Ex parte Leonhardt et al.

Board of Patent Appeals and Interferences

Sep 29, 1999

08510971 (B.P.A.I. Sep. 29, 1999)

Application for patent filed August 3, 1995. According to appellants,1
this application is a continuation-in-part of Application 08/389,980, filed
February 14, 1995; which is a continuation of Application 08/073,122, filed
June 7, 1993.
1
Paper No. 11
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HOLGER LEONHARDT
and TOBIAS MULLER
______________
Appeal No. 1998-2914
Application 08/510,9711
_______________
ON BRIEF
_______________
Before COHEN, MEISTER and BAHR, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Holger Leonhardt and Tobias Muller (the appellants)
Appeal No. 1998-2914
Application 08/510,971
On page 4 of the answer the examiner expressly withdrew2
the final rejection of the appealed claims under 35 U.S.C. §§
101 and 103.
2
appeal from the final rejection of claims 1-10, the only
claims present in the application.
We REVERSE.
The appellants' invention pertains to a device for
obtaining register deviations in a multi-color rotary printing
machine. Independent claims 1 and 3 are further illustrative
of the appealed subject matter and a copy thereof may be found
in the appendix to the brief.
The answer states that the following rejections are
applicable to the claims on appeal:2
Claims 1-10 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based upon a nonenabling disclosure.
Claims 1-10 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
appellants regard as the invention.
The rejections are explained on pages 5-17 of the answer
and the arguments of the appellants may be found on pages 19-
38 of the brief.
Appeal No. 1998-2914
Application 08/510,971
3
Appeal No. 1998-2914
Application 08/510,971
4
OPINION
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, and the
respective positions advanced by the appellants in the brief
and by the examiner in the answer. As a consequence of this
review, we will not sustain either of the above-noted
rejections.
Considering first the rejection of claims 1-10 under
35 U.S.C. § 112, first paragraph, we initially note that the
test regarding enablement is whether the disclosure, as filed,
is sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue
experi-mentation. In re Wands, 858 F.2d 731, 737, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988) and In re Scarbrough, 500 F.2d
560, 566,
182 USPQ 298, 302 (CCPA 1974). The experimentation required,
in addition to not being undue, must not require ingenuity
beyond that expected of one of ordinary skill in the art. See
In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 218 (CCPA
1976).
It is also well settled that the examiner has the initial
Appeal No. 1998-2914
Application 08/510,971
5
burden of producing reasons that substantiate a rejection
based on lack of enablement. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563 (CCPA 1982) and In re
Marzocchi, 439 F.2d 220, 224 169 USPQ 367, 370 (CCPA 1971).
Once this is done, the burden shifts to the appellants to
rebut this conclusion by presenting evidence to prove that the
disclosure is enabling. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974)
and In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973).
Here, we have carefully reviewed the appellants'
disclosure in light of the examiner's contentions, but do not
find that the examiner has satisfied the initial burden of
producing a convincing line of reasoning which would
substantiate a rejection based on lack of enablement with
respect to the subject matter defined by the claims on appeal.
It is, of course, true that every detail has not been set
forth in the specification. However, as the court in In re
Gaubert, 524 F.2d 1222, 1226,
187 USPQ 664, 667 (CCPA 1975) set forth in quoting from Martin
v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA 1972):
Appeal No. 1998-2914
Application 08/510,971
6
To satisfy §112, the specification disclosure must
be sufficiently complete to enable one of ordinary
skill in the art to make the invention without undue
experimentation, although the need for a minimum
amount of experimentation is not fatal * * *.
Enablement is the criterion, and every detail need
not be set forth in the written specification if the
skill in the art is such that the disclosure enables
one to make the invention. [Citations omitted;
emphasis added.]
Moreover, the determination of what constitutes undue
experimentation in a given case requires the application of
a standard of reasonableness, having regard for the nature of
the invention and the state of the art. Ex parte Forman, 230
USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
The examiner has merely made broad allegations that the
disclosure is insufficient to teach how the various control
systems and components thereof cooperate to perform the
claimed functions, but has provided no convincing reasons as
to why the appellants' disclosure is in fact insufficient.
For example, the examiner broadly contends that there is no
adequate disclosure of (1) "hard wired circuitry", (2) how the
register mark signals and the reference marks can be scanned
by the same receiver and sensed substantially at the same
time, (3) how the signals generated by the sensors are
Appeal No. 1998-2914
Application 08/510,971
7
"connected" to the circuit arrangement, (4) how signals from
the reference marks make it possible to perform an
interpolation of the velocity of the sheet in time intervals,
(5) how the processing system performs a registration
operation in order to correct register errors and (6) how and
by what means a steering and regulation device "receives"
inputs from the control circuit. The examiner, however, has
presented no convincing line of reasoning as to why one of
ordinary skill in this art, armed with the appellants'
disclosure, would not be able to make and use the claimed
invention without undue experimentation.
As to contentions (1), (3) and (6), the block diagram of
Figs. 10 and 11 show the required hardware units and we do not
believe that it can be seriously contended that one of
ordinary skill in this art would not be able to provide the
necessary hard-wired circuitry and connections between these
units without undue experimentation. As to contention (2),
the specification adequately explains on page 17 that the
reference and register marks are placed within range of a
single optical scanning device 1 or 2 and on page 24 that:
Appeal No. 1998-2914
Application 08/510,971
8
The pre-processing circuit 54 includes two
differentiating circuits 71, 72 of conventional
construction, with a common input 66 connected via
signal line 66 to optical scanning device 1 (Fig.
1), while pre-processing unit 54' is connected to
scanning unit 2 via line 67. When the scanning
signal on signal line 66 goes active as a leading
edge P11, P13, P15 or P17 (Fig. 8) of a register or
reference mark is detected, a positive start pulse
is generated on the differentiating circuit's output
lead 73, and when subsequently the trailing edge of
the mark is detected, a positive end pulse is
generated on the output lead 74.
As to contention (5), the formulas for computing the various
register deviations are provided on pages 20 and 21 of the
specification and the necessary hardware for computing the
deviations and making corrections is diagrammatically
illustrated in Fig. 11. Page 25 of the specification states
that complete detail has not been shown for sake of clarity
since "such details would be readily provided by a person
having ordinary skills in the design of electronic circuits,"
and the examiner has provided no reasons whatsoever as to why
this might not be the case.
On pages 12 and 13 the answer states that:
Appellant has pointed to various pages in the
specification to support the contention that the
questioned steps as itemized above are enabling.
The conclusions made by appellant are not supported
by the submission of sufficient facts to support
those conclusions. A review of the specification
Appeal No. 1998-2914
Application 08/510,971
9
disclosure and the referenced flow chart diagram
reveals that there is no sufficient teachings and
examples that indicate how and in what manner the
various steps as itemized above are enabled. Here,
where the programming and software disclosure only
includes a flowchart, the likelihood of more than
routine experimentation being required to generate a
working program from such a flowchart also
increases. This is especially so when considering
that approximately 1600 man hours was necessary for
developing a working computer program for the
claimed invention.
However, as we have noted above, the examiner has the
initial burden of producing reasons that substantiate a
rejection based on lack of enablement. Moreover, as our
reviewing court stated in In re Wright, 999 F.2d 1557, 1561 27
USPQ2d 1510, 1513 (Fed. Cir. 1993):
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.” . . . (the first paragraph
of section 112 requires that the scope of protection
sought in a claim bear a reasonable correlation to
the scope of enablement provided by the
specification). Nothing more than objective
enablement is required, and therefore it is
irrelevant whether this teaching is provided through
broad terminology or illustrative examples.
[Citations omitted; emphasis added.]
Here, although only a flowchart (as distinguished from a
complete computer program) has been provided, we are of the
Appeal No. 1998-2914
Application 08/510,971
10
opinion that the scope of protection sought in the claims on
appeal bears a reasonable correlation to the scope of
enablement provided by the appellants' disclosure.
As to the question of 1600 man hours, the brief states
that:
It is well known to practitioners in the art that
developing and implementing software to be used in a
real-time operating environment is usually a time-
consuming process since many machine variables of
the machine operation under influence of varying
environmental factors must be considered.
Appellants believe that 1600 man hours is a very
reasonable amount of effort to be expected in
implementing an invention such as the instant
invention, and do not believe that 1600 man hours is
indicative of undue experimentation in implementing
the invention. [Page 33.]
The examiner, however, has provided no reasons as to why this
might not be the case.
In view of the foregoing, we will not sustain the
rejection of claims 1-10 under 35 U.S.C. § 112, first
paragraph.
Turning to the rejection of claims 1-10 under 35 U.S.C.
§ 112, second paragraph, the main thrust of the examiner's
position is that:
The claim language is narrative for the most part,
reciting elements in an inferential manner, omitting
necessary and meaningful structural cooperation and
Appeal No. 1998-2914
Application 08/510,971
11
connections between elements, and omitting necessary
antecedent structure to support the various
recitations of function. The claims are indefinite
as to the structural arrangement of parts so as to
enable a definite and meaningful system. [Answer,
page 5.]
We will not support the examiner's position. The
examiner's approach as to whether the claims on appeal satisfy
the second paragraph of § 112 appears to have been to study
the disclosure, and then formulate a conclusion as to what
structural elements should be claimed to support the recited
functions. Such an approach is improper. See In re
Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA
1970). There is only one basic ground for rejecting a claim
under the second paragraph of § 112, namely, the language
employed does not reasonably apprise those
of skill in the art of its scope. See, e.g., In re Warmerdam,
33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994) and
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). While the claims are perhaps broader than the examiner
would like, breadth alone is not to be equated with
indefiniteness.
In re Johnson, 558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194
Appeal No. 1998-2914
Application 08/510,971
Although we are of the opinion that one of ordinary3
skill in the art would be reasonably apprised of the scope of
claims 1-10, we note that in lines 23 and 25 of claim 1 (as it
appears in the appendix to the brief) "section" reference
marks has no clear antecedent basis. In the event of further
prosecution before the examiner, this informality should be
corrected.
12
n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166
USPQ 138, 140
(CCPA 1970) and Ex parte Scherberich, 201 USPQ 397, 398 (Bd.
App. 1977).
Since we are of the opinion that one of ordinary skill in
this art would be reasonably apprised of the scope of claims
1-10, we will not sustain the rejection of these claims under
35 U.S.C. § 112, second paragraph.3
The decision of the examiner to reject claims 1-10 under
35 U.S.C. § 112, first and second paragraphs, is reversed.
REVERSED
IRWIN CHARLES COHEN )
Appeal No. 1998-2914
Application 08/510,971
13
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Lerner and Greenberg
1200 8 Federal Highway
Hollywood, FL 33020
Appeal No. 1998-2914
Application 08/510,971
14
JMM/cam