Ex Parte Schuh

Board of Patent Appeals and Interferences

Jun 9, 1998

08190485 (B.P.A.I. Jun. 9, 1998)

1 Application for patent filed February 2, 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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID N. SCHUH
_____________
Appeal No. 97-1033
Application 08/190,4851
______________
ON BRIEF
_______________
Before COHEN, PATE and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 97-1033
Application 08/190,485
2 The copy of claim 4 in the brief includes a typographical
error in reciting “air or air pressure” (line 6).
3 Particularly in light of appellant’s concession that the
rejection is proper (brief, page 3) and the circumstance that the
examiner has not expressly stated that the rejection is with-
drawn, we view the omission of the rejection under 35 U.S.C.
§ 112, second paragraph, in section (9) of the answer (page 3)
as simply inadvertent.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5. These claims constitute all of the claims in the
application.
Appellant’s invention pertains to a bearing clearance
detector and method of applying a vacuum or air pressure thereto.
An understanding of the invention can be derived from a reading
of exemplary claims 1 and 4, copies of which appear in the
amendment dated July 10, 1995 (Paper No. 7). 2
As evidence of anticipation, the examiner has applied
the document listed below:
Schuh 4,928,400 May 29, 1990
The following rejections are before us for review.
Claims 1 through 3 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. 3
Appeal No. 97-1033
Application 08/190,485
4 A supplemental brief was filed (Paper No. 20) to provide
information omitted from the original brief.
3
Claims 1 through 5 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Schuh.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the final
rejection and answer (Paper Nos. 9 and 16), while the complete
statement of appellant’s argument can be found in the brief
(Paper No. 15).4
As indicated by the examiner (answer, page 2), appel-
lant has not included a statement that the claims do not stand or
fall together. Thus, pursuant to 37 CFR § 1.192(c)(7), we select
single claim 4 and shall decide the appeal on the basis thereof
relative to the anticipation rejection.
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered appel-
lant’s specification and method claim 4, the applied patent, and
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
Appeal No. 97-1033
Application 08/190,485
5 Akin to the noted limitation in selected claim 4, we
particularly make reference to a comparable single operator
limitation in indefinite claim 1, i.e., the operator of incre-
mental application means also observes the distance measuring
device connected to the detector.
4
The indefiniteness issue
We are constrained to affirm the rejection of appel-
lant’s claims 1 through 3 under 35 U.S.C. § 112, second para-
graph, in light of appellant’s concession regarding the propriety
thereof (brief, page 3).
The anticipation issue
We reverse the rejection of appellant’s claims under
35 U.S.C. § 102(b).
Selected method claim 4 requires, inter alia, a single
operator performing the applying of vacuum or air pressure, with
said (single) operator also observing distance indicated on a
measurement device.5
A reading of the Schuh document reveals to us an
absence of any indication whatsoever by the patentee as to the
number of operators that operate the bearing clearance detector
with the specified equipment on the auxiliary cart (column 3,
lines 1 through 4). There clearly is uncertainty from the
Appeal No. 97-1033
Application 08/190,485
6 We understand claim 1 as being drawn to a combination,
consistent with the view of the examiner as expressed on page 2
of the final rejection (Paper No. 9).
5
disclosure of the Schuh patent as to the number of operators of
the detector. Anticipation cannot be based upon a reference that
is ambiguous. See In re Turlay, 304 F.2d 893, 899, 134 USPQ 355,
360 (CCPA 1962). For this reason, the rejection must be
reversed.
NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of
the board introduces the following new ground of rejection.
Claims 1 through 5 are rejected under 35 U.S.C. § 103
as being unpatentable over Schuh.6
The Schuh patent, considered in its entirety, instructs
those of ordinary skill in the art as to a bearing clearance
detector, including a measuring device with a micrometer gauge
38, wherein the device is connected by hoses to an auxiliary cart
which provides the required vacuum, air pressure, flow measure-
ment, oil source and filters to operate the device.
The Schuh patent cannot, however, be viewed as an
isolated disclosure. More specifically, an obviousness question
Appeal No. 97-1033
Application 08/190,485
7 In our opinion, one of ordinary skill in the art would
have understood the micrometer gauge as being suggestive of a
dial indicator, and have expected conventional air and vacuum
controls to be present on the cart, e.g., handle operated
valving.
6
cannot be approached on the basis that an artisan having ordinary
skill would have known only what they read in a reference,
because such artisan must be presumed to know something about an
art apart from what a reference discloses. See In re Jacoby,
309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962). Further, a
conclusion of obviousness may be made from common knowledge and
common sense of the person of ordinary skill in the art without
any specific hint or suggestion in a particular reference. See
In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
With the above in mind, we are of the opinion that the
overall teaching of Schuh would have suggested to one having
ordinary skill in the art a single operator, with the auxiliary
cart moved to a location in proximity to the measuring device
(with micrometer) for operation of the device. From our perspec-
tive, the incentive on the part of one having ordinary skill in
the art for carrying out the preceding equipment arrangement
would have simply been to gain the self-evident advantage of
having all equipment at one location (workstation), 7 thereby
Appeal No. 97-1033
Application 08/190,485
7
permitting one operator to operate the device; minimizing the
number of personnel to a single operator would have clearly been
a desirable and expected objective based upon the traditional
goal of maximizing the efficient utilization of personnel in a
workplace. Our latter assessment presumes skill on the part of
those practicing this art, not the converse. See In re Sovish,
769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985). For the
above reasons, we determine that the content of each of claims 1
through 5 is unpatentable under 35 U.S.C. § 103.
In summary, this panel of the board has:
affirmed the rejection of claims 1 through 3 under
35 U.S.C. § 112, second paragraph, as being indefinite; and
reversed the rejection of claims 1 through 5 under
35 U.S.C. § 102(b) as being anticipated by Schuh.
Additionally, we have introduced a new rejection in
accordance with 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 that “[a] new
Appeal No. 97-1033
Application 08/190,485
8
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 exer-
cise 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 exam-
iner, 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 appellant 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
Appeal No. 97-1033
Application 08/190,485
9
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects 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 con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART 37 CFR § 1.196
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1033
Application 08/190,485
10
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