Ex Parte Leon

Board of Patent Appeals and Interferences

Apr 24, 2002

08815441 (B.P.A.I. Apr. 24, 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written for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARTY G. LEON
__________
Appeal No. 1999-2225
Application No. 08/815,441
___________
ON BRIEF
___________
Before PAK, WARREN, and DELMENDO, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1 through 4, which are
all of the claims pending in the above-identified application.
The subject matter on appeal relates to a vacuuming assembly
for wet and dry vacuums. Further details of this appealed
subject matter are recited in representative claim 1, the sole
independent claim on appeal, reproduced below:
1. An improved vacuuming assembly for wet and dry
vacuums and for use inside of a vacuum canister, the
assembly comprising the following: a motor chamber in
connection with an induction chamber, said induction
chamber having an hourglass shape having a middle
section, an upper section and a lower section so as to
produce a venturi effect, said upper section and said
lower section of large diameter than said middle
Appeal No. 1999-2225
Application No. 08/815,441
2
section, said induction chamber having an upper opening
and a lower opening in connection with one another so
as to create a channel throughout said induction
chamber, a series of apertures in said upper section,
an impeller assembly fixed for rotation at a point
above said induction chamber and having blades of size
and shape parallel to the shape of said upper section
so as to create a gap between said upper section and
said spinning blades, a motor in connection with said
motor chamber and in connection with a drive shaft,
said drive shaft in connection with said impeller
assembly so that said impeller assembly may induct air
upward through said induction chamber and with
sufficient speed to force air and water particles
through said apertures.
The examiner has not relied on any prior art as evidence of
unpatentability.
Claims 1 through 4 on appeal stand rejected under the first
paragraph of 35 U.S.C. § 112. (Examiner's answer, page 3; Office
action of July 2, 1998, paper 4, pages 2-3.)
We reverse this rejection.
As a preliminary matter, we note that the examiner does not
identify the specific requirement (i.e., best mode, enablement,
or written description) of the statutory provision being relied
upon to reject the appealed claims. Nevertheless, we presume
that the examiner is relying on the enablement requirement of the
statutory provision because the basic thrust of the rejection is
based on the allegation that the claimed invention is
inoperative. (Examiner's answer, pages 3-5; Office action of
July 2, 1998, pages 2-3.) In this regard, it appears to us that
Appeal No. 1999-2225
Application No. 08/815,441
3
the appellants have responded to the examiner's rejection with
the same presumption. (Appeal brief, page 6.)
In the final Office action, the examiner held ( id. at page
2):
2. The specification is objected to under 37 CFR 1.71
as being inoperative. The device would be incapable of
performing either the presumed operation of vacuuming
material from a work surface or of cooperating with a
canister vacuum cleaner because neither an inlet nor
outlet is disclosed in the outer canister of the
assembly. Therefore, the device is incapable of
drawing air-entrained liquid or dust into the outer
housing 40, and air will merely circulate through the
venturi and out through the perforations to cycle again
through the inlet of the venturi.
3. The specification is further objected to for
various reasons listed in the following. It is not
seen what the function of the lower and middle portions
of the venturi member is supposed to be. Since the
inlet to the venturi is solely disclosed as placed low
in the container, should any liquid or dust be somehow
present in the housing, the nearness of the inlet of
the fan to the dirt/liquid at the bottom would tend to
pick up more dirt/liquid in the air stream than if the
middle and lower sections were not present! The
statement that the venturi assembly is "supported" by
horn 56 is not seen to have any basis, as no means of
supportive contact is described or shown between 12 and
56, and any but point contact would obstruct the inlet
of the venturi. How 35 may be considered to be a
"valve" to cut off flow through the venturi is not
understood, as no structure of an obstructing member in
the throat is set forth that would not nearly, if not
completely block off the throat at all positions of the
float, assuming that the double horizontal line is a
solid member.
The examiner's position is without merit.
It is important to emphasize that the initial burden of
Appeal No. 1999-2225
Application No. 08/815,441
1 The question of whether making and using the invention
would have required "undue experimentation" depends on several
underlying factual inquiries including: (1) the quantity of
experimentation necessary; (2) the amount of direction or guidance
presented; (3) the presence or absence of working examples; (4)
4
establishing a prima facie case of non-enablement under the first
paragraph of 35 U.S.C. § 112 rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). The predecessor of our reviewing court has stated as
follows:
[A] specification disclosure which contains a teaching
of the manner and process of making and using the
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 in compliance
with the enabling requirement of the first paragraph of
Section 112 unless there is reason to doubt the
objective truth of the statements contained therein
which must be relied on for enabling support.
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). Thus, it is only upon the advancement of acceptable
reasoning on the part of the examiner that the burden of proving
enablement shifts to the appellants. In re Strahilevitz, 668
F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). Here, the
examiner has not met the threshold initial burden of proof.
"Although not explicitly stated in section 112, to be
enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed
invention without 'undue experimentation.'" 1 In re Wright, 999
Appeal No. 1999-2225
Application No. 08/815,441
the nature of the invention; (5) the state of the prior art; (6)
the relative skill of those in the art; (7) the predictability or
unpredictability of the art; and (8) the breadth of the claims. In
re Wands, 858 F.2d 731, 735, 736-37,
8 USPQ2d 1400, 1402, 1404 (Fed. Cir. 1988).
5
F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). As long
as "undue experimentation" is not involved, a specification would
comply with the enablement requirement of the statute even if a
reasonable amount of routine experimentation is necessary to
practice the claimed invention. Enzo Biochem Inc. v. Calgene,
188 F.3d 1362, 1371, 52 USPQ2d 1129, 1135 (Fed. Cir. 1999). Even
"a considerable amount of experimentation is permissible, if it
is merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed..." Wands, 858 F.2d at
737, 8 USPQ2d at 1404.
Here, the examiner has not undertaken the analytic
framework, as set out in Wands, for determining whether one
skilled in the relevant art would be subject to "undue
experimentation" in making and using the claimed invention. For
this reason alone, the examiner has failed to carry the initial
burden of proof.
The examiner fails to understand that a rejection under 35
U.S.C. § 112, first paragraph, must take into account various
Appeal No. 1999-2225
Application No. 08/815,441
6
factors such as the nature of the invention, the predictability
of the art, and the relative skill of persons in the art. For
example, the examiner argues that the claimed invention is
inoperative because an inlet or outlet is not disclosed in the
specification. However, the examiner has not established that
any undue experimentation would be involved in providing an
operative canister for the claimed vacuum assembly. While the
examiner would have us believe that any knowledge in the prior
art needed to establish enablement must be recited in the
specification (Examiner's answer, pages 3-4), this is not the
law. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524,
1534, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987)("A patent need not
teach, and preferably omits, what is well known in the art.");
Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys. , 804
F.2d 659, 664, 231 USPQ 649, 653 (Fed. Cir. 1986)("A patent
applicant need not include in the specification that which is
already known to an available to the public."); Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986)("[A] patent need not teach, and preferably
omits, what is well known in the art.").
Regarding the examiner's reasoning as set forth in paragraph
3 of the final Office action, we agree with the appellants'
analysis as set forth in the appeal brief (pages 8-9).
Appeal No. 1999-2225
Application No. 08/815,441
7
The decision of the examiner to reject appealed claims 1
through 4 under 35 U.S.C. § 112, first paragraph, is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF
PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
rhd/
JOHN P HALVONIK
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