Ex parte Cocito et al.

Board of Patent Appeals and Interferences

Oct 13, 2000

08975338 (B.P.A.I. Oct. 13, 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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GIUSEPPE COCITO and GIORGIO GREGO
____________
Appeal No. 1999-2193
Application No. 08/975,338
____________
ON BRIEF
____________
Before CALVERT, NASE, and GROSS, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 5 and 6, as amended subsequent to the final
rejection. These claims constitute all of the claims pending
in this application.
We REVERSE.
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Application No. 08/975,338
A minor error in claim 5 is noted on page 3 of the1
answer.
BACKGROUND
The appellants' invention relates to a method of
fabricating a polarization-maintaining silica optical fiber.
A substantially correct copy of the claims under appeal is set
forth in the appendix to the brief. 1
Claims 5 and 6, the only claims pending in this
application, stand rejected solely 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.
The conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection are set
forth in the examiner's answer (Paper No. 23, mailed February
23, 1999) and the appellants' brief (Paper No. 22, filed
December 18, 1998).
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Application No. 08/975,338
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Application No. 08/975,338
OPINION
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 5 and 6 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. 1999-2193 Page 5
Application No. 08/975,338
In order to make a rejection, 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
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Application No. 08/975,338
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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The appellants may attempt to overcome the examiner's2
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 not2
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.
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Application No. 08/975,338
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. While both the examiner and the appellants
agree that Figures 2 and 3 are incorrect (answer, pp. 4-5;
brief, p. 4), this fact alone does not, in our view, warrant
an enablement rejection.
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Application No. 08/975,338
In this case, the examiner appears to have focused on the
lack of any working examples (only one of the above-noted
eight factors) and the errors in Figures 2 and 3, as the basis
that led the examiner to conclude that the scope of any
enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. Since the examiner has not weighed all the factors,
the examiner's conclusion of nonenablement cannot be
sustained. As stated in the Manual of Patent Examining
Procedure (MPEP) § 2164.02 (Seventh Edition, Rev. 1, Feb.
2000)
When considering the factors relating to a
determination of non-enablement, if all the other factors
point toward enablement, then the absence of working
examples will not by itself render the invention
non-enabled. In other words, lack of working examples or
lack of evidence that the claimed invention works as
described should never be the sole reason for rejecting
the claimed invention on the grounds of lack of
enablement.
. . .
Furthermore, it is our view that it would not require
undue experimentation to practice the invention as set forth
in the claims under appeal. In that regard, we note that the
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Application No. 08/975,338
appellants provide guidance on page 2, line 37, to page 3,
line 38, of the specification that an ultraviolet beam is
collimated within the core of a silica optical fiber by
differences in refractive index between the core and the
cladding of the fiber and between the cladding and the
external environment (e.g., air). In our opinion, this
teaching would enable an artisan to practice the claimed
invention with any core-cladding silica optical fiber by
reverse calculation, using known optical principles (e.g.,
Snell's Law), of what the appropriate incoming ultraviolet
beam should be to produce a collimated beam in the fiber's
core. That is, one knowing the properties of the fiber and
desiring a collimated beam in the core would be able to
calculate what the divergence/convergence of the beam would
have to be in the cladding, and from that one could calculate
what the divergence/convergence of the beam would have to be
in the external environment (e.g., air). Thus, we conclude
that the one skilled in the art could make and use the
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Application No. 08/975,338
Our decision in the case should not be taken as3
supporting the proposition that Figures 2 and 3 should not be
corrected to remove the inaccuracies therefrom. In fact, it
may be that Figures 2 and 3 are not required and could be
deleted.
claimed invention from the disclosure coupled with information
known in the art without undue experimentation. 3
For the reasons set forth above, the decision of the
examiner to reject claims 5 and 6 under 35 U.S.C. § 112, first
paragraph, is reversed.
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Application No. 08/975,338
CONCLUSION
To summarize, the decision of the examiner to reject
claims 5 and 6 under 35 U.S.C. § 112, first paragraph, is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
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Application No. 08/975,338
THE FIRM OF KARL F ROSS
5676 RIVERDALE AVE
BOX 900
RIVERDALE, NY 10471-0900
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JVN/dl