Ex parte Frohlich

Board of Patent Appeals and Interferences

Apr 18, 2000

08644523 (B.P.A.I. Apr. 18, 2000)

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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KLAUS FROHLICH
__________
Appeal No. 1999-1036
Application 08/644,523
__________
ON BRIEF
__________
Before ABRAMS, STAAB, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 4-22, 26 and 29-34, which
constitute all of the claims remaining of record in the
application.
Appeal No. 1999-1036
Application No. 08/644,523
Rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 1031
were overcome by an amendment under 37 CFR § 1.116.
2
The appellant's invention is directed to a shear
reinforcement system for embedding in a slab floor. The
subject matter before us on appeal is illustrated by reference
to claim 1, which reads as follows:
1. A shear reinforcement system for embedding in a slab
floor, said system comprising:
elongate shear reinforcement members positioned
transverse to a plane of a slab floor;
at least one securing element fixedly securing said
elongate shear reinforcement members;
said at least one securing element extending transverse
to said elongate shear reinforcement members and parallel to
the plane of the slab floor, wherein said at least one
securing element is an elongate rail, having a U-shaped cross-
section with sidewalls, receiving a plurality of said elongate
shear reinforcement members;
wherein said elongate shear reinforcement members are
bolts having a first and a second end and wherein at least
said first end has a head;
said heads inserted into said rail and positive-lockingly
and non-displaceably secured by said rail by bending wall
portions of said sidewalls inwardly behind said heads.
THE REJECTION1
Claims 1, 4-22, 26 and 29-34 stand rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for
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Application No. 08/644,523
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failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejection, we make reference to the
Examiner’s Answer (Paper No. 14) and the Appellant’s Briefs
(Paper Nos. 13 and 15).
OPINION
It is the examiner’s position that the claims are
indefinite in that it is not clear from the claim language
whether they cover a shear reinforcement system or the
combination of a shear reinforcement system and a slab floor.
As the basis for this rejection, the examiner notes that
although the preamble of each of the independent claims states
that they are directed to “[a] shear reinforcement system for
embedding in a slab floor” (emphasis added), the body of the
claims positively recites the slab floor. For example, lines
3 and 4 of claim 1 recite “elongate shear reinforcement
members positioned transverse to a plane of a slab floor,” and
lines 7 and 8 recite “said at least one securing element
Appeal No. 1999-1036
Application No. 08/644,523
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extending transverse to said elongate shear reinforcement
members and parallel to the plane of the slab floor” (emphasis
added in both instances). We are not persuaded by the
arguments presented by the appellant, and find ourselves in
agreement with the examiner that the metes and bounds of the
claims are not clear. This being the case, we will sustain
the rejection. However, it is our view that the claim
language can be modified to overcome the rejection, and we
will recommend language to accomplish this below.
Insofar as the evaluation of the rejection is concerned,
we first point out that because a patentee has the right to
exclude others from making, using and selling the invention
covered by the patent, the public must be apprised of exactly
what the patent covers, so that those who would approach the
area circumscribed by the claims of a patent may more readily
and accurately determine the boundaries of protection involved
and evaluate the possibility of infringement and dominance,
and it is to this that the second paragraph of 35 U.S.C. § 112
is directed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970). According to the preamble of each of
the independent claims, the invention is directed to a shear
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reinforcement system for embedding in a slab floor. However,
from our perspective, this is not clearly carried through in
the body of the claim, where it is stated that the shear
reinforcement members are not merely positionable with respect
to a slab floor, as would seem to be the thrust of the “for
embedding” phraseology of the preamble, but are positively
related to a particular slab floor by being positioned with
respect to a plane “of” that slab floor, which suggests that
the floor is part of the claimed invention. This
interpretation is confirmed by the phrase that appears further
on in the claims, in which another element is defined as
extending parallel to the plane of “the” slab floor.
The section of the Manual of Patent Examining Procedures
(MPEP), and the cases cited by the appellant do not dissuade
us from the above conclusion. MPEP Section 2173.02 states
that the claims should be analyzed in light of the disclosure,
the prior art, and the interpretation that would be given by
one of ordinary skill in the art, and goes on to point out
that if the scope cannot be determined “with a reasonable
degree of certainty,” a rejection under the second paragraph
of Section 112 is appropriate. We, like the examiner, are of
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the view that these claims do not meet the “reasonable degree
of certainty” test. Moving on to the cases cited, the portion
of Vaupel to which the appellant refers on page 4 of the Brief
relates to a method step in which the fabric is guided in such
a manner as to “allow movement” toward an element, which
simply uses the element as a reference point, as distinguished
from being moved toward that element, which suggests that the
element actually is part of the claimed invention. The
situation in Orthokinetics is analogous, in that the claim
requires that the device be “insertable” and not inserted
between the door frame and the seats. We further point out in
this regard that in lines 14-15 of claim 16 the appellant has
avoided the problem to which this rejection is directed, in
that he has recited that the invention further comprises
“connectors for fastening said rail to . . . bars of the slab
floor” (emphasis added), which relates the claimed structure
(the shear reinforcement system) to the unclaimed structure
(the slab floor) without giving rise to the uncertainty of
whether the claim positively includes the slab floor, as would
have been the case if the language had been simply “fastening
said rail . . .”
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Pursuant to our authority under 37 CFR §1.196(c), it is
our opinion that the standing rejection of the claims can be
overcome, and the claims would be allowable, if the following
changes were made to each of claims 1, 6, 9 and 16:
In line 3, change “positioned” to --positionable--.
In line 8, insert --positionable-- after “and”.
SUMMARY
The rejection is sustained.
Pursuant to 37 CFR § 1.196(c), amendments have been
suggested which would overcome the standing rejection under 35
U.S.C. § 112, second paragraph, and would, in the absence of
new references or grounds of rejection on the part of the
examiner, cause the claims to be allowable.
37 CFR § 1.196(c) provides:
Should the decision of the Board of Patent Appeals
and Interferences include an explicit statement that
a claim may be allowed in amended form, appellant
shall have the right to amend in conformity with
such statement which shall be binding upon the
examiner in the absence of new references or grounds
of rejection.
A statement pursuant to 37 CFR § 1.196(c) has been made
in this decision. A time period in which appellant may file
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an amendment for the purpose stated in § 1.196(c)is hereby set
to expire TWO MONTHS FROM THE DATE OF THIS DECISION.
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No time period for taking subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED; 37 CFR § 1.196(c)
Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jennifer D. Bahr )
Administrative Patent Judge )
tdl
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