Ex parte Kitanaka

Board of Patent Appeals and Interferences

Nov 29, 1999

08357320 (B.P.A.I. Nov. 29, 1999)

Application for patent filed December 16, 1994. 1
Claims 7 and 8 were canceled in Paper No. 10.2
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for publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KATSUMI KITANAKA
____________
Appeal No. 1998-0046
Application No. 08/357,3201
____________
HEARD: NOVEMBER 1, 1999
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 6, 9 and 10, which are all of
the claims pending in this application.2
We REVERSE and enter new grounds of rejection pursuant to
37 CFR § 1.196(b).
Appeal No. 1998-0046 Page 2
Application No. 08/357,320
The copy of claim 5 in the appellant's brief is an incorrect3
reproduction of claim 5 of record in the application in that "outward" should
be "outwards."
BACKGROUND
The appellant's invention relates to an endless chain
cutter. A copy of the claims under appeal appears in the
appendix to the appellant's brief.3
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Protzeller 2,594,991 Apr. 29, 1952
Reagle 2,636,291 Apr. 28, 1953
Hayward AU 540,966 Dec. 13, 1984
(Australian patent document)
The following rejections are before us for review.
1. Claims 1-5 and 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Protzeller.
2. Claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Reagle.
3. Claims 6 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over either Protzeller or Reagle in view of
Hayward.
Appeal No. 1998-0046 Page 3
Application No. 08/357,320
Reference is made to the brief (Paper No. 14) and reply
brief (Paper No. 16) and the answer (Paper No. 15) for the
respective positions of the appellant and the examiner with
regard to the merits of these rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. §§ 102
and 103 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language
of the claim itself. See Smithkline Diagnostics, Inc. v.
Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468,
Appeal No. 1998-0046 Page 4
Application No. 08/357,320
1472 (Fed. Cir. 1988). Accordingly, we will initially direct
our attention to appellant's claim 1 to derive an
understanding of the scope and content thereof.
Claim 1 recites an endless chain extending between two
upper and lower sprockets spaced along an axis and cutter
elements mounted on the chain, at least some of the cutter
elements "comprising cutting edges which extend substantially
parallel to said axis" (emphasis added).
The term "substantially" is a term of degree. When a
word of degree is used, such as the term "substantially" in
claim 1, it is necessary to determine whether the
specification provides some standard for measuring that
degree. See Seattle Box Company, Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed.
Cir. 1984).
Admittedly, the fact that some claim language, such as
the term of degree mentioned supra, may not be precise, does
not automatically render the claim indefinite under the second
paragraph of § 112. In Seattle Box, the court set forth the
following requirements for terms of degree:
Appeal No. 1998-0046 Page 5
Application No. 08/357,320
When a word of degree is used the district court
must determine whether the patent's specification
provides some standard for measuring that degree.
The trial court must decide, that is, whether one of
ordinary skill in the art would understand what is
claimed when the claim is read in light of the
specification.
In the present case, we have reviewed the appellant's
disclosure to help us determine the meaning of the above-noted
terminology from claim 1. That review has revealed that the
appellant's specification does not use the terms "cutting
edges" or "parallel" or "substantially parallel" and, thus,
provides absolutely no guidance as to the meaning of
"substantially parallel."
The appellant's drawings, which are not engineering
drawings dimensioned and drawn to scale, provide no further
clarification with regard to this claim terminology. Figures
2a, 2b and 2c, which are described (specification, page 4) as
a front, plan and side view, respectively, of one example of a
cutter element, illustrate the cutter bits (4) in some detail.
The cutter bits (4) of Figure 2a do not appear to us to
comprise any edge extending parallel to the run of the endless
Appeal No. 1998-0046 Page 6
Application No. 08/357,320
chain (1), which we interpret to be parallel to the recited
"axis." Figure 2c illustrates cutter bits (4) having front
faces which may or may not be parallel to the run of the
chain. Figures 1 and 6 illustrate cutter bits (4) having
curved front faces, rather than canted front faces as
illustrated in Figure 2a. Additionally, as shown in Figure 6,
it appears that the cutting face of the cutter bits (4) of the
appellant's invention are the upper faces, which appear to be
perpendicular to the run of the chain.
As should be evident from the above discussion, these
portions of the disclosure do not provide explicit guidelines
defining the terminology "substantially parallel" (claim 1).
Furthermore, there are no guidelines that would be implicit to
one skilled in the art defining the term "substantially" as
used in the terminology "substantially parallel" that would
enable one skilled in the art to ascertain what is meant by
"substantially." For example, one cannot ascertain if the
inclined face (64) of Protzeller's excavating element is
"substantially parallel" to the run of the chain therein, as
now claimed. Absent such guidelines, we are of the opinion
that a skilled person would not be able to determine the metes
Appeal No. 1998-0046 Page 7
Application No. 08/357,320
Our review of the original claims reveals that the "substantially4
parallel" limitation was not present in any of the original claims of the
application.
and bounds of the claimed invention with the precision
required by the second paragraph of 35 U.S.C. § 112. See In
re Hammack, supra.
Since the appellant's disclosure fails to set forth an
adequate definition as to what is meant by the terminology
"substantially parallel" in claim 1, and claims 2 through 6, 9
and 10 which depend therefrom, the appellant has failed to
particularly point out and distinctly claim the invention as
required by the second paragraph of 35 U.S.C. § 112.
Our findings, discussed above, in reviewing the
appellant's disclosure have led us to review the appellant's
original disclosure, including the original claims , to4
determine whether the appellant's disclosure, as originally
filed, provided adequate support for the "substantially
parallel" limitation in compliance with the written
description requirement of the first paragraph of § 112.
Appeal No. 1998-0046 Page 8
Application No. 08/357,320
The written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him; how the specification accomplishes this is not
material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90,
96 (CCPA 1976). In order to meet the written description
requirement, the applicant does not have to utilize any
particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she]
invented what is claimed." In re Gosteli, 872 F.2d 1008,
1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way,
"the applicant must . . . convey with reasonable clarity to
those skilled in the
art that, as of the filing date sought, he or she was in
possession of the invention." Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
In view of our findings discussed above, our review of
the appellant's original disclosure, including the original
drawings and claims, leads us to conclude that it would not
have conveyed with reasonable clarity to those skilled in the
Appeal No. 1998-0046 Page 9
Application No. 08/357,320
art that, as of the filing date of the application, the
invention was directed to a cutter having cutter elements
comprising "cutting edges which extend substantially parallel
to said axis."
For the foregoing reasons, the appellant's original
disclosure does not provide support for the invention as now
claimed.
Considering now the rejections of claims 1 through 6, 9
and 10 under 35 U.S.C. §§ 102(b) and 103, we have carefully
considered the subject matter defined by these claims.
However,
for reasons stated supra, no reasonably definite meaning can
be ascribed to certain language appearing in the claims. As
the court in In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970) stated:
[a]ll words in a claim must be considered in judging
the patentability of that claim against the prior
art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject
matter does not become obvious --the claim becomes
indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
Appeal No. 1998-0046 Page 10
Application No. 08/357,320
and assumptions are necessary in order to determine what in
fact is being claimed. Specifically, as discussed above, this
would require speculation as to the meaning of "substantially
parallel" as used in the claims (note brief, pages 4 and 6).
Since a rejection based on prior art cannot be based on
speculations and assumptions, see In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962), we are constrained to
reverse, pro forma, the examiner's rejections of claims 1
through 6, 9 and 10 under 35 U.S.C. §§ 102(b) and 103. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections under 35 U.S.C. §§
102(b) and 103.
NEW GROUNDS OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection:
Claims 1 through 6, 9 and 10 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention, for
the reasons explained above and incorporated herein.
As set forth previously, our review of the specification
leads us to conclude that one of ordinary skill in the art
Appeal No. 1998-0046 Page 11
Application No. 08/357,320
would not be able to understand the metes and bounds of the
terminology "substantially parallel" in independent claim 1.
Claims 2 through 6, 9 and 10 depend from claim 1 and are
likewise indefinite.
Claims 1 through 6, 9 and 10 stand rejected under 35
U.S.C. § 112, first paragraph, as the disclosure, as
originally filed, does not provide support for the invention
as is now claimed.
As discussed above and incorporated herein, the
appellant's original disclosure does not provide support for
the limitation that at least some of the cutting elements
comprise "cutting edges which extend substantially parallel to
said axis."
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 5 and 10 under 35 U.S.C. § 102(b), claims 1
and 4 under 35 U.S.C. § 102(b) and claims 6 and 9 under 35
U.S.C. § 103 is reversed. New grounds of rejection of claims
Appeal No. 1998-0046 Page 12
Application No. 08/357,320
1 through 6, 9 and 10 under the first and second paragraphs of
35 U.S.C. § 112 are added pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "[a] new ground of rejection shall not
be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 1998-0046 Page 13
Application No. 08/357,320
REVERSED; 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-0046 Page 14
Application No. 08/357,320
JAMES E. LEDBETTER, ESQ.
STEVENS, DAVIS, MILLER & MOSHER, L.L.P.
1615 L STREET NW, SUITE 850
P.O. BOX 34387
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