Ex parte Bloom

Board of Patent Appeals and Interferences

Sep 22, 1999

07924591 (B.P.A.I. Sep. 22, 1999)

Application for patent filed August 8, 1992. According to applicant,1
this application is a continuation of Application 07/650,960, filed February
5, 1991.
1
Paper No. 25
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TERRY BLOOM
______________
Appeal No. 1995-4243
Application 07/924,5911
_______________
ON BRIEF
_______________
Before GARRIS, WARREN and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.

ON REQUEST FOR REHEARING
Pursuant to the provisions of 37 CFR § 1.197(b)(amended
Dec. 1, 1997), appellant has submitted a request for
Appeal No. 1995-4243
Application 07/924,591
A request for reconsideration is now denominated as a request for2
rehearing. See 37 CFR § 1.197(b), amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat.
& Trademark Office 63,122 (Oct. 21, 1997).
All other rejections on appeal were reversed.3
2
reconsideration of our decision dated August 24, 1998,2
affirming the rejection
of claims 2-4, 9-11, and 13-14 under the first paragraph of
35 U.S.C. § 112 for lack of descriptive support.3
Appellant requests rehearing based on two issues only
with respect to claim 11 (Request, page 3). Specifically,
appellant requests that the Board reconsider its decision that
there is insufficient support in the originally filed
disclosure for the subject matter of claim 11. Appellant also
requests that the Board reconsider its decision to affirm the
rejection of claim 11 since the rejection of claim 12 was
reversed and both claims are “subsets of the table on page 8"
of the specification (Id.).
Both issues are related and will be addressed together.
The ratios of silicon to boron in independent claim 14 were
held to lack descriptive support in the originally filed
Appeal No. 1995-4243
Application 07/924,591
3
specification (Decision, pages 9-10). As noted by appellant
on page 2 of the Request, claim 11 depends from claim 3, which
in turn depends from independent claim 14. Claim 11 recites
weight % ranges for a glass frit of lead monoxide, boron
oxide, and silica. As also noted by appellant on page 4 of
the Request, claim 11 recites
the transitional term “comprising” regarding the glass frit
composition. The transitional term “comprising” permits the
inclusion of other materials. In re Baxter, 656 F.2d 679,
686, 210 USPQ 795, 802 (CCPA 1981).
Conversely, claim 12 recites a specific composition of
the glass frit which “consists of” lead monoxide, boron oxide
and silica. The transitional term “consists of” closes the
claim to the inclusion of materials other than those recited
except for impurities ordinarily associated therewith (see
footnote 4 on page 11 of the Decision). Accordingly, there is
basis in the originally filed disclosure for the composition
“consisting of” the three ingredients recited in claim 12 on
appeal with the attendant boron to silica ratio which is
within the scope of claim 14. However, we have determined
Appeal No. 1995-4243
Application 07/924,591
4
that there is no basis in the originally filed disclosure for
the composition “comprising” the three ingredients recited in
claim 11 on appeal since the boron to silica ratios are
inherent to the composition only when three ingredients are
present, i.e., when the claim is closed to other ingredients.
Appellant argues that the basis for claim 11 on appeal is
evident from the specification at page 8. However, the ranges
recited in claim 11 on appeal, derived from the examples in
the table on page 8 of the specification, possess an inherent
boron to silica ratio only when the composition is limited to
“consisting of” language, i.e., the three ingredients recited
in the table. As previously noted on pages 9-10 of the
decision, there is no other basis for the boron to silica
ratios recited in independent claim 14.
We do not find in the Request any argument convincing us
of error in the conclusions we reached in our decision.
Accordingly, appellant’s Request for Rehearing is denied.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1995-4243
Application 07/924,591
5
DENIED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CTS Corporated
Attn: Albert W. Watkins
905 North West Blvd.
Elkhart, IN 46514
Appeal No. 1995-4243
Application 07/924,591
6
TAW/cam