Ex parte Oetiker

Board of Patent Appeals and Interferences

Jul 19, 2001

08766212 (B.P.A.I. Jul. 19, 2001)

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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS OETIKER
____________
Appeal No. 2001-0737
Application No. 08/766,212
____________
HEARD: July 11, 2001
____________
Before ABRAMS, McQUADE, 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 to 35, 53 to 55, 62 to 73 and 80 to 95.
Claims 74 to 79 and 96-106 have been withdrawn from
consideration under 37 CFR § 1.142(b) as being drawn to a
nonelected invention. Claims 36 to 52 and 56 to 61 have been
canceled.
We REVERSE.
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Application No. 08/766,212
Page 2
Appeal No. 2001-0737
Application No. 08/766,212
Page 3
BACKGROUND
The appellant's invention relates to a balancing
arrangement (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Oetiker 4,299,012 Nov. 10,
1981
(Oetiker '012)
Oetiker 4,492,004 Jan. 8,
1985
(Oetiker '004)
Claims 1 to 35, 53 to 55, 62 to 73 and 80 to 95 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.
Claim 62 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Oetiker '012.
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Application No. 08/766,212
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Claim 62 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Oetiker '004.
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. 19, mailed December 30, 1999) and the answer (Paper No.
27, mailed October 10, 2000) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 26, filed July 28, 2000) 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 references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 2001-0737
Application No. 08/766,212
Page 5
The indefiniteness rejection
We will not sustain the rejection of claims 1 to 35, 53
to 55, 62 to 73 and 80 to 95 under 35 U.S.C. § 112, second
paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
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. Id.
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.
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Application No. 08/766,212
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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,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
With this as background, we analyze the specific reasons set
forth by the examiner (final rejection, pp. 3-5) for the rejection
under 35 U.S.C. § 112, second paragraph.
The first reason is that it is unclear whether claim 1 and its
dependent claims call for a balancing arrangement per se, or a
combination of a balancing arrangement and a rotating member. We
agree with the appellant (brief, pp. 12-13) that claim 1 is clearly
drawn to a balancing arrangement per se, not the combination of a
balancing arrangement and a rotating member.
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Application No. 08/766,212
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1 Claims 75 and 78 are not subject to this rejection and
have been withdrawn from consideration.
The second reason is that it is unclear whether claim 62 and
its dependent claims call for a clamp structure per se, or a
combination of a clamp structure and a counterweight (see e.g., claim
86). We agree with the appellant (brief, pp. 13-14) that claim 62 is
clearly drawn to a clamp structure per se, not the combination of a
clamp structure and a counterweight. Likewise, claim 86 is clearly
drawn to the combination of a clamp structure and a counterweight.
The third reason is that a variety of confusing terms are used
in claims 73, 75 and 78.1 We agree with the appellant (brief, pp.
14-15) that the terms used in claim 73 are not confusing. In fact,
the examiner has not set forth why the terms used in claim 73 are
confusing and/or indefinite.
The fourth reason is that a variety of terms (cited by the
examiner on page 4 of the final rejection) using the suffix
"-like" were indefinite. In our view, those terms using the suffix
"-like" are definite, as required by the second paragraph of 35
U.S.C. § 112, since they define the metes and bounds of the claimed
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Application No. 08/766,212
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invention with a reasonable degree of precision and particularity.
The American Heritage Dictionary, Second College Edition,
(1982) defines the suffix "-like" as meaning "resembling or
characteristic of." Thus, for example, the term "groove-like" means
resembling a groove. The examiner has not explained why the metes
and bounds thereof would not be understood with a reasonable degree
of precision and particularity.
The fifth reason is that the terms "about," "generally,"
"approximately," and "substantially" were indefinite. We agree with
the appellant (brief, pp. 16-23) that the above-noted terms as used
in the claims under appeal are definite as required by the second
paragraph of 35 U.S.C. § 112.
The last reason is that it was unclear what structure performed
the function of the "means for imparting elastic stretchability to
said clamping band means" recited in claim 80. The appellant on page
23 of the brief noted the structure that performed the above-noted
function recited in claim 80 thus complying with the requirement that
a claim "particularly point out and distinctly claim" the invention.
Appeal No. 2001-0737
Application No. 08/766,212
Page 9
2 As explained in In re Donaldson, 16 F.3d 1189, 1193, 29
USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the USPTO is not exempt
from following the statutory mandate of 35 U.S.C. § 112,
(continued...)
For the reasons set forth above, the decision of the examiner
to reject claims 1 to 35, 53 to 55, 62 to 73 and 80 to 95
under 35 U.S.C. § 112, second paragraph, is reversed.
The anticipation rejections
We will not sustain the rejections of claim 62 under
35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
In this case we agree with the appellant (brief, pp. 23-
26) that claim 62 is not anticipated by either Oetiker '012 or
Oetiker '004.2 In that regard, both Oetiker '012 and Oetiker
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Application No. 08/766,212
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2(...continued)
paragraph 6, which reads:
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
The holding in Donaldson sets a limit on how broadly the USPTO
may construe means-plus-function language under the rubric of
"reasonable interpretation." Per Donaldson, the "broadest
reasonable interpretation" that an examiner may give
means-plus-function language is that statutorily mandated in
paragraph six. Accordingly, the PTO may not disregard the
structure disclosed in the specification corresponding to such
language when rendering a patentability determination.
'004 fail to disclose the claimed "means to enable securing of
said counterweight to said clamping band means." Likewise,
both Oetiker '012 and Oetiker '004 fail to disclose the
claimed "means in said clamping band means to increase the
holding ability of the clamp structure and therewith increase
the weight of the counterweight means which can be reliably
secured to the part."
Since all the limitations of claim 62 are not found in
either Oetiker '012 or Oetiker '004, the decision of the
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Application No. 08/766,212
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examiner to reject claim 62 under 35 U.S.C. § 102(b) is
reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 35, 53 to 55, 62 to 73 and 80 to 95 under 35
U.S.C. § 112, second paragraph, is reversed and the decision
of the examiner to reject claim 62 under 35 U.S.C. § 102(b) is
reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0737
Application No. 08/766,212
Page 12
BIRCH STEWART KOLASCH & BIRCH
PO BOX 747
FALLS CHURCH, VA 22040-0747
Appeal No. 2001-0737
Application No. 08/766,212
Page 13
JVN/jg
JENINE GILLIS
APPEAL NO. 2001-0737 - JUDGE NASE
APPLICATION NO. 08/766,212
APJ NASE
APJ ABRAMS
APJ McQUADE
DECISION: REVERSED
PREPARED: Mar 27, 2002
OB/HD
PALM
ACTS 2

DISK (FOIA)
REPORT
HEARD: July 11, 2001