Ex parte Nakamats

Board of Patent Appeals and Interferences

Mar 11, 1999

08226520 (B.P.A.I. Mar. 11, 1999)

Application for patent filed April 12, 1994. 1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YOSHIRO NAKAMATS
____________
Appeal No. 97-4252
Application No. 08/226,5201
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4, 5, 7, 8, 15 and 17. Claims 2, 3, 6,
9 to 14, 16, 18 and 20 have been withdrawn from consideration
under 37 CFR § 1.142(b) as being drawn to a nonelected
invention. Claims 19 and 21 have been canceled.
Appeal No. 97-4252
Application No. 08/226,520
We AFFIRM.
Appeal No. 97-4252 Page 3
Application No. 08/226,520
BACKGROUND
The appellant's invention relates to a display apparatus.
A copy of the claims under appeal appears in the appendix to
the appellant's brief.
Claims 1, 4, 5, 7, 8, 15 and 17 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to adequately
teach how to make and/or use the invention, i.e., failing to
provide an enabling disclosure.
Claims 1, 4, 5, 7, 8, 15 and 17 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 final rejection (Paper
No. 12, mailed July 11, 1996) and the supplemental examiner's
answer (Paper No. 26, mailed July 28, 1998) for the examiner's
complete reasoning in support of the rejections, and to the
Appeal No. 97-4252 Page 4
Application No. 08/226,520
appellant's brief (Paper No. 17, filed March 20, 1997) and
reply brief (Paper No. 21, filed August 28, 1997) 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
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
It is appropriate to review the rejection under the
second paragraph of 35 U.S.C. § 112 before we review the
rejection under the first paragraph of 35 U.S.C. § 112 because
the analysis of the claims under the first paragraph of 35
U.S.C.
§ 112 requires one to have determined exactly what subject
matter the claims encompass under the second paragraph of
35 U.S.C. § 112. See In re Moore, 439 F.2d 1232, 169 USPQ
236, 238 (CCPA 1971).
Appeal No. 97-4252 Page 5
Application No. 08/226,520
The indefiniteness rejection
We sustain the rejection of claims 1, 4, 5, 7, 8, 15 and
17 under 35 U.S.C. § 112, second paragraph.
The examiner determined (final rejection, pp. 2-3) that
the claims under appeal were indefinite because
[i]t is unclear what specific structure comprises the
lighting control means. It is unclear from the
specification and/or drawings how the lighting control
means selectively lights individual respective one of the
luminous devices at predetermined discrete positions of
the luminous devices within a swing are [sic, arc].
The appellant contested (reply brief, pp. 7-8) the
examiner's determination that it was unclear how the lighting
control means selectively lights individual respective one of
the luminous devices at predetermined discrete positions of
the luminous devices within a swing arc. In fact, the
appellant believed that this issue mirrored the rejection made
under the first paragraph of 35 U.S.C. § 112.
We agree with the appellant that the issue of how the
lighting control means selectively lights individual
respective one of the luminous devices at predetermined
Appeal No. 97-4252 Page 6
Application No. 08/226,520
discrete positions of the luminous devices within a swing arc
is an issue under the first paragraph of 35 U.S.C. § 112.
Thus, the remaining issue is whether the claims under
appeal are indefinite for being unclear as to what specific
structure comprises the lighting control means. As to this
issue, the appellant has not contested the examiner's
determination. Accordingly, we are constrained to sustain the
rejection under
35 U.S.C. § 112, second paragraph, because the appellant has
not pointed out how the examiner erred in rejecting the claims
under appeal.
Moreover, we note that the court in In re Donaldson, 16
F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) agreed
with the general principle espoused in In re Lundberg, 244
F.2d 543, 547-48, 113 USPQ 530, 534 (CCPA 1957), that the
sixth paragraph of section 112 does not exempt an applicant
from the requirements of the first two paragraphs of that
section. Although paragraph six statutorily provides that one
may use means-plus-function language in a claim, one is still
Appeal No. 97-4252 Page 7
Application No. 08/226,520
subject to the requirement that a claim "particularly point
out and distinctly claim" the invention. Therefore, if one
employs means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure showing what
is meant by that language. If an applicant fails to set forth
an adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as
required by the second paragraph of section 112. Thus, it is
our view that the examiner had a legitimate rationale for
questioning what specific structure comprises the claimed
lighting control means which includes the claimed self-
contained detection means.
For the reasons stated above, the decision of the
examiner to reject claims 1, 4, 5, 7, 8, 15 and 17 under 35
U.S.C. § 112, second paragraph, is affirmed.
The enablement rejection
We will not sustain the rejection of claims 1, 4, 5, 7,
8, 15 and 17 under 35 U.S.C. § 112, first paragraph.
Appeal No. 97-4252 Page 8
Application No. 08/226,520
Claims 15 and 17
While we might speculate as to what is meant by the claim
language, our uncertainty provides us with no proper basis for
making the enablement determination that we are obliged to do.
Enablement rejections under 35 U.S.C. § 112, first paragraph,
should not be based upon considerable speculation as to the
meaning of the terms employed and assumptions as to the scope
of the claims. See In re Moore, supra. Cf. In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) and In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). In
that regard, we note that claims 15 and 17 add to parent claim
1 details as to the structure of the lighting control means.
However, such details are confusing to us in that the
structure recited in claims 15 and 17 appears to be better
characterized as being the "self-contained detection means" of
claim 1 rather than the "lighting control means" of claim 1.
We are sufficiently unsure as to the scope of claims 15 and 17
that we consider it appropriate to reverse, pro forma, the
examiner's rejection of claims 15 and 17 under 35 U.S.C. §
112, first paragraph.
Appeal No. 97-4252 Page 9
Application No. 08/226,520
Claims 1, 4, 5, 7 and 8
As pointed above, when substantial confusion exists as to
the interpretation of a claim and no reasonably definite
meaning can be ascribed to the terms in a claim, a
determination as to patentability under 35 U.S.C. § 112, first
paragraph, would not be made. However, in this instance, with
respect to claims 1, 4, 5, 7 and 8 we consider it to be
desirable to avoid the inefficiency of piecemeal appellate
review. See Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984).
For the purposes of this appeal, we construe appellant's
claimed "lighting control means" as covering at least the
specie of Figure 2 (e.g., battery 6, switch 11 and electric
circuits 5 and 5') or the specie of Figure 7 (e.g., a servo-
motor and circuitry described in the paragraph bridging pages
8 and 9) and equivalents thereof.
The examiner determined (final rejection, p. 2) that the
claims under appeal were nonenabled because
[t]he applicant does not specifically teach how the
circuitry 5 and 5' and/or the specifics of the hanging
weight or gyro controls the lighting of the plurality of
luminous devices 2 according to the time T and/or the
Appeal No. 97-4252 Page 10
Application No. 08/226,520
position of the luminous devices as recited on page 4,
line [sic, lines] 18-22 and page 5, lines 1-7.
The appellant argues (brief, pp. 6-13, reply brief, pp.
2-7) that
[t]he rejection is in error because the specification
presents a sufficient disclosure to so enable one of
ordinary skill in the art to practice the invention
without undue experimentation.
We agree with the appellant.
An analysis of whether claims 1, 4, 5, 7 and 8 are
supported by an enabling disclosure requires a determination
of whether that disclosure contained sufficient information
regarding the subject matter of claims 1, 4, 5, 7 and 8 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).
Appeal No. 97-4252 Page 11
Application No. 08/226,520
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
Appeal No. 97-4252 Page 12
Application No. 08/226,520
Factors to be considered in determining whether a2
disclosure would require undue experimentation include (1) the
quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence
of working examples, (4) 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. See In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
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 his burden of proof by advancing
acceptable reasoning inconsistent with enablement. This the
examiner has not done. Moreover, it is clear to us that2
Appeal No. 97-4252 Page 13
Application No. 08/226,520
claims 1, 4, 5, 7 and 8 are enabled by the specie of Figure 7,
described in the paragraph bridging pages 8 and 9. In that
regard, the appellant clearly teaches that a servo-motor is
operable to detect angle and position of the bar 1 and that
the luminous devices are lit according to the circuitry 5.
While the exact details of the circuitry 5 have not been
disclosed, the examiner has not presented any reasoning why
one skilled in the art would have been unable to design the
required circuitry from the appellant's disclosure coupled
with information known in the art without undue
experimentation.
For the reasons stated above, the decision of the
examiner to reject claims 1, 4, 5, 7 and 8 under 35 U.S.C. §
112, first paragraph, is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 4, 5, 7, 8, 15 and 17 under 35 U.S.C. § 112, second
paragraph, is affirmed and the decision of the examiner to
Appeal No. 97-4252 Page 14
Application No. 08/226,520
reject claims 1, 4, 5, 7, 8, 15 and 17 under 35 U.S.C. § 112,
first paragraph, is reversed.
Since at least one rejection of each of the appealed
claims has been affirmed, the decision of the examiner is
affirmed.
Appeal No. 97-4252 Page 15
Application No. 08/226,520
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
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 97-4252 Page 16
Application No. 08/226,520
JORDAN & HAMBURG
122 EAST 42ND STREET
NEW YORK, NY 10168
APPEAL NO. 97-4252 - JUDGE NASE
APPLICATION NO. 08/226,520
APJ NASE
APJ STAAB
APJ COHEN
DECISION: AFFIRMED
Prepared By: Gloria Henderson
DRAFT TYPED: 01 Mar 99
FINAL TYPED: