Ex parte Swain et al.

Board of Patent Appeals and Interferences

Jul 16, 1998

08395214 (B.P.A.I. Jul. 16, 1998)

Application for patent filed February 27, 1995.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EUGENE A. SWAIN, STANLEY J. PIETRZYKOWSKI, JR.
MARK C. PETROPOULOS and ALAN D. SMITH
_____________
Appeal No. 97-1494
Application 08/395,2141
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 1, 2, 4 through 7, 9, 10, 14 and 19 as amended
subsequent to the final rejection in a paper filed May 22, 1996
(Paper No. 7). Claims 15 through 18 stand allowed.
Appeal No. 97-1449
Application 08/395,214
Both of these references were cited by the examiner in the first2
Office action mailed September 21, 1995 (Paper No. 3).
2
Claims 3, 8 and 11 through 13, the only other claims
remaining in the application, have been objected to by the
examiner, apparently as containing allowable subject matter but
as being dependent upon a parent claim which has been rejected.
Appellants' invention relates to a chuck assembly for
engaging the inner surface of a substrate. Independent claim 1
is representative of the subject matter on appeal and a copy of
that claim, as found in the Appendix to appellants' brief, is
attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
LaRue 4,168,073 Sep. 18, 1979
Petralia 5,449,182 Sep. 12, 1995
In addition, this panel of the Board relies upon the
following references of record in new grounds of rejection
entered infra:2
Phillips et al. (Phillips) 4,770,456 Sep. 13, 1988
Fukawa et al. (Fukawa) 5,282,888 Feb. 01, 1944
Appeal No. 97-1449
Application 08/395,214
3
Claims 1, 2, 4 through 7, 9, 10 and 14 stand rejected under
35 U.S.C. §102(b) as being anticipated by LaRue.
Claim 19 stands rejected under 35 U.S.C. §103 as being
unpatentable over LaRue in view of Petralia.
The examiner's full statement of the rejections and response
to appellants' arguments appears on pages 3 through 7 of the
examiner's answer (Paper No. 11, mailed August 23, 1996) and in
the communication from the examiner mailed March 18, 1998 (Paper
No. 15). Appellants' viewpoints concerning the examiner's
rejections of the appealed claims are found in the brief (Paper
No. 10, filed June 24, 1996) and in the reply brief (Paper No.
12, filed September 12, 1996).
0PINION
In arriving at our decision in this appeal, we have
carefully considered appellants' specification and claims, the
applied references, and the respective viewpoints of appellants
and the examiner. As a consequence of our review, we have made
the determinations which follow.
Appeal No. 97-1449
Application 08/395,214
4
Turning first to the examiner's rejection of claims 1, 2, 4
through 7, 9, 10 and 14 under 35 U.S.C. §102(b) as being antici-
pated by LaRue, we must agree with appellants (brief, pages 3-4)
that LaRue fails to disclose or teach a chuck with a partially
hollow elastic boot that is stretched, or is stretchable, in the
manner required in appellants' claim 1 on appeal. While the
chuck element (14) of LaRue is said to be a plastic member (i.e.,
column 2, lines 52-56, made of polypropylene which has the
property of being wear resistant, resilient, strong, and is
machinable into the desired configuration), we find no indication
that such plastic member is capable of stretching in the manner
recited in appellants' claim 1 on appeal. Instead, the plastic
member (14) of LaRue is described as including hinge areas or
"living" hinges (21, 22, 23) which are said to allow the chuck
member to be outwardly deflected upon retraction of the operating
rod (16) so as to grip the inner surface of the glass article
(T), with the member (14) returning to its initial or pre-
actuation configuration/position due to memory built into the
polypropylene member (column 4, lines 21-25). There is nothing
in LaRue which would indicate to an artisan that the plastic
member (14) therein is capable of stretching to decrease its
Appeal No. 97-1449
Application 08/395,214
5
cross-sectional dimension and thereby permit insertion of
the chuck member into a substrate as set forth in appellants'
claim 1. Nor do we see any reason to assume that such a
characteristic is inherent in the deflectable plastic member of
LaRue. For this reason, we must conclude that appellants'
independent claim 1 on appeal is not anticipated by LaRue.
For the same reason as noted above for independent claim 1,
it follows that the examiner's rejection of dependent claims 2, 4
through 7, 9, 10 and 14 on appeal under 35 U.S.C. § 102(b) will
likewise not be sustained. The § 103 rejection of dependent
claim 19 is premised on the same erroneous factual basis as was
applied to claim 1 and the additional teachings pointed to by the
examiner in Petralia do not overcome the deficiency of LaRue
noted above. Accordingly, the examiner's rejection of claim 19
under 35 U.S.C. § 103 will also not be sustained.
However, under the provisions of 37 CFR § 1.196(b), we enter
the following new grounds of rejection against certain of the
claims on appeal.
Claims 1, 7, 9 and 14 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Phillips. Phillips discloses an internal
Appeal No. 97-1449
Application 08/395,214
6
gripper or chuck assembly wherein such assembly includes a
housing (24) having an open end and defining a passageway in
communication with the open end; a hollow elastic boot or gripper
portion (30) defining an entry hole at the top end thereof, and
an inner surface, wherein the boot material is elastic, wherein
the boot when stretched decreases in cross-sectional dimension,
and wherein the boot engages the housing, whereby the hollow
portion of the boot is in communication with the passageway; and
a movable, boot stretching member (20, 22) disposed in the
passageway and adapted to engage the inner surface of the boot,
wherein movement of the stretching member in a direction to
stretch the boot decreases the cross-section dimension of the
boot, thereby permitting insertion of the boot into the
substrate/work piece (13), and wherein movement of the member in
the opposite direction increases the cross-sectional dimension of
the boot, thereby permitting engagement of the boot against the
inner surface of the substrate/work piece (13). See
particularly, Figures 2 and 3 of Phillips, column 2, lines 22-28,
and claims 1, 2 and 4 thereof.
As for claims 7, 9 and 14, it is apparent from Figures 2 and
3 of Phillips that 1) the boot is of uniform thickness throughout
Appeal No. 97-1449
Application 08/395,214
7
its length and is uniformly made from a material having the same
hardness value throughout the boot, 2) the boot stretching member
is coupled to the boot, and 3) the stretching member (20) is a
rod.
Claims 1, 2, 7, 9, 14 and 19 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Fukawa. Fukawa discloses a
holding apparatus or chuck assembly wherein such assembly
includes a housing (3, 5) having an open end and defining a
passageway in communication with the open end; a hollow elastic
boot or bag member (4) defining an entry hole at the top end
thereof, and an inner surface, wherein the boot material is
elastic, wherein the boot when stretched decreases in cross-
sectional dimension, and wherein the boot engages the housing,
whereby the hollow portion of the boot is in communication with
the passageway; and a movable, boot stretching member (10, 6)
disposed in the passage-way and adapted to engage the inner
surface of the boot, wherein movement of the stretching member in
a direction to stretch the boot decreases the cross-section
dimension of the boot, thereby permitting insertion of the boot
into the substrate/work piece (1), and wherein movement of the
member in the opposite direction increases the cross-sectional
Appeal No. 97-1449
Application 08/395,214
8
dimension of the boot, thereby permitting engagement of the boot
against the inner surface of the substrate/work piece (1). See
particularly, Figures 1 and 2 of Fukawa, column 3, lines 53-58,
and Column 5, lines 4-10 thereof.
As for claims 2, 7, 9 and 14, it is apparent from Figures 1
and 2 of Fukawa that 1) the housing (3, 5) is a hollow tube
structure having open ends, (2) the boot is of generally uniform
thickness throughout its length and is uniformly made from a
material having the same hardness value throughout the boot, 3)
the boot stretching member is coupled to the boot, and 4) the
stretching member (10) is a rod.
Regarding the requirement of appellants' claim 19 that the
boot is "adapted to form a hermetic seal with the inner surface
of the substrate," we direct attention to column 4, lines 43-50,
wherein such a seal is discussed in Fukawa.
To summarize, we have reversed the examiner's rejection of
claims 1, 2, 4 through 7, 9, 10 and 14 under 35 U.S.C. §102(b) as
being anticipated by LaRue and the examiner's rejection of claim
19 under 35 U.S.C. §103 based on LaRue and Petralia. However, in
Appeal No. 97-1449
Application 08/395,214
9
addition, pursuant to 37 CFR §1.196(b), we have entered new
grounds of rejection against claims 1, 7, 9 and 14 as being
anticipated by Phillips and claims 1, 2, 7, 9, 14 and 19 as being
anticipated by Fukawa.
In accordance with the foregoing, it is clear that the
decision of the examiner has been reversed.
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 ground of rejection shall not be
considered final for purposes of judicial review.”
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 (§ 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. . . .
Appeal No. 97-1449
Application 08/395,214
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(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1449
Application 08/395,214
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Appeal No. 97-1449
Application 08/395,214
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Ronald Zibelli
Xerox Corporation
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