Ex Parte Sharrah et al

Board of Patent Appeals and Interferences

Mar 23, 2012

11400402 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/400,402 04/06/2006 Raymond L. Sharrah P02122US05/CAB
(SL-388)
3771
110 7590 03/23/2012
DANN, DORFMAN, HERRELL & SKILLMAN
1601 MARKET STREET
SUITE 2400
PHILADELPHIA, PA 19103-2307
EXAMINER
TAOUSAKIS, ALEXANDER P
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
03/23/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAYMOND L. SHARRAH and CHARLES W. CRAFT
____________

Appeal 2010-004741
Application 11/400,402
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004741
Application 11/400,402

2
STATEMENT OF THE CASE
Raymond Sharrah and Charles Craft (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C.
§ 102(b) claims 22-26, 29 and 31-39 as anticipated by Sharrah (US
6,402,340 B1, issued Jun. 11 2002).1 Claims 1-21, 27, 28 and 30 have been
cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to methods of making a flashlight
housing. Spec. 1, para. [002] and fig. 1.
Claim 22 is representative of the claimed invention and reads as
follows:
22. A method for making a flashlight housing comprising
the steps of:
providing a blank of an electrically conductive material;
deep drawing the blank of electrically conductive
material to form an elongated hollow member that has an
internal cavity open at a first end and that has a reduced
inner diameter portion proximate a second end thereof;
coating the elongated hollow member with a coating
material; and

1 U.S. Patent Application No. 11/400,402 (filed Apr. 6, 2006), the subject of
this appeal, is a divisional of U.S. Design Patent Application No. 29/178,984
(filed Apr. 2, 2003) now U.S. Design Patent No. D 521,164 S which is a
continuation of (1) U.S. Design Patent Application No. 29/161,696 (filed
Jun. 3, 2002) now abandoned; and (2) U.S. Patent Application No.
10/238,807 (filed Sep. 9, 2002) now U.S. Patent No. 6,857,758 B1. U.S.
Patent Application No. 10/238,807 is a divisional of U.S. Patent Application
No. 10/047,536 (filed Jan. 14, 2002) now U.S. Patent No. 6,491,409 B1
which is a divisional of U.S. Patent Application No. 09/511,876 (filed Feb.
25, 2000) (i.e., the original application) now U.S. Patent No. 6,402,340 B1.
Appeal 2010-004741
Application 11/400,402
3
drilling or boring the reduced inner diameter portion of
the elongated hollow member at least for removing coating
material from the reduced inner diameter portion.

SUMMARY OF DECISION

We REVERSE.

OPINION
The Examiner takes the position that the disclosure of prior filed U.S.
Design Patent Application 29/178,9842 fails to provide adequate support or
enablement in the manner provided by the first paragraph of 35 U.S.C. § 112
for one or more claims of instant U.S. Patent Application No. 11/400,4023.
Ans. 4. According to the Examiner, the ‘984 design application, “does not
disclose the explicitly claimed steps recited in the current application,” that
is, “there is no disclosure in the design application of the steps for deep
drawing, coating, and drilling/boring, which steps are recited in at least
claims 22 and 31-33 [of the instant ‘402 utility application].” Id.
Pointing to the requirements of 35 U.S.C. §§ 120 and 171, Appellants
argue that they are entitled to the priority date of U.S. Patent Application
No. 09/511,876.4 App. Br. 5-7. According to Appellants, (1) the ‘984
design application, as filed, included an express and proper incorporation by
reference of each of the priority utility patent applications (i.e., the ‘876
original application, 10/047,536, and 10/238,807), in their entireties; and (2)
the incorporation by reference was never objected to and was not removed at
any time during the pendency of the ‘984 design application. App. Br. 9.
See also, Supplement to Appellant’s Brief on Appeal, filed Apr. 9, 2009,

2 Hereafter the “‘984 design application.”
3 Hereafter the “‘402 utility application.”
4 Hereafter the “‘876 original application.”
Appeal 2010-004741
Application 11/400,402
4
Exhibit A. Thus, because the entire specification and the drawings of each
and every prior filed utility patent application (i.e., the ‘876 original
application, 10/047,536 and 10/238,807) were expressly incorporated by
reference into the ‘984 design application, Appellants contend that they are
entitled to the priority date of the ‘876 original application, now U.S. Patent
No. 6,402,340. App. Br. 9. Therefore, according to Appellants, U.S. Patent
No. 6,402,340 is not a reference against the instant application, and as such
the Examiner’s anticipation rejection is improper. App. Br. 13.
In response, the Examiner appears to take the position that although
the incorporation by reference of U.S. Patent Application No. 10/238,807
into the ‘984 design application is proper, “the incorporation by reference of
29/178,984 into the present application is not in compliance with 37 C.F.R.
1.57(c) [5].” Ans. 5. See also, Spec. 1, para. [001]. The Examiner notes that
the method steps recited in the instant ‘402 utility application (i.e., deep
drawing, coating, and drilling/boring) constitute “essential material,” as
defined by 37 C.F.R. § 1.57(c), and “are only expressly disclosed in each of
the [previously filed] utility applications.” Id. Hence, according to the
Examiner, “appellant is attempting to incorporate by reference material from
29/178,984 that itself has been incorporated by reference from the

5 “’Essential material’ may be incorporated by reference, but only by
way of an incorporation by reference to a U.S. patent or a U.S. patent
application publication, which patent or patent application publication does
not itself incorporate such essential material by reference. ‘Essential
material’ is material that is necessary to: (1) Provide a written description of
the claimed invention , and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and set forth the best mode
contemplated by the inventor of carrying out the invention as required by the
first paragraph of 35 U.S.C. 112; …”
Appeal 2010-004741
Application 11/400,402
5
previously filed utility applications,” which is expressly prohibited by 37
C.F.R. § 1.57(c). Ans. 6.
We do not agree with the Examiner’s position for the following
reasons.
The Examiner appears to acknowledge that the incorporation by
reference, at least of U.S. Patent Application No. 10/238,807, which issued
as a patent, into the ‘984 design application is proper. Ans. 5. We note that
the Examiner has not provided any valid reason why the incorporation by
reference of each and every prior filed utility patent application (i.e., the
‘876 original application, 10/047,536 and 10/238,807) into the ‘984 design
application is improper. Although the Examiner has some concern as to
“how much of the disclosure of utility application 10/238,807 is permissibly
incorporated into design application 29/178,984,” the Examiner considers
this issue moot. We therefore agree with Appellants that the incorporation
of the other two utility applications, i.e., the ‘876 original application and
10/047,536, into the ‘984 design application, each of which also disclosed
the deep drawing, coating , and drilling/boring steps, is also proper. Reply
Br. 2. We further agree with Appellants, that the instant ‘402 utility
application supports the claims on appeal for the purpose of satisfying the
first paragraph of 35 U.S.C. § 112. See Reply Br. 4. As such, in contrast to
the Examiner’s position, we do not find that the incorporation by reference
of 29/178,984 into the present application is prohibited by 37 C.F.R. §
1.57(c).
In conclusion, we find that the chain of priority from the ‘876 original
application to the instant ‘402 utility application is complete and proper.
Therefore, U.S. Patent No. 6,402,340 is not available as a reference under 35
U.S.C. § 102(b) against the instant ‘402 utility application. Accordingly,
Appeal 2010-004741
Application 11/400,402
6
since U.S. Patent No. 6,402,340 is not a reference under 35 U.S.C. § 102(b)
against the instant ‘402 utility application, the rejection of claims 22-26, 29
and 31-39 under 35 U.S.C. §102(b) as being anticipated by Sharrah cannot
be sustained.

DECISION
The decision of the Examiner to reject claims 22-26, 29 and 31-39 is
reversed.

REVERSED

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