Ex parte Pember

Board of Patent Appeals and Interferences

Jan 9, 1998

08248745 (B.P.A.I. Jan. 9, 1998)

Application for patent filed May 25, 1994. 1
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journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SCOTT N. PEMBER
____________
Appeal No. 98-0103
Application No. 08/248,7451
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, 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 through 7 and 10 through 22, which are all
of the claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 98-0103 Page 2
Application No. 08/248,745
BACKGROUND
The appellant's invention relates to a license plate cover
constructed to absorb laser energy. Claims 1, 10 and 16 are
representative of the subject matter on appeal and a copy of
those claims, as they appear in the appendix to the appellant's
brief, is attached to this decision.
The prior art of record relied upon by the examiner as
evidence of obviousness under 35 U.S.C. § 103 are:
Kluck 3,315,394 April 25, 1967
The absorptive materials admitted on page 7 of the specification
to be well known
Claims 1 through 7 and 10 through 22 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to adequately teach
how to make and/or use the invention, i.e., failing to provide an
enabling disclosure, and failing to provide a written description
of the invention.
Claims 1 through 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kluck.
Appeal No. 98-0103 Page 3
Application No. 08/248,745
Claims 10 through 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kluck in view of the absorptive materials
admitted on page 7 of the specification to be well known.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 and § 112
rejections, we make reference to the examiner's answer (Paper No.
18, mailed March 12, 1997), the supplemental examiner's answer
(Paper No. 21, mailed June 5, 1997) and the second supplemental
examiner's answer (Paper No. 23, mailed July 2, 1997) for the
examiner's complete reasoning in support of the rejections, and
to the appellant's brief (Paper No. 17, filed February 12, 1997),
reply brief (Paper No. 19, filed May 9, 1997) and supplemental
reply brief (Paper No. 22, filed June 24, 1997) 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
Appeal No. 98-0103 Page 4
Application No. 08/248,745
examiner. As a consequence of our review, we make the
determinations which follow.
The enablement issue
We do not sustain the rejection of claims 1 through 7 and 10
through 22 under 35 U.S.C. § 112, first paragraph, as failing to
adequately teach how to make and/or use the invention, i.e.,
failing to provide an enabling disclosure.
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc., 857
F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343,
1345, 188 USPQ 659, 661 (CCPA 1976).
Thus, the dispositive issue is whether the appellant's
disclosure, considering the level of ordinary skill in the art as
of the date of the appellant's application, would have enabled a
person of such skill to make and use the appellant's invention
without undue experimentation. The threshold step in resolving
Appeal No. 98-0103 Page 5
Application No. 08/248,745
this issue is to determine whether the examiner has met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement. This the examiner has not done. While the
examiner has correctly pointed out that the appellant's
disclosure fails to specify the amounts of the absorbers and
polymers used in the absorptive material, it is our opinion that
this alone is not a sufficient basis, in this case, to meet his
burden of proof. This is especially true in view of the fact
that the prior art of record (e.g., U.S. Patents 4,948,922 and
5,389,434) establishes that absorptive materials of similar
composition were known as of the date of the appellant's
application. Thus, we conclude that appellant's disclosure would
have enabled a person of ordinary skill to make and use the
appellant's invention without undue experimentation.
The written description issue
We sustain the rejection of claims 1 through 7 and 16
through 22 under 35 U.S.C. § 112, first paragraph, as the
specification, as originally filed, does not provide support for
the invention as is now claimed, but we do not sustain the
rejection of claims 10 through 15 on this ground of rejection.
Appeal No. 98-0103 Page 6
Application No. 08/248,745
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language. See
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The language at issue in independent claim 1 is "a
substantially flat piece of laser absorptive material constructed
to absorb more than 60% of laser energy generated by a laser beam
impinging upon a surface of the laser absorptive material." The
language at issue in independent claim 16 is "the substantially
flat piece of laser absorptive material absorbs more than 60% of
laser energy generated by a laser beam impinging upon a surface
of the laser absorptive material." The recitation in claims 1
and 16 that the laser absorptive material absorbs more than 60%
of laser energy generated by a laser beam impinging upon a
surface of the laser absorptive material language is not
supported by the disclosure of the application as originally
Appeal No. 98-0103 Page 7
Application No. 08/248,745
Claim 6 depends from independent claim 1 and claim 212
depends from independent claim 16.
filed. In our opinion, the disclosure of the application as
originally filed would not have reasonably conveyed to the
artisan that the disclosed laser absorptive material absorbs more
than 60% of laser energy generated by a laser beam impinging upon
a surface of the laser absorptive material. While the
appellant's Figure 2 illustrates a graph of a particular
absorptive material which may be used in the present invention,
that graph would not have reasonably conveyed to an artisan that
the particular absorptive material absorbs more than 60% of laser
energy generated by a laser beam impinging upon a surface of the
laser absorptive material. This is due to the fact that the
graph shown in Figure 2 does not display the total amount of
laser energy generated by a laser beam. In this regard, we note
that the graph shown in Figure 2 does not display frequencies
above 1200 nanometers or below 300 nanometers. Thus the graph
shown in Figure 2 is silent as to the total amount of energy from
a laser beam that the material absorbs.
The language at issue in dependent claims 6 and 21 is "the2
laser absorptive material is configured to absorb more than 60%
Appeal No. 98-0103 Page 8
Application No. 08/248,745
Claim 15 depends from independent claim 10.3
of laser energy of a laser beam in the 900 to 1000 nanometer
range." The language at issue in independent claim 10 is "laser
energy of a laser beam of a predetermined wavelength is at least
60% absorbed by the material." The language at issue in
dependent claim 15 is "the laser absorptive material is3
configured to absorb more than 90% of laser energy of a laser
beam in the 900 to 1000 nanometer range." In our opinion, the
disclosure of the application as originally filed would have
reasonably conveyed to the artisan that the disclosed laser
absorptive material absorbs more than 60%/90% of a predetermined
wavelength generated by a laser beam. In this regard, we note
that the graph shown in Figure 2 does display frequencies in the
900 to 1000 nanometer range wherein the absorptive material
absorbs more than 90% of those wavelengths.
The obviousness issue
We do not sustain the rejections of claims 1 through 7 and
claims 10 through 22 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in
Appeal No. 98-0103 Page 9
Application No. 08/248,745
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
Independent claims 1 and 16, recite, inter alia, a license
plate cover apparatus comprising a substantially flat piece of
laser absorptive material which absorbs more than 60% of laser
energy generated by a laser beam impinging upon a surface of the
laser absorptive material. Independent claim 10, recites, inter
alia, a license plate cover apparatus comprising a substantially
flat piece of laser absorptive material which absorbs more than
60% of a predetermined wavelength generated by a laser beam.
In our opinion, the combined teachings of all the applied
prior art (i.e., Kluck and the absorptive materials admitted on
page 7 of the specification to be well known) would not have been
suggestive of providing a license plate cover apparatus with a
substantially flat piece of a laser absorptive material which
absorbs either (1) more than 60% of laser energy generated by a
laser beam impinging upon a surface of the laser absorptive
material, or (2) more than 60% of a predetermined wavelength
generated by a laser beam. Thus, we are constrained to reverse
Appeal No. 98-0103 Page 10
Application No. 08/248,745
the examiner's rejection of appealed independent claims 1, 10 and
16, and claims 2 through 7, 11 through 15 and 17 through 22 which
depend therefrom, under 35 U.S.C. § 103.
CONCLUSION
To summarize, (1) the decision of the examiner to reject
claims 1 through 7 and 10 through 22 under 35 U.S.C. § 112, first
paragraph, as failing to provide an enabling disclosure is
reversed, (2) the decision of the examiner to reject claims 1
through 7 and 16 through 22 under 35 U.S.C. § 112, first
Appeal No. 98-0103 Page 11
Application No. 08/248,745
paragraph, as the specification, as originally filed, does not
provide support for the invention as is now claimed is affirmed,
(3) the decision of the examiner to reject claims 10 through 15
under 35 U.S.C. § 112, first paragraph, as the specification, as
originally filed, does not provide support for the invention as
is now claimed is reversed, and (4) the decision of the examiner
to reject claims 1 through 7 and claims 10 through 22 under
35 U.S.C. § 103 is reversed.
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
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-0103 Page 12
Application No. 08/248,745
MARK S. SVAT
FAY, SHARPE, BEALL, FAGAN,
MINNICH & MCKEE
1100 SUPERIOR AVENUE, SUITE 700
CLEVELAND, OH 44114-2518
Appeal No. 98-0103
Application No. 08/248,745
Page 1
APPENDIX
1. A license plate cover apparatus for decreasing an
effective range of a speed detection device using a laser beam,
the license plate cover apparatus comprising:
a substantially flat piece of laser absorptive material
constructed to absorb more than 60% of laser energy generated by
a laser beam impinging upon a surface of the laser absorptive
material, wherein the laser absorptive material is sized to cover
a vehicle license plate; and
an attaching means for attaching the piece of laser
absorptive material to a front face of the vehicle license plate.
10. A license plate cover apparatus for decreasing an
effective range of a speed detection device using a laser beam,
the license plate cover apparatus comprising:
a substantially flat piece of laser absorptive material
constructed of a polymer and homogeneously dissolved additives
such that substantially all of visible light passes through the
material and laser energy of a laser beam of a predetermined
wavelength is at least 60% absorbed by the material, wherein the
material is sized to cover a vehicle license plate; and
an attaching means for attaching the substantially flat
piece of laser absorptive material to a front face of the vehicle
license plate.
Appeal No. 98-0103
Application No. 08/248,745
Page 2
16. A license plate cover apparatus for decreasing an
effective range of a speed detection device using a laser beam,
the license plate cover apparatus comprising:
a substantially flat piece of laser absorptive
material, including at least one of rubber compounding material
HVA-2, NDBC-D and sebacic acid di-K salt integrated into a
polymer based article, wherein the substantially flat piece of
laser absorptive material absorbs more than 60% of laser energy
generated by a laser beam impinging upon a surface of the laser
absorptive material, and is sized to substantially a same size as
a vehicle license plate; and
an attaching means for attaching the substantially flat
piece of laser absorptive material to a front face of the vehicle
license plate.
APPEAL NO. 98-0103 - JUDGE NASE
APPLICATION NO. 08/248,745
APJ NASE
APJ COHEN
APJ FRANKFORT
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 05 Jan 98
FINAL TYPED: