Ex parte Diller

Board of Patent Appeals and Interferences

Feb 11, 1999

08263852 (B.P.A.I. Feb. 11, 1999)

Application for patent filed June 22, 1994. 1
Filed January 15, 1999.2
Effective Dec. 1, 1997, 37 CFR § 1.197(b) was amended to3
change the term "reconsideration" to "rehearing." See the
final rule notice published at 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)).
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for publication in a law journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS DILLER
____________
Appeal No. 98-0981
Application No. 08/263,8521
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This is in response to the appellant's request for
rehearing of our decision mailed November 20, 1998, wherein we2,3
Appeal No. 95-3698 Page 2
Application No. 08/006,717
Claims are considered to be definite, as required by the4
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
reversed the examiner's rejection of claims 5 through 7 and 27
through 32 under 35 U.S.C. § 103 and added a new rejection of
claims 5 through 7 and 27 through 32 under 35 U.S.C. § 112,
second paragraph, pursuant to provisions of 37 CFR § 1.196(b).
On pages 7-8 of our decision we stated
Claims 5 through 7 and 27 through 32 are rejected
under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which the appellant
regards as the invention.
Claims drafted in means-plus-function format are
subject to the definiteness requirement of 35 U.S.C. § 112,4
second paragraph:
[I]f one employs means-plus-function language in a
claim, one must set forth in the specification an
adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim
the invention as required by the second paragraph of
section 112.
In re Donaldson, 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850
(Fed. Cir. 1994) (in banc); see also In re Dossel, 115
Appeal No. 95-3698 Page 3
Application No. 08/006,717
F.3d 942, 946-47, 42 USPQ2d 1881, 1884-85 (Fed. Cir. 1997).
After review of the appellant's disclosure, it is our
opinion that such disclosure fails to adequately disclose
what structure corresponds to the claimed "pivotal means
disposed between said car body and said second carriage
permitting free pivotal movement of said car body about a
generally horizontal axis relative to said second carriage
as said pin means sliding in said groove causes said car
body to pivot about said generally horizontal axis relative
to said first carriage." The second paragraph of page 4 of
the specification provides written description support for
the claimed "pivotal means." However, that description
does not specifically disclose the structure that
corresponds to the claimed "pivotal means." Thus
independent claim 27 and its dependent claims fail to
particularly point out and distinctly claim the subject
matter which the appellant regards as the invention.
The sole argument (pp. 2-3) raised by the appellant is that
the appellant's disclosure provides "full and complete support"
for the structure of the "pivotal means" recited in independent
claim 27. Specifically, the appellant directs our attention to
Figures 12, 13 and 14 and the discussion of those figures found
on pages 12 and 13 of the specification.
We have carefully considered the argument raised by the
appellant in the request for rehearing, however, that argument
Appeal No. 95-3698 Page 4
Application No. 08/006,717
Claim 27 recites "a first and second carriage underlying5
said car body."
does not persuade us that our decision was in error in any
respect. In that regard, the claimed "pivotal means" is recited
as being disposed between the car body and the second carriage
permitting free pivotal movement of the car body about a
generally horizontal axis relative to the second carriage as
said pin means sliding in the groove causes the car body to
pivot about the generally horizontal axis relative to the first
carriage. However, the coupling heads disclosed in Figures 12-
14 are disposed between a first freight car and a coupled rear
freight car so that the first freight car can be tilted
independently of the rear freight car as is the case when the
first freight car is traversing a curve, while the rear freight
car is still on a straight track (specification, p. 12, lines
20-23). Thus, the disclosed coupling heads are to couple
together two different freight cars. The claimed "pivotal
means" is structure provided on a single car body "disposed5
between said car body and said second carriage." Accordingly,
the disclosed coupling heads are not structure that corresponds
Appeal No. 95-3698 Page 5
Application No. 08/006,717
to the claimed "pivotal means." Thus, it remains our view that
independent claim 27 and its dependent claims fail to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
In light of the foregoing, the appellant's request for
rehearing is granted to the extent of reconsidering our
decision, but is denied with respect to making any change
thereto.
Appeal No. 95-3698 Page 6
Application No. 08/006,717
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REQUEST FOR REHEARING - DENIED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 95-3698 Page 7
Application No. 08/006,717
JORDAN AND HAMBURG
122 EAST 42ND STREET
NEW YORK, NY 10168
ON REQUEST FOR REHEARING
APPEAL NO. 98-0981 - JUDGE NASE
APPLICATION NO. 08/263,852
APJ NASE
APJ FRANKFORT
APJ MEISTER
DECISION: DENIED
Prepared By: Gloria Henderson
DRAFT TYPED: 10 Feb 99
FINAL TYPED: