Ex parte ONO

Board of Patent Appeals and Interferences

May 15, 1998

08026504 (B.P.A.I. May. 15, 1998)

Attorney docket no. A29339.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KUNIAKI ONO
____________
Appeal No. 95-2783
Application 08/026,5041
____________
HEARD: 5 May 1998
____________
Before HAIRSTON, TORCZON, and CARMICHAEL, Administrative Patent
Judges.
TORCZON, Administrative Patent Judge.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FINDINGS OF FACT
We have reviewed the record in its entirety in light of the
arguments of Appellant and the examiner. Our decision presumes
familiarity with the entire record. A preponderance of the
evidence of record supports each of the following fact findings.
A. The nature of the case
1. This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-5. (Paper 12 (Not. App.).) No other
Appeal No. 95-2783 Page 2
Application 08/026,504
claims are pending. (Paper 7 at 1.) We affirm subject to a
statement pursuant to 37 CFR § 1.196(c).
2. The application on appeal was filed on 4 March 1993.
(Paper 1 at 1.) Appellant claims the benefit of Japanese kokai
Hei4-070863. (Paper 1, Comb. Decl.; Paper 2.) Fuji Photo
Optical K.K. is the real party in interest.
3. The application is entitled "Zoom lens optical system".
The subject matter of the invention "relates to a zoom lens
optical system provided with an optical path splitting means for
splitting a light beam, which has passed through a negative film,
into light beams following optical paths heading towards a
printing section and a photometric section." (Paper 1 at 1.) In
particular, the specification details a
zoom lens optical system [that] satisfies the
conditions
1.2 fw < f1 < 2.4 fw ... (1)
0.4 fw < f3/f2 < 0.8 fw ... (2)
where fw is a number equal to the minimum focal length
of the whole system in millimeters, f1 represents the
composite focal length of the first-lens set, f2
represents the composite focal length of the second-
lens set, and f3 represents the composite focal length
of the third-lens set.
(Paper 1 at 3-4 (amendments included).) For the appeal,
Appellant has amended claim 1 to state formula (2) in words as
follows:
. . . wherein the zoom lens optical system
satisfies the conditions
Appeal No. 95-2783 Page 3
Application 08/026,504
1.2 fw < f1 < 2.4 fw ... (1)
[0.4 fw < f3/f2 < 0.8 fw ... (2)]
and the ratio of f3 to f2 is between 0.4 and 0.8 times
fw, . . .
(Unnumbered paper (Subst. Amdt. After Final) at 1-2, filed 22
Sep. 1994.)
B. The rejection
4. There is no reference-based rejection before us.
Instead, the examiner has rejected the claims under section 112.
Specifically, the examiner finally rejected claim 1 as vague and
indefinite because
the equation -- 0.4 fw < f3/f2 < 0.8 fw -- does not
make sense because [if] fw, f2, [and] f3 are in
millimeters then the first and the third expression[s]
are in millimeters; meanwhile, the second expression
(f3/f2) is dimensionless since (millimeters/milli-
meters) is dimensionless. Therefore, they are of
incomparable units.
(Paper 7 at 2.) On appeal, the examiner has also rejected
claim 1 for lack of an enabling disclosure for the same reason
that the examiner considers it indefinite. (Paper 14 at 4.)
5. Claims 2-5 depend from, and thus share the defect and
the rejection of, claim 1.
6. The Appellant argues (Paper 15 (Reply) at 2), and we
agree, that the basis for the new ground of rejection is
essentially the same as the basis for the indefiniteness
rejection.
7. We find that the examiner is technically correct that
formula (2) as written and claimed does not make sense. The
Appeal No. 95-2783 Page 4
Application 08/026,504
after-final amendment does not solve the problem or improve the
clarity of the claim.
CONCLUSIONS OF LAW
A. Indefiniteness
1. Claims must reasonably apprise those skilled in the art
both of the use and the scope of the invention, and their
language must be as precise as the subject matter permits.
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613,
624, 225 USPQ 634, 641 (Fed. Cir. 1985). An examiner must permit
applicants wide latitude in claiming subject matter as they see
fit, but the examiner must work to ensure that claims are as
clear and precise as possible.
2. In the case before us, it seems unlikely that one
skilled in the art would miss Appellant's intent. At the same
time, neither Appellant nor the examiner were able to arrive at
language that would eliminate the technical inaccuracy.
Consequently, the claims are not as precise as the subject matter
allows.
3. At the hearing, we discussed the following formulation
with counsel for Appellant:
0.4 fw/mm < f3/f2 < 0.8 fw/mm
where the first and third terms are divided by millimeters, the
unit for fw, so that all of the expressions are now
Appeal No. 95-2783 Page 5
Application 08/026,504
dimensionless. Counsel indicated to us that this formulation
would be acceptable. Unfortunately, procedurally the only way we
can ensure entry of this amendment is to affirm the rejection
with a statement pursuant to Rule 196(c).
4. In affirming this rejection, we do not mean to indicate
satisfaction with the way prosecution was handled below. This
appeal was unnecessary, will burden the public with a later
termination date for the resulting patent, has cost Appellant and
other applicants (who subsidize most of the cost of each appeal)
a considerable sum, and has contributed to the Board's backlog.
This is not the way the system is intended to work. This result
could have been avoided if the examiner and Appellant had worked
together instead of digging into their respective positions. In
particular, the Manual of Patent Examining Procedure recommends a
practice that would have avoided this appeal:
Examiners are encouraged to suggest claim language to
applicants to improve the clarity or precision of the
language used, but should not reject claims or insist
on their own preferences if other modes of expression
selected by applicants satisfy the statutory
requirement.
MPEP § 2173.02. Once it became apparent that Appellant did not
understand the point of the rejection, the examiner should have
helped out by offering acceptable language. The fact that the
examiner was able to apply prior art against claim 1 (Paper 4
at 3) strongly suggests that the examiner understood what
Appellant meant to claim. See MPEP § 2173.06.
Appeal No. 95-2783 Page 6
Application 08/026,504
B. Enablement
5. Since our affirmance of the indefiniteness rejection
disposes of all claims on appeal, we need not separately reach
the merits of the enablement rejection. Moreover, the stated
Rule 196(c) amendment will cure the problem underlying this
rejection.
DECISION AND RULE 196(c) STATEMENT
The examiner's rejection of claims 1-5 under section 112 as
indefinite is affirmed. Claims 1-5 may be allowed if claim 1 is
amended to recite the formula (2) element as follows:
"0.4 fw/mm < f3/f2 < 0.8 fw/mm".
We set a time period in which Appellant may file an amendment for
the purpose stated in section 1.196(c) to expire two months from
the date of this decision. No time period for taking subsequent
Appeal No. 95-2783 Page 7
Application 08/026,504
action in connection with this appeal may be extended under
37 CFR § 1.136(a). 37 CFR § 1.136(b).
AFFIRMED; RULE 196(c)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 95-2783 Page 8
Application 08/026,504
BRUMBAUGH, GRAVES, DONOHUE & RAYMOND
30 ROCKEFELLER PLAZA
NEW YORK NY 10112