Ex parte PETERSON et al.

Board of Patent Appeals and Interferences

Sep 25, 1998

08286696 (B.P.A.I. Sep. 25, 1998)

Application for patent filed August 5, 1994.1
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not binding precedent of the Board.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 ROBERT E. PETERSON and GEORGE W. PETERSON
_____________
Appeal No. 97-1974
Application 08/286,6961
______________
ON BRIEF
_______________
Before CALVERT, MEISTER, and PATE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
9. Claim 10, the other claim in the application, stands
withdrawn from consideration under 37 CFR 1.142(b) as being
directed to a nonelected invention.
Appeal No. 97-1974
Application 08/286,696
2
The appealed claims are drawn to a flowerpot hanger, a
saucer holder, and a method of hanging a flowerpot. Claims 1
to 9 are reproduced in Appendix A of appellants' brief.
The references applied in the final rejection are:
Minnick 5,074,504 Dec. 24,
1991
Shepherd et al. (Shepherd) 5,405,116 Apr. 11,
1995
(Filed Apr. 19, 1994)
The claims on appeal stand finally rejected as follows:
(1) Claims 5 to 8, unpatentable for failure to comply
with 35 USC § 112, second paragraph;
(2) Claims 1 to 5, anticipated by Shepherd, under 35 USC
§ 102(e);
(3) Claim 4, anticipated by Minnick, under 35 USC §
102(b);
(4) Claims 6 to 9, unpatentable over Shepherd, under 35
USC § 103.
Rejection Pursuant to 37 CFR § 1.196(b)
Before considering the merits of the rejections appealed
from, we enter the following rejection pursuant to 37 CFR
Appeal No. 97-1974
Application 08/286,696
3
1.196(b).
Claim 3 is rejected for failure to comply with 35 USC §
112, second paragraph. This claim recites a slot in the base,
"aperture means" extending through the saucer holder, and
"fastener means for mounting said aperture means to said
slot". These recitations are indefinite, in that it is not
apparent how an aperture, i.e., an opening, can be fastened to
another open-ing (the slot). Also, when attempting to read
this claim on appellants' disclosed apparatus, it is not
evident what structure it is intended to define (cf. In re
Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971)).
Presumably the "aperture means" would be the tapped holes in
the saucer holder (page 13, line 9), and "fastener means" is
intended to read on fasteners 104A and 104B, but the fasteners
do not mount the tapped holes to the slot 102 in base 30, but
rather serve to mount the saucer holder 32, as disclosed at
page 13, lines 3 to 16. Since one of ordinary skill would not
be reasonably apprised of the scope of claim 3, it is
indefinite. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994).
Appeal No. 97-1974
Application 08/286,696
4
Rejection (1)
The rejection of claims 5 to 8 under 35 USC § 112, second
paragraph, is based on the examiner's finding that "it is not
clear if applicant [sic] is claiming the 'clay flowerpot
holder' in combination with the saucer holder" (answer, pp. 3
to 4). We
consider this rejection to be well taken. A claim is
indefinite if it does not reasonably apprise those of skill in
the art of its scope. In re Warmerdam, supra. Regardless of
whether claim 5 is in Jepson form (i.e., as provided in 37 CFR
§ 1.75(e)), as argued by appellants at page 18 of their brief,
its scope is indefinite in that one of ordinary skill could
not readily determine whether the recited "a clay flowerpot
holder" constitutes a part of the apparatus which the claim is
intended to cover, or is merely a point of reference for the
positions of the saucer holder. Appellants' argument that
"Everything recited in claim 5 is claimed but the claim
specifies the improvement" begs the question of whether or not
the "clay flowerpot holder" is an element of the claimed
Appeal No. 97-1974
Application 08/286,696
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combination.
Rejection (1) will therefore be sustained.
Rejection (2)
The rejection of claim 1 as anticipated by Shepherd will
be sustained.
Appellants' only argument with regard to claim 1 is that
Shepherd's base 12 and upper flowerpot holder 26, which is
disclosed as being attached to the base by bolt 42 and nut 44,
are not "integrally formed", as recited. The construction of
the expression "integrally formed" was considered in In re
Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997). In
that case, the examiner held that an elastomeric pad 100
disclosed in the reference (Brown) as being engaged between
the base plate and lower housing was "integrally formed" as a
portion of the support member. The court sustained this
interpretation, as follows (127 F.3d at 1055-1056, 44 USPQ at
1029):
We conclude that the PTO's interpretation is
Appeal No. 97-1974
Application 08/286,696
6
reasonable in light of all the evidence before the
Board. As the cases cited above demonstrate, our
predecessor court had on several prior occasions
interpreted the term "integral" to cover more than a
unitary construction. See, e.g., In re Kohno, 391
F.2d 959, 157 USPQ 275 (CCPA 1968), In re Dike, 394
F.2d 584, 157 USPQ 581 (CCPA 1968), In re Larson,
340 F.2d 965, 144 USPQ 347 (CCPA 1965), and In re
Clark, 214 F.2d 148, 102 USPQ 241 (CCPA 1954). This
court has also endorsed that interpretation. See,
e.g., Advanced Cardiovascular Sys. v. Scimed Life
Sys., 887 F.2d 1070, 1074, 12 USPQ2d 1530, 1542
(Fed. Cir. 1989) (nothing of record limited "inte-
gral" to mean "of one-piece" construc-tion).
Appellants' attempt to distinguish these cases
misses the point. Absent an express definition in
their specification, the fact that appellants can
point to definitions or usages that conform to their
interpretation does not make the PTO's definition
unreasonable when the PTO can point to other sources
that support its interpretation.
Here, looking at appellants' specification, we find no express
definition therein of "integral" or "integrally formed".
There-fore, in accordance with In re Morris, we interpret
"integrally formed" as covering the bolted-together
construction of base 12 and upper flowerpot holder 26 of
Shepherd, and consequently con-clude that Shepherd anticipates
the apparatus recited in claim 1. As for claim 2,
Appeal No. 97-1974
Application 08/286,696
7
appellants argue that the lower saucer holder disclosed by
Shepherd does not include, as recited, "a slanting surface"
for gripping the edges of the saucer. The examiner identifies
Shepherd's "slanting surface" as Shepherd's surface 34, but,
as shown in Figs. 4 and 5, this surface does not engage the
saucer 7, but rather the saucer is held between lip 38 and the
slanting surfaces at the lower ends of the sides 21 of the
base. The rejection of claim 2 as anticipated by Shepherd
will therefore not be sustained.
The rejection of claims 3 and 5 will also not be
sustained. We have rejected claim 3, supra, and have
sustained the rejection of claim 5, on the ground that they
fail to comply with the second paragraph of § 112, because
their scope is not clearly defined. Under these
circumstances, claims 3 and 5 should not be rejected as
unpatentable over prior art. See In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). We note however, that our
reversal of the rejection under § 102(e) is pro forma only,
and should not be taken as a holding that if the
indefiniteness rejections were overcome, claims 3 and 5 would
Appeal No. 97-1974
Application 08/286,696
8
necessarily be patentable over Shepherd.
Appellants argue as to claim 4 that it is not anticipated
by Shepherd because, inter alia, Shepherd does not disclose
"an outwardly slanting surface extending from the flat surface
adapted to support a slanting portion of the saucer." We
agree. The examiner states that Shepherd's flat surface is
surface 32, and the slanting surface is 34. However, surface
34 is not "outwardly" slanting from surface 32, nor does it,
as discussed above, support a slanting portion of saucer 7.
Accordingly, we will not sustain the rejection of claim 4 over
Shepherd under § 102(e).
Rejection (3)
On page 6 of the answer, the examiner reproduces Fig. 1
of the Minnick patent with labels showing where each element
recited in claim 4 may be found. The appellants argue,
however, that Minnick does not anticipate claim 4 because (1)
Minnick does not include a separate base between the holder
and the support structure, (2) Minnick discloses a flowerpot
holder, not a saucer
holder, and (3) Minnick does not disclose adjusting a holder
Appeal No. 97-1974
Application 08/286,696
9
with respect to a base (brief, pages 20 to 21).
In order to anticipate a claim, a reference must disclose
every limitation of the claimed invention, either explicitly
or inherently. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). With regard to
appellants' arguments (1) and (3), the examiner takes the
position that the "base" recited in claim 4 is readable on the
wall on which Minnick's holder is mounted. We consider this
position to be well taken. During patent examination, the
pending claims are to be interpreted as broadly as their terms
reasonable allow, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989), and limitations from the
specification are not to be read into the claims. Sjolund v.
Musland, 847 F.2d 1573, 1581, 6 USPQ2d 2020, 2027 (Fed. Cir.
1988). Contrary to appellants' arguments, claim 4 does not
recite a base between the holder and support structure, but
simply recites that the holder is "adapted to be mounted to a
base" and has a "means fastened to said vertical member and
movable with respect to said base for adjusting the saucer
holder with respect to said base". Giving "base" its
Appeal No. 97-1974
Application 08/286,696
10
broadest reasonable interpretation, we consider that the wall
on which Minnick's holder is adapted to be mounted, and with
respect to which it is movable, constitutes a "base", as
claimed.
Appellants' argument (2) is equally unpersuasive. The
examiner found that Minnick's holder could inherently hold a
saucer with a slant portion (final rejection, page 6), and
appellants have not presented anything to prove that this
finding is incorrect. In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138-139 (Fed. Cir. 1986).
Rejection (3) will be sustained.
Rejection (4)
In view of our holding, supra, that rejection (1) will be
sustained in view of the indefiniteness of claims 5 to 8, the
rejection of claims 6 to 8 under § 103 will not be sustained,
for the reasons discussed above in connection with our
consideration of the rejection of claims 3 and 5 under § 102.
Here again, however, we emphasize that if the § 112 rejection
of claims 6 to 8 is overcome in any subsequent prosecution,
they may still be unpatentable under § 103.
Appeal No. 97-1974
Application 08/286,696
In reviewing the disclosure of the application, we note that since2
screws 104A and 104B are only accessible from the rear of the base 30, the
steps described on page 17, line 16, to page 18, line 2, would have to be
performed before the base is mounted on the support 14. The base would then
have to be mounted on the support before the flowerpot is inserted (Fig. 12)
so that the flowerpot would not block access to the mounting apertures 72, 74,
76. It is suggested that the application be clarified by amending the
specification to point out these requirements.
11
Turning to method claim 9, appellants argue that this2
claim is patentable over Shepherd because in Shepherd the
flowerpot and saucer are both supported by foot 32 and
therefore the saucer would not be mounted underneath (i.e.,
after) the flowerpot and positioned with respect to the
flowerpot (brief, pages 22 to 23). Although the examiner
asserts that the claimed method would have been obvious and
that Shepherd's flowerpot and saucer are not both supported by
foot 32 (answer, page 10), this is not borne out by Shepherd's
disclosure at col. 3, lines 5 to 31, which states that tray
(saucer) 7 is mounted first (Fig. 4), and then the flowerpot 6
is "seated in the drainage tray 7, as shown in FIG. 5" (col.
3, lines 21 and 22). As for the question of support, Shepherd
indicates that foot 32 supports both the tray (saucer) and the
flowerpot, as follows (col. 3, lines 25 to 28):
The drainage tray 7 is thus supported on the foot 32
and held in place by the rim hook 38, while the
Appeal No. 97-1974
Application 08/286,696
12
flowerpot 2 is supported by the drainage tray 7 and
held in place by the rim hook 26, as shown in FIG.
6.
We therefore conclude that the method recited in claim 9 would
not have been suggested by Shepherd, and will not sustain the
rejection of claim 9.
Conclusion
The examiner's decision to reject claims 5 to 8 under 35
USC § 112, second paragraph, is affirmed; to reject claims 1
to 5 under 35 USC § 102(e) is affirmed as to claim 1 and
reversed as to claims 2 to 5; to reject claim 4 under 35 USC §
102(b) is affirmed; and to reject claims 6 to 9 under 35 USC §
103 is reversed. Claim 3 is rejected pursuant to 37 CFR §
1.196(b).
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
Appeal No. 97-1974
Application 08/286,696
13
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 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 (37
CFR § 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. . . .
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. §§
Appeal No. 97-1974
Application 08/286,696
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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 prosecution, 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).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
Appeal No. 97-1974
Application 08/286,696
15
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
vsh
Appeal No. 97-1974
Application 08/286,696
16
Vincent L. Carney
P.O. Box 80836
Lincoln, NE 68501-0836