Ex parte Botting
| Decision Date | 29 March 2001 |
| Docket Number | Application 09/268,Appeal 2000-2175,925 |
| Parties | Ex parte WILLIAM ANDREW BOTTING |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
ON BRIEF[1]
Before McCANDLISH, Senior Administrative Patent Judge, STAAB and NASE, Administrative Patent Judges.
NASE Administrative Patent Judge.
This is a decision on appeal from the examiner's final rejection (Paper No. 5, mailed December 2, 1999) of claims 1 to 15 which are all of the claims pending in this application.
We REVERSE.
The appellant's invention relates to a folded and hinged plastic connector for use with heating, ventilation and air conditioning (HVAC) duct work (specification, p. 1). A copy of the claims under appeal is set forth in the appendix to the appellant's brief. The prior art references of record relied upon by the examiner in rejecting the appealed claims are:
Meyer, Jr. (Meyer)
3, 578, 026
May 11, 1971
Ono et al. (Ono)
4, 891, 471
Jan. 2, 1990
Botsolas
5, 158, 114
The following grounds of rejection are set forth in the examiner's answer (Paper No. 8, mailed April 21, 2000):
1. Claims 1-3, 6, 7, 9, and 15 are rejected under 35 U.S.C § 103(a) as being unpatentable over Ono.[2]
2. Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Meyer. 3. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ono. 4. Claims 11-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Botsolas.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant regarding the above-noted rejections, we make reference to the final rejection and the answer for the examiner's complete reasoning in support of the rejections, and to the brief (Paper No. 7, filed April 3, 2000) for the appellant's arguments thereagainst.
OPINIONIn 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 rejections based on Ono
We will not sustain the rejection of claims 1-4, 6, 7, 9, 10 and 15 based on Ono.
A prior art reference anticipates a claim only if the reference discloses, either expressly or inherently, every limitation of the claim. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2d 1051, 1053 (Fed Cir. 1987). Absence from the reference of any claimed element negates anticipation. See Kloster Speedsteel AB v Crucible, Inc., 793 F.2d 1565, 1571, 230 U.S.P.Q. 81, 84 (Fed. Cir. 1986). Similarly, a case of obviousness is established when the teachings of the prior art itself would appear to have suggested the claimed subject matter to one of ordinary skill in the art. See In re Bell, 991 F.2d 781, 783, 26 U.S.P.Q.2d 1529, 1531 (Fed. Cir. 1993).
The issue raised by the appellant and the examiner in this appeal is whether the claim phrase "HVAC plastic duct connector," which appears in the preamble of independent claims 1 and 7, is or is not an affirmative limitation of the claim.
The examiner has interpreted the claim as drawn to the subject matter of a duct connector of general utility and gave no meaning to the word "HVAC." On this basis, the examiner concluded that the Ono patent, which admittedly discloses only a wiring harness protector, anticipated or rendered obvious the appellant's claims 1 and 7. The appellant urges that the examiner erred in failing to limit the claims at issue to a HVAC plastic duct connector.
"[A] claim preamble has the import that the claim as a whole suggests for it." See Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 U.S.P.Q.2d 1816, 1820 (Fed. Cir. 1995). Where an appellant uses the claim preamble to recite structural limitations of his claimed invention, the USPTO and courts give effect to that usage. See id.; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 U.S.P.Q.2d 1962, 1966 (Fed. Cir. 1989). Conversely, where an appellant defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. See Bell Communications, 55 F.3d at 620, 34 U.S.P.Q.2d at 1820; Kropa v. Robie, 187 F.2d 150, 152, 88 U.S.P.Q. 478, 481 (CCPA 1951).
The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the application to gain an understanding of what the inventor actually invented and intended to encompass by the claim. See Corning Glass Works, 868 F.2d at 1257, 9 U.S.P.Q.2d at 1966. The inquiry involves examination of the entire application record to determine what invention the appellant intended to define and protect. See Bell Communications, 55 F.3d at 621, 34 U.S.P.Q.2d at 1821 (); In re Paulsen, 30 F.3d 1475, 1479, 31 U.S.P.Q.2d 1671, 1674 (Fed. Cir. 1994) (); Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 880, 20 U.S.P.Q.2d 1045, 1053 (Fed. Cir. 1991) (); Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 689, 16 U.S.P.Q.2d 1436, 1441 (Fed. Cir. 1990) (); Corning Glass Works, 868 F.2d at 1257, 9 U.S.P.Q.2d at 1966 (); Kropa, 187 F.2d at 152, 88 U.S.P.Q. at 481 ().
Inspection of the entire record in this case reveals that "HVAC plastic duct connector" is, in fact, a structural limitation of claims 1 and 7. To begin with, the term "HVAC" was added to the preamble of claims 1 and 7 in the amendment filed on September 14, 1999 (Paper No. 4) to distinguish those claims from the applied prior art. Additionally, the appellant's specification clearly indicates that the inventor was working on a particular problem concerning HVAC duct connectors used in heating, ventilation and air conditioning systems (i.e., systems that use a network of ducts to deliver the heated and/or cooled air to various rooms and spaces within a building structure) and not general improvements to all ducts. In our opinion, to read claims 1 and 7 indiscriminately to cover all types of ducts would be divorced from reality. The invention so described is restricted to those HVAC plastic duct connectors that work to deliver heated and/or cooled air to various rooms and spaces within a building structure, which is not true with respect to all duct connectors recited in just the body of claims 1 and 7. Thus, we conclude that the claim preamble in this instance does not merely state a purpose or intended use for the claimed structure. Rather, those words do give "life and meaning" and provide further positive limitations to the invention claimed.
In view of the above-noted determinations, we conclude that the wiring harness protector of Ono does not anticipate or render obvious the subject matter of claims 1 and 7. Accordingly, the decision of the examiner to reject independent claims 1 and 7, and claims 2-4, 6, 9, 10 and 15 dependent thereon, based on Ono is reversed.
The rejection based on Meyer
We will not sustain the rejection of claims 1-3 and 5-9 under 35 U.S.C. § 102(b) as being anticipated by Meyer.
In view of the determinations made above that the words "HVAC plastic duct connector" as recited in claims 1 and 7 do give "life and meaning"...
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