Ex parte Barber

Board of Patent Appeals and Interferences

Sep 27, 2000

08681898 (B.P.A.I. Sep. 27, 2000)

1
The opinion in support of the decision being entered today was
not written for publication is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN P. BARBER
__________
Appeal No. 1999-2852
Application 08/681,898
___________
ON BRIEF
___________
Before STAAB, McQUADE, and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 32 through 43. Claims 1 through 31 have
been withdrawn from consideration.
The appellant’s invention relates to a magnetic
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compaction system for densifying a material to achieve a
predetermined
density. An understanding of the invention can be derived
from a reading of exemplary claim 32, which appears in the
appendix to the appellant’s brief.
THE REJECTIONS
Claims 32 through 43 stand rejected under 35 U.S.C. § 101
because in the examiner’s opinion the claimed invention is not
supported by either a creditable asserted utility or a well
established utility.
Claims 32 through 43 stand rejected under 35 U.S.C. §
112, first paragraph (enablement) for similar reasons.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and appellant regarding the above noted
rejections, we make reference to the examiner’s final
rejection and answer (Paper Nos. 11 and 14) for the examiner’s
complete reasoning in support of the rejections and to the
appellant’s brief (Paper No. 13) for the appellant’s arguments
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thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the declaration filed by the appellant, and to the
respected positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We will address the rejections of the claims under 35
U.S.C. § 112, first paragraph, and under 35 U.S.C. § 101
together. The lack of utility because of inoperativeness and
the absence of enablement are closely relative grounds of
unpatentability. Newman v. Quigg, 877 F.2d 1575, 1581, 11
USPQ2d 1340, 1345, (Fed. Cir. 1989), cert. denied, 495 U.S.
932 (1990). A rejection under 35 U.S.C. § 101 for lack of
utility is tantamount to a rejection under the how-to-use
provision of the enablement clause of the first paragraph of
35 U.S.C. § 112. In re Fouche, 439 F.2d 1237, 1243, 169 USPQ
429, 434 (CCPA 1971).
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A disclosure of an utility satisfies, the utility
requirement of § 101 unless there are reasons for the artisan
to question the truth of such disclosure. In re Gaubert, 524
F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975); In re Langer,
503 F.2d 1380, 1391-92, 183 USPQ 288, 297 (CCPA 1974).
To comply with the clause of the first paragraph of 35
U.S.C. § 112, the disclosure must adequately present the
claimed invention so that the artisan can practice it without
undue experimentation, In re Scarbrough, 500 F.2d 560, 566,
182 USPQ 298, 302 (CCPA 1974); In re Brandstadter, 484 F.2d
1395, 1407, 179 USPQ 286, 294-95 (CCPA 1973).
In support of the rejections the examiner states:
. . . specification teaches a device that accelerates
away from the material to be acted upon. As a result it
appears as if the container does not impact on the
material, making the magnetic energy the only force used
in compaction. Thus, the claims are inconsistent with
the specification, and it is not perfectly clear what
caused the compaction. . . . one skilled in the art
clearly would not know how to use the claimed invention.
The specification, it discloses only the wall 108' (the
container wall) “expands radially to compress material
102" (page 15, line 25 ). (Final Rejection at page 2)
We have reviewed the appellant’s specification and note
that in the summary of the invention the specification states
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that the container is reduced in transverse dimensions thereby
indicating that the walls of the container move inward upon
the application of the magnetic force. (see specification at
pages 5 and 6). The specification also discloses in
connection with the first embodiment depicted in figure 1 that
the magnetic pressure acts inwardly upon the electrically
conductive container 38 so that the transverse dimensions of
the container are reduced (see specification at page 8). In
connection with the tubular container depicted in figure 2,
the specification also indicates that the magnetic pressure
acts upon the tubular member and causes reduction of the
transverse dimensions of the tubular member thereby also
indicating that the walls of that container move inward. (See
specification at pages 9 and 10). The specification and it’s
explanation of the embodiment depicted in Figures 3 through 7,
in which there is a predetermined stand-off distance states:
. . . magnetic pressure is applied upon the electrically
conductive container 100'. This pressure acts similarly
upon the electrically conductive container 100', and the
transverse dimensions of the electrically conductive
container 100' are reduced (specification at page 12).
The specification also states that the process and operation
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of the embodiment depicted in Figures 3 through 7c, is
substantially the same as the embodiment described earlier
herein. Therefore, in our view, a person of ordinary skill in
the art reading the specification as a whole would understand
that the wall of the container depicted in Figures 3 through
7c moves inwardly to compact the material notwithstanding the
use of the phrase “expands radially.”
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In view of the above we will not sustain the examiner’s
rejections under 35 U.S.C. § 101 and 35 U.S.C. § 112,
paragraph one.
The decision of the examiner is reversed.
REVERSED

LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
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Application 08/681,898
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Jacox Meckstroth and Jenkins
2310 Far Hills Building
Dayton, OH 45419-1575
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