Ex parte Gruber et al.

Board of Patent Appeals and Interferences

Sep 12, 2000

08518874 (B.P.A.I. Sep. 12, 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for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER A. GRUBER et al.
____________
Appeal No. 1998-3207
Application No. 08/518,874
____________
ON BRIEF
____________
Before McQUADE, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3-13 and 18-21. Claims 14-17 have been
withdrawn from consideration under 37 CFR § 1.142(b) as being
drawn to a nonelected invention. Claim 2 has been canceled.
We REVERSE.
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Application No. 08/518,874
BACKGROUND
The appellants' invention relates to an apparatus for
injection molding a liquid into a plurality of cells in a
plate for solidification therein. A copy of the claims under
appeal is set forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dreher 3,470,848 Oct. 7, 1969
Bird 3,735,729 May 29,
1973
Timson 3,749,053 July 31, 1973
Norton 3,797,281 Mar. 19, 1974
Pasch et al. 4,140,470 Feb. 20, 1979
(Pasch)
Bogardy 4,968,534 Nov. 6, 1990
Wieser 5,059,112 Oct. 22, 1991
Ference et al. 5,244,143 Sep. 14, 1993
(Ference)
Claims 1, 3-13 and 18-21 stand rejected under 35 U.S.C.
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The examiner inadvertently included canceled claim 2 in1
the statement of this rejection set forth in the answer.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.1
Claim 18 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Bird, Timson, Pasch or Wieser.
Claims 1, 3-9, 18 and 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ference taken together with
either Bogardy or Norton, and further in view of either Pasch
or Wieser.
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ference taken together with either Bogardy
or Norton, and further in view of either Pasch or Wieser as
applied above, and further in view of Dreher.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
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rejections, we make reference to the answer (Paper No. 19,
mailed April 23, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 15,
filed November 24, 1997), supplemental brief (Paper No. 18,
filed March 13, 1998) and reply brief (Paper No. 20, filed May
4, 1998) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
We will not sustain the rejection of claims 1, 3-13 and
18-21 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which the appellants
regard as the invention.
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The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
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a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Furthermore, appellants may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we have reviewed the specific
objections under 35 U.S.C. § 112, second paragraph, made by
the examiner of the claims on appeal (answer, pp. 5-7). After
conducting this review, we find ourselves in agreement with
the position set forth by the appellants in the briefs that
the claims under appeal are not indefinite for the reasons set
forth by the examiner. Clearly the claimed apparatus is
intended "for injection molding a liquid into a plurality of
cells in a plate for solidification therein" since the
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Breadth of a claim is not to be equated with2
indefiniteness. See In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971).
appellants disclose (specification, p. 11) that a conventional
pump 32 effects a slight pressurization in liquid reservoir
24a for injection molding small cells. With regard to the
other phrases found objectable by the examiner we simply do
not agree with the examiner. In that regard, we note that the
mere breadth of a claim does not in and of itself make a claim
indefinite.2
The anticipation rejections
We will not sustain the rejection of claim 18 under
35 U.S.C. § 102(b) as being anticipated by Bird, Timson, Pasch
or Wieser.
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
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Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 18 recites an apparatus for injection molding a
liquid into a plurality of cells in a plate for solidification
therein comprising, inter alia, means for evacuating gas from
cells, means for injecting liquid into the cells, and means
for linking the evacuating and injecting means at each of the
cells so that surface tension of the liquid prevents
evacuation of the liquid injected into the cells while
allowing evacuation of only gas from the cells.
The appellants argue in their briefs that claim 18 is not
anticipated by Bird, Timson, Pasch or Wieser since they do not
disclose the claimed "means for linking." We agree.
As explained in In re Donaldson, 16 F.3d 1189, 1193, 29
USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the USPTO is not exempt
from following the statutory mandate of 35 U.S.C. § 112,
paragraph 6, which reads:
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An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
The court's holding in Donaldson sets a limit on how broadly
the USPTO may construe means-plus-function language under the
rubric of "reasonable interpretation." Per Donaldson, the
"broadest reasonable interpretation" that an examiner may give
means-plus-function language is that statutorily mandated in
paragraph six. Accordingly, the USPTO may not disregard the
structure disclosed in the specification corresponding to such
language when rendering a patentability determination.
The structure described in the appellants' specification
(see pp. 7-10) corresponding to the "means for linking" is the
shallow slot or recess 30 formed in the bottom surface 16b of
the injection head 16 and extending axially between the vacuum
slot 18 and the injection slot 20.
We have reviewed the teachings of Bird, Timson, Pasch and
Wieser but fail to find any teaching therein of the claimed
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"means for linking." With regard to Bird, Pasch and Wieser,
we see no structure therein that would be equivalent to the
structure disclosed by the appellants. Furthermore, with
respect to Bird, Pasch and Wieser, the examiner appears to be
impermissibly reading the same structure that constitutes part
of the claimed "means for evacuating" as the "means for
linking." With regard to Timson, it is our view that the
examiner has not established that Timson's gap between the
upper coating lip 38 and the web (see column 4, lines 40-56)
is an equivalent to the structure disclosed by the appellants.
In our view, it is not.
The obviousness rejections
We will not sustain the rejection of claims 1, 3-9 and
18-20 under 35 U.S.C. § 103.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
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invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing a "means
for linking" is not appreciated by the prior art applied by
the examiner.
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
at trial about the claimed invention and cast the mind back to
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the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since the "means for linking"
limitation of the claims under appeal is not taught or
suggested by the applied prior art, we will not sustain the 35
U.S.C. § 103 rejection of independent claims 1 and 18, and of
dependent claims 3-9, 19 and 20.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3-13 and 18-21 under 35 U.S.C. § 112, second
paragraph, is reversed; the decision of the examiner to reject
claim 18 under 35 U.S.C. § 102(b) is reversed; and the
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decision of the examiner to reject claims 1, 3-9 and 18-20
under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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FRANCIS L. CONTI
SIX PURITAN AVENUE
SWAMPSCOTT, MA 01907
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JVN/dl