Ex parte Park

Board of Patent Appeals and Interferences

Feb 29, 2000

08313794 (B.P.A.I. Feb. 29, 2000)

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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEUN-YONG PARK
____________
Appeal No. 1997-3856
Application No. 08/313,794
____________
HEARD: February 24, 2000
____________
Before KRASS, JERRY SMITH, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 8 through 17, which are all of the claims
pending in this application.
Appellant's invention relates to a printing apparatus
which prints from a leading edge to a bottom edge of a sheet.
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Application No. 08/313,794
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Claim 8 is illustrative of the claimed invention, and it reads
as follows:
8. A printing apparatus which prints an image on a
sheet by thermally pressing an ink ribbon with a printing
head, said printing apparatus comprising:
a motor;
a driving roller driven by said motor;
a driven roller spaced apart from said driving roller by
a predetermined distance;
a belt wound around said driving roller and said driven
roller;
a head conveyor located above said belt and having a
printing head;
means for conveying said head conveyor; and
means for controlling said head conveyor to cause
printing from a leading edge of a sheet to a bottom edge of
said sheet when said sheet is disposed on said belt.
No prior art references of record are relied upon by the
examiner in rejecting the appealed claims.
Claims 8 through 17 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Reference is made to the Examiner's Answer (Paper No. 16,
mailed August 5, 1997) for the examiner's complete reasoning
in support of the rejection, and to appellant's Brief (Paper
Appeal No. 1997-3856
Application No. 08/313,794
3
No. 15, filed April 18, 1997), Reply Brief (Paper No. 17,
filed September 30, 1997), and Supplemental Reply Brief (Paper
No. 22, filed March 10, 1998) for appellant's arguments
thereagainst.
OPINION
We have carefully considered the claims and the
respective positions articulated by appellant and the
examiner. As a consequence of our review, we will reverse the
§ 112, second paragraph, rejection of claims 8 through 17.
The examiner states (Answer, page 3) that "Claim 8 is
incomplete regarding the limitation 'means for controlling
said head conveyor.'" Although the examiner appears to
recognize (Answer, page 5) sensors 30, 91, and 91' as
providing supporting structure for the means in question, the
examiner "submits that it is not the Appellant's intention to
include the claimed means for detecting in the recited 'means
for controlling said head conveyor...' recited in independent
claim 8 as evidenced by the further recitation of said
detecting means in dependent claims 15-17." The examiner's
position apparently is that the phrase "further comprising
Appeal No. 1997-3856
Application No. 08/313,794
4
means for detecting" in dependent claim 15 indicates that
sensors are additional to the limitations of independent claim
8 and, therefore, that the controlling means of claim 8 must
not refer to the sensors and, consequently, lacks supporting
structure in the specification.
Means-plus-function language must be interpreted as
limited to the corresponding structure disclosed in the
specification. See In re Donaldson Co. Inc., 16 F.3d 1189,
1193, 29 USPQ2d 1845 1848 (Fed. Cir. 1994). The disclosed
structure corresponding to the means for controlling the head
conveyor in claim 8 is clearly sensors 30, 91, and 91'. The
examiner, however, has chosen to ignore the disclosed
structure, rejecting all claims under 35 U.S.C. § 112 rather
than only the few dependent claims which were perceived to
double recite the sensors.
The purpose of the second paragraph of § 112 is to
basically insure, with a reasonable degree of particularity,
an adequate notification of the metes and bounds of what is
being claimed. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970). When viewed in light of this
authority, the most reasonable interpretation of claim 8
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Application No. 08/313,794
5
applies the disclosed sensors to the claimed controlling
means. Such interpretation results in at least the majority
of the claims being definite and complete.
To the extent that the examiner considers claims 15
through 17 to be indefinite as double reciting the sensor
limitation because of the language of "further comprising
means for detecting," again a degree of reasonableness is
necessary. When read in light of the specification, claims 15
through 17 clearly further limit the controlling means of
claim 8. Accordingly, we will reverse the rejection of claims
8 through 17.
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Application No. 08/313,794
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CONCLUSION
The decision of the examiner rejecting claims 8 through
17 under 35 U.S.C. § 112, second paragraph, is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
vsh
Appeal No. 1997-3856
Application No. 08/313,794
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