Ex Parte Janzen

Board of Patent Appeals and Interferences

Jul 31, 2002

09122519 (B.P.A.I. Jul. 31, 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for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KLAUS JANZEN
____________
Appeal No. 2001-1276
Application No. 09/122,519
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 7, 12 through 14, and 16. Claims 8 through 11, 15, and
17 through 19, the only other claims in the application, stand
withdrawn from consideration by the examiner as being based upon
Appeal No. 2001-1276
Application No. 09/122,519
which appears in "APPENDIX I" to the main brief (Paper No. 17).
The following rejection is before us for review.
Claims 1 through 7, 12 through 14, and 16 stand rejected
under 35 U.S.C. § 112 (indefiniteness and enablement) .
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the answer (Paper
No. 18), while the complete statement of appellant's argument can
be found in the main and reply briefs (Paper Nos. 17 and 20).1
In the reply brief (page 1), appellant acknowledges that the
rejected claims stand or fall together. Therefore, our focus,
infra, will be upon argued independent claim 1, with the
dependent claims standing or falling therewith.

Appeal No. 2001-1276
Application No. 09/122,519
OPINION
In reaching our conclusion on the indefiniteness and
enablement issues raised in this appeal, this panel of the board
has carefully considered appellant's specification and claim 1,
and the respective viewpoints of appellant and the examiner. As
a consequence of our review, we make the determinations which
follow.
We are constrained to sustain the rejection of appellant's
claim 1 under 35 U.S.C. § 112, as well as the rejection of the
dependent claims, which latter claims stand or fall with claim 1
as earlier indicated. Our reasons appear below.
While the examiner has failed to denote the particular
paragraphs of 35 U.S.C. § 112 at issue, the content of the
rejection (final rejection; page 2) makes it apparent that
35 U.S.C. § 112, second paragraph (indefiniteness) and 35 U.S.C.
Appeal No. 2001-1276
Application No. 09/122,519
Indefiniteness
As set forth in the final rejection (page 2), the examiner
considers the recitation of "or" followed by the recitation of
"and/or" in claim 1 to render the claim indefinite. We agree.
In the context used in claim 1, "or" appears to indicate
that a holding device is, alternatively, means establishing a
magnetic field passing through "the" conveyor belt or means
generating a vacuum at suction orifices of "the" conveyor belt.
However, later in the claim, the holding device is recited as
having at least one magnetic device with a magnetic conveyor belt
and at least one vacuum device with a vacuum conveyor belt, with
the magnetic device "and/or" the vacuum device together with
their respective belt being displaced relative to a common
reference member and being brought into contact with the
workpieces to be transported. The disparity between the
discussed recitations in the claim makes it apparent to us that
Appeal No. 2001-1276
Application No. 09/122,519
For the reasons given above, the assertion by appellant
(main brief, page 6) that the content of claim 1 before us on
appeal satisfies the requirements of 35 U.S.C. § 112, second
paragraph, is not well founded.
Enablement
The examiner is of the view (final rejection, page 2) that
the claims are based upon "an inadequate disclosure because it
has not been sufficiently disclosed as to structurally how both
the magnetic conveyor and the vacuum conveyor can be mounted for
displacement as required by lines 10-12 of claim 1."
Appellant refers us to portions of the specification (main
brief, page 4) revealing that the magnetic device and the vacuum
device can be displaced and brought into contact with a
workpiece, but acknowledges in the reply brief (page 2) that only
one of the belts 1 or 2 is raised or lowered relative to the
Appeal No. 2001-1276
Application No. 09/122,519
made to be selectively movable or be made to move simultaneously
together, as claimed.
The test regarding enablement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill
in the art to make and use the 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). The experimentation
required, in addition to not being undue, must not require
ingenuity beyond that expected of one of ordinary skill in the
art. See In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218
(CCPA 1976).
A reading of the specification and a review of the drawing
reveals to us that one having ordinary skill in this art would
not have been fairly instructed as to how to make and use an
apparatus wherein a magnetic device "and/or" (claim 1) a vacuum
Appeal No. 2001-1276
Application No. 09/122,519
that independent and simultaneous operating systems for vacuum
and magnetic devices were known in the art at the time of
appellant's invention or that one having ordinary skill in the
art would have been able to make and use the claimed invention
without undue experimentation, based upon the present disclosure.
The argument of appellant as set forth in the main and reply
briefs simply does not persuade us that the present disclosure
satisfies the enablement requirement of the first paragraph of
35 U.S.C. § 112. For the foregoing reasons, the examiner's
enablement rejection must be sustained.
In summary, this panel of the board has sustained the
rejection under 35 U.S.C. § 112.
The decision of the examiner is affirmed.
Appeal No. 2001-1276
Application No. 09/122,519
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC/LBG
Appeal No. 2001-1276
Application No. 09/122,519
FRIEDMAN SIEGELBAUM
SEVEN BECKER FARM ROAD
ROSELAND, NJ 07068-1757