Ex parte Koshak

Board of Patent Appeals and Interferences

Mar 21, 2000

08540323 (B.P.A.I. Mar. 21, 2000)

While the examiner has approved entry of the amendment1
after final rejection (Paper No. 12, filed April 15, 1997), we
note that this amendment has not been clerically entered.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN W. KOSHAK
____________
Appeal No. 1999-0220
Application No. 08/540,323
____________
HEARD: March 6, 2000
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 1 to 4, 6 to 12, 21 and 27 to 30, as amended
subsequent to the final rejection. These claims constitute1
all of the claims pending in this application.
We AFFIRM.
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Application No. 08/540,323
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Application No. 08/540,323
BACKGROUND
The appellant's invention relates to an arresting device.
A copy of the claims under appeal is set forth in the appendix
to the appellant's brief. Claim 1 is representative of the
subject matter on appeal and reads as follows:
An arresting device for halting relative motion
between a main cylinder and a second cylinder of a
hydraulic elevator, wherein the second cylinder moves
within the main cylinder, wherein the second cylinder has
a perimeter and an external radius of curvature, said
arresting device comprising:
two lever arms, each of said two lever arms having
an approximately semi-cylindrical braking surface and a
pivot point, said approximately semi-cylindrical braking
surface having an internal radius of curvature which is
smaller than the external radius of curvature of the
second cylinder, and said pivot point being offset from
said braking surface,
said lever arms having a first position wherein said
lever arms are rotated away from the second cylinder with
said braking surface out of contact with the perimeter of
the second cylinder, and a second position wherein said
lever arms press said braking surface against the
perimeter of the second cylinder to generate a braking
force.
Claims 1 to 4, 6 to 12, 21 and 27 to 30 stand rejected
under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the specification in such a
Appeal No. 1999-0220 Page 4
Application No. 08/540,323
way as to enable one skilled in the art to make and/or use the
invention.
Claims 1 to 4, 6 to 12, 21 and 27 to 30 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
rejections, we make reference to the answer (Paper No. 21,
mailed February 3, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 20,
filed November 7, 1997) and reply brief (Paper No. 22, filed
April 3, 1998) for the appellant's arguments thereagainst.
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
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Application No. 08/540,323
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
The enablement rejection
We will not sustain the rejection of claims 1 to 4, 6 to
12, 21 and 27 to 30 under 35 U.S.C. § 112, first paragraph.
An analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination
of whether that disclosure contained sufficient information
regarding the subject matter of the appealed claims as to
enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one
skilled in the art could make and use the claimed invention
from the disclosure coupled with information known in the art
without undue experimentation. See United States v.
Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223
(Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989); In re
Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA 1976).
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Application No. 08/540,323
In order to make a rejection, the examiner has the
initial burden to establish a reasonable basis to question the
enablement provided for the claimed invention. See In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993) (examiner must provide a reasonable explanation as
to why the scope of protection provided by a claim is not
adequately enabled by the disclosure). A disclosure which
contains a teaching of the manner and process of making and
using an invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to
be patented must be taken as being in compliance with the
enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein
which must be relied on for enabling support. Assuming that
sufficient reason for such doubt exists, a rejection for
failure to teach how to make and/or use will be proper on that
basis. See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369 (CCPA 1971). As stated by the court,
it is incumbent upon the Patent Office, whenever a
rejection on this basis is made, to explain why it doubts
the truth or accuracy of any statement in a supporting
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Application No. 08/540,323
disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be
no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate
disclosure.
In re Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art
as of the date of the appellant's application, would have
enabled a person of such skill to make and use the appellant's
invention without undue experimentation. The threshold step
in resolving this issue as set forth supra is to determine
whether the examiner has met the burden of proof by advancing
acceptable reasoning inconsistent with enablement. This the
examiner has not done.
The examiner's rejection (answer, pp. 3-4) states that
[t]he arguments and declaration filed January 10,
1997 and the declaration filed October 21, 1997 indicate
that the critical part of the invention is that the
braking surface causes deformation of the ram. The
originally filed specification states that the ram is not
deformed by the braking surface (page 4, lines 17-18 and
page 5, line 8). The originally filed specification
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Application No. 08/540,323
appears to be fatally deficient since it incorrectly
disclosed the operation of the device.
The appellant argues (brief, pp. 7-14) that the claimed
invention is enabled and that deformation of the ram by the
braking surfaces is not a critical feature of the claimed
invention.
We agree with the appellant that the claimed invention is
enabled since the claims under appeal are generic as to
whether the braking surfaces cause either (1) elastic
deformation of the ram (i.e., the second cylinder); (2)
permanent deformation of the ram; or (3) no deformation of the
ram. That, being the case, the examiner has not met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement as to the claimed invention.
Additionally, it is our determination that one of
ordinary skill in the art as of the date of the appellant's
application would have taken the appellant's disclosure, as a
whole, to mean that the braking surfaces cause elastic
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Application No. 08/540,323
deformation of the ram but not permanent deformation of the
ram. In this regard, the appellant's specification provides
that (1) the general object of the invention is to provide a
mechanism for arresting an elevator "without permanently
damaging any part of the elevator" (page 3, lines 20-22); (2)
another object of the invention is to provide an elevator
arrestor that allows the elevator to be usable within a short
period of time "with little reset and repair necessary" (page
3, lines 23-25); (3) when actuated, the friction lining
material of the braking surfaces contacts the ram with
sufficient frictional force to stop the downward motion of the
ram "without deformation of the ram" (page 4, lines 16-18);
(4) annealed copper is the preferred friction lining material
for the braking surfaces since it creates "the greatest
braking force with the least amount of damage/deformation of
the ram" (page 7, lines 13-18); and (5) in an alternative
embodiment, cutting bits or teeth may be fixed to the braking
surfaces in place of or in addition to the friction lining
material such that braking is accomplished by the teeth biting
into the ram wherein that damage to the ram can be repaired by
filling and filing the gouges in the ram (page 8, lines 3-9).
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From these diverse disclosures, we conclude that one of
ordinary skill in the art as of the date of the appellant's
application would have taken the appellant's disclosure, as a
whole, to mean that the braking surfaces cause elastic
deformation (i.e, no permanent damage) of the ram but not
permanent deformation (i.e, permanent damage) of the ram.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 4, 6 to 12, 21 and 27 to 30
under 35 U.S.C. § 112, first paragraph, is reversed.
The indefiniteness rejection
We sustain the rejection of claims 1 to 4, 6 to 12, 21
and 27 to 30 under 35 U.S.C. § 112, second paragraph.
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
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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.
§ 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 cannot 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 appropriate.
With this as background, we analyze the specific
rejections under 35 U.S.C. § 112, second paragraph, of the
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Application No. 08/540,323
claims on appeal made by the examiner. The examiner's
rejection (answer, p. 4) states that
[t]he scope of claims 1-4, 6-12, 21, and 27-30 is
not clear. The claims appear to be directed to an
arresting device, but the claims recite structure which
is outside of the device, i.e. the external radius of
curvature of the second cylinder/ram, the detection
system, the hydraulic ram, the hydraulic lift, the
longitudinal axis of the second cylinder, etc. The
claims further define the arresting device relative to
the outside structure, i.e. the internal radius of
curvature of the braking surface being smaller than the
external radius of curvature of the second cylinder/ram,
the lever arms being within 15 degrees of being
perpendicular to the longitudinal axis of the second
cylinder, and the lever arms being perpendicular to the
longitudinal axis of the second cylinder. Therefore, it
is not clear if solely the arresting device is being
relied upon for patentability or if the combination of
the arresting device and the outside elements are being
relied upon for patentability.
The appellant argues (reply brief, pp. 3-7) that with
respect to the claims under appeal there is no indefiniteness
as to the scope of the claims. Specifically, the appellant
asserts that the claims are directed to an apparatus having as
its principal elements a pair of lever arms having semi-
cylindrical braking surfaces. The appellant also asserts that
the references to elements outside the claimed apparatus
(e.g., the second cylinder, the ram) in the claims are
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Application No. 08/540,323
permitted references to unclaimed elements. Thus, the
appellant states that the second cylinder/ram is not claimed.
Our review of the claims under appeal leads us to the
conclusion that the rejection under 35 U.S.C. § 112, second
paragraph, is appropriate, since the claims are indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellants regard as the invention.
Our analysis of claim 1 leads us to the following
determinations:
(1) in the first paragraph, the main cylinder and a second
cylinder of a hydraulic elevator are recited utilizing
intended use language; (2) in the second paragraph, the second
cylinder is referred to without utilizing intended use
language (i.e., use of the phrase "is smaller than" rather
than "is intended to be smaller than"); and (3) in the third
paragraph, the second cylinder is referred to without
utilizing intended use language (i.e., use of the phrase "are
rotated" rather than "are capable of being rotated away" and
the use of the term "press" rather than "are capable of
pressing"). From our review of claim 1 as a whole, it is
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Application No. 08/540,323
unclear to us whether or not the second cylinder is part of
the claimed apparatus, thus rendering claim 1 indefinite.
Claim 21 (the other independent claim on appeal) is likewise
indefinite for reasons comparable to those set forth for claim
1.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 4, 6 to 12, 21 and 27 to 30
under 35 U.S.C. § 112, second paragraph, is affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 4, 6 to 12, 21 and 27 to 30 under 35 U.S.C. § 112,
first paragraph, is reversed and the decision of the examiner
to reject claims 1 to 4, 6 to 12, 21 and 27 to 30 under 35
U.S.C. § 112, second paragraph, is affirmed.
Since at least one rejection of each of the appealed
claims has been affirmed, the decision of the examiner is
affirmed.
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Application No. 08/540,323
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
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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JAMES J. LEARY
505 W. OLIVE AVENUE, SUITE 330
SUNNYVALE, CA 94086
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JVN/dl