Ex Parte Bitzer et al

Board of Patent Appeals and Interferences

Dec 9, 2009

10723934 (B.P.A.I. Dec. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RITA BITZER and HALF PASSOTH
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Appeal 2009-005690
Application 10/723,934
Technology Center 1700
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Decided: December 09, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

Opinion for the Board filed by KIMLIN, Administrative Patent Judge.

GARRIS, Administrative Patent Judge, dissenting-in-part.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 2-10, 12-17, 27
and 31. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 10 is illustrative:

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10. A corrosion protective brake lacquer for producing a corrosion
protective coating composition for a braking surface of at least one of a
brake disk and a brake drum, comprising:

a protective substance configured to at least one of chemically react
with oxygen and bind with oxygen;

wherein the protective substance has an average grain size that is
substantially equal to at least one of a maximum roughness and an average
size of score marks of the braking surface of the at least one of the brake
disk[s] and the brake drum.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 2):
Spehner DE 4314432 Oct. 11, 1994
Clerici EP 0976795 A2 Feb. 02, 2000

Appellants’ claimed invention is directed to a corrosion protective
brake lacquer. The lacquer comprises a substance that chemically reacts or
binds with oxygen, such as zinc and iron. The substance has an average
grain size that is substantially equal to either the maximum roughness,
average size of score marks, or average pore diameter of the braking surface
to which the lacquer is applied.
Appealed claims 2-10, 12-17, 27, and 31 stand rejected under 35
U.S.C. § 112, first paragraph, enablement requirement. Claims 2-10, 12-17,
27 and 31 also stand rejected under 35 U.S.C. § 112, second paragraph.
Claims 2-4, 10, 12-14, 17, 27, and 31 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by DE ‘432. Claims 2-7, 10, 12-17, 27, and 31
stand rejected under 35 U.S.C. § 102(b) as being anticipated by EP ‘795.
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Regarding the prior art rejections, Appellants do not present separate,
substantive arguments for any particular claim on appeal. Accordingly, the
appealed claims rejected under § 102 stand or fall together.
We consider first the rejection under § 112, first paragraph,
enablement requirement. It is the Examiner’s position that Appellants’
Specification would not enable one of ordinary skill in the art to practice the
claimed invention because no guidance is provided concerning the grain size
encompassed by the claim language “substantially equal to at least one of a
maximum roughness and an average size of score marks of the braking
surface” and “substantially equal to at least one of a maximum roughness, an
average pore diameter and an average size of score marks of the braking
surface” (claims 10 and 17). However, although the appealed claims are
extensively broad in that they encompass a virtually unlimited range of grain
sizes for the protective substance, we agree with Appellants that the skilled
artisan would need to resort to no more than routine experimentation to
determine the roughness, average size of score marks, and average pore
diameter of a particular braking surface and, consequently, be able to select
an appropriate grain size for the protective substance. The Examiner has not
demonstrated that undue experimentation would be required of the skilled
artisan in order to ascertain the appropriate grain size for a specific braking
surface.
We do agree with the Examiner, however, that the claimed subject
matter is indefinite within the meaning of § 112, second paragraph. As
noted, the claim recitations at issue are extensive in scope insofar as they
embrace a virtual unlimited range for the claimed grain size. Consequently,
since the claims define a lacquer composition, and not a process of coating a
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brake surface with a protective composition, one of ordinary skill in the art
of formulating a lacquer composition comprising a protective substance
would not be fairly apprised of the grain sizes that would infringe the
appealed claims. Stated otherwise, one of ordinary skill in the art of
formulating lacquers for uses other than brake surfaces would not be
reasonably apprised of the grain sizes for the protective substance that would
be within and outside the scope of the appealed claims. While it is generally
true that the breadth of a claim is not to be confused with its definiteness, a
claim may be so broad in its scope that it fails to particularly point out and
distinctly claim the invention, i.e., the claim is indefinite. See Burlington
Indus., Inc. v. Quigg, 822 F.2d 1581, 1583-84 (Fed. Cir. 1987), and In re
Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985).
We will sustain the Examiner’s § 102 rejections under the same
rationale. There is no dispute that both references applied by the Examiner
disclose a corrosion protective composition for brakes and similar articles
comprising the claimed protective substance. Neither reference expressly
teaches that the average grain size of the protective substance is substantially
equal to the maximum roughness, average size of score marks, and/or pore
diameter of the braking surface. However, since the appealed claims
encompass an unlimited range of grain sizes that are substantially equal to
the surface roughness and pore size of every conventional braking surface,
we agree with the Examiner that conventional protective substances used in
the applied references would necessarily have grain sizes that fall within the
extensive scope of the appealed claims. Appellants have not disclosed any
specific range for the grain size of the claimed protective substance such that
the claimed grain size is distinguished over grain sizes typically used in the
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compositions of the applied references. Since the appealed claims embrace
every value for roughness and pore size of the braking surface, it would
seem virtually impossible that the grain size for the prior art compositions
would not fall within the scope of the appealed claims.
In conclusion, the Examiner’s rejection under 35 U.S.C. § 112, first
paragraph, is reversed whereas the rejection under 35 U.S.C. § 112, second
paragraph, is affirmed. Also, the Examiner’s rejections under 35 U.S.C.
§ 102(b) are sustained. Accordingly, the Examiner’s decision rejecting the
appealed claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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GARRIS, Administrative Patent Judge, dissenting-in-part.

I agree with the majority’s decision to reverse the § 112, first
paragraph, rejection and to affirm the § 102 rejections. However, I
respectfully dissent from the decision of my esteemed colleagues to affirm
the Examiner’s § 112, second paragraph, rejection of claims 2-10, 12-17, 27,
and 31.
As support for the affirmance of this latter rejection, the majority
states that “one of ordinary skill in the art formulating a lacquer composition
comprising a protective substance would be not be fairly apprised of what
grain sizes would infringe the appealed claims” (Majority slip op. para.
bridging 3-4). However, this statement is contrary to my colleagues’
subsequent determination that the § 102 rejection should be affirmed
because, inter alia, “the appealed claims encompass an unlimited range of
grain sizes that are substantially equal to the surface roughness and pore size
of every conventional braking surface” (id. at para. bridging 4-5). I agree
with this determination and believe that it reflects how the appealed claims
would be understood by those with ordinary skill in the art.
Assessing compliance with the second paragraph of § 112 requires
determining whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification. Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Because I believe those skilled in the art would understand what is claimed,
I would reverse the Examiner’s § 112, second paragraph, rejection.
I recognize that illustrative independent claim 10 requires the
protective substance to have “an average grain size that is substantially equal
to at least one of a maximum roughness and an average size of score marks
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of the braking surface of the at least one of the brake disk and the brake
drum”. However, this quoted recitation, although broad, is as accurate as the
subject matter permits and therefore complies with the second paragraph of
§ 112. See Orthokinetics at id. (explaining why the patent claims under
consideration did not violate the second paragraph of § 112):
The claims were intended to cover the use of the
invention [i.e., a travel chair] with various types of
automobiles. That a particular chair on which the claims
read may fit within some automobiles and not others is of
no moment. The phrase “so dimensioned” is as accurate
as the subject matter permits, automobiles being of
different sizes. . . . The patent law does not require that all
possible lengths corresponding to the spaces in hundreds
of different automobiles be listed in the patent, let alone
that they be listed in the claims.

Similarly, it is of no moment that the appealed claims define an
average grain size as being substantially equal to certain physical
characteristics of braking surfaces. This definition complies with the
second paragraph. The majority’s opposing viewpoint is incorrect.
For the above-stated reasons, the Examiner’s § 112, second paragraph,
rejection of claims 2-10, 12-17, 27, and 31 should be reversed.

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