Ex parte Rich

Board of Patent Appeals and Interferences

May 14, 1998

08169019 (B.P.A.I. May. 14, 1998)

Application for patent filed December 20, 1993. 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journal and (2) is not binding precedent of the Board.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 DENNIS E. RICH
____________
Appeal No. 96-4144
Application No. 08/169,0191
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 96-4144 Page 2
Application No. 08/169,019
BACKGROUND
The appellant's invention relates to a hanging rack for
printed circuit panels. Claim 1 is representative of the subject
matter on appeal and a copy of claim 1, as it appears in the
appendix to the appellant's brief, is attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Shave et al. 1,248,732 Dec. 4, 1917
(Shave)
Husted et al. 4,502,601 Mar. 5, 1985
(Husted)
Claims 1 through 9 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims 1 through 6 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Husted.
Claim 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Husted in view of Shave.
Appeal No. 96-4144 Page 3
Application No. 08/169,019
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper No.
7, mailed January 17, 1996) and the supplemental examiner's
answer (Paper No. 9, mailed June 11, 1996) for the examiner's
complete reasoning in support of the rejections, and to the
appellant's brief (Paper No. 6, filed October 10, 1995) and reply
brief (Paper No. 8, filed March 18, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We will not sustain the examiner's rejection of claims 1
through 9 under 35 U.S.C. § 112, as being indefinite for failing
Appeal No. 96-4144 Page 4
Application No. 08/169,019
to particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in
the manner of expression and the aptness of terms is permitted
even though the claim language is not as precise as the examiner
might desire. If the scope of the invention sought to be
patented cannot be determined from the language of the claims
Appeal No. 96-4144 Page 5
Application No. 08/169,019
with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate.
The examiner's statement of this rejection (answer, pp. 3-4)
is
[r]egarding claims 1, 3, 8, and 9, the phrase "roller means
movable on the sloping surface" is indefinite - either the
roller means moves along the sloping surface or it doesn't
and not may be. . . . Regarding claim 2, it is not clear
whether "a sloping surface" on line 2 is the same "sloping
surface" recited on line 4 of claim 1.
For the reasons set forth by the appellant (brief, pp. 14-
15), we conclude that the claims are definite since the scope of
the claims would be reasonably ascertainable by those skilled in
the art. Regarding claim 1, the phrase "roller means movable on
the sloping surface" is definite since it accurately describes
the relationship between the appellant's rollers 160, 162 and
their respective sloping surfaces 34, 54. That is, the rollers
160, 162 are movable on their respective sloping surfaces 34, 54
when (1) a circuit panel is inserted between the rollers 160, 162
and their respective front vertical surfaces 28, 48, and (2) the
stem (i.e., pin 170) is moved upwardly to release the circuit
panel. Otherwise, the rollers 160, 162 do not move on their
respective sloping surfaces 34, 54. Regarding claim 2, it is our
Appeal No. 96-4144 Page 6
Application No. 08/169,019
determination that it would be reasonably clear to those skilled
in the art that a only a pair of sloping surfaces are recited and
not three sloping surfaces. Since the scope of the invention
sought to be patented can be determined from the language of the
claims with a reasonable degree of certainty, the examiner's
rejection of claims 1 through 9 under 35 U.S.C. § 112, second
paragraph, is reversed.
The anticipation issue
We will not sustain the examiner's rejection of claims 1
through 6 under 35 U.S.C. § 102(b) as being anticipated by
Husted.
To support a rejection of a claim under 35 U.S.C. § 102(b),
it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single
prior art 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).
Claim 1 is directed to a hanging rack apparatus for holding
printed circuit panels. The hanging rack apparatus comprises,
Appeal No. 96-4144 Page 7
Application No. 08/169,019
inter alia, slot means for receiving a printed circuit panel,
including a sloping surface, roller means movable on the sloping
surface for holding the printed circuit panel in the slot means,
and a stem secured to the roller means for moving the roller
means upwardly on the sloping surface for releasing the printed
circuit panel.
Husted discloses a low friction insertion force retainer
used as a mounting for a battery of printed electronic circuit
boards. As shown in Figure 1, a plurality of printed electronic
circuit boards 14 are held by opposite left and right-hand
retainers 15 and 16 mounted on interior walls 17 and 18 of a
housing 10. In the embodiment shown in Figures 1 through 6, the
retainers 15 and 16, exemplified in some detail by the left
retainer 15, comprises a body or block 24. The blocks 24 are
mounted in pairs upon the adjacent side wall 17. The blocks 24
are formed with a flange 25 against which the circuit board 14 is
pressed. On the side of the block 24 opposite from the flange 25
is a section 26, an edge face 27 of which is spaced from the
corresponding flange 25 in order to provide a slot 28 for initial
reception of the circuit board 14. The section 26 is also
provided with a pocket 29 which extends throughout the length of
Appeal No. 96-4144 Page 8
Application No. 08/169,019
the block and which, as a matter of structural and operative
convenience, may be arcuate in cross-sectional configuration. A
rod member 30 is provided in block 24 to clamp and unclamp the
circuit board 14. The rod member 30 is provided with opposite
parallel flat clearance faces 31 and 32 and camming surfaces 33
and 34. Acting in part to hold the rod member 30 within the
pocket 29 is a leaf spring member 39. The leaf spring member 39
is provided on one side with a leaf 40 coextensive with the
length of the block 24. The leaf 40 is urged resiliently in a
direction from right to left, as viewed in Figure 4, to bear
against the clearance face 31, hold the rod member 30 in its
position within the pocket 29, and at the same time provide
sufficient clearance in the slot 28 of breadth greater than the
thickness of the circuit board 14 so that the circuit board can
be slid into the slot with an ultimate minimum amount of
frictional resistance approaching zero. Once the circuit board
is in position, the rod member 30 is rotated approximately ninety
degrees about its axis of rotation so as to bring the camming
surface 33 into engagement with the leaf 40 and tilt the leaf
resiliently into engagement with the adjacent edge surface of the
circuit board, as shown in the right-hand version of Figure 4.
In this manner camming action of the rod member 30 locks the
Appeal No. 96-4144 Page 9
Application No. 08/169,019
circuit board in a position of engagement with the flange 25.
Rotation of the rod member 30 is accomplished by use of a tool
45, a slotted end 46 of which engages a drive pin 47 extending
transversely through the adjacent end of the rod member 30. To
limit rotation of the rod member 30 to approximately the desired
ninety degrees, there is provided a stop pin 48 which also
extends transversely through the rod member 30 at a location
spaced from the drive pin 47. To accommodate the stop pin there
is a stop slot 49 in the block 24 at opposite ends of which are
stop shoulders 50 and 51.
The examiner's statement of this rejection (answer, pp. 4-5)
is
Husted '601 discloses a hanging rack apparatus for holding a
printed circuit panels comprising in combination, a pair of
slot means (consider two end opening 29 of the rod 24, fig.
6) having a first vertical surface (27, fig. 3), a second
vertical surface (27, fig. 3), and sloped surface (29, fig.
3) extending upwardly from the second vertical surface (27),
a pair of roller means (consider the curved portions 33 and
34 at each end portion of 30 as in figure 3) movable on the
slope surface for holding the circuit panel (14), a block
(consider the portion of 30 between 33 and 34), a stem (47)
secured to the block for moving the roller means (33 and 34,
fig. 4) upwardly on the sloping surface for releasing the
panel.
For the reasons set forth by the appellant (brief, pp. 9-10
and 12), we conclude that claim 1 is not anticipated by Husted.
Appeal No. 96-4144 Page 10
Application No. 08/169,019
We agree with the appellant that the claimed "roller means
movable on the sloping surface for holding the printed circuit
Appeal No. 96-4144 Page 11
Application No. 08/169,019
The inquiry as to whether a reference anticipates a claim2
must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth
by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984), it is only necessary for the claims to "'read on'
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference, or 'fully met' by it."
panel in the slot means" does not "read on" Husted's2
configuration (i.e., rod member 30 having camming surfaces 33 and
34). Since each element of claim 1 is not found, either
expressly described or under principles of inherency, in Husted,
the examiner's rejection of claim 1, and claims 2 through 6
dependent thereon, under 35 U.S.C. § 102(b) is reversed.
The obviousness issue
We will not sustain the examiner's rejection of claim 7
under 35 U.S.C. § 103 as being unpatentable over Husted in view
of Shave.
Claim 7 depends from claim 6 which depends from claim 1.
The additional prior art of Shave does not provide any teaching
or suggestion that would have made it obvious to one of ordinary
skill in the art to have modified Husted to include "roller
Appeal No. 96-4144 Page 12
Application No. 08/169,019
means" as recited in claim 1. Accordingly, the examiner's
rejection of claim 7 under 35 U.S.C. § 103 is reversed.
Appeal No. 96-4144 Page 13
Application No. 08/169,019
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 through 9 under 35 U.S.C. § 112, second paragraph, claims 1
through 6 under 35 U.S.C. § 102(b), and claim 7 under 35 U.S.C.
§ 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-4144 Page 14
Application No. 08/169,019
H. GORDON SHIELDS
7830 N. 23RD AVENUE
PHOENIX, AZ 85021
Appeal No. 96-4144
Application No. 08/169,019
Page 1
APPENDIX
1. Hanging rack apparatus for holding printed circuit
panels comprising in combination:
slot means for receiving a printed circuit panel, including
a sloping surface;
roller means movable on the sloping surface for holding the
printed circuit panel in the slot means; and
a stem secured to the roller means for moving the roller
means upwardly on the sloping surface for releasing the printed
circuit panel.
APPEAL NO. 96-4144 - JUDGE NASE
APPLICATION NO. 08/169,019
APJ NASE
APJ FRANKFORT
APJ COHEN
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 04 May 98
FINAL TYPED: