Ex Parte Eckel et al

Board of Patent Appeals and Interferences

Sep 18, 2000

08801837 (B.P.A.I. Sep. 18, 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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS-GERD ECKEL and ANJA KUNKEL
____________
Appeal No. 1999-0527
Application No. 08/801,837
____________
ON BRIEF
____________
Before CALVERT, COHEN, and FRANKFORT, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 9, all of the claims in the application.

Appellants’ invention pertains to a seal arrangement for a
shaft end. A basic understanding of the invention can be derived
from a reading of exemplary claim 1, a copy of which appears in
the APPENDIX to the main brief (Paper No. 9).
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Application No. 08/801,837
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The following rejections are before us for review.
Claims 1 through 9 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based upon a description in a
specification which would not enable one skilled in the art to
make and/or use the invention.
Claims 1 through 9 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The full text of the examiner’s rejections and response to
the argument presented by appellants appears in the answer (Paper
No. 10), while the complete statement of appellants’ argument can
be found in the main and reply briefs (Paper Nos. 9 and 11).

Appellants indicate that claims 1 through 9 stand or fall
together. Accordingly, we select claim 1 for review, infra, and
the remaining claims shall stand or fall therewith.
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Application No. 08/801,837
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OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification, drawing, and claim 1, and the
respective viewpoints of appellants and the examiner. As a
consequence of our review, we make the determinations which
follow.
The rejection under 35 U.S.C. § 112, first paragraph
We affirm this rejection.
The rejection questions the adequacy of appellants’
disclosure of their invention as it pertains to the question of
whether the disclosure would have enabled one skilled in the art
of seal arrangements for shaft ends to make and use the
invention. The test regarding enablement is whether a
disclosure, as filed, is sufficiently complete to enable one of
ordinary skill in the art to make and use a claimed invention
without undue experimentation. See In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) and In re Scarbrough,
Appeal No. 1999-0527
Application No. 08/801,837
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500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA 1974). The
experimentation required, in addition to not being undue, must
not require ingenuity beyond that expected of one of ordinary
skill in the art. See In re Angstadt, 537 F.2d 498, 504, 190
USPQ 214, 218 (CCPA 1976). It is also well settled that an
examiner has the initial burden of producing reasons that
substantiate a rejection based on lack of enablement. See In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982)
and In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971). Once this is done, the burden shifts to the appellant to
rebut this conclusion by presenting evidence to prove that the
disclosure is enabling. See In re Doyle, 482 F.2d 1385, 1392,
179 USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974)
and In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA
1973).
Having fully reviewed the entirety of appellants’ disclosure
as filed, i.e., the content of the specification and claims 1
through 9, and the showing in Figures 1 through 3, 3a, 4, and 5,
we are in basic agreement with the examiner’s reasoning to the
effect that the disclosure raises substantial questions
concerning enablement. More specifically, we do not perceive
Appeal No. 1999-0527
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5
that one skilled in this art would have understood from the
overall disclosure what structurally constitutes the guideways
5.1 (partially and inadequately shown in Figures 1 and 5) and
receptacles 1.2 (partially and inadequately depicted solely in
Figure 5) and their interface. Further, we readily discern that
the circumferential extent of each segment 1.1 and interface
between the movable segments 1.1 are not adequately disclosed as
to the claimed sleeve of segments fastened on a sensor ring
nondisplaceably in an axial direction and displaceably outwardly
in a radial direction.
The main and reply briefs provide a narrative explanation
and argument as to why the disclosure is adequate (enabling).
However, the content of these briefs simply does not persuade us
that the disclosure is in fact adequate. No evidence has been
submitted to prove that one skilled in this art would have been
enabled by the disclosure to practice the invention. A counsel’s
argument in a brief simply cannot take the place of evidence.
See In re DeBlauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir 1984). The necessity of having to add to Figure 1
(appellants’ marked-up Figure 1 attached to the main brief) to
obtain a basis for the argument made that the extent of the
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segments is understandable supports the view that the showing in
Figure 1 alone is inadequate. While the specification (pages 6
and 7) may descriptively support the argued recitation of
guideways delimited by punched out portions (main brief, page 6,
and reply brief, page 4)), the overall disclosure, inclusive of
the drawings (punched out areas 5.2 solely shown in Figure 1),
fails to adequately inform as to the actual structure of the
guideways, as indicated, supra.
The rejection under 35 U.S.C. § 112, second paragraph
We reverse this rejection of appellants’ claims.
The examiner considers claim 1, for example, to set forth
insufficient structural relationships which render the claims
indefinite (answer, page 6). However, our reading of claim 1
informs us that it would reasonably apprise those having skill in
the art at issue as to the metes and bounds of the claimed
subject matter. Consistent with the view of appellants (reply
brief, pages 3 and 4), it is apparent to us that what the
examiner’s concerns address relates to the breadth of claim 1 not
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its definiteness in terms of understanding just what is being
claimed. Admittedly, the claim is broad, but it is not
indefinite. It is for this reason that the rejection under
35 U.S.C. § 112, second paragraph, must be reversed.
In summary, this panel of the board has:
sustained the rejection of claims 1 through 9 under
35 U.S.C. § 112, first paragraph; and
not sustained the rejection of claims 1 through 9 under
35 U.S.C. § 112, second paragraph.
The decision of the examiner is affirmed.
AFFIRMED
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Application No. 08/801,837
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
ICC/sld
Appeal No. 1999-0527
Application No. 08/801,837
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RICHARD L MAYER
KENYON AND KENYON
ONE BROADWAY
NEW YORK, NY 10004
APPEAL NO. 1999-0527 - JUDGE COHEN
APPLICATION NO. 08/801,837
APJ COHEN
APJ CALVERT
APJ FRANKFORT
DECISION: AFFIRMED
Prepared By:
DRAFT TYPED: 21 Jul 03
FINAL TYPED: