Ex parte Nayak

Board of Patent Appeals and Interferences

Mar 29, 1999

08596538 (B.P.A.I. Mar. 29, 1999)

Application for patent filed February 5, 1996. 1
Claims 1 and 17 were amended subsequent to the final2
rejection.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ASHOK B. NAYAK
____________
Appeal No. 1998-1798
Application No. 08/596,5381
____________
ON BRIEF
____________
Before ABRAMS, NASE, and GONZALES, 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 to 9, 17, 19 and 20, which are all of
the claims pending in this application.2
Appeal No. 1998-1798
Application No. 08/596,538
We REVERSE.
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Application No. 08/596,538
BACKGROUND
The appellant's invention relates to a tape moving
mechanism using a direct drive motor. A copy of the claims
under appeal appears in the appendix to the appellant's reply
brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Ohkubo et al. (Ohkubo) 5,272,579 Dec. 21,
1993
Claims 1 to 9, 17, 19 and 20 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.
Claims 1 to 9, 17, 19 and 20 stand rejected under 35
U.S.C. § 103 as being unpatentable over Ohkubo.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
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Application No. 08/596,538
rejections, we make reference to the final rejection (Paper
No. 7, mailed June 13, 1997) and the examiner's answer (Paper
No. 10, mailed January 21, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 9, filed November 17, 1997) and reply brief
(Paper No. 11, filed March 16, 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, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We will not sustain the rejection of claims 1 to 9, 17,
19 and 20 under 35 U.S.C. § 112, second paragraph.
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Application No. 08/596,538
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
The examiner stated (final rejection, pp. 2-3) that
[t]he claims reciting the following functions/functional
languages lack recitation of sufficient
structures/elements and/or necessary structural
cooperation between the structures/elements to enable the
functions to be effected: "is thereby rotatably driven
... motor" (claim 1, last two lines) . . . "whereby ...
cartridge" (claim 17, last three lines).
The appellant argues (brief, pp. 6-8 and reply brief, pp.
2-4) that claims 1 and 17 comply with the requirements of
35 U.S.C. § 112, second paragraph. In addition, the appellant
argues that the examiner has not provided a basis in fact
and/or cogent technical reasoning to support a legal
conclusion of indefiniteness. We agree.
In our view, claims 1 and 17 define the metes and bounds
of the claimed invention with a reasonable degree of precision
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Application No. 08/596,538
and particularity. Specifically, we find the functional
language set forth in the wherein clause of claim 1 and the
whereby clause of claim 17 to be definite. In making this
determination, the definiteness of the language employed in
the claims must be analyzed, not in a vacuum, but 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.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977).
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 can be determined from the
language of the claims with a reasonable degree of certainty,
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Application No. 08/596,538
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
Furthermore, the appellant may use functional language,
alternative expressions, negative limitations, or any style of
expression or format of claim which makes clear the boundaries
of the subject matter for which protection is sought. As
noted by the Court in In re Swinehart, 439 F.2d 210, 160 USPQ
226 (CCPA 1971), a claim may not be rejected solely because of
the type of language used to define the subject matter for
which patent protection is sought.
For the reasons stated above, claims 1 and 17 are
considered by us to be definite, as required by the second
paragraph of
35 U.S.C. § 112. Accordingly, the decision of the examiner to
reject claims 1 to 9, 17, 19 and 20 under 35 U.S.C. § 112,
second paragraph, is reversed.
The obviousness issues
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Application No. 08/596,538
We will not sustain the rejection of claims 1 to 9, 17,
19 and 20 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established when the teachings of the prior art
itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). In
considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, we are guided
by the basic principle that the question under 35 U.S.C. § 103
is not merely what the references expressly teach but what
they would have suggested to one of ordinary skill in the art
at the time the invention was made. See Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989) and In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). When it is necessary to
select elements of various teachings in order to form the
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Application No. 08/596,538
claimed invention, we ascertain whether there is any
suggestion or motivation in the prior art to make the
selection made by the appellant. That is, something in the
prior art as a whole must suggest the desirability, and thus
the obviousness, of making the modification. See In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992); Lindemann Maschinenfabrik GmbH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Ohkubo discloses a tape drive apparatus 100 for driving a
drive roller 9 in a data cartridge 5 that advances tape 11 in
the tape cartridge. As shown in Figures 5 and 6, the tape
drive apparatus 100 includes a movable base member 24 arranged
to pivot about shaft 36 in a direction generally opposite to a
direction of insertion of the data cartridge 5 in the tape
drive apparatus 100; a motor 23 mounted to the movable base
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Application No. 08/596,538
member 24 and having a rotatable outer rotor 27; and a roller
member 35 mounted on and around the outer rotor 27 of the
motor 23. The movable base member 24 and motor 23 are
positioned within the tape drive apparatus 100 such that when
the drive roller 9 of the data cartridge 5 has been inserted
into the tape drive apparatus 100, the drive roller 9 directly
contacts and bears upon the roller member 35 and is thereby
driven rotatably by the motor 23 upon rotation of the rotor 27
of the motor 23.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Ohkubo and claims 1
and 17 (the independent claims on appeal), it is our opinion
that the only differences are: (1) claim 1 recites that the
movable plate is arranged "to move in a linear direction
parallel to a direction of insertion of the tape cartridge in
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Application No. 08/596,538
the tape drive;" and (2) claim 17 recites that the motor
"moves in the substantially linear direction with the tape
cartridge."
With regard to these differences, the examiner determined
(answer, p. 4) that to have arranged Ohkubo base member 24 to
move in a linear direction (rather than pivoting about shaft
36) would have been an obvious matter of design choice to a
person having ordinary skill in the art.
The appellant argues (brief, pp. 8-14 and reply brief,
pp. 5-8) that the examiner has not presented a prima facie
case of obviousness. We agree. It is our opinion that the
examiner has not proffered a sufficient factual basis to
support his conclusion of obviousness. In that regard, we
note that the examiner has not presented any evidence that it
was known in the tape drive art (or any analogous art) to
either (1) arrange the drive motor support plate to move in a
linear direction parallel to a direction of insertion of a
tape cartridge in the tape drive as recited in claim 1, or (2)
arrange the motor to move in a substantially linear direction
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Application No. 08/596,538
with the tape cartridge as recited in claim 17. The
conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Rejections based on § 103 must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The
examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
For the reasons stated above, the examiner has not
presented a prima facie case of obviousness with respect to
the claims on appeal. Accordingly, the decision of the
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Application No. 08/596,538
examiner to reject claims 1 to 9, 17, 19 and 20 under 35
U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 9, 17, 19 and 20 under 35 U.S.C. § 112, second
paragraph, is reversed and the decision of the examiner to
reject claims 1 to 9, 17, 19 and 20 under 35 U.S.C. § 103 is
reversed.
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Application No. 08/596,538
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
JVN/gjh
Appeal No. 1998-1798 Page 15
Application No. 08/596,538
MCDERMOTT WILL & EMERY
600 13TH STREET NW
WASHINGTON, DC 20005-3096
APPEAL NO. 1998-1798 - JUDGE NASE
APPLICATION NO. 08/596,538
APJ NASE
APJ GONZALES
APJ ABRAMS
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 17 Mar 99
FINAL TYPED:
PANEL CHANGE (GONZALES FOR COHEN)