Ex Parte Oberheim

Patent Trial and Appeal Board

Oct 23, 2012

11803762 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/803,762 05/16/2007 Stephen C. Oberheim 0212.78271 7173
24978 7590 10/23/2012
GREER, BURNS & CRAIN
300 S WACKER DR
25TH FLOOR
CHICAGO, IL 60606
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
10/23/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN C. OBERHEIM
____________

Appeal 2010-009767
Application 11/803,762
Technology Center 3700
____________

Before LINDA E. HORNER, PATRICK R. SCANLON and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

O’HEARN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Stephen C. Oberheim (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3-5, 8, 9, 11 and 12
under 35 U.S.C. §112, first paragraph, for lack of a written description.
Claims 2, 6, 7 and 10 were cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appeal 2010-009767
Application 11/803,762

2

THE INVENTION
Appellant’s claimed invention relates to a table saw having a
measurement and display system for positioning a fence that is used to guide
the piece of wood that is being cut. Spec. 3. The Specification discloses
several different alternative embodiments. Claims 1 and 12 are independent.
Claim 1, reproduced below, is representative of the subject matter on appeal
and the disputed language is highlighted in italics.
1. A table saw having a main table top surface and a saw
blade that is at least partially extendable above the top surface,
said table saw comprising:
a fence rail located on the front of said saw and having a
table top extension that abuts said main table top and at least
one table extension rail, said table top extension being
connected to the fence rail, the fence rail being slidably
attached to said table extension rail so that said table top
extension can be separated from said main table top to increase
the effective area of the top surface of said table saw;
a removable fence that is laterally adjustable relative to
the blade of the saw along said fence rail;
a separate display rail vertically spaced apart from but
extending parallel to said fence rail and being connected thereto
at opposite end portions of said fence rail;
a sensor strip positioned generally parallel to the fence
rail on said display rail, said sensor strip configured to provide
digital signals that are indicative of specific positions along the
length thereof;
a sensing unit movable along said sensor strip and
operatively connected to the fence, said sensing unit generating
signals indicative of the specific lateral position of the fence;
at least one switch operatively connected to a processing
unit for establishing one of two reference positions when
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Application 11/803,762

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selectively activated, one of said reference positions indicating
said table top extension is fully separated from said main table
top and the other reference position indicating said table top
extension is unseparated from said main table top;
a processing unit connected to said sensing unit for
receiving said position indicating signals and for calculating the
distance between said fence and one of said reference positions
and for generating display signals indicative of said calculated
distance; and
a display unit electrically connected to said processing
unit configured to receive change display signals and provide a
digital display of said calculated distance;
said display unit being slidable along said display rail and
being mechanically and electrically connected to said sensing
unit and said processing unit, said sensing unit and processing
unit being operable to determine said calculated distance based
upon said switch being selectively activated to establish when
said table top extension is fully separated from said main table
top and when it is unseparated.

THE REJECTION
Claims 1 and 12 are the only independent claims. Both include a
clause like the one italicized above which associates a reference position
switch with a table top extension.
The Examiner rejected these claims under 35 U.S.C. § 112, first
paragraph, finding that this recited subject matter was not described in the
Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor, at the time the application was filed, had
possession of the claimed invention.
Appeal 2010-009767
Application 11/803,762

4

ISSUE
Appellant argues that the position of the extension table shown in the
embodiment illustrated in Figures 1 and 2 could be made to cooperate with
the movement of the sensing rail shown in the different embodiment
illustrated in Figures 7 and 8. App. Br. 11–13. Appellant relies on the
Figures and the portions of the Specification that describe these
embodiments as support for this argument.
The Examiner responds that nothing in the Specification sets forth the
interoperability of the green and red reference positions and switches with
the position of the table top extension. Ans. 3-4. The Examiner also
observes that other features of the embodiments shown in Figures 1 and 2
and in the different embodiment shown in Figures 8 and 9 make it
impossible to combine those features in the way that is stated in the disputed
claim language. Ans. 7.
In the Reply Brief, Appellant concludes that “one skilled in the art
would understand the construction and functional operability of this
invention.” Reply Br. A–5.
Was the Examiner incorrect in the determination that the original
Specification and Drawings did not show that the Appellant had possession
of the invention recited in the claims and therefore did not meet the written
description requirement of Section 112?

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Application 11/803,762

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ANALYSIS
To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification to satisfy the written description requirement. Id. at 1352.
“[T]he written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
We agree with the Examiner that there is no disclosure in the
Appellant’s Specification and Drawings which shows that the inventor had
possession of the invention recited in the claims. We find no disclosure that
explains an operable relationship between the “reference positions” recited
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Application 11/803,762

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in the claims and the “fully separated” or “unseparated” condition of the
table top extension. Accordingly, we sustain the rejection of claims 1, 3-5,
8, 9, 11, and 12 under 35 U.S.C. § 112, first paragraph.
Appellant asks us to review the Examiner’s objections to the
drawings. App. Br. 10-11. That issue is reviewable by petition under 37
C.F.R. § 1.181, and is not within the jurisdiction of the Board. In re
Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of Patent Examining
Procedure (MPEP) §§ 706.01, 1002, and 1201.
CONCLUSION
The Examiner correctly determined that the original Specification and
Drawings did not show that the Appellant had possession of the invention
recited in the claims and therefore did not meet the written description
requirement of Section 112.
DECISION
The Examiner’s rejection of claims 1, 3-5, 8, 9, 11 and 12 under 35
U.S.C. § 112, first paragraph, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED.

mls