Ex parte KAMI

Board of Patent Appeals and Interferences

Jun 29, 1998

08437956 (B.P.A.I. Jun. 29, 1998)

Application for patent filed May 10, 1995.1
None of the amendments filed after the final rejection has been entered by the2
examiner.
1
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publication in a law journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YOZO KAMI
_____________
Appeal No. 97-3110
Application 08/437,9561
______________
HEARD: June 10, 1998
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
PATE and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 21. No other claims are pending2
in the application.
Appeal No. 97-3110
Application 08/437,956
The recitation of “suspension arms” in the last line of claim 1 lacks strict3
antecedent basis. We have interpreted this recitation to refer back to the claimed “link
arms.” Although this informality does not obscure the metes and bounds of the claimed
invention, it nevertheless is deserving of correction in the event of further
prosecution before the examiner.
2
Appellant’s invention relates to a rear chassis system
for a motor vehicle. As disclosed in appellant’s
specification, the chassis system comprises a pair of rear
wheel suspension assemblies 2 each having a plurality of link
arms 5-9. Link arms 5 and 7 through 9 are pivotally connected3
at their inner or base ends to arm brackets 12 (defined as
?pivoting portions? in claim 1) on a fuel tank 1. The fuel tank
1 comprises upper and lower shell portions 17U and 17L and an
inner frame 16 disposed between the upper and lower shell
portions.
The brackets 12 for link arms 5 and 7 through 9 are fixed
to portions of tank 1 at regions where the shell of the tank
is joined to frame 16. Thus, the link arms 5 and 7 through 9
are attached to the tank through their associated brackets 12.
Additional brackets, described as mount brackets 13, are fixed
to tank 1 and receive bolts 11 for attaching tank 1 to the
Appeal No. 97-3110
Application 08/437,956
Translation attached.4
3
main frame 3 of the vehicle. The link arm 6 is pivotally
connected to a separate arm bracket 12 which is fixed to one
of the mount brackets 13 such that link arm 6 is attached to
the tank through the associated brackets 12 and 13.
Claims 1 and 18 are the only independent claims on
appeal. A copy of these claims, as they appear in the appendix
to appellant’s brief, is appended to this decision.
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejection under 35 U.S.C. § 103:
Washizu et al. (Washizu) 4,991,867 Feb. 12,
1991
Robertshaw (British Patent) 794,737 May 7, 1958
Kohira (Japanese Patent) 05-008643 Jan. 19, 19934

Appealed claims 1 through 21 stand rejected under 35
Appeal No. 97-3110
Application 08/437,956
4
U.S.C. § 103 as being unpatentable over Kohira in view of
Robertshaw and Washizu. Appealed claims 1 through 21
additionally stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellant regards as his invention.
With regard to the rejection of the appealed claims
under the second paragraph of § 112, the examiner’s difficulty
with the claim language centers on the recitation in claim 1
that the link arms are directly attached to the fuel tank and
on the recitation in claim 18 that the link arms are directly
pivotably mounted to the fuel tank. With respect to this
language, the examiner states:
With regard to Issue I, both claims 1
and 18 positively recite ?suspension arms?
(claim 1) and ?link arms? (claim 18) being
?directly attached to the fuel tank?,
however, it is plain to see that this is
not the case. For example, referring to
figure [sic, figures] 1 and 4, it can be
seen that the ?link arms? 5-9 are directly
attached to respective arm brackets (12)
which are in turn connected to the fuel
tank (1), this arrangement making it
Appeal No. 97-3110
Application 08/437,956
Appellant’s reply brief contains an additional discussion regarding the5
rejection under the second paragraph of § 112. The examiner, however, has refused entry
of the reply brief (see Paper No. 21 mailed July 16, 1997).
5
impossible for the link arms to be
?directly attached? to the fuel tank as
claimed because they are already directly
attached to the arm brackets (12). See
also, in the specification, page 3, lines
33-35 and page 4, lines 21-24. [Answer,
page 3.]
In his main brief (see page 8), appellant concedes that
the link arms are connected through the arm brackets 12 to the
fuel tank, but nevertheless contends that the link arms are
directly attached to the tank and that such direct attachment
is effected through the arm brackets. This argument is5
untenable.
It is well established patent law that words in a claim
are to be given their ordinary and accustomed meaning unless
it appears that the inventor used them differently in his
specification. Lantech, Inc. v. Keip Machine Company, 32 F.3d
542, 546, 31 USPQ2d 1666, 1670 (Fed. Cir. 1994). See also In
Appeal No. 97-3110
Application 08/437,956
6
re Barr, 444 F.2d 588, 597, 170 USPQ 330, 339 (CCPA 1971).
In the present case, the ordinary, literal meaning of the
recitation concerning the direct attachment of the link arms
to the fuel tank in claims 1 and 18 signifies that there are
no intervening structural components between the link arms and
the tank. It is self-evident that the link arms cannot be
directly attached to the tank in the ordinary sense if the
link arms are attached to the tank through a bracket or some
other structural component. It therefore is inaccurate and
unclear to recite that the link arms are directly attached to
the fuel tank when, in fact, they are attached through the arm
brackets to the tank. In this regard, it is well settled that
claims in an application must accurately define the invention.
See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492
(CCPA 1973) (the claim language must be clear and accurate so
as to define the metes and bounds of the invention).
Furthermore, claim 1, among others, is explicitly ambiguous in
that it first recites that the link arms are pivotally secured
to the pivoting portions (i.e., the arm brackets) and then
recites, in contradistinction, that the link arms are directly
Appeal No. 97-3110
Application 08/437,956
7
attached to the fuel tank.
Appellant’s specification is of no avail in clarifying
the claim language at issue. In fact, the specification
reflects the same ambiguity in that it states on the one hand
that the link arms are pivotally attached to the arm brackets
12 on the fuel tank (see, for example, page 3, lines 33-35)
and on the other hand that the link arms are directly attached
to the fuel tank (see, for example, page 2, lines 2-3). As we
understand counsel’s explanation of the claim language at
issue at the oral hearing, the recitation that the link arms
are directly attached to the tank is used in a selective sense
in that it is intended to exclude the presence of intervening
frame structures, such as the prior art sub-frame 7 in the
Kohira reference, but not brackets such as the arm brackets 12
of appellant’s invention.
While it is true that appellant may be his own
lexicographer, the patent specification nevertheless must
support the definition which is now asserted. See, e.g.,
Jonsson v. The Stanley Works, 903 F.2d 812, 819, 14 USPQ2d
Appeal No. 97-3110
Application 08/437,956
8
1863, 1870 (Fed. Cir. 1990). In short, appellant may not after
the fact attempt to draw a distinction between the claim
language and the ordinary meaning of that language when the
distinction was not previously set forth in the specification.
Furthermore, a definition in the specification which distorts
the common meaning of a term or phrase is not permissible and
renders the claim in which that term or phrase appears
indefinite. In re Barr, 444 F.2d at 597, 170 USPQ at 338.
For the foregoing reasons, we will sustain the examiner’s
rejection of claims 1 through 21 under the second paragraph of
§ 112.
Since no reasonably definite meaning can be ascribed to
the indefinite claim language discussed supra, we cannot
compare the subject matter of claims 1 through 7, 11, 12, and
17 through 20 with the prior art applied in the § 103
rejection without resorting to speculation and conjecture. We
are therefore constrained to reverse the § 103 rejection of
these claims in light of the holdings in In re Steele, 305
F.2d 859, 863, 134 USPQ 292, 295 (CCPA 1962) and In re Wilson,
Appeal No. 97-3110
Application 08/437,956
9
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). It should
be understood, however, that this reversal of the § 103
rejection of claims 1 through 7, 11, 12 and 17 through 20 is
not a reversal predicated on the
merits of the § 103 rejection, but instead is a procedural
reversal predicated on the indefiniteness of the claim
language.
To the extent that the language encompassed by dependent
claims 8 through 10, 13 through 16 and 21 is understood, we
cannot agree that the features added by these dependent claims
are taught or suggested by the applied references to support a
conclusion of obviousness. We must therefore reverse the § 103
rejection of claims 8 through 10, 13 through 16 and 21.
In summary, the rejection of claims 1 through 21 under
the second paragraph of § 112 is affirmed, and the rejection
of claims 1 through 21 under § 103 is reversed.
Since at least one rejection of each appealed claim has
Appeal No. 97-3110
Application 08/437,956
10
been sustained, the examiner’s decision rejecting the appealed
claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Appeal No. 97-3110
Application 08/437,956
11
)
JEFFREY V. NASE )
Administrative Patent Judge )
CARRIER, BLACKMAN & ASSOCIATES
24101 Novi Road, Suite 100
Novi, Michigan 48375
Appeal No. 97-3110
Application 08/437,956
12
APPENDIX
1. A rear chassis system for a motor vehicle,
comprising:
fuel tank unit including an outer shell mounted
on a vehicle body, and pivoting portions integrally provided
on the outer shell; and
a pair of rear suspension assemblies including
link arms having base ends pivotally secured to said pivoting
portions of on said fuel tank unit so that the base ends of
the link arms are directly attached to the fuel tank unit.
Appeal No. 97-3110
Application 08/437,956
13
18. A rear chassis lfor a motor vehicle,
comprising:
a fuel tank unit including a fuel tank and
directly mounted on a vehicle using a plurality of mount
brackets which are fixed to said fuel tank, said fuel tank
unit also having arm brackets fixed to said fuel tank; and
a pair of rear wheel suspension assemblies
including link arms having base ends pivotally mounted to said
arm brackets whereby said link arms are directly mounted to
said fuel tank unit.