Ex Parte Eichmann et al

Patent Trials and Appeals Board

Jan 13, 2015

11908092 - (D) (P.T.A.B. Jan. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG EICHMANN, FALKO HEUTLING,
KARL-HEINZ MANIER, MARKUS UECKER, and
THOMAS UIHLEIN
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Appeal 2012-008733
Application 11/908,092
Technology Center 1700
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
DONNA M. PRAISS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 9–
19. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
The claims are directed to a gas turbine component with a wear
protection layer having at least three layers. The three layers, according to
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Application 11/908,092

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the claims, “alternate between a hard layer and a soft layer.” Claims 9 and
17. Claim 17 is illustrative:
17. A gas turbine component, comprising:
a main body;
a wear protection coating, wherein the wear protection
coating includes at least three layers and wherein the at least
three layers alternate between a hard layer and a soft layer; and
a barrier coat disposed between the main body and the
wear protection coating, wherein the barrier coat includes a
smooth surface and is resistant to chemical or electrochemical
decoating.
Claims Appendix at Br. 15 (emphasis added).
In addition to rejecting the claims on various grounds of anticipation
and obviousness, the Examiner rejects claims 9–19 under 35 U.S.C. § 112,
¶ 2.1 This section of the statute requires that “[t]he specification … conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” As the
statutory language of “particular[ity]” and “distinct[ness]” indicates, claims
are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
Because it is not always possible to define the scope of an invention exactly
using the linguistic tools of claim drafting, “how much clarity is required
necessarily invokes some standard of reasonable precision in the use of
language in the context of the circumstances.” Id.

1 A rejection of claims 9–19 under 35 U.S.C. § 112 ¶ 1 was withdrawn. Ans.
4.
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The Examiner determines that “it is unclear what is meant by the
terms ‘hard’ and ‘soft’” in the claims. Ans. 4–5. Appellants contend that
the terms “hard” and “soft” are used in their “normal, conventional” sense,
in which “hard” means “not easily penetrated or not easily yielding to
pressure,” and “soft” means “easily penetrated or easily yielding to
pressure.” Br. 7. Appellants further cite to U.S. Patents using the terms. Id.
We agree with the Examiner’s response to Appellants’ contentions.
Ans. 11–13. Further, although Appellants do not provide any evidence
supporting their definition of the terms, even taking those definitions as
correct, it is not clear to what degree a material must be impenetrable and
unyielding to be “hard” within the meaning of the claim, and to what degree
a material must be penetrable and yielding to be “soft.” The term “a hard
layer” connotes a level of hardness. The term “a soft layer” connotes a level
of softness. Under the circumstances, one must determine whether the
Specification provides some standard for measuring the degree of hardness
and softness. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826 (Fed. Cir. 1984). The Specification provides no guidance. In
fact, the only use of the words “hard” and “soft” is on page 3 of the
Specification. Here, the Specification states “[t]he layers 13, 14, and 15 of
the wear protection coating may be alternately relatively hard or relatively
soft layers, or coats.” Spec. 3: 2–4. The words “relatively” and “or” in the
sentence lead to more ambiguity and confusion rather than less.
With respect to the rejections under 35 U.S.C. §§ 102 and 103,
speculative assumptions would be required to determine the scope of the
claim, a necessary step required to evaluate the prior art rejections. In such a
situation, it is not appropriate to sustain a prior art rejection. See In re
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Steele, 305 F.2d 859, 862 (CCPA 1962) (reversed because § 103 rejection
was based on considerable speculation as to meaning of terms of claims and
assumptions as to their scope). We, therefore, procedurally reverse the
§§ 102 and 103 rejections without reaching their merits. We emphasize that
this is a technical reversal of the prior art rejections that is not based upon
the merits of the rejection.

CONCLUSION
We sustain the rejection under 35 U.S.C. §112, ¶ 2. We do not sustain
the rejections under 35 U.S.C. §§ 102 and 103, but only because we are
unable to reach the merits of those rejections.

DECISION
The Examiner’s decision is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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