Ex parte Demuth et al.

Board of Patent Appeals and Interferences

Dec 13, 2001

08822145 (B.P.A.I. Dec. 13, 2001)

In the parent application, the Board in a decision dated1
January 23, 1997 affirmed the 35 U.S.C. § 112 lack of
enablement rejection of claims 54 through 80.
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publication and is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT DEMUTH,
JÃœRG FAAS,
PETER FRITZSCHE,
and
EDUARD NÃœSSLI
_____________
Appeal No. 2000-0331
Application No. 08/822,145
______________
HEARD: NOVEMBER 29, 2001
_______________
Before HAIRSTON, BARRETT, and DIXON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 811
through 91.
The disclosed invention relates to a controlled cleaning
Appeal No. 2000-0331
Application No. 08/822,145
2
process for fiber material in a fiber processing facility. A
control system in the fiber processing facility adjusts the
processing parameters of a coarse cleaning machine according
to the identity of the fiber material delivered by a bale
opening machine located upstream of the coarse cleaning
machine.
Claim 81 is illustrative of the claimed invention, and it
reads as follows:
81. A fiber processing facility comprising:
a bale opening machine;
a coarse cleaning machine;
a control system, coupled to the bale opening
machine and the coarse cleaning machine, identifying a
fiber material to be processed; and
the control system adjusting the processing
parameters of the coarse cleaning machine according to
the identity of the fiber material delivered by the bale
opening machine.
No references were relied on by the examiner.
Claims 81 through 91 stand rejected under the first
paragraph of 35 U.S.C. § 112 for lack of enablement.
Reference is made to the briefs (paper nos. 35 and 38)
and the answer (paper no. 36) for the respective positions of
Appeal No. 2000-0331
Application No. 08/822,145
3
the appellants and the examiner.
Appeal No. 2000-0331
Application No. 08/822,145
4
OPINION
We have carefully considered the entire record before us,
and we will reverse the lack of enablement rejection of claims
81 through 91.
According to the examiner (answer, pages 3 and 4):
[T]here is no description as to how the control unit
operates on the input signals to produce the desired
results so as to enable one of ordinary skill in the
art to practice the claimed invention without undue
experimentation. One of the disclosed desired
outputs, and which is now the focus of the present
claims, is the adjustment of the parameters of the
coarse cleaning machine based on input fiber
characteristics. Also, as presently claimed, the
parameters of the coarse cleaner are adjusted on the
basis of an indication of the identity of the
delivered fiber. This operation is briefly alluded
to at page 34 of the specification. It is submitted
that, not only is there no disclosure as to how the
control unit operates to adjust coarse cleaning
parameters for a single fiber, there is total lack
of disclosure as to how the control unit would
operate to adjust coarse cleaner parameters for a
fiber processing system in which a plurality of
fibers of different origin are delivered to the
system . . . .
We agree with the examiner that the specification must
teach those skilled in the art how to make and use the claimed
invention without undue experimentation. Genentech, Inc. v.
Novo Nordisk A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004
(Fed. Cir.), cert. denied, 118 S.Ct. 397 (1997). Appellants
Appeal No. 2000-0331
Application No. 08/822,145
5
argue (brief, pages 10 through 15; reply brief, pages 2
through 9) that the skilled artisan would find that the scope
of the claims bears a reasonable correlation to the scope of
enablement provided by the specification. To buttress their
argument, appellants have submitted a declaration executed by
Jürg Faas, one of the co-inventors of the subject application.
In paragraph 4 of the declaration, Mr. Faas acknowledges that:
[P]rior to the presently claimed invention, it was
known to the ordinarily skilled artisan that the
coarse cleaner can handle substantially a same
maximum throughput as the bale opener. Further,
prior to the presently claimed invention, it was
known to the ordinarily skilled artisan that the
coarse cleaner could not process different fiber
materials at a same throughput rate and still
maintain a predetermined quality unless the coarse
cleaner settings were adjusted. At that time, it
was necessary, as known to the ordinarily skilled
artisan, to stop production as each new fiber
material was introduced and to manually adjust the
coarse cleaner settings to accommodate the new fiber
material, then restart the process.
In paragraph 6, declarant states that:
[I]t is my belief that the ordinarily skilled
artisan would be able to empirically determine
optimum settings of the coarse cleaner for specific
fiber material bales (or provenances) through a
trial and error procedure. My belief is supported
by the fact that, as noted above, a certain amount
of empirical determination was required prior to the
present invention, however, the machines were
required to be stopped and manually set as bales
Appeal No. 2000-0331
Application No. 08/822,145
6
were changed. Therefore, in accordance with the
original disclosure, I believe that the ordinarily
skilled artisan would be able to repeat the
empirical determination of the settings for the
coarse cleaner for each type of bale or group of
bales to be utilized in the textile process. Once
established, it is my considered opinion that the
ordinarily skilled artisan, in accordance with the
original disclosure, would be able to store the
empirically determined settings in a microcomputer
adapted to automatically adjust the coarse cleaner
settings. In this manner, adjustment of the coarse
cleaner settings would occur without necessitating
the time consuming stopping of the textile process
to manually adjust the coarse cleaner settings, as
required in the prior art. For a particular fiber
material bale, using the disclosed information and
knowledge that is common in the art, I believe that
the ordinarily skilled artisan would be able to
determine the optimum settings for the coarse
cleaning device . . . . Because the amount of time
for determining the optimum settings of the coarse
cleaner in accordance with the empirical
determination of the present invention is
substantially the same amount of time as was
required in the prior art to determine the optimum
settings for the coarse cleaner for a particular
fiber material bale, it is my conclusion that no
undue experimentation would be necessary, nor would
there be any particular hardship in practicing the
claimed invention. Further, because the ordinarily
skilled artisan is familiar with storing values in a
microcomputer, I believe that the ordinarily skilled
artisan would be able to store the optimally
established settings in a microcomputer for each
fiber material bale to be utilized in the process.
Based upon declarant’s admission that the coarse fiber
cleaning machine settings involve nothing more than automating
Appeal No. 2000-0331
Application No. 08/822,145
7
known prior art manual cleaning machine settings, we are of
the opinion that the skilled artisan after reviewing the
disclosure and the acknowledged prior art would know how to
implement the automated control of the coarse cleaning machine
without undue experimentation. Of equal importance, we find
that the scope of the claims is less than or equal to the
scope of the enablement of the disclosure. Stated
differently, the scope of the claims on appeal bears a
reasonable correlation to the scope of enablement provided by
the specification to persons of ordinary skill in the art.
National Recovery Techs. Inc. v. Magnetic Separation Sys.
Inc., 166 F.3d 1190, 1195-96, 49 USPQ2d 1671,
1675-76 (Fed. Cir. 1999). We agree with appellants’ argument
(brief, page 18) that “the Declaration adequately rebuts the
Examiner’s assertions of non-enablement under 35 U.S.C. § 112,
first paragraph, and that the Declarants’ conclusions are
based upon facts and the originally filed disclosure.” Thus,
the rejection of claims 81 through 91 is reversed because
appellants have satisfied the enablement requirement of the
first paragraph of 35 U.S.C. § 112.
Appeal No. 2000-0331
Application No. 08/822,145
8
DECISION
The decision of the examiner rejecting claims 81 through
91 under the first paragraph of 35 U.S.C. § 112 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
KWH:hh
Appeal No. 2000-0331
Application No. 08/822,145
9
GREENBLUM & BERNSTEIN, PLC
1941 ROLAND CLARKE PLACE
RESTON, VA 20191