Ex Parte HAN

Board of Patent Appeals and Interferences

May 20, 2004

09337492 (B.P.A.I. May. 20, 2004)

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publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SANG-HYUN HAN
____________
Appeal No. 2004-0030
Application No. 09/337,492
____________
HEARD: April 27, 2004
____________
Before BARRETT, LEVY, and BLANKENSHIP, Administrative Patent
Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 6, 7, 10, 11, 17, 18, 24, 26
and 29.
BACKGROUND
Appellants' invention relates to a semi-elastic switch
covering device. An understanding of the invention can be
Appeal No. 2004-0030
Application No. 09/337,492
Page 2
derived from a reading of exemplary claim 6, which is reproduced
as follows:
6. The control panel of claim 5, said latch on said
plurality of members being disposed a first distance from a
surface of said main board, said first distance being adjustable
by moving said plurality of members through said frame and
deforming said plurality of flexible supports.
No prior art references of record have been relied upon by
the examiner in rejecting the appealed claims.
Claims 6, 7, 10, 11, 17, 18, 24, 26 and 29 stand rejected
under 35 U.S.C. § 112, first paragraph, as lacking enablement.
Rather than reiterate the conflicting viewpoints advanced by the
examiner and appellant regarding the above-noted rejection, we
make reference to the examiner's answer (Paper No. 27, mailed
April 16, 2003) for the examiner's complete reasoning in support
of the rejection, and to appellant's brief (Paper No. 25, filed
August 9, 2002) and reply brief (Paper No. 28, filed June 16,
2003) for appellant's arguments thereagainst. Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered. See 37 CFR
1.192(a).
Appeal No. 2004-0030
Application No. 09/337,492
Page 3
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of enablement relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we reverse,
essentially for the reasons set forth by appellant.
The examiner's position (answer, page 4) is that:
In regard to claims 6, 7, 10, 11, 17 and 18,
the first distance is not seen to be adjustable
since there is no mechanism for maintaining an
adjusted distance. Contrary to claims 6, 10 and
17, the distance between the main board and the
latch is not affected by movement of the members
in reference to the frame. Contrary to claims 7,
11 and 18, the first distance cannot be adjusted.
Contrary to claims 24, 26 and 29, the present device
does not comprise structure to maintain a gap H”
between the frame and the latch member.
Appellant asserts (brief, pages 15-17) that flexible supports 15
maintain the desired spacing between components of the device.
It is argued that H" is adjustable because flexible supports 15
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Application No. 09/337,492
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permit movement of latching member 5 through frame 11', and that
adjustment of H" maintains the second and third distances H and
H' at desired intervals. It is additionally argued that flexible
supports 15 provide a structure for maintaining a gap between
frame 11 and latching member 5.
An analysis of whether the claims under appeal are supported
by an enabling disclosure requires a determination of whether
that disclosure contained sufficient information regarding the
subject matter of the appealed claims as to enable one skilled in
the pertinent art to make and use the claimed invention. The
test for enablement is whether one skilled in the art could make
and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d
1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989);
In re Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA
1976). In order to make a nonenablement rejection, the examiner
has the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention. See
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as to
why the scope of protection provided by a claim is not adequately
Appeal No. 2004-0030
Application No. 09/337,492
Page 5
enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an
invention in terms which correspond in scope to those used in
describing and defining the subject matter sought to be patented
must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there is
a reason to doubt the objective truth of the statements contained
therein which must be relied on for enabling support. Assuming
that sufficient reason for such doubt exists, a rejection for
failure to teach how to make and/or use will be proper on that
basis. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369
(CCPA 1971). As stated by the court,
it is incumbent upon the Patent Office, whenever a rejection
on this basis is made, to explain why it doubts the truth or
accuracy of any statement in a supporting disclosure and to
back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on the appellant to present persuasive arguments,
supported by suitable proofs where necessary, that one skilled in
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Application No. 09/337,492
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1 The appellant may attempt to overcome the examiner's doubt about
enablement by pointing to details in the disclosure but may not add new
matter. The appellant may also submit factual affidavits under 37 CFR § 1.132
or cite references to show what one skilled in the art would have known at the
time of filing the application.
the art would be able to make and use the claimed invention using
the disclosure as a guide. See In re Brandstadter, 484 F.2d
1395, 1406, 179 USPQ 286, 294 (CCPA 1973). In making the
determination of enablement, the examiner shall consider the
original disclosure and all evidence in the record, weighing
evidence that supports enablement1 against evidence that the
specification is not enabling.
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art as
of the date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. The threshold step in resolving
this issue as set forth, supra, is to determine whether the
examiner has met his/her burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the examiner has
not done. As set forth in the specification (page 2) the
invention relates to a control apparatus in which malfunction is
prevented by locating a gap-maintaining member between a control
Appeal No. 2004-0030
Application No. 09/337,492
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knob and a tactile switch so as to maintain a constant gap
between the control knob and the tactile switch.
This is best seen in renumbered figure 2 (original figure
3).

As shown in the figure, the gap maintaining member is illustrated
as semi-elastic switch cover 6, which includes switch covers 4.
As stated in the specification (page 8), switch cover 6 is braced
by a combination of flexible supports 15 and latching members 5.
As illustrated in renumbered
figure 1,

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Application No. 09/337,492
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the latching members 5 are inserted through holes 56 in frame
11'. Surface 33 of latching members 5 engage surface 31 of frame
11' (as shown in renumbered figure 1).
As further described on page 8 of the specification, the
engagement of latching member 5 with surface 31 of frame 11',
prevents the semi-elastic switch structure from moving away from
frame 11'. In addition (id.) the specification discloses (page
8) that “[f]lexible supports 15 (only one is shown) brace the
switch structure 6 in place by abutting surface 34 of flexible
supports 15 against surface 32 of frame 11'. Once switch
structure 6 is braced, an interval H is formed between surface 46
of switch cover 4 and surface 45 of pressure switch 8.” As shown
in renumbered figure 1, opposite sides of switch cover 4 create
spacings H and H' between surface 45 of switch 8 and surface 47
of push-button 3. As is clear from renumbered figures 1 and 2,
we find that when latch 15 is moved horizontally in either a
forward or backward direction, spacing H" is adjusted. Because
4, 5, 6, and 15 form a single unit, movement of latch 5 will
cause the entire switch cover 6 to move, resulting in a change in
the spacings H and H'. We find this to be supported by the
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Application No. 09/337,492
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language set forth on page 9 of the specification, which
discloses that “[s]hould there be a slight discrepancy in the
intended spacing of intervals H and H’ after initial assembly,
they can be corrected by adjusting the space between surface 33
of latching members 5 and surface 31 of frame 11. This
additional interval is labeled H” in Fig. 1. This is possible
because the flexibility of the flexible supports 15 allows for
the position of switch structure 6 to be adjusted. As such, the
intervals H and H’ can be precisely controlled by altering the
surplus interval H”. The ability to adjust intervals H and H’
helps prevent the malfunction of pressure switch 8.”
In addition, the
specification discloses a
second embodiment of
the invention. As shown in
renumbered figure 6
(originaly filed figure
7):

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Application No. 09/337,492
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The specification discloses (pages 12 and 13) that:
Furthermore, a plurality of tactile switches
108 is disposed on the main board 109, which
is fixed onto the gap-maintaining member 106
at the portion 112 (circled in Fig. 5) of
the arrangement. A plurality of latch members
105 and 105', a plurality of flexible supporters
115, and a plurality of board holders (snap-type)
112 are formed on the gap-maintaining member 106.
The latch members 105 and 105' are inserted into
a latch holder (not shown) in order to fix the gap-
maintaining member 106 to frame 111. Flexible
supporters 115 are used for supporting the
gap-maintaining member 106 in connective relationship
to frame 111.. . . As seen in Fig. 7, latch member
105 of gap-maintaining member 106 is inserted into
a latch holder 111a of frame 111 so as to maintain
a gap H” between an interior surface of latch member
105 and an opposing surface of frame 111. Elastic
tactile member 104 of gap-maintaining member 106
maintains a gap H’ with a protrusion 103a of control
knob 103, and also maintains a gap H with the tactile
switch 108 of main board 109.
Turning to the examiner's assertions that the first distance
is not seen to be adjustable, we find that the first distance H"
is adjustable because flexible members 15 constitute a mechanism
for maintaining an adjusted distance, when latch 105 is moved.
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Application No. 09/337,492
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With respect to the examiner's second assertion that the
distance between the main board and the latch is not affected by
movement of the members in reference to the frame, we find that
the distance between the main board 9 and the latch is affected
by movement of the latch with respect to frame 11'. As is clear
from our description of the device, supra, as latch 5 is adjusted
with respect to frame 11', the distance between board 9 and the
surface 33 of latch 5 changes.
With respect to the third assertion presented by the
examiner, that the first distance cannot be adjusted, we find
that first distance H" is adjusted by moving latch 5 in either a
forward or backward direction.
Turning to the fourth assertion made by the examiner, that
the device does not contain structure to maintain a gap H"
between the frame and the latch member, we find that as disclosed
on page 9 of the specification, that flexible members 15 allow
the position of switch cover 6 to be adjusted. As such, the
intervals H and H' can be adjusted by altering the surplus
interval H". From this disclosure of the specification, we find
that adjustments to gap H" is maintained by flexible members 15.
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Application No. 09/337,492
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From all of the above, we find enablement for the claim
language asserted to be non-enabled by the examiner. We are not
persuaded by the examiner's assertion (answer, page 5) that
“[s]upports 15, being flexible, merely urge frame 11' away from
the board 9 and toward the latch member 5....[B]ecause the
supports 15 are flexible, the first distance H” cannot be
maintained; due to the urging of the supports, upon completion of
the assembly, frame 11' will be pushed against the latching
member 5 and distance H” will always be 0.” From our review of
the specification, we agree with appellant (reply brief, page 5)
that:
The attention of the Board is directed to page 8,
lines 4-7 of the specification, which describes
that the flexible supports 15 merely 'brace'
the switch structure 6 in place by abutting
surface 34 of supports 15 against surface 32
of frame 11'. In this context, 'bracing' does
not indicate 'urging' as asserted by the Examiner.
Rather, the term 'bracing' indicates a supporting
function, as evidenced by Webster’s New Collegiate
Dictionary (1977), page 132, which defines 'bracing'
as 'to furnish or support with a brace' and 'to give
strength'. Furthermore, as stated in the specification,
element 15 is described as 'flexible supports'.
Thus, the supports 15 are 'flexible' as defined in
the specification, which is to say that they are
constructed designed and arranged (see renumbered
Figure 1 and the corresponding description in the
specification) to be movable.

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Application No. 09/337,492
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From the examiner's incorrect characterization of flexible
members 15 "urging" the frame 11' against the latch 5, we find
that the examiner has misconstrued the disclosure described in
appellant's specification.
From all of the above, we find that the examiner has failed
to establish a prima facie case of non-enablement. Accordingly,
the rejection of claims 6, 7, 10, 11, 17, 18, 24, 26 and 29 under
35 U.S.C. § 112, first paragraph, is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims
6, 7, 10, 11, 17, 18, 24, 26 and 29 under 35 U.S.C. § 112, first
paragraph is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
Appeal No. 2004-0030
Application No. 09/337,492
Page 14
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
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