Ex Parte Nelson

Board of Patent Appeals and Interferences

Jun 23, 2003

09687894 (B.P.A.I. Jun. 23, 2003)

The opinion in support of the decision entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID C. NELSON
____________
Appeal No. 2003-0503
Application No. 09/687,894
____________
HEARD: JUNE 10, 2003
____________
Before ABRAMS, STAAB, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final rejection of claims 1 and
3-15, all the claims currently pending in the application.
Appellant’s invention pertains to a balloon weight assembly to be tethered to an
inflated balloon in restraint thereof, and more particularly to a balloon weight assembly
adapted to provide ballast in various amounts (specification, page 1). A further
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1Claims 3-7 depend, either directly or indirectly, from canceled claim 2, the result
of an apparent oversight by appellant during prosecution. Since it appears that
appellant intended claims 3-5 to depend from claim 1, for purposes of this appeal we
will assume this to be the case. Nonetheless, this informality should be corrected upon
return of this application to the Technology Center.
understanding of the invention can be derived from a reading of exemplary claims 1, 10
and 15 which appear in Appendix A to appellant’s main brief.
The references relied upon by the examiner in support of rejections under 35
U.S.C. § 102 and 35 U.S.C. § 103 are:
Metz 5,074,510 Dec. 24, 1991
Gorczyca 6,234,934 May 22, 2001
(filed Jul. 8, 1999)
The following rejections are before us for review:1
(1) Claims 1 and 3-15, rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
(2) Claims 1, 4 and 8-12, rejected under 35 U.S.C. § 102(b) as being anticipated by
Metz.
(3) Claims 3, 5-7, 13 and 14, rejected under 35 U.S.C. § 103(a) as being
unpatentable over Metz.
(4) Claim 15, rejected under 35 U.S.C. § 102(e) as being anticipated by Gorczyca.
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Reference is made to appellant’s main and reply briefs (Paper Nos. 10 and 13) and
to the examiner’s final rejection and answer (Paper Nos. 5 and 11) for the respective
positions of appellant and the examiner regarding the merits of these rejections.
Discussion
Rejection (1)
The test for compliance with the second paragraph of 35 U.S.C. § 112 is “whether
the claim language, when read by a person of ordinary skill in the art in light of the
specification, describes the subject matter with sufficient precision that the bounds of the
claimed subject matter are distinct.” In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471,
476 (CCPA 1975). In other words, does a claim reasonably apprise those of skill in the art
of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The focus in regard to compliance with the requirement for definiteness of 35
U.S.C. § 112, second paragraph, should be whether the claims meet the threshold
requirements of clarity and precision (i.e., they define the metes and bounds of a claimed
invention with a reasonable degree of precision and particularity), 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. Moreover, the circumstance that a claim is broad
does not automatically render the claim indefinite. See, for example, In re Miller, 441 F.2d
689, 693, 169 USPQ 597, 600 (CCPA 1971).
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2In light of the position taken by the examiner in rejecting the appealed claims
under 35 U.S.C. § 112, second paragraph, it is not clear why appellant’s amendment
submitted May 9, 2002 (Paper No. 6) offering to clarify the claim language was denied
entry.
In rejecting the appealed claims under the second paragraph of 35 U.S.C. § 112,
the examiner states that claim 1 is indefinite “because the phrase ‘said ballast member
being sized to create an interference fit with said cavity’ is inaccurate” (final rejection, page
2). Although not expressly stated, it would appear that the examiner’s criticism of claim 1
also applies to the terminology of independent claim 10 that the ballast member includes a
weighted member “sized to create an interference fit within the cavity,” and to the
terminology of independent claim 15 that each ballast member is “capable of directly
attaching to said cavity.” We understand the examiner’s position in this regard to be that
the independent claims on appeal do not satisfy the requirement of the second paragraph
of 35 U.S.C. § 112 for definiteness because a “cavity” is an unfilled space within a mass
without any surrounding structure and, strictly speaking, a “cavity” (i.e., unfilled space)
cannot have an inference fit with another structure.2
Our difficulty with the examiner’s position is that it does not take into account that
claim language must be read in light of the supporting specification, and that claim
language need only be of such precision to reasonably apprise those of skill in the art of
the claim’s bounds. In the present instance, we think that a person of ordinary skill in the
art would understand appellant’s claim language, when read in light of the specification, as
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calling for the ballast member to be sized to create an interference fit (claims 1 and 10), or
direct attachment (claim 15), with some part of the material of the body portion that
defines the cavity therein. In our view, the examiner’s position to the contrary is simply not
reasonable.
In light of the above, we will not sustain the examiner’s rejection of claims 1 and 3-
15 under 35 U.S.C. § 112, second paragraph.
Rejection (2)
Claim 1 calls for a ballast member that is separate and distinct from the body
portion, receivable within the cavity of body portion, and sized to create an interference fit
with the cavity of the body portion. The examiner contends that the closure member 52 in
the Figures 14-16 embodiment of Metz meets these requirements. Appellant does not
appear to dispute the examiner’s position that closure member 52 of Metz is separate and
distinct from the balloon holder 50, and receivable within the cavity formed in the
underside of the balloon holder 50. Appellant also does not appear to dispute the
examiner’s position that closure member 52 is sized to create an interference fit with a wall
portion of the cavity of the balloon holder by virtue of the cooperation of pins 57 of the
closure member with bosses 56 of the balloon holder. Instead, appellant argues that the
examiner erred in the first instance in considering closure member 52 of Metz to be a
ballast member. More particularly, appellant argues that the examiner has
mischaracterized what is taught by Metz, that the examiner’s analysis of Metz is hindsight
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3Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
4Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.
Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
driven and not a fair reading of the Metz patent, that the examiner has failed to appreciate
that appellant may be his own lexicographer in defining what constitutes a “ballast” as
presently claimed, and that Metz does not teach that closure member 52 functions as a
ballast member. It is thus apparent that the dispositive issue in regard to the examiner’s
anticipation rejection of claim 1 is whether closure member 52 of Metz may be regarded
as a “ballast member” within the meaning of that term as used in appellant’s claims.
It is true that the disclosed purpose of appellant’s ballast member is to
counterbalance the “lift” of an associated balloon (specification, page 3, lines 24-28), and
that the closure member 52 of Metz is disclosed as being for the purpose of containing
sand within the cavity formed by the balloon holder 50 and the closure member. However,
anticipation by a prior art reference does not require either the inventive concept of the
claimed subject matter or recognition of inherent properties that may be possessed by the
reference3 or that the reference teach what the applicant is claiming, but only that the
claim on appeal “read on” something disclosed in the reference, i.e., all limitations of the
claim are found in the reference.4 Moreover, in proceeding before it, the Patent and
Trademark Office applies to the verbiage of claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of ordinary skill in
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5In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
the art, taking into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in appellant’s specification.5
This guidance from our reviewing court provides the basis upon which we can
agree the examiner that the “ballast member” terminology of claim 1 “reads on” the closure
member 52 of Metz. More particularly, while appellant’s arguments imply that the
specification provides a definition of the term “ballast,” appellant has not pointed out, and it
is not apparent to us, where such definition is to be found. Instead, appellant’s
specification states at the bottom of page 2 that the ballast member disclosed by appellant
“simply provides additional downforce or weight to the balloon weight 10.” In that the
closure member 52 of Metz necessarily has mass, it unquestionably provides at least
some additional downforce or weight to the balloon holder 50. Hence, closure member 52
of Metz inherently acts, at least to some degree, as a “ballast member” within the broad
meaning of that term as used by appellant. This is sufficient to anticipate claim 1,
notwithstanding appellant’s arguments to the contrary that Metz does not “teach” the
claimed invention.
For these reasons, we will sustain the examiner’s anticipation rejection of claim 1.
We also will sustain the examiner’s anticipation rejection of claims 4 and 8-12, since
appellant has not argued these claims with any reasonable degree of specificity, thereby
allowing these claims to fall with claim 1. See In re Nielson, 816 F.2d 1567, 1570, 2
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USPQ2d 1525, 1528 (Fed. Cir. 1987) and In re Burckel, 592 F.2d 1175, 1178-79, 201
USPQ 67, 70 (CCPA 1979).
Rejection (3)
With regard to the examiner’s rejection of dependent claims 3, 5-7, 13 and 14 as
being unpatentable over Metz, appellant does not expressly challenge the examiner’s
findings of fact and conclusions of obviousness regarding these dependent claims as set
forth on page 4 of the final rejection. In fact, appellant does not contend that these
dependent claims recite any additional distinctions over Metz beyond those allegedly
found in the base claims from which they depend. Instead, appellant is content with
asserting on page 9 of the main brief that these dependent claims are patentable based
on their dependency on base claims 1 or 10, whose patentability was argued earlier in the
main brief. Such an argument is not tantamount to an argument that these dependent
claims are patentable separately of the claims from which they depend. In short, appellant
has failed to separately argue the patentability of these dependent claims with any
reasonable specificity. They therefore fall with base claims 1 and 10. See In re Nielson,
816 F.2d at 1570, 2 USPQ2d at 1528 and In re Burckel, 592 F.2d at 1178-79, 201 USPQ
at 70.
Rejection (4)
We will not sustain the standing rejection of claim 15 as being anticipated by
Gorczyca. Claim 15 requires, among other things, that each of the plurality of weighted
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ballast members is capable of “directly attaching” to the cavity defined within the body
portion. In Gorczyca, weights 17 are either placed on the tray (see Figures 1, 2, 5 and 6)
or in the box (see Figure 4) suspended from the end of the line 13 (col. 5, lines 60-61).
Merely placing a weight on (or in) a support, as disclosed by Gorczyca, is not the same as
“directly attaching” a weight to a support as called for in appellant’s claim 15. The claim
limitation “directly attaching” requires the weight to be fastened or affixed to the support.
The loosely fitted or supported weights of Gorczyca are simply not secured to their
supports in the manner required by the claim. The circumstance that Gorczyca’s tray-like
supports (Figures 1, 2, 5 and 6) include rims 24 and channels 29 for cooperating with the
weights to make it less likely that they will fall off the supports does not change our view in
this regard.
Accordingly, the rejection of claim 15 as being anticipated by Gorczyca cannot be
sustained.
Summary
The rejection of claims 1 and 3-15 under 35 U.S.C. § 112, second paragraph, is
reversed.
The rejection of claims 1, 4 and 8-12 as being anticipated by Metz is affirmed.
The rejection of claims 3, 5-7, 13 and 14 as being unpatentable over Metz is
affirmed.
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The rejection of claim 15 as being anticipated by Gorczyca is reversed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a)
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/da1
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Ray L Weber
Renner Kenner Greive Bobak Taylor & Weber
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