Ex parte Gueret

Board of Patent Appeals and Interferences

Jan 29, 1999

08500781 (B.P.A.I. Jan. 29, 1999)

Application for patent filed July 11, 1995.1
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JEAN-LOUIS GUERET
________________
Appeal No. 98-1848
Application 08/500,7811
________________
ON BRIEF
________________
Before CALVERT, STAAB and LALL, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 2 to 22, all the claims then pending in the
application. Subsequent to the final rejection, claims 2, 6,
Appeal No. 98-1848
Application 08/500,781
Another amendment filed subsequent to the final2
rejection on March 14, 1997 (Paper No. 10) has not been
entered.
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10, 14, and 16 to 20 were canceled by an amendment filed July
14, 1997 (Paper No. 16). Accordingly, only the final
rejection of claims 3 to 5, 7 to 9, 11 to 13, 15, 21, and 22
remains before us for review.2
As a preliminary matter, we note that the subject matter
and issues presented in the instant appeal are similar to
those presented in related Appeal No. 98-1019 in appellant’s
application Serial No. 08/500,782, which related appeal is
decided concurrently herewith.
Appellant’s invention is directed to an applicator for
applying a make-up product. The subject matter before us on
appeal is reproduced in an appendix to the brief.
The references of record relied upon by the examiner in
support of rejections under 35 U. S. C. § 103 are:
Cabot 3,271,807 Sept. 13, 1966
Gueret 4,927,281 May 22, 1990
Guerret 5,020,551 Jun. 4, 1991
Beck et al. (Beck) 5,107,870 Apr. 28, 1992
Dahm 2,082,553 Mar. 10, 1982
(British Patent Document)
Appeal No. 98-1848
Application 08/500,781
In the final rejection, claim 21 was also rejected3
under 35 U.S.C. § 112, second paragraph, as being indefinite.
In that the answer does not contain a restatement of this
rejection, we assume it to have been withdrawn by the
examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
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Cole 2,159,699 Dec. 11, 1985
(British Patent Document)
The following rejections under 35 U. S. C. § 103 are
before us for review:3
(1) claims 3, 4, 21, and 22, unpatentable over Cole in view
of Beck and Cabot; and
(2) claims 5, 7 to 9, 11 to 13, and 15, unpatentable over
Cole in view of Beck and Cabot, and further in view of Dahm,
Guerret and Gueret.
The rejections are explained in the examiner’s answer
(Paper No. 17, mailed November 4, 1997).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 15, filed July 14, 1997).
Appeal No. 98-1848
Application 08/500,781
At oral hearing, counsel for appellant was understood4
to say that the term “predetermined” was meaningless, could be
ignored, and could just as easily have been deleted from the
claim. We decline to read this term out of the claim, if that
was counsel’s intent.
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OPINION
At the outset, we have encountered substantial difficulty
in understanding the metes and bounds of the appealed claims.
Starting with the requirement of independent claim 22
that the applicator includes an application member of
“predetermined flexibility,” we have had difficulty in
determining what this term encompasses. The specification
gives no meaningful explanation of how the flexibility of the
application member is to be determined, much less what
constitutes a “predetermined” flexibility. In this regard,4
the specification gives broad ranges for the number, length,
and thickness of the bristles that may make up the application
member, as well as examples of the cross-sectional shape,
surface treatment and material of the bristles, all of which
would appear to have an impact on the flexibility of the
application member. However, the specification is silent as
to how these variables affect flexibility.
Appeal No. 98-1848
Application 08/500,781
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Our next difficulty with claim 22 stems from the
recitation that the applicator includes a stem “having
substantially said predetermined flexibility” (i.e., having
substantially the same flexibility as the application member).
On its face, this claim language may appear to be reasonably
clear. However, no claim may be read apart from and
independent of its supporting disclosure, and claim language
which otherwise appears to be definite may take on an
unreasonable degree of uncertainty when read in light of the
supporting specification. In re Cohn, 438 F.2d 989, 993, 169
USPQ 95, 98 (CCPA 1971); In re Moore, 439 F.2d 1232, 1235 n.2,
169 USPQ 236, 238 n.2 (CCPA 1971). Moreover, the term
“substantially” is a word of degree. When a word of degree is
used in a claim, it is necessary to determine whether the
specification provides some standard for measuring that
degree. Seattle Box Co. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir.
1984).
In the present case, we find no standard or guidelines
whatsoever in appellant’s specification to determine to what
Appeal No. 98-1848
Application 08/500,781
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extent the flexibility of the stem may depart from the
flexibility of the application member and yet be regarded as
having “substantially” the same flexibility as the application
member. In particular, the discussion on page 4 of the
specification as to what constitutes a stem having flexibility
“similar to” that of the application member does not suffice
in this regard. This is so because the statement on page 4
that the flexibility of the stem is chosen so that the
relationship 0.3f < F < 3f is satisfied, where F is the force
to be applied to bend the stem and f is the force necessary to
bend the application member, is so broad that it cannot be
seriously considered a reasonable standard or guideline for
determining the scope of the word “substantially” in line 4 of
claim 22.
An additional source of confusion is the recitation in
claim 22 which reads “whereby upon applying the product to a
surface, the stem and the application member form a curve with
a substantially constant curvature.” It is not clear whether
this recitation sets forth (1) an additional requirement of
the applicator above and beyond that called for in the first
Appeal No. 98-1848
Application 08/500,781
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four lines of the claim, (2) a definition of what constitutes
a flexibility of the stem that is “substantially” the same as
the predetermined flexibility of the application member, or
(3) a result that flows from the structure called for earlier
in the claim. As to (3), depending on the extent of departure
between the flexibilities of stem and application member
allowed by the word “substantially” in line 4 of the claim, it
would seem that the stated result may or may not flow from a
given application member/elongated stem combination.
Turning to claim 21, it is well established that the
transitional phrases “consisting of” and “including” linking
the preamble and body of a claim have special meanings in
patent law. Specifically, “consisting of” signifies that the
claim covers only devices having the recited elements and no
more, while “including” signifies that the claim is open-ended
and does not exclude the presence of other elements not
mentioned. In re Certain Slide Fastener Stringers and
Machines and Components Thereof for Producing Such Slide
Fastener Stringers, 216 USPQ 907, 915 (U.S. Int’l Trade Comm.
1981); Ex parte Davis, 80 USPQ 448, 449-50 (Bd. App. 1949).
Appeal No. 98-1848
Application 08/500,781
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Based on these special meanings, the transitional phrase
“consisting of” in line 1 of claim 21 is inconsistent with the
requirement found in the last two lines of the claim that the
application assembly thereof “is provided with an applicator
in accordance with claim 22.” This is so because claim 22 is
in the open “including” format and therefore does not exclude
the presence of other elements.
Another difficulty with claim 21 stems from the term
“application member” appearing in line 3 thereof. It is not
clear whether this application member is the same as, or
distinct from, the “application member” of the claim 22 device
incorporated by reference into claim 21. Additionally, the
term “the storage position” (claim 21, lines 3 to 4) lacks a
proper antecedent basis, such that it is not clear what
position constitutes the storage position. Also, it is not
clear what the word “it” (claim 21, line 5) refers to.
A last difficulty arises from claim 15, which depends
ultimately from claim 22. It is not understood how bristles
having slight corrugations over at least part of their length,
as required by claim 15, can define an applicator wherein “the
stem and the application member form a curve with a
Appeal No. 98-1848
Application 08/500,781
At oral hearing, counsel for appellant was understood5
to say that the recitations of claim 15 were inconsistent with
the “whereby” clause of claim 22, and that claim 15 should be
canceled.
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substantially constant curvature,” as called for in claim 22.5
While we might speculate as to what is meant by the claim
language discussed above, our uncertainty provides us with no
proper basis for making the comparison between that which is
claimed and the prior art as we are obligated to do.
Rejections under 35 U.S.C. § 103 should not be based upon
“considerable speculation as to the meaning of terms employed
and assumptions as to the scope of such claims.” In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
When no reasonably definite meaning can be ascribed to certain
terms in a claim, the subject matter does not become obvious,
but rather the claim becomes indefinite. In re Wilson, 424
F.2d 1382, 165 USPQ 494 (CCPA 1970). Accordingly, we are
constrained to reverse the examiner’s rejections of the
appealed claims as being unpatentable over the prior art. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections. We take no
position as to the pertinence of the prior art as applied by
Appeal No. 98-1848
Application 08/500,781
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the examiner in his rejections.
Pursuant to our authority under 37 CFR 1.196(b), we make
the following new rejection.
Claims 3 to 5, 7 to 9, 11 to 13, 15, 21, and 22 are
rejected under 35 U.S.C. § 112, second paragraph.
The purpose of the second paragraph of 35 U. S. C. § 112
is to provide those who would endeavor, in future enterprise,
to approach the area circumscribed by the claims of a patent,
with the adequate notice demanded by due process of law, so
that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970). For the reasons stated
above, the appealed claims fail in this purpose in that they
do not set forth the subject matter sought to be patented with
a reasonable degree of precision and accuracy.
As a final point, we note that the examiner has mentioned
that “German Patent #425254 has been made of record, but not
applied in the rejection” (answer, page 3) and that “the Board
of Appeals has the discretion to apply this reference”
(answer, page 4). Presumably, the examiner has drawn our
Appeal No. 98-1848
Application 08/500,781
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attention to this reference in the hope that it might form the
basis of a new ground of rejection under 37 CFR § 1.196(b) in
the event we were to reverse the standing rejections on the
merits. This “back door” approach of introducing a new issue
on appeal is inappropriate. However, since the examiner has
raised the issue, and since appellant has addressed this
reference in the brief on page 5, it would be appropriate, in
the event of further prosecution, for the examiner to state on
the record his position with respect to the relevance of the
German reference to the claimed subject matter.
In summary, the standing rejections have been reversed on
procedural grounds, and a new rejection of the appealed claims
pursuant to 37 CFR § 1.196(b) has been entered.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
Appeal No. 98-1848
Application 08/500,781
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WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Appeal No. 98-1848
Application 08/500,781
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Administrative Patent Judge )
Appeal No. 98-1848
Application 08/500,781
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