Ex Parte Beier

Board of Patent Appeals and Interferences

Aug 24, 2010

10975358 (B.P.A.I. Aug. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/975,358 10/29/2004 Gerhard Beier 080437.55053US 7392
23911 7590 08/24/2010
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
FENSTERMACHER, DAVID MORGAN
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
08/24/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERHARD BEIER
____________

Appeal 2009-001375
Application 10/975,358
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-001375
Application 10/975,358

2
STATEMENT OF THE CASE
Gerhard Beier (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1 and 4-7. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a separating device in an
oil circuit of a motor vehicle. Claim 1, reproduced below, is illustrative of
Appellant’s invention:
1. Separating device in an oil circuit of a motor
vehicle comprising a pressure-generating oil pump
and an oil tank, wherein the separating device is an
integral component of the oil tank, and comprises a
curved guide rib, said rib being open to the oil tank
along its length and arranged to separate an oil
stream loaded with gas introduced tangentially on
the curved rib into one partial stream with little air
and one partial stream containing air, further
wherein the oil tank comprises a reservoir and a
cover formed as an upper shell, the separating
device is molded as an integral part of the cover
from a plastic material, and an axial width of said
rib from the cover toward the reservoir does not
extend below an upper end of transparent portion
of an externally-viewable oil level indicator.

(emphasis added).
THE REJECTION
The Examiner has rejected claims 1 and 4-7 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
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Application 10/975,358

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ISSUE
Does the Specification (including the drawings) as originally filed
evidence that Appellant was in possession of the claimed invention, in
particular, the claimed axial width of the rib, as of the filing date of the
application?

PRINCIPLES OF LAW
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 is a question of fact. In re Alton, 76 F.3d
1168, 1174 (Fed. Cir. 1996); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991). Apropos, numerous prior decisions have emphasized
that the fact-specificity of the issue often requires decisions to be made on a
case-by-case basis. See Vas-Cath, 935 F.2d at 1563, and cases cited therein.
Where application drawings are contended to provide the written
descriptive support for a claim element, “the proper test is whether the
drawings [convey] with reasonable clarity to those of ordinary skill that [the
inventor] had in fact invented the [invention] recited in [the] claims.” Vas-
Cath, 935 F.2d at 1566. See also Ariad Pharms., Inc. v. Eli Lily & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.”). Consideration of what the drawings
convey to persons of ordinary skill in the art is essential. Ralston-Purina
Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
A patent drawing teaches all that it reasonably discloses and suggests
to a person of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914
(CCPA 1979).
Appeal 2009-001375
Application 10/975,358

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ANALYSIS
The Examiner found that the claim limitation, added by Appellant
subsequent to the filing of the application, directed to the axial width of the
guide rib not extending below an upper end of the transparent portion of an
externally-viewable oil level indicator, is not disclosed in the Specification
as originally filed. (Answer 3). Appellant appears to acknowledge that the
actual language of this claim limitation, or any reasonable facsimile thereof,
is not in the written text of the Specification, and instead relies upon the
application drawings as providing a disclosure of this limitation. (Appeal
Br., passim; Reply Br., passim). Appellant contends that the Examiner erred
by refusing to consider the content of the drawings, and by misapplying the
guidance set forth in MPEP § 2125 directed to the use of drawings as prior
art.
The basis for the Examiner’s position is that the limitation is not
expressed in the text of the Specification, and that the application drawings
do not “conclusively, clearly, concretely, or unquestionably” show the rib
portion 242 not extending below the upper end of the transparent portion
136. (Ans. 3-4). The Examiner maintains that neither Figure 1 nor Figures
2a and 2b show the position of the rib relative to the oil level indicator that
includes the transparent portion. (Ans. 4). The Examiner further, in reliance
on MPEP § 2125 and cases cited therein, takes the position that, because the
Specification does not mention that the application drawings are to scale,
Appellant may not rely on arguments directed to proportions of features
shown in the drawings. (Ans. 5).
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Application 10/975,358

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Much ado has been made about the fact that MPEP § 2125 is directed
to the use of drawings as prior art, whereas the issue here is one of reliance
on application drawings as providing written descriptive support for a claim
limitation. At a threshold level, this appears to be a distinction without a
difference. Section 2125 provides the general guidance that “The drawings
must be evaluated for what they reasonably disclose and suggest to one of
ordinary skill in the art.” MPEP § 2125, citing In re Aslanian, 590 F.2d 911
(CCPA 1979). Appellant couches this only slightly differently in stating that
the question to be resolved for the § 112 rejection is “what do the drawings
convey to one of ordinary skill in the art?” (Reply Br. 2).
We do not find that it was error for the Examiner to consider the
further guidance in § 2125 in terms of evaluating what Appellant’s drawings
do reasonably convey to the person of ordinary skill in the art. Indeed, the
Hockerson-Halberstadt case cited therein involved an assessment as to what
a patentee’s own drawings conveyed to a person of ordinary skill in the art,
and not an assessment of drawings that were being relied on as prior art.
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed.
Cir. 2000).
Notwithstanding, we do not find the Hockerson-Halberstadt decision
to be controlling here, due to the fact-specificity of that case, and the
different facts presented here. In that case, our reviewing court precluded a
patentee from escaping a prosecution history estoppel situation, involving
claim construction, by refusing to allow the patentee to rely on its own
patent drawings as evidencing that a statement made during prosecution,
giving rise to the estoppel, was erroneous. Id. The Court there held that
persons of ordinary skill in the art, being aware that figures in a patent are
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Application 10/975,358

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not drawn to scale unless otherwise indicated, would understand certain
arguments made in the prosecution history as clearly disclaiming a groove
on a heel and sole of a shoe having a width greater than the combined width
of fins on the heel, regardless of the fact that one or more of the drawings
appeared to illustrate such a groove/fin relationship. Id. In effect, the Court
refused to allow the patentee to disavow an argument advanced during
prosecution on the basis that its patent drawings showed the argument to be
erroneous, absent clear evidence that the argument was completely contrary
to what the patent disclosed, so as to maintain the integrity of the public
notice function provided by the patent and its prosecution history. Id. at
957.
We find this case to be more similar in nature to the Vas-Cath case,
which involved an issue as to whether drawings presented in a design patent
application (thus having essentially no accompanying textual description)
provided adequate description to support a utility patent claim directed to a
double-lumen catheter having particular features, such as semi-circular
lumens, a conical tip, a ratio at which the tip was tapered, and the shape, size
and placement of inlets and outlets. Vas-Cath, 935 F.2d at 1562. There, the
court found that since the drawings showed those claimed aspects, adequate
written support existed. Id. In the same vein, the CCPA at an earlier time
admonished that, although patent drawings are not working drawings, that
does not mean that things patent drawings show clearly are to be
disregarded. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
Here, the discussion presented by the Examiner as to what the
drawings actually show includes an observation that, “‘Figs. 2a and 2b
appear to show the rib being above the oil level indicator.’” (Ans. 4, quoting
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Application 10/975,358

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from Office Action dated Nov. 20, 2006). The Examiner explains that the
use of the term “appear” was intended to convey that “there is some degree
of doubt or inference from guessing” as to what the drawings actually show.
(Ans. 4).
The Examiner explains that this equivocation is as a result of neither
Figure 1 nor Figures 2a and 2b explicitly showing, in a single drawing
figure, the position of the rib relative to the oil level indicator. (Id.). No
requirement exists, however, that a single drawing figure show such a
claimed relative relationship. It appears that any doubt or guessing could
only be founded in there being a considerable difference in scale between
Figures 2a and 2b, on the one hand, and Figure 1, on the other hand. We do
not believe that the drawings would convey such a difference to the person
of ordinary skill in the art.
A person of ordinary skill in the art viewing Figures 2a and 2b would
observe that the guide rib 242 extends only a short distance below the lip of
the cover. This comports with the description in the Specification that an
object of the invention is to provide a separating device that has a “reduced
construction space” relative to prior art cyclone separators. (Spec., p. 2, para
[0005]-[0006]; p. 3, para. [0009]).
In viewing Figures 1, 2a and 2b collectively, the covers in the three
figures would be viewed by a person of ordinary skill in the art as being of
effectively the same size as each other, and thus that the non-illustrated
guide rib in the Figure 1 cover and tank assembly drawing would, as seen in
Figures 2a and 2b, extend only a short distance below the lip of the cover.
The person of ordinary skill would reasonably conclude that Appellant was
disclosing, and possessed as part of the invention, an oil separator which is
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Application 10/975,358

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positioned to extend down only a short distance past the lip of the oil tank,
and to a distance clearly above the upper end of the transparent portion 136
of the oil level indicator.
The rejection of claim 1, and of claims 4-7 depending therefrom, as
failing to comply with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112, will not be sustained.
CONCLUSION
Appellant’s Specification and drawings, as initially filed, provide
adequate written descriptive support for the claims, including the limitation
directed to the axial width of the guide rib.

DECISION
The decision of the Examiner to reject claims 1 and 4-7 is reversed.

REVERSED

mls

CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, D.C. 20044-4300