Ex Parte Gerling

Board of Patent Appeals and Interferences

Sep 18, 2002

09155413 (B.P.A.I. Sep. 18, 2002)

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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HOLGER GERLING
____________
Appeal No. 2001-2204
Application No. 09/155,413
____________
ON BRIEF
____________
Before COHEN, STAAB, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 12
through 23. These claims constitute all of the claims remaining
in the application.
Appellant's invention pertains to a method for mounting
teeth to blanks, to an apparatus for connecting teeth to a saw
blade blank, and to a device for mounting teeth to blanks. A
basic understanding of the invention can be derived from a
Appeal No. 2001-2204
Application No. 09/155,413
1 A final rejection of claims 12 through 23 under 35 U.S.C.
§ 103(a) was expressly withdrawn by the examiner in the answer
(page 2).
2 In error, the answer (page 2) set forth only claims 12
through 22 as being rejected under 35 U.S.C. § 112, first
paragraph, whereas the final rejection (Paper No. 7) specified
claims 12 through 23, as set forth above.
2
reading of exemplary claims 12, 19, and 23, respective copies of
which appear in "Appendix I" of the main brief (Paper No. 11).
The following rejection is the sole rejection before us for
review.1
Claims 12 through 232 stand rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter not described in
the specification in such a way to enable one skilled in the art
to make and/or use the invention.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the answer (Paper
No. 14), while the complete statement of appellant's argument can
be found in the main and reply briefs (Paper Nos. 11 and 15).

Appeal No. 2001-2204
Application No. 09/155,413
3 The following informalities in the claims should be
addressed by the examiner. In claims 12 and 23, clause e) is not
grammatically sound. In claim 13, line 2, "data recorded" in
step c) has no express antecedent basis in parent claim 12. Claim
18, line 1, step "d)" should apparently be step "e)."
3
OPINION
In reaching our conclusion on the enablement issue raised in
this appeal, this panel of the board has carefully considered
appellant's specification and claims,3 appendices II, III, and
IV attached to the main brief, and the respective viewpoints of
appellant and the examiner. As a consequence of our review, we
make the determination which follows.
We do not sustain the examiner's rejection under 35 U.S.C.
§ 112, first paragraph.
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, 500 F.2d 560,
566, 182 USPQ 298, 302 (CCPA 1974). An examiner has the initial
burden of producing reasons that substantiate a rejection based
Appeal No. 2001-2204
Application No. 09/155,413
4
on lack of enablement. See In re Strahilevitz, 668 F.2d 1229,
1232, 212 USPQ 561, 563 (CCPA 1982) and See In re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). Once this is
done, the burden shifts to an 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).
We fully comprehend the examiner's viewpoint of the
enablement issue as clearly articulated in the answer (pages 2
through 8). Akin to the examiner's perception, a reading of
appellant's underlying specification reveals to us a disclosure
that for the most part leaves it to those practicing the art the
task of bringing into being the apparatus for practicing the
invention. The issue, of course, is whether appellant's
aforementioned underlying teaching would have enabled one skilled
in the art to make and use the invention without undue
experimentation. Taking into account the totality of the
particular evidence and information before us, it is our opinion
that the examiner has not produced reasons that substantiate a
rejection based on lack of enablement. In other words, while
Appeal No. 2001-2204
Application No. 09/155,413
5
effort would clearly have to be undertaken to make and use the
claimed method and apparatus, the examiner has not convincingly
established that the effort would certainly entail undue
experimentation. On the other hand, appellant's submissions lend
support to the view that the skill of those practicing the
specific art at issue would have enabled them to make and use the
disclosed invention without engaging in experimentation that
would be considered undue. In particular, appellant relies upon
the translated publication (DE 3 717 60) in Appendix II (the '610
publication), the same document referenced on page 1 of the
present specification. Basically, the '610 document (Fig. 1)
informs us that, when appellant's invention was made, those
skilled in the art clearly had the requisite ability to effect an
apparatus for automatically soldering hard metal teeth onto a
circular saw blade at "exact" soldering positions (page 4). The
Neff et al document (Appendix III) further instructs us that
those skilled in the art, at the time of appellant's invention,
had the ability to configure an apparatus for measuring and
sorting component parts prior to their assembly (column 5, lines
45 through 47) wherein a contact rod measures critical dimensions
of component parts, an optical encoder measures a location, and a
microprocessor or computer compiles data (column 4, lines 50
Appeal No. 2001-2204
Application No. 09/155,413
6
through 54 and column 4, lines 23 through 26). While as earlier
pointed out, we fully appreciate the examiner's concern as to
perceived deficiencies in appellant's disclosure, the latter
documents fairly reveal a level of skill to this panel of the
Board that would have permitted practitioners in the art to use
the present disclosure to make and use the claimed method and
apparatus without undue experimentation. Thus, it appears to us
that those skilled in this art would have been well capable of
analyzing obtained data to determine a configuration of each
tooth on a blank, contrary to the examiner's point of view
(answer, page 3). For the preceding reasons, we cannot support
the rejection on appeal.
Appeal No. 2001-2204
Application No. 09/155,413
7
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2001-2204
Application No. 09/155,413
8
KOHLER SCHMID & PARTNER
RUPPMANNSTR 27
D-70565 STUTTGART
GERMANY
APPEAL NO. 2001-2204 - JUDGE COHEN
APPLICATION NO. 09/155,413
APJ COHEN
APJ STAAB
APJ BAHR
DECISION: REVERSED
Prepared By: Lesley Brooks
GAU: 3700
OB/HD
DRAFT TYPED: 20 Jun 03
FINAL TYPED: