Ex parte FINI

Board of Patent Appeals and Interferences

Sep 28, 1999

08555275 (B.P.A.I. Sep. 28, 1999)

Application for patent filed November 8, 1995. 1
According to appellant, this application is a continuation-in-
part of Application No. 08/099,130, filed July 29, 1993, now
abandoned.
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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY W. FINI JR.
____________
Appeal No. 1999-0451
Application No. 08/555,2751
____________
ON BRIEF
____________
Before CALVERT, MEISTER, and ABRAMS, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
ON REHEARING
Appeal No. 1999-0451 Page 2
Application No. 08/555,275
Requests for reconsideration under 37 CFR 1.197(b) are2
now designated requests for rehearing, per the amendment
effective December 1, 1997 (62 F.R. 53131 (Oct. 10, 1997),
1203 O.G. 63(Oct. 21, 1997)). See MPEP § 1214.03 (July 1998).
Appellant has filed a request under 37 CFR 1.197(b) for
reconsideration of our decision of July 29, 1999 (Paper No.2
20), wherein we affirmed the rejection of claims 1 to 7, 9, 10,
13 and 15 to 23 for lack of compliance with the written
description requirement of 35 U.S.C. § 112, first paragraph.
The request is accompanied by an affidavit of the
appellant concerning his intention as to the meaning of certain
language in the application as filed. This affidavit will be
considered only as argument, not as evidence. See MPEP §
1211.02 (July 1998), penultimate paragraph.
We note initially that in determining whether an
application’s disclosure complies with the written description
requirement of § 112, first paragraph, the question of what the
applicant intended to disclose is immaterial, since as stated
on page 3 of our decision, the test for compliance concerns
what is conveyed to those skilled in the art.
As discussed in our decision, the only occurrence of the
word “scheduled” in appellant’s disclosure as filed was on page
Appeal No. 1999-0451 Page 3
Application No. 08/555,275
7, line 23 of the specification, and in original claim 1, line
12, and claim 7, line 2. We have fully considered the
arguments in the request for reconsideration, but are still of
the view that, taking into consideration the lack of disclosure
of a timetable, how a timetable would be determined, etc., the
application as filed would not convey with reasonable clarity
to those skilled in the art that appellant was in possession of
“the application of braking force... in regular steps or
degrees in a timetable,” which is what appellant asserted on
page 10 of his brief was being claimed.
Accordingly, the request for reconsideration (rehearing)
is denied insofar as it seeks any reversal or modification of
Paper No. 20.
DENIED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Appeal No. 1999-0451 Page 4
Application No. 08/555,275
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
IAC/jlb
Appeal No. 1999-0451 Page 5
Application No. 08/555,275
CROSSETTA S. ASSOCIATES
905 CONVENTION TOWERS
43 COURT STREET
BUFFALO, NY 14202