Ex parte CULP

Board of Patent Appeals and Interferences

Apr 7, 1998

08053814 (B.P.A.I. Apr. 7, 1998)

Application for patent filed April 29, 1993. According1
to appellant, this application is a continuation of Application
07/794,109 filed November 18, 1991, now abandoned.
-1-
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(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GORDON W. CULP
____________
Appeal No. 95-3565
Application 08/053,8141
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
7, 10, 11, and 19-28, which constitute all the claims remaining
in the application.
Appeal No. 95-3565
Application 08/053,814
-2-
Claim 1 reads as follows:
1. A multiresonant traveling wave actuator comprising,
a multiresonant vibrator,
a movable object,
a means of providing a normal force to maintain a
contact between the object and the vibrator,
a controller to electrically activate an
electromechanical transducer, moving the object by traction with
negligible contact sliding,
the multiresonant vibrator having at least one
electromechanical transducer having a plurality of layers of
independently electrically addressable segments which receive
signals from the controller,
wherein the segments mechanically frequency sum to
produce waves in the multiresonant vibrator, the waves comprising
a longitudinal traveling wave having a contact area component for
engaging the object and a velocity component for moving the
object at a desired speed.
The examiner’s Answer cites the following prior art:
Okumura et al. (Okumura) 4,763,776 Aug. 16, 1988
Okuno 4,857,793 Aug. 15, 1989
Kitani 5,041,750 Aug. 20, 1991
Okuno et al. (Okuno) ‘487 60-162487 Aug. 24, 1985
(Japanese Patent)
OPINION
The claims stand rejected (1) under 35 U.S.C. § 112,
first paragraph, as lacking a written description; (2) under 35
Appeal No. 95-3565
Application 08/053,814
-3-
U.S.C. § 112, second paragraph, as indefinite; and (3) under 35
U.S.C. § 102 as anticipated by any one of the four references
listed above. We also note that the examiner has required
removal of certain material, added by amendment, that the
examiner considers new matter.
We reverse the rejections. As to the examiner’s
requirement for removing certain material from the disclosure, we
do not have jurisdiction and will not adjudicate the matter.
Such requirements are reviewable only by petition to the
Commissioner, not by appeal to the Board.
(1) Written description
The written description rejection appears to fuse
concepts of enablement and written description. However, the
first paragraph of 35 U.S.C. § 112 contains three separate and
distinct requirements for sufficiency of disclosure, i.e., the
written description, enablement and best mode requirements. See
In re Barker, 559 F.2d 588, 194 USPQ 470 (CCPA 1977), In re Gay,
309 F.2d 769, 135 USPQ 311 (CCPA 1962).
The examiner states that the specification fails to
describe the recited “multiresonant vibrator having at least one
electromechanical transducer having a plurality of layers of
independently electrically addressable segments which receive
Appeal No. 95-3565
Application 08/053,814
-4-
signals from the controller.” Appellants argue that the
specification properly incorporates by reference patents
describing the recited features. The examiner nonetheless
maintains the rejection, finding that the incorporation by
reference would merely invite a “wild goose chase.” Appellants
point out that it is permissible to incorporate disclosure by
reference.
In addition, the examiner states there is no
explanation of how to support vibrator 4 with constrained
rotation and translation. The examiner’s objection appears to be
directed toward a statement in the specification, not in the
claims. Examiner’s Answer at 3-4. We can only speculate that
the examiner may have had in mind the recited “means of providing
a normal force to maintain a contact between the object and the
vibrator.”
Upon reviewing the originally filed disclosure,
including that incorporated by reference, we find an adequate
written description of the claimed invention. Therefore, we will
not sustain the rejection.
(2) Indefiniteness
The examiner’s indefiniteness rejection is largely
grounded on the position, rejected above, that there is no
Appeal No. 95-3565
Application 08/053,814
-5-
written description for the recited “multiresonant vibrator
having at least one electromechanical transducer having a
plurality of layers of independently electrically addressable
segments which receive signals from the controller.”
The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). Upon reading the claims in light of the disclosure,
including that incorporated by reference, we find the claims
reasonably apprise those of skill in the art of their scope.
Therefore, we will not sustain the rejection.
(3) Anticipation
Anticipation under 35 U.S.C. § 102 requires that each
element of the claim in issue be found either expressly or
inherently in a single prior art reference. In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983).
The extent of the examiner’s explanation for the
anticipation rejection is as follows: “[c]laims 1-7, 11, and 19-
28 (as understood) rejected [sic] under 35 U.S.C. § 102(a) as
being clearly anticipated by Okumura, Okuno, Katani, JP (487).”
Appeal No. 95-3565
Application 08/053,814
-6-
Examiner’s Answer at 6. This is insufficient for stating a prima
facie case. Moreover, it appears that the examiner’s rejection
is based on the position, rejected above, that appellants are not
entitled to claim a multiresonant (multiple frequency) device.
Because the examiner has not demonstrated how each
element of a claim is found in a single prior art reference, we
will not sustain the rejection.
CONCLUSION
The rejections of claims 1-7, 10, 11, and 19-28 are not
sustained.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Steven E. Kahm
Appeal No. 95-3565
Application 08/053,814
-7-
Rockwell International Corporation
Rocketdyne Division
6633 Canoga Avenue, P.O. Box 7922
Canoga Park, CA 91309-7922