Ex parte KATO

Board of Patent Appeals and Interferences

Jan 19, 2000

08656106 (B.P.A.I. Jan. 19, 2000)

Application for patent filed May 31, 1996. 1
We note that the appellant has requested an oral hearing2
(part of Paper No. 13, filed February 8, 1999), but under the
circumstances a hearing is not considered necessary. See 37
CFR § 1.194(c), last sentence.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAHIKO KATO
____________
Appeal No. 1999-2454
Application No. 08/656,1061
____________
ON BRIEF2
____________
Before CALVERT, COHEN, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 6 to 13 and 17 to 19. Claims 3 to 5
and 14 to 16 have been withdrawn from consideration under 37
Appeal No. 1999-2454
Application No. 08/656,106
CFR § 1.142(b) as being drawn to a nonelected invention. No
claim has been canceled.
We REVERSE.
Appeal No. 1999-2454 Page 3
Application No. 08/656,106
BACKGROUND
The appellant's invention relates to an engine induction
system and more particularly to an improved fuel supply
arrangement for supplying the fuel to the injectors of a
multi-cylinder engine (specification, page 1). A copy of the
claims under appeal is set forth in the appendix to the
appellant's brief.
Claims 1, 2, 6 to 13 and 17 to 19 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 the appellant regards as the invention.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the second Office action
(Paper No. 6, mailed October 2, 1997) and the answer (Paper
No. 11, mailed January 12, 1999) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 10, filed September 22, 1998) and reply brief (Paper No.
Appeal No. 1999-2454 Page 4
Application No. 08/656,106
13, filed February 8, 1999) for the appellant's arguments
thereagainst.
Appeal No. 1999-2454 Page 5
Application No. 08/656,106
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, and to the respective positions articulated by the
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
Appeal No. 1999-2454 Page 6
Application No. 08/656,106
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented can be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
Furthermore, appellants may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
With this as background, we turn to the rejection under
Appeal No. 1999-2454 Page 7
Application No. 08/656,106
35 U.S.C. § 112, second paragraph, made by the examiner of the
claims on appeal. Specifically, the examiner stated (second
Office action, page 2) that
the examiner has read claim 1 several times and cannot
see how the relationship between the injectors and the
rails is defined enough to examine the claim limitations.
For example, it sounds like each injector might be
sequentially operated, or the injectors might be
sequential only relative to one another. It is similarly
vague how the plural conduits are attached to the
injectors. It is possible that each injector could be
connected to plural conduits.
Claim 1 reads as follows:
An engine induction system comprised of a plurality
of fuel injectors, means for operating said fuel
injectors for spraying fuel therefrom in sequence, and
means for delivering fuel from a source to said fuel
injectors comprised of at least two separate fuel supply
conduits, each conduit being related to said fuel
injectors so that fuel is not supplied by any conduit to
two fuel injectors that inject adjacent to or
simultaneous with each other.
We find ourselves in agreement with the position of the
appellant (brief, pages 4-6, and reply brief, pages 1-2) that
the claims under appeal are definite, as required by the
second paragraph of 35 U.S.C. § 112, when read in light of the
Appeal No. 1999-2454 Page 8
Application No. 08/656,106
The appellant states (reply brief, paragraph bridging3
pages 1-2) that claim 1 covers four fuel injectors numbered 1,
2, 3, 4 wherein injectors 1, 2 inject simultaneously and
injectors 3, 4 inject simultaneously but sequentially to the
injection of injectors 1, 2. However, in our view, such an
operation of those injectors would not be consistent with the
claimed limitation of "each conduit being related to said fuel
injectors so that fuel is not supplied by any conduit to two
fuel injectors that inject adjacent to or simultaneous with
each other" if the fuel for all four injectors were supplied
by only two fuel supply conduits. For example, if one fuel
conduit supplied fuel to injectors 1, 2, and the other fuel
conduit supplied fuel to injectors 3, 4, then the "not
simultaneous" aspect of the above-noted limitation would not
be met. Likewise, if one fuel conduit supplied fuel to
injectors 1, 3, and the other fuel conduit supplied fuel to
injectors 2, 4, then the "not adjacent to" aspect of the
above-noted limitation would not be met.
It appears to us that claim 1 is readable on an engine4
having two fuel injectors operated in sequence where each of
the two fuel injectors has its own separate fuel supply
conduit.
disclosure. In our view, claim 1 defines the metes and3
bounds thereof with a reasonable degree of precision and
particularity. That is all that is required by the second
paragraph of 35 U.S.C. § 112. See In re Venezia, 530 F.2d
956, 958, 189 USPQ 149, 151 (CCPA 1976). Furthermore, we note
that while claim 1 may be a very broad claim , breadth of a4
claim is not to be equated with indefiniteness. See In re
Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971).
Appeal No. 1999-2454 Page 9
Application No. 08/656,106
For the reasons set forth above, the decision of the
examiner to reject claims 1, 2, 6 to 13 and 17 to 19 under 35
U.S.C. § 112, second paragraph, is reversed.
Appeal No. 1999-2454 Page 10
Application No. 08/656,106
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 6 to 13 and 17 to 19 under 35 U.S.C. § 112,
second paragraph, is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-2454 Page 11
Application No. 08/656,106
ERNEST A. BEUTLER
KNOBBE MARTENS OLSON AND BEAR
620 NEWPORT CENTER DRIVE
SIXTEENTH FLOOR
NEWPORT BEACH, CA 92660-8016
APPEAL NO. 1999-2454 - JUDGE NASE
APPLICATION NO. 08/656,106
APJ NASE
APJ CALVERT
APJ COHEN
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 18 Jan 00
FINAL TYPED: