Ex parte Stark

Board of Patent Appeals and Interferences

Mar 30, 1998

08429806 (B.P.A.I. Mar. 30, 1998)

Application for patent filed April 27, 1995.1
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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journal and (2) is not binding precedent of the Board.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 BRUCE E. STARK
________________
Appeal No. 97-1493
Application 08/429,8061
________________
ON BRIEF
________________
Before CALVERT, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 12 through
19, all of the claims pending in the application.
The invention relates to a carrier, such as a tractor
trailer, which includes “a cargo restraint system having vertical
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Application 08/429,806
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rods which rise automatically from the floor of the carrier at
locations adjacent the cargo” (specification, page 1). Claim 12
is illustrative and reads as follows:
12. A system for restraining the movement of cargo exerting
a gravitational force on a floor of a carrier during transport,
the system comprising:
(a) a source of fluid;
(b) a means for changing the pressure of the fluid from a
first pressure when the carrier is stationary to a second
pressure, which second pressure is greater than the first
pressure but less than the gravitational force exerted upon the
floor by the cargo, when the carrier is transported;
(c) a plurality of vertically-movable rods communicating
with the fluid source and distributed throughout the floor, each
rod positioned so that it is flush with the topside of the floor
when the fluid source is at the first pressure and so that it is
risen above the topside of the floor when the fluid source is at
the second pressure, provided the rising of the rod is not
prevented by the presence of the cargo on top of the rod;
such that, when the carrier is stationary and the fluid source is
at the first pressure, cargo is loaded without contact with the
rods, and such that, when the carrier is transported and the
fluid source is at the second pressure, the cargo is restrained
by the adjacent raised rods.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Blackburn 3,520,433 Jul. 14, 1970
Halliar 5,092,250 Mar. 3, 1992
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The appealed claims stand rejected as follows:
a) claims 12 through 19 under 35 U.S.C. § 112, first
paragraph, as being based on a specification which as originally
filed does not provide support for the invention now claimed;
b) claims 12 through 19 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the invention;
c) claim 12 under 35 U.S.C. § 102(b) as being anticipated by
Blackburn;
d) claims 13 through 19 under 35 U.S.C. § 103 as being
unpatentable over Blackburn; and
e) claims 12 through 19 under 35 U.S.C. § 103 as being
unpatentable over Halliar in view of Blackburn.
Reference is made to the appellant’s brief (Paper No. 10)
and to the examiner’s final rejection and answer (Paper Nos. 6
and 11) for the respective positions of the appellant and the
examiner with regard to the merits of these rejections.
The examiner’s explanation (see pages 2 and 3 in the final
rejection) indicates that the standing 35 U.S.C. § 112, first
paragraph, rejection is predicated on an alleged failure of the
appellant’s specification to comply with the written description
Appeal No. 97-1493
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requirement of this section of the statute. The test for
determining compliance with the written description requirement
is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The content of
the drawings may also be considered in determining compliance
with the written description requirement. Id.
According to the examiner, the originally filed disclosure
does not support the recitation in claim 12 of “a means for
changing the pressure of the fluid from a first pressure when the
carrier is stationary to a second pressure . . . when the carrier
is transported.” A review of the originally filed disclosure
shows the examiner’s position to be well founded. The portions
of the specification relied upon by the appellant to traverse the
Appeal No. 97-1493
Application 08/429,806
The appellant’s arguments betray a misguided belief that2
the rejection is based on a failure of the specification to
comply with the enablement, rather than the written description,
requirement of § 112, first paragraph. The examiner’s
explanation clearly indicates, however, that it is the latter
requirement which is at issue. The written description and
enablement requirements are, of course, separate and distinct.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991).
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rejection (see pages 3 and 4 in the brief) indicate that the2
first and second pressures are functions of the tractor trailer
engine being turned on and off, respectively. In contrast, there
is nothing in the original disclosure which indicates that these
pressures are functions of the carrier being stationary or
transported. Thus, the disclosure of the application as
originally filed would not reasonably convey to the artisan that
the appellant had possession at that time of a restraining system
comprising “a means for changing the pressure of the fluid from a
first pressure when the carrier is stationary to a second
pressure . . . when the carrier is transported” as recited in
claim 12.
Accordingly, we shall sustain the standing 35 U.S.C. § 112,
first paragraph, rejection of claim 12 and of claims 13 through
19 which depend therefrom.
We also shall sustain the standing 35 U.S.C. § 112, second
paragraph, rejection of claims 12 through 19.
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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 determining whether this
standard is met, 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 has advanced a number of reasons why the
subject matter recited in claims 12 through 19 is indefinite (see
pages 3 and 4 in the final rejection). The one relating to the
recitation in claim 12 of the “means for changing the pressure of
the fluid from a first pressure when the carrier is stationary to
a second pressure . . . when the carrier is transported” is well
taken given the above noted lack of any enlightening support for
this limitation in the appellant’s disclosure. The examiner’s
other stated concerns, while perhaps indicative of somewhat
unartful claim draftsmanship, are not serious enough to render
the claimed subject matter indefinite. With specific regard to
the alleged conflict between the preamble and body of claim 12
(see pages 3 and 4 in the final rejection), the preamble does not
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contain any language which is inconsistent with the recitation in
the body of the claim of positive structural relationships
involving the floor of the carrier.
Turning now to the standing prior art rejections, Blackburn
discloses a truck-tractor adapted to carry a cargo container 120.
In order to facilitate the assembly and disassembly of these
components, the chassis 110 of the truck-trailer includes a
plurality of power-driven piston lifters 118 for raising and
lowering the container (see column 2, line 46 et seq.).
Halliar discloses a system designed to prevent the pilfering
of cargo containers carried on a railroad flatcar. The system
includes a number of upwardly biased pin assemblies 50 mounted on
the floor of the flatcar in accordance with standard cargo
container sizes. The pin assemblies are movable between lower
positions in which they are flush with the floor and upper
positions in which they project above the floor. The locations
of the pin assemblies are such that any pin assembly beneath a
container will be pushed into its lower position under the weight
of the container and at least one other pin assembly will assume
its upper position adjacent the swinging door of the container to
prevent it from being opened (see column 3, line 22 through
column 4, line 54).
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In short, these references, taken individually or in
combination with one another, do not teach and would not have
suggested a cargo restraining system having the particular
elements specified in independent claim 12. The examiner’s
various determinations to the contrary (see pages 4 through 8 in
the final rejection) rest on conclusions as to how the prior art
structures “could” function which are completely unsupported by,
and for the most part inconsistent with, the fair teachings and
suggestions of the references.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claim 12 as being anticipated by Blackburn,
the standing 35 U.S.C. § 103 rejection of dependent claims 13
through 19 as being unpatentable over Blackburn, or the standing
35 U.S.C. § 103 rejection of claims 12 through 19 as being
unpatentable over Halliar in view of Blackburn.
In summary, the decision of the examiner:
a) to reject claims 12 through 19 under 35 U.S.C. § 112,
first paragraph, is affirmed;
b) to reject claims 12 through 19 under 35 U.S.C. § 112,
second paragraph, is affirmed;
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c) to reject claim 12 under 35 U.S.C. § 102(b) as being
anticipated by Blackburn is reversed;
d) to reject claims 13 through 19 under 35 U.S.C. § 103 as
being unpatentable over Blackburn is reversed; and
e) to reject claims 12 through 19 under 35 U.S.C. § 103 as
being unpatentable over Halliar in view of Blackburn is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1493
Application 08/429,806
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Philip L. Bateman
P. O. Box 1105
Decatur, IL 62525