Ex parte Muller et al.

Board of Patent Appeals and Interferences

Feb 26, 2002

09206393 (B.P.A.I. Feb. 26, 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and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MANFRED MULLER, WERNER REICHELT,
PETER FRANK and CHRISTOPHER RHOADES
____________
Appeal No. 2001-2021
Application No. 09/206,393
____________
HEARD: February 19, 2002
____________
Before STAAB, McQUADE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Manfred Muller et al. appeal from the final rejection of
claims 28 through 38, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a control element arrangement
for controlling the longitudinal and/or the lateral movement
of a motor vehicle” (specification, page 1). Representative
claim 28 reads as follows:
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Application No. 09/206,393
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28. Control element arrangement for controlling movement
of a motor vehicle, comprising:
spaced joy sticks adjacent a left hand and a right hand
of a vehicle driver and arranged to be operable independently
of one another
wherein each joy stick is configured to be selectively
operable with the left hand or a right hand of a vehicle
driver for a desired movement of the motor vehicle, one joy
stick being arranged on a transmission tunnel and the other
joy stick being arranged on an interior side of a driver’s
door of the motor vehicle, and at least one of the joy sticks
being removable from its vehicle-interior-side operating
position so as to be operable outside the motor vehicle.
THE REJECTION
Claims 28 through 38 stand rejected under 35 U.S.C. §
112, first paragraph, “as containing subject matter which was
not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the
inventor(s), at the time the application was filed, had
possession of the claimed invention” (final rejection, Paper
No. 20, page 2). The examiner’s explanation of this rejection
focuses on the joy stick limitations in the claims, to wit:
[i]n regards to claims 28-31, 37, and 38, [and
presumably claims 32 through 36 which depend from
claim 31,] Applicant does not properly disclose the
claimed invention in such a way to enable one
skilled in the art how to make or use it. More
specifically, it is unclear in light of the
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Application No. 09/206,393
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disclosure how the joy sticks optionally control
vehicle movement. The disclosure clearly sets out
the structural location of the joy sticks but fails
to provide how they work.
In regards to claims 28-30 and 37, it is unclear
in light of [the] disclosure how the joy stick
maintains its control function while removed from
the vehicle-interior-side operating position and
operated outside the motor vehicle. The art of
motor vehicles which utilize a joy stick to act as a
control element is old and well known, wherein the
joystick is generally electrical in nature and
connected by wires (as seen in US Patent 5,086,870
to Bolduc). Applicant states that the joy stick is
removed from the interior of the motor vehicle and
used outside the motor vehicle but fails to
[disclose] how the connection between the joy stick
and the controlled device is still in communication
once the joy stick is removed [final rejection,
pages 2 and 3].
Attention is directed to the brief (Paper No. 25) for the
appellants’ argument and to the answer (Paper No. 26) for the
examiner’s response.
DISCUSSION
The examiner’s statement and explanation of the appealed
rejection are inconsonant in that the statement of the
rejection identifies a written description issue while the
explanation of the rejection pertains to enablement matters.
The written description and enablement provisions of 35 U.S.C.
§ 112, first paragraph, are, of course, separate and distinct.
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Application No. 09/206,393
4
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). For the sake of completeness, we
shall review the rejection as if it were predicated on both.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventors had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
A review of the originally filed disclosure in the
instant application shows that it provides support throughout
for the joy stick limitations recited in the appealed claims.
Thus, it is not evident why this disclosure would not
reasonably convey to the artisan that the appellants had
possession at that time of the subject matter now recited in
these claims.
Insofar as the enablement requirement is concerned, the
dispositive issue is whether the appellants’ disclosure,
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Application No. 09/206,393
5
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 appellants’ invention
without undue experimentation. In re Strahilevitz, 668 F.2d
1229, 1232, 212 USPQ 561, 563-64 (CCPA 1982). In calling into
question the enablement of the appellant's disclosure, the
examiner has the initial burden of advancing acceptable
reasoning inconsistent with enablement. Id.
Although the appellants’ disclosure does not go into
specific detail as to how the joy sticks recited in the
appealed claims function to control the movement of the motor
vehicle, the examiner has not cogently explained why this lack
of detail would have prevented a person of ordinary skill in
the art from making and using the claimed vehicle control
arrangement without undue experimentation. Indeed, U.S.
Patent No. 5,086,870 to Bolduc which is cited in the
explanation of the rejection and U.S. Patent Nos. 5,128,671 to
Thomas, Jr. and 5,249,272 to Stern which are discussed in and
appended to the appellants’ brief ostensibly demonstrate that
the joy stick limitations in the claims relate to relatively
simple and straightforward elements that, in and of
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themselves, would have been quite familiar to a person of
ordinary skill in the art.
Hence, the examiner’s 35 U.S.C. § 112, first paragraph,
rejection of claims 28 through 38, whether based on the
written description requirement or the enablement requirement,
or both, is not well founded. Accordingly, we shall not
sustain this rejection.
SUMMARY
The decision of the examiner to reject claims 28 through
38 is reversed.
REVERSED
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Application No. 09/206,393
7
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2001-2021
Application No. 09/206,393
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JAMES F. McKEOWN
EVENSON, McKEOWN, EDWARDS
& LENAHAN
1200 G STREET, N.W.
SUITE 700
WASHINGTON, D.C. 20005
GJH
Appeal No. 2001-2021
Application No. 09/206,393
APJ McQUADE
APJ STAAB
APJ BAHR
REVERSED
HEARD: 3 MEMBER CONFERENCE
November 13, 2002