Ex parte Herbelleau

Board of Patent Appeals and Interferences

Aug 23, 2000

08782891 (B.P.A.I. Aug. 23, 2000)

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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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YVES HERBELLEAU
_____________
Appeal No. 1999-0983
Application No. 08/782,891
______________
ON BRIEF
_______________
Before CALVERT, NASE, and JENNIFER D. BAHR, Administrative
Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 14
and 17. Claims 1 and 18, the only other claims remaining in
the application, have been allowed.
Appeal No. 1999-0983
Application No. 08/782,891
In reviewing the claims, we note that "the inner side1
wall" in line 6 of claim 14 does not appear to have a clear
antecedent basis in the claim.
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The claims on appeal are drawn to a tire, and are
reproduced in the appendix to appellant's brief.1
Claims 14 and 17 stand finally rejected on the following
grounds:
(1) For failure to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph;
(2) For failure to comply with 35 U.S.C. § 112, second
paragraph.
Rejection (1)-Written Description
The initial portion of claim 14 reads (emphasis added):
A tire including a bead on each side of the
equatorial plane of the tire, a circumferentially
extending carcass anchoring means embedded in each
bead, said carcass anchoring means having a radially
inner and axially inner edge, . . .
The examiner asserts that there was no written
description, as required by 35 U.S.C. § 112, first paragraph,
of the claimed "carcass anchoring means" in the application as
filed.
The term "carcass anchoring means" does not appear in the
Appeal No. 1999-0983
Application No. 08/782,891
Application No. 08/284,809, filed August 2, 1994, of2
which the present case is a file wrapper continuation under 37
CFR § 1.62 (1995).
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specification or claims of the originally-filed application.2
However, at page 6, line 26, to page 7, line 13, of the
original specification appellant discloses:
The tire bead shown in Fig. 1 comprises a bead
wire 3 formed in this case by the winding of a
profiled member of curved cross section. It also
comprises a carcass 1 of the monofil type anchored
to the bead wire by the fact that the single cord
constituting the carcass forms forward and return
paths with respect to each bead wire around which it
is very intimately pressed. The carcass and the
anchoring thereof to a bead wire are constructed in
the manner explained in US Patent 4,801,344. This
arrangement is, to be sure, not limitative, and
other arrangements can be adopted within the bead.
All the components which the bead contains have not
been indicated in detail since, in general, the
present invention does not directly concern their
selection and location, but essentially proposes a
new shape for the inner edge of the bead.
Thus, the original application discloses that bead wire 3
anchors the carcass. Nevertheless, the examiner contends that
there is no written description of "carcass anchoring means,"
i.e., it is new matter, because (answer, page 6):
one of ordinary skill in the art would not have
known from the original disclosure that the carcass
Appeal No. 1999-0983
Application No. 08/782,891
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anchoring
function was the only feature of the bead wire
pertinent to the claimed invention and therefore
would not have understood appellant to have
implicitly disclosed any possible carcass anchoring
means by explicitly reciting only the bead wire.
We agree with the appellant and, apparently, the examiner
that "carcass anchoring means" is a means-plus-function
expression within the purview of 35 U.S.C. § 112, sixth
paragraph. As such, the sixth paragraph provides that it
shall be construed to cover the corresponding structure
described in the specification (i.e., the bead wire) and
equivalents thereof; the examiner's implication, supra, that
it covers "any possible carcass anchoring means" is a broader
interpretation than the statute provides. See In re Donaldson
Co., Inc., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir.
1994).
The examiner seems to be of the opinion that, for a
disclosed structure to be the structure which corresponds to a
means-plus-function, the claimed function must be the only
feature of the structure which is pertinent to the claimed
invention. We are aware of no authority for this proposition
Appeal No. 1999-0983
Application No. 08/782,891
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and do not agree with it, there being no such restriction in
the statute or case law.
Since, as discussed above, under the sixth paragraph of
§ 112, "carcass anchoring means" is construed to cover the
bead wire and equivalents thereof, the question remains as to
whether, assuming arguendo that § 112, first paragraph,
requires that the originally-filed application have included a
written description of such "equivalents thereof," said
application in fact did so. It is of course not necessary
that specific equivalents be described in the specification,
"for such a requirement would render [§ 112, sixth paragraph]
meaningless." Toro Co. v. White Consol. Ind., Inc., 199 F.3d
1295, 1300, 53 USPQ2d 1065, 1068 (Fed. Cir. 1999). Rather, we
apply the fundamental test for compliance with the written
description requirement, namely, would the application as
filed, considered as a whole, have conveyed to one of ordinary
skill in the art, either explicitly or inherently, that
applicant invented the subject matter claimed. Reiffin v.
Microsoft Corp., 214 F.3d 1342, 1346, 54 USPQ2d 1915, 1917
(Fed. Cir. 2000).
In the present case, we consider that this test is met
Appeal No. 1999-0983
Application No. 08/782,891
"Carcass anchoring means" was first recited in a claim3
when claim 4 was amended and claim 14 was added by amendment
filed August 16, 1995 (Paper No. 8).
An equivalent structure under § 112, sixth paragraph,4
must be a structure that was available at the time of the
issuance of the claim. Al-Site Corp. v. VSI Int'l., Inc., 174
F.3d 1308, 1320, 50 USPQ2d 1161, 1168 (Fed. Cir. 1999).
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with regard to the "equivalents" of the bead wire, so that
appellant's recitation of "carcass anchoring means" for the
first time in a non-original claim does not constitute new
matter. In the first place, it is not clear that "carcass3
anchoring means" does in fact include structure other than a
bead wire, since the examiner has not identified anything
known in the art which would be the equivalent of a bead wire
under § 112, sixth paragraph. Secondly, we consider that the4
above-quoted disclosure from page 6, line 26, to page 7, line
13, of the specification would have conveyed to one of
ordinary skill that appellant was in possession, not only of a
bead wire as an element of the invention, but also of
equivalents of the bead wire. Thus, as stated on page 7,
lines 7 to 9, the arrangement of the carcass and anchoring to
a bead wire is "not limitative, and other arrangements can be
adopted within the bead." Also, in lines 9 to 13 appellant
Appeal No. 1999-0983
Application No. 08/782,891
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discloses that "the present invention does not directly
concern . . . selection and location [of all the components
which the bead contains], but essentially proposes a new shape
for the inner edge of the bead." In our view, this disclosure
would have conveyed to one of ordinary skill that the tire
which appellant invented was not limited to containing a bead
wire, but rather contained a "carcass anchoring means," to the
extent that that term includes equivalents of a bead wire.
Accordingly, rejection (1) will not be sustained.
Rejection (2)-Indefiniteness
In this rejection, the examiner finds lack of compliance
with the second paragraph of § 112 on two grounds.
First, the examiner finds claim 17 to be indefinite
because "surface" (line 2) has no antecedent basis. Appellant
does not disagree, but rather agrees to amend the claim
appropriately (reply brief, page 1). This ground of the
rejection will therefore be summarily sustained.
Second, the examiner asserts that "what is included by
appellant's use of the term 'carcass anchoring means' other
than the bead wire cannot be determined in light of the
specification" (answer, page 5). We disagree. As discussed
Appeal No. 1999-0983
Application No. 08/782,891
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under rejection (1), the specification discloses that the bead
wire performs the function of anchoring the carcass.
Therefore, pursuant to § 112, sixth paragraph, "carcass
anchoring means" is construed to cover the bead wire and
equivalents thereof. Appellant is not required to describe in
the specification what these equivalents (if any) are. Toro
Co., supra. The term "carcass anchoring means" accordingly
does not render the scope of the claims indefinite, and we
will not sustain this ground of rejection (2).
Conclusion
The examiner's decision to reject claims 14 and 17 under
§ 112, first paragraph, is reversed, and to reject said claims
under § 112, second paragraph, is reversed as to claim 14 and
sustained as to claim 17.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 1999-0983
Application No. 08/782,891
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IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
IAC:lmb

Appeal No. 1999-0983
Application No. 08/782,891
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