Accordingly, we will not sustain the rejection of
claims 4, 5 and 8-12 under 35 U.S.C. § 102(b) as being
anticipated by Gardels.
Turning next to the rejection of claims 1-3, 6 and 7 under
35 U.S.C. § 102(b) as being anticipated by Reyes, it is the
appellants’ contention that
Reyes teaches a folding book support including in one
embodiment, among other things, a support leg 16 having
a first end 38 for engaging a main support member 12
and a second end 44 defining an inverted “Y” shape for
stability. However, Reyes does not anticipate an
elongated member “adapted to extend between an armrest
and a seat member.” [Brief, pages 9 and 10.]
The appellants’ arguments are unpersuasive. As the
appellants recognize, in Reyes the “optional” support leg 16 has
a first end 38 and a second end 44 which diverges into two
spaced-apart angular portions, thereby forming a generally Y-
shaped configuration (see Fig. 3). These spaced-apart angular
portions can be considered to form “wings” as broadly claimed.
Clearly the support leg 16 has the inherent capability to hold
Appeal No. 97-0972
Application 08/399,571
Indeed, if the examiner actually believed that Reyes2
taught such structure, it seems strange to us that claims 5 and 9
were not also rejected under § 102 as being anticipated by Reyes
inasmuch as these dependent claims only respectively add to
13
down a theater seat in the manner claimed. See In re Schreiber,
supra, and LaBounty Mfg. v Int’l Trade Comm’n, supra. As in the
case of the hold-down member of Gardels, the support leg 16 of
Reyes would not undergo a metamorphosis to a new device simply
because it was used to hold down a theater seat in the claimed
manner. See In re Pearson, supra, and Ex parte Masham, supra.
Therefore, we will sustain the rejection of claims 1-3, 6 and 7
under 35 U.S.C. § 102(b) as being anticipated by Reyes.
Turning to the rejection of claims 4, 8 and 10-12 under 35
U.S.C. § 102(b) as being anticipated by Reyes, we find nothing in
Reyes which would fairly suggest “two beveled corners diagonally
opposed one from the other” (emphasis ours) as set forth in
claims 4, 8 and 12. With respect to claims 10-12 we find
nothing, nor does the examiner even allege there is anything, in
Reyes which would suggest the limitation set forth in independent
claim 10 of
a through opening and a slit, said slit being defined
between an upper end of said elongated member at a
central portion thereof and said through opening, said
slit providing access to said through opening for
closely receiving the armrest support. [Footnote2
Appeal No. 97-0972
Application 08/399,571
parent claims 1 and 6, this exact same limitation.
14
added.]
In view of the above, we will not sustain the rejection of
claims 4, 8 and 10-12 under 35 U.S.C. § 102(b) as being
anticipated by Reyes.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claims 5 and 9-12 are rejected under 35 U.S.C. § 112, first
paragraph, as being based on a disclosure that fails to provide
support for the subject matter now being claimed. The
description requirement found in the first paragraph of 35 U.S.C.
1l2 is separate from the enablement requirement of that
provision. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560-
64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In re Barker,
559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied,
434 U.S. 1238 (1978). With respect to the description
requirement, the court in Vas-Cath Inc. v. Mahurkar 935 F.2d at
1563-64, 19 USPQ2d at 1117 stated:
35 U.S.C. § 112, first paragraph, requires a "written
description of the invention" which is separate and
Appeal No. 97-0972
Application 08/399,571
15
distinct from the enablement requirement. The purpose
of the "written description" requirement is broader
than to merely explain how to "make and use"; the
applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.
The invention is, for purposes of the "written
description" inquiry, whatever is now claimed.

. . . drawings alone may be sufficient to provide
the "written description of the invention" required by
§ 112, first paragraph.
Although the claimed invention does not necessarily have to be
expressed in ipsis verbus in order to satisfy the description
requirement (see In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90,
98 (CCPA 1976)), the mere fact one skilled in the art might
realize from reading a disclosure that something is possible is
not a sufficient indication to that person that the something is
a part of an appellant's disclosure. See Barker, 559 F.2d at
593, 194 USPQ at 474. Precisely how close the original
description must come to comply with the description requirement
must be determined on a case-by-case basis. The primary
consideration is factual and depends on the nature of the
invention and the amount of knowledge imparted to those skilled
in the art by the disclosure. See Vas-Cath Inc. v. Mahurkar,
supra.
Appeal No. 97-0972
Application 08/399,571
16
In the present case, we believe the appellants’ disclosure
fails to reasonably convey to one of ordinary skill in the art
descriptive support for the limitation that the elongated member
is fabricated from an “at least semi-rigid material.” By the
recitation “at least” the appellants have set forth an open-ended
range which would include anything from semi-rigid material to
rigid material. Here, the appellants have disclosed no range
whatsoever but, instead, have merely disclosed a flexible, yet
resilient, material that is sufficiently rigid to maintain the
seat members in a substantially horizontal orientation (see,
generally, page 6 of the specification).
In summary:
The rejection of claims 1-12 under 35 U.S.C. § 112, second
paragraph, is reversed.
The rejection of claims 1-12 under 35 U.S.C. § 102(b) as
being anticipated by Devney is reversed.
The rejection of claims 1-3, 6 and 7 under 35 U.S.C.
§ 102(b) as being anticipated by Gardels is affirmed.
The rejection of claims 4, 5 and 8-12 under 35 U.S.C.
§ 102(b) as being anticipated by Gardels is reversed.
Appeal No. 97-0972
Application 08/399,571
17
The rejection of claims 1-3, 6 and 7 under 35 U.S.C.
§ 102(b) as being anticipated by Reyes is affirmed.
The rejection of claims 4, 8 and 10-12 under 35 U.S.C.
§ 102(b) as being anticipated by Reyes is reversed.
A new rejection of claims 5 and 9-12 are rejected under 35
U.S.C. § 112, first paragraph, has been made.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 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, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellants, 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 (37 CFR § 1.197(c))
Appeal No. 97-0972
Application 08/399,571
18
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. . . .
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited prosecu-
tion, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-0972
Application 08/399,571
19
AFFIRMED-IN-PART
37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Pitts & Brittian
P.O. Box 51295
Knoxville TN 37950-1295