Ex parte Pleasant

Board of Patent Appeals and Interferences

Apr 19, 2001

08392062 (B.P.A.I. Apr. 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for publication and is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD E. PLEASANT
____________
Appeal No. 2000-1000
Application No. 08/392,062
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is taken from the final rejection of January
22, 1998 of claims 20 through 31 (Paper No. 23). Claims 4
through 9, the only other claims remaining in the application,
stand allowed.
Appellant’s invention relates to a self-clamping liquid
barrier assembly for mounting into a liquid conduit groove of
Appeal No. 2000-1000
Application No. 08/392,062
The examiner makes it clear that the first paragraph1
rejection under 35 U.S.C. § 112 addresses the description
requirement alone (answer, page 4). On the other hand,
(continued...)
2
a mold insert and to a clamping insert for a self-clamping
liquid barrier dam assembly that mounts into a liquid conduit
groove of a mold insert. A basic appreciation of the
invention can be obtained from a reading of exemplary claims
20 and 26, respective copies of which appear in the APPENDIX
to the revised brief filed March 8, 1999 (Paper No. 29).
The rejection that follows is the sole rejection on
appeal.
Claims 20 through 31 stand rejected under 35 U.S.C. §
112, first paragraph, as being founded upon a specification
which lacks descriptive support for the claimed invention.
The examiner’s rejection and response to the argument
made by appellant is set forth in the answer (Paper No. 30),
while the full text of appellant’s argument can be found on
pages 5 through 9 of the revised brief (Paper No. 29).1
Appeal No. 2000-1000
Application No. 08/392,062
(...continued)1
appellant’s argument is directed to both description and
enablement matters. While our focus will appropriately be
upon the description issue raised in the examiner’s rejection,
we will take into account the entirety of appellant’s argument
as it pertains to that issue.
We focus our attention exclusively on the subject matter2
of independent claims 20 and 26 since appellant indicates that
claims 20 through 25 stand or fall together and that claims 26
through 31 stand or fall together (revised brief, page 5).
3

OPINION
In resolving the description requirement issue raised on
appeal, this panel of the board has carefully considered
appellant’s specification and claims 20 and 26, and the views2
advocated by appellant and the examiner, respectively. As a
consequence of our review, we reach the conclusion that
follows.
This panel of the board sustains the examiner’s rejection
of appellant’s claims for the reasons given below.
Appeal No. 2000-1000
Application No. 08/392,062
4
As our review Court stated in In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
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. The content of the drawings may also be
considered in determining compliance with the
written description requirement. (citations
omitted)
Of course, a claimed invention does not necessarily have to be
expressed in ipsis verbus in order to satisfy the description
requirement. See In re Wertheim, 541 F.2d 257, 265, 191 USPQ
90, 98 (CCPA 1976)). However, it must also be kept in mind
that the fact one skilled in the art might realize from
reading a disclosure that something is possible is not a
sufficient indication to that person that the something is a
part of an appellant's disclosure. See In re Barker, 559 F.2d
588, 593, 194 USPQ 490, 474 (CCPA 1977), cert. denied, 434
U.S. 1064 (1978). Precisely how close the original
description must come to comply with the description
Appeal No. 2000-1000
Application No. 08/392,062
5
requirement must be determined on a case-by-case basis. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991).
The starting point for our analysis is appellant’s
original disclosure, assessed in its entirety.
Considering the background of the invention, a clearly
apparent objective of appellant’s disclosed invention is to
insure that a barrier dam assembly (dam) will not, during use,
slide or otherwise move around in a liquid conduit groove or
work loose since there is a danger that a loose dam would fly
away and cause injury to a lathe operator (specification, page
3, lines 4 through 12, page 4, lines 11 through 16, and page
14, lines 1 through 6 and lines 12 through 16).
Throughout the entirety of the specification, the
reference is continuously to plural components as regards
“locking members” such as “screws or pins” movable in “bores”
in the dam with the clamping of the dam to the “surfaces” of a
liquid conduit groove being accomplished by the engagement of
Appeal No. 2000-1000
Application No. 08/392,062
6
“locking members” with inwardly-facing “surfaces” of
“recesses” or “undercuts” in the “sidewalls” of the liquid
conduit groove (for example, page 4, line 20 to page 5, line
13). The specification (page 5, lines 10 through 13) clearly
sets forth that “clamping” of the dam in the liquid conduit
groove is “by the use of locking members that extend through
bores in the dam body member into engagement with inwardly-
facing surfaces of the undercuts.” The specification (page 6,
lines 17 through 20) further explains that the leading ends of
the clamping (locking) members tend to “gouge into the
undercut surfaces.” As additionally discussed in the
specification (page 13, line 21 to page 14, line 16), as the
screws are driven, the dam body is “effectively wedged” with
increasing “clamping forces” such that the dam assembly is
“securely locked” in the liquid conduit groove and “will not
slide about or work loose.” As additionally described in the
specification (page 14),
The combined actions of the clamping forces
described above applied to the dam body
member 50 and the frictional forces between
the interengaged locking screws 66 and
undercut surfaces 42 cause the dam assembly
Appeal No. 2000-1000
Application No. 08/392,062
7
14 [to] be reliably, securely and tightly
clamped within the liquid conduit groove
34.
As to the “preferred embodiment” of the invention
(specification, page 7) appellant addresses “short locking
screws” mounted within tapped “bores” with the screws being
advanced into interfering engagement with inwardly facing
“undercut surfaces” (Fig. 7). As a “modification”
(specification, pages 7 and page 8, and pages 16 and 17),
appellant describes short locking “pins” to be driven through
dam member “bores” into interfering engagement with inwardly-
facing “undercut surfaces” (Fig. 8). In the specification
(page 17), relative to both embodiments (Figs. 7 and 8),
appellant expressly indicates that a simple tool such as a
screw driver or punch used to engage the exposed “heads” of
the locking “screws or pins” is “all that is needed to
effectuate the clamping of the dam assembly in place.”
At this juncture, we direct our attention to the content
of claims 20 and 26.
Appeal No. 2000-1000
Application No. 08/392,062
8
Independent claim 20 addresses a self-clamping liquid
barrier dam assembly for mounting into a liquid conduit groove
of a mold insert, with the combination comprising a body
member located within the groove and having a bore extending
therethrough, and a locking member located in the bore for
having an end thereof driven into frictional engagement with
an undercut surface of the liquid conduit groove.
Independent claim 26 recites a clamping element for a
self-clamping liquid barrier dam assembly that mounts into a
liquid conduit groove of a mold insert, the assembly including
a body member that can be located entirely within the groove,
with the clamping element comprising, a bore, and a locking
member located in the bore, the locking member having an end
thereof to be driven into frictional engagement with an
undercut surface of the liquid conduit groove.
Like the examiner, we conclude that appellant’s
originally filed underlying disclosure, read as a whole, fails
to reasonably convey to one skilled in the art that appellant
Appeal No. 2000-1000
Application No. 08/392,062
9
had possession of the later claimed subject matter of claims
20 and 26.
It is quite clear to us that the import of appellant’s
teaching, personified by the preferred and modified
embodiments of Figs. 7 and 8, respectively, is that the
objective of securely installing a liquid dam or barrier
assembly is achieved by an undercut in each of the confronting
sidewalls of the groove intended for gouging engagement by
locking screws or pins to insure that the dam during use will
not slide or otherwise move around or become loose to avoid
the danger that a loose dam would fly away from a rotating
insert and cause injury to a lathe operator. Thus, appellant
teaches that the solution to the problem of a dam flying off a
rotating insert and causing injury is to provide an undercut
in each of the walls of the groove for engagement by locking
members (screws or pins). Simply stated, appellant’s
specification offers no suggestion whatsoever that an undercut
provided in a sidewall of the groove, when engaged by a screw
or pin, would so secure a dam that the problem of the dam
Appeal No. 2000-1000
Application No. 08/392,062
10
flying off a rotating insert and causing injury would be
solved thereby.
Clearly, appellant’s disclosure can fairly be viewed as a
restricted or narrow disclosure. It offers a preferred
embodiment (Fig. 7) to solve the noted dam securement problem
that requires an undercut in each of the two sidewalls of the
conduit groove for engagement by locking screws located in
bores in a body member of a dam. Further, it suggests an
alternative arrangement for solving the problem (Fig. 8)
wherein an undercut in each of the two sidewalls of the
conduit groove is intended to be engaged by pins located in
bores in a body member of a dam. As we see it, one skilled in
the art would be informed by appellant’s disclosure that an
undercut in each of the two sidewalls of a conduit groove
cooperating with locking members in respective body member
bores is needed to insure that a dam is secured in place and
won’t fly away and cause injury. The provision of an undercut
in each sidewall of the conduit groove for interengagement
with locking members in respective body member bores is the
only possible solution offered by appellant in the
Appeal No. 2000-1000
Application No. 08/392,062
11
specification. No variation is even suggested as to other
than an undercut in each of the sidewalls of the conduit
groove for coacting with locking members in respective body
member bores. Thus, this panel of the board finds it
reasonable to say that the inclusion of an undercut in each of
the sidewalls of a conduit groove for engagement by locking
members in respective body member bores is an essential
structural attribute of appellant’s invention, necessary to
achieve the objective of a secure dam that won’t fly away and
cause injury.
Claims can be no broader than a supporting disclosure.
For the reasons set forth above, appellant’s narrow disclosure
limits claim breadth. See Gentry Gallery v. Berkline Corp.,
134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998).
Accordingly, each of claims 20 and 26 is simply not
descriptively supported by the original specification, and the
rejection thereof under 35 U.S.C. § 112, first paragraph,
is clearly sound.
Appeal No. 2000-1000
Application No. 08/392,062
12
The argument presented by appellant (brief, pages 5
through 9) is simply not convincing of error on the part of
the examiner in rejecting claims 20 and 26, in particular,
under 35 U.S.C. § 112, first paragraph.
Appellant argues (revised brief, page 7), in rebuttal of
the examiner’s conclusion that the claimed subject matter
lacks descriptive support, that
[o]ne can, in applicant’s original
application, locate one bore, and a second
bore, one undercut and a second undercut,
and one locking member and a second locking
member.
On this basis, appellant asserts there is no reason to further
address the issue of written description (revised brief, page
7).
While appellant may be able to refer in the argument to
one bore and a second bore, etc., as above, this is not
dispositive of the description issue on appeal. As is evident
to us from a reading of each of claims 20 and 26, these
Appeal No. 2000-1000
Application No. 08/392,062
13
respective claims set forth an invention that was not
originally contemplated by appellant and cannot be discerned
from a reading of the original disclosure. In other words,
appellant’s underlying disclosure simply does not inform one
skilled in the art of a self-clamping liquid barrier or of a
clamping element for a self-clamping liquid barrier that has a
bore and a locking member in the bore for frictional
engagement with an undercut of a liquid conduit groove to
achieve the disclosed advantage. Clearly, the subject matter
of claims 20 and 26 is not disclosed as insuring that a dam
will not, in use, slide or otherwise move around in the liquid
conduit groove such that the loose dam would fly away and
cause injury. Appellant’s reference to a broad principle of
permitting claims for subcombinations as well as for
combinations (revised brief, page 8) simply does not apply to
the specific inventions of respective claims 20 and 26, which
inventions clearly lack support in the original disclosure, as
explained above. It is also appellant’s viewpoint that there
is nothing in the original disclosure which clearly indicates
that two locking elements, two bores, and two undercuts are
“critical” (revised brief, page 9). We refer appellant to our
Appeal No. 2000-1000
Application No. 08/392,062
14
earlier conclusion, based upon an overall assessment of the
original disclosure, that it is both reasonable and fair to
say that the presence of an undercut in each of the sidewalls
of a conduit groove for engagement by locking members in
respective body member bores is an essential or critical
structural attribute of appellant’s invention, clearly
necessary to achieve appellant’s goal of a secure dam that
won’t fly away and cause injury.
In summary, this panel of the board has affirmed the
rejection of claims 20 through 31 under 35 U.S.C. § 112, first
paragraph.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 2000-1000
Application No. 08/392,062
15
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC:pgg
ROGER S. DYBVIG
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