Ex parte Auriol et al.

Board of Patent Appeals and Interferences

Nov 14, 2000

08765169 (B.P.A.I. Nov. 14, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEAN-MARC AURIOL, PHILIPPE BORNES
and
SYLVAIN GUERIN
____________
Appeal No. 2000-1473
Application No. 08/765,169
____________
ON BRIEF
____________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge and NASE, Administrative Patent
Judge.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
rejection of claims 14 to 16. Claims 1 to 13 and 17 to 23,
the only other claims pending in this application, have been
allowed.
Appeal No. 2000-1473
Application No. 08/765,169
We REVERSE and REMAND.
Appeal No. 2000-1473 Page 3
Application No. 08/765,169
BACKGROUND
The appellants' invention relates to a device for
distributing parts singly. A copy of the claims under appeal
is set forth in the appendix to the appellants' brief.
Claims 14 to 16 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not
described in the specification in such a way as to enable one
skilled in the art to which it pertains, or with which it is
most nearly connected, to make and/or use the invention.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the answer (Paper No. 16,
mailed January 12, 2000) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 15,
filed December 27, 1999) and reply brief (Paper No. 17, filed
February 16, 2000) for the appellants' arguments thereagainst.
OPINION
Appeal No. 2000-1473 Page 4
Application No. 08/765,169
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, and to the respective positions articulated by the
appellants and the examiner. As a consequence of our review,
we will not sustain the rejection of claims 14 to 16 under 35
U.S.C. § 112, first paragraph.
An analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination
of whether that disclosure contained sufficient information
regarding the subject matter of the appealed claims as to
enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one
skilled in the art could make and use the claimed invention
from the disclosure coupled with information known in the art
without undue experimentation. See United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
Appeal No. 2000-1473 Page 5
Application No. 08/765,169
In making a rejection on the ground of nonenablement, the
examiner has the initial burden to establish a reasonable
basis to question the enablement provided for the claimed
invention. See In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner must provide a
reasonable explanation as to why the scope of protection
provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be
taken as being in compliance with the enablement requirement
of 35 U.S.C. § 112, first paragraph, unless there is a reason
to doubt the objective truth of the statements contained
therein which must be relied on for enabling support.
Assuming that sufficient reason for such doubt exists, a
rejection for failure to teach how to make and/or use will be
proper on that basis. See In re Marzocchi, 439 F.2d 220, 223,
169 USPQ 367, 369 (CCPA 1971). As stated by the court,
it is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it doubts
the truth or accuracy of any statement in a supporting
Appeal No. 2000-1473 Page 6
Application No. 08/765,169
disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be
no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate
disclosure.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention,
the burden falls on the appellants to present persuasive
arguments, supported by suitable proofs where necessary, that
one skilled in the art would be able to make and use the
claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406, 179 USPQ 286, 294 (CCPA
1973). In making the determination of enablement, the
examiner shall consider the original disclosure and all
evidence in the record, weighing evidence that supports
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Application No. 08/765,169
The appellants may attempt to overcome the examiner's1
doubt about enablement by pointing to details in the
disclosure, but may not add new matter. The appellants may
also submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art would have
known at the time of filing the application.
enablement against evidence that the specification is not1
enabling.
Thus, the dispositive issue on appeal is whether the
appellants' disclosure, considering the level of ordinary skill
in the art as of the date of the appellants' application, would
have enabled a person of such skill to make and use the
appellants' invention without undue experimentation. The
threshold step in resolving this issue as set forth supra is to
determine whether the examiner has met his burden of proof by
advancing acceptable reasoning inconsistent with enablement.
In our opinion the examiner has not met his burden of
proof by advancing acceptable reasoning inconsistent with
enablement for the following reasons.
Appeal No. 2000-1473 Page 8
Application No. 08/765,169
Factors which must be considered in determining whether a
disclosure would require undue experimentation include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence
of working examples, (4) the nature of the invention, (5) the
state of the prior art, (6) the relative skill of those in the
art,
(7) the predictability or unpredictability of the art, and
(8) the breadth of the claims. See In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Our review of the record reveals that the examiner has
not applied the above-noted factors to determine that undue
experimentation would be required to practice the invention or
provided an explanation that clearly supports such a
determination. Since the examiner has not weighed the
factors, the examiner's conclusion of nonenablement cannot be
sustained.
Appeal No. 2000-1473 Page 9
Application No. 08/765,169
Furthermore, it is our view that it would not require
undue experimentation to practice the invention as set forth
in the claims under appeal for the reasons set forth by the
appellants in the brief (pp. 3-7) and reply brief (pp. 1-4).
In addition, contrary to the position of the examiner (answer,
p. 4), it is our opinion that one skilled in the art would
have been able to provide any necessary seals to the storage
devices 20 and the body 35 of the selection means 31 to permit
operation of the claimed device. Thus, we conclude that one
skilled in the art could make and use the claimed invention
from the disclosure without undue experimentation.
For the reasons set forth above, the decision of the
examiner to reject claims 14 to 16 under 35 U.S.C. § 112,
first paragraph, is reversed.
REMAND
We remand this application to the examiner to determine
whether or not claims 1 to 23 are rejectable under 35 U.S.C.
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Application No. 08/765,169
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claim 1 includes an element expressed in means-plus-
function format. As explained in In re Donaldson, 16 F.3d
1189, 1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the PTO
is not exempt from following the statutory mandate of 35
U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
In accordance with In re Donaldson, 16 F.3d at 1195, 29 USPQ2d
at 1850, "if one employs means-plus-function language in a
claim, one must set forth in the specification an adequate
disclosure showing what is meant by that language. If an
applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and
distinctly claim the invention as required by the second
paragraph of section 112."
Appeal No. 2000-1473 Page 11
Application No. 08/765,169
Accordingly, we remand the application to determine if
the applicant has set forth an adequate disclosure as to what
structure described in the specification corresponds to the
"means for subjecting" clause of claim 1. If an adequate
disclosure has not been set forth, a rejection under the
second paragraph of section 112 should be made by the
examiner. If an adequate disclosure has been set forth, the
disclosed structure corresponding to the "means for
subjecting" clause of claim 1 should be identified by the
examiner.
In addition, we remand this application to the examiner
to determine if the lack of proper antecedent basis for "inlet
orifice" and "outlet orifice" in claim 1 renders claim 1
indefinite under 35 U.S.C. § 112, second paragraph.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 14 to 16 under 35 U.S.C. § 112, first paragraph, is
reversed. In addition, this application has been remanded to
the examiner for further action.
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Application No. 08/765,169
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (Seventh Edition,
Rev. 1, Feb. 2000).
REVERSED; REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS
Senior Administrative Patent Judge
) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/765,169
HAROLD H. DUTTON JR.
8711 PLANTATION LANE
SUITE 301
P.O. BOX 3110
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Application No. 08/765,169
JVN/dl