Ex parte Diesch

Board of Patent Appeals and Interferences

Jun 29, 1999

08354624 (B.P.A.I. Jun. 29, 1999)

Application filed December 13, 1994, for reissue of U.S. Patent No.1
5,094,224, issued March 10, 1992, based on application 07/661,493, filed
February 26, 1991.
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK A. DIESCH
__________
Appeal No. 98-3287
Reissue Application 08/354,6241
__________
ON BRIEF
__________
Before NASE, CRAWFORD and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
Appeal No. 98-3287
Reissue Application 08/354,624
We note the following error in claim 19 as reproduced in the2
"Appendix": line 13, --of-- should be inserted after "each."
Our consideration of this reference is based on an English translation3
thereof, a copy of which is provided to appellant with this decision.
2
final rejection of claims 1 through 23 in this reissue
application of Patent No. 5,094,224. These claims constitute
all of the claims pending in this application.
Appellant's invention relates to a heat exchanger tube
for a furnace. An understanding of the invention can be
derived from a reading of exemplary claims 1, 7 and 19 which
have been reproduced in the "Appendix" to appellant's Brief
(Paper No. 16).2
THE REFERENCES
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Tomlinson 4,739,746 Apr.
26, 1988
Thomae 3,413,999 Nov. 07,
1985 (German Patent)3
THE REJECTIONS
The following rejections are before us for review:
Appeal No. 98-3287
Reissue Application 08/354,624
The final rejection also included a rejection of claims 1 through 234
under 35 U.S.C. § 103 based on Tomlinson in view of Kerivan. However, that
particular rejection has been withdrawn (answer, page 5).
3
(1) Claims 1 through 23 stand rejected under 35 U.S.C. §
103 as being unpatentable over Tomlinson in view of Thomae;
and
(2) Claims 1 through 23 stand rejected under 35 U.S.C. §
251 as being based on a defective reissue declaration.4
The rejections are explained in the Examiner's Answer
(Paper No. 17).
The opposing viewpoints of the appellant are set forth in
appellant's Brief and the Reply Brief (Papers Nos. 16 and 18).
OPINION
We shall not sustain the examiner's § 103 or § 251
rejection of claims 1 through 23. With respect to all of the
appealed claims, we enter a new ground of rejection under the
provisions of 37 CFR 1.196(b). We begin with the new ground
of rejection.
Claims 1 through 23 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite and hence failing to
Appeal No. 98-3287
Reissue Application 08/354,624
4
particularly point out and distinctly claim the subject matter
which appellant regards as his invention.
Our difficulty with the claim language centers on the
word "substantial" in the phrase "a substantial axial portion
of said elongated tube" in each of independent claims 1, 7 and
19. When a word of degree such as "substantial" is used
in a claim, it must be determined whether the underlying
specification provides some standard or guideline for
measuring that degree.
In other words, it must be determined whether one of ordinary
skill in the art would understand what is claimed when the
claim
is read in light of the specification. Seattle Box Co. v.
Industrial Crating & Packing Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984).
In the present case, appellant’s specification does not
provide any standard or guidance for determining what
percentage of the total length of the elongated tube the flue
Appeal No. 98-3287
Reissue Application 08/354,624
5
and enhanced portions must be in order to be considered "a
substantial axial portion of said elongated tube." In fact,
the specification as filed does not even state that the flue
and enhanced portions extend a substantial axial portion of
the elongated tube. Thus, the only disclosure concerning the
lengths of the flue and enhanced portions is found in the
application drawings.
However, like the specification, appellant’s drawings
offer no meaningful guidance to determine what percentage of
the total length of the elongated tube the flue and enhanced
portions must be in order to be considered a substantial axial
portion of the elongated tube. In the embodiment illustrated
in Figures 1-3, the tube 22 includes flue portion 30, bend
portion 32 and enhanced portion 34. In Figure 18, the tube 50
includes flue
portion 56, bend portion 58 and enhanced portion 60. In each
of
the illustrated embodiments, the flue portion extends less
than
Appeal No. 98-3287
Reissue Application 08/354,624
6
50% of the total length of the elongated tube and the
flattened enhanced portion appears somewhat shorter than the
flue portion.
We would expect the meaning of "a substantial axial
portion of said elongated tube" to have the same meaning with
respect to the flue portion and to the enhanced portion, but
appellant's drawings show the flue portion to be longer than
the enhanced portion and suggest that the expression has a
different meaning with respect to each of the different
portions. Thus, when read in light of the showing in Figures
1-3 and 18, the recitation that the flue portion and the
enhanced portion each extend "a substantial axial portion of
said elongated tube" becomes even more confusing.
For the foregoing reasons, one of ordinary skill in the
art would not understand the scope of the claimed subject
matter when read in light of appellant’s specification.
Accordingly, the Seattle Box test discussed supra has not been
met.
In the final analysis, claims 1, 7 and 19 and,
consequently, the claims which depend directly or indirectly
therefrom do not define the metes and bounds of the invention
Appeal No. 98-3287
Reissue Application 08/354,624
7
with a reasonable degree of precision as required in In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
In some instances, it is possible to make a reasonable,
conditional interpretation of claims adequate for the purpose
of
resolving patentability issues to avoid piecemeal appellate
review. In the interest of administrative and judicial
economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd.
Pat. App. & Int. 1993); Ex parte Ionescu, 222 USPQ 537, 540
(Bd. App. 1984). In other instances, however, it may be
impossible to determine whether or not claimed subject matter
is anticipated by or would have been obvious over references
because the claims are so indefinite that considerable
speculation and assumptions would be required regarding the
meaning of terms employed in the claims with respect to the
scope of the claims. See In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962).
Appeal No. 98-3287
Reissue Application 08/354,624
8
For the reason discussed above, we consider appellant's
claim 1 through 23 to be sufficiently indefinite that
application
of the references to the claims is not possible. On this
basis,
we will not sustain the rejection under 35 U.S.C. § 103. It
should be understood that this reversal is not a reversal on
the merits of the rejection, but rather is a procedural
reversal predicated upon the indefiniteness of the claims.
We will also not sustain the rejection of claims 1
through 23 under 35 U.S.C. § 251. The reason given by the
examiner for
the rejection is that "the oath/declaration [fails] to address
how and why the presently amended claims remain patentable by
correcting the alleged errors over the references" (answer,
page 5). At the time the examiner's answer was mailed,
neither § 251 nor the rules required the reissue oath or
declaration to explain how or why the reissue claims were
patentable. However, the rules did require the reissue oath
or declaration to particularly specify "the errors relied
Appeal No. 98-3287
Reissue Application 08/354,624
The requirements of 37 CFR § 1.175 were amended effective Dec. 1,5
1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997). Any further determination of
the adequacy of the reissue declaration must be based on 37 CFR § 1.175, as
amended effective Dec. 1, 1997.
9
upon, and how they arose or occurred." 37 CFR § 1.175(a)(5)
(1996). Our review of the reissue declaration filed on
December 13, 1994, reveals that it contains paragraphs 2A
through 2L which identify the errors relied upon by appellant.
The examiner's answer does not contain a well- reasoned
argument for supporting the rejection and we know of none.
Accordingly, we will not sustain the standing rejection under
§ 251.5
CONCLUSION
To summarize our decision, we have reversed the examiner's
rejection of claims 1 through 23 under 35 U.S.C. § 251 on the
merits. In addition, we have reversed the examiner's rejection
of
claims 1 through 23 under 35 U.S.C. § 103 on a procedural
ground predicated upon the indefiniteness of the claims and,
Appeal No. 98-3287
Reissue Application 08/354,624
10
pursuant to 37 CFR § 1.196(b), we have entered a new ground of
rejection against claims 1 through 23 under 35 U.S.C. § 112,
second paragraph.
In view of the above, the decision of the examiner is
reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides, "A new ground of rejection shall not be
considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 98-3287
Reissue Application 08/354,624
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(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED/196(b)
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 98-3287
Reissue Application 08/354,624
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Anthony Niewyk
Baker & Daniels
111 East Wayne Street
Suite 800
Fort Wayne, IN 46802