Ex parte Poulsen

Board of Patent Appeals and Interferences

Jan 19, 1999

08748158 (B.P.A.I. Jan. 19, 1999)

Application for patent filed November 12, 1996. 1
According to appellant, this application is a continuation of
Application No. 08/483,281, filed June 7, 1995, now abandoned.
-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journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS E. POULSEN
________________
Appeal No. 98-2456
Application No. 08/748,1581
________________
ON BRIEF
________________
Before CALVERT, MEISTER and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 10, 14, 18, 23, 24, 27 and 28. Claims 1
through 9, 11 through 13, 15 through 17, 19 through 22, 25 and
Appeal No. 98-2456
Application No. 08/748,158
-2-
26, the only other claims remaining in this application, have
been allowed. In the examiner’s answer (page 3), the examiner
has indicated that claim 18 is now also allowed, thus, leaving
only claims 10, 14, 23, 24, 27 and 28 for our consideration on
appeal.
Appellant’s invention is directed to a disposable razor
that has a feature to record how many times it has been used.
As noted on page 2 of the specification,
[i]n the several embodiments, the disposable
razor includes push tabs formed into the handle so
that external pressure applied onto a surface of a
push tab, as applied with the user's finger or
thumb, will cause a portion of the push tab to break
away from the remainder of the handle leaving a
visible "break line" that will serve to record a
single usage. Ideally, the razor handle will be
formed of plastic by the plastic injection molding
process. In each of the embodiments shown, the
handles (if formed of plastic) can be manufactured
by the injection molding process in molds that do
not require the use of "slides". Slides are a
feature necessarily present on some (but not all)
plastic injection molds. When slides must be used
in an injection mold, the per part manufacturing
cost of the item being molded are [sic, is]
generally higher.
No prior art references have been applied against the
claims before us on appeal.
Appeal No. 98-2456
Application No. 08/748,158
-3-
Claims 10, 14, 23, 24, 27 and 28 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim that
which appellant regards as his invention. In this regard, it
is the examiner’s position that
[t]he structure that applicant is attempting to
claim by the manufacturing process steps that have
been included in the claims is unclear. What
structural limitations are being claimed? Are there
structural differences between an injection molded
device and one that is injection molded without a
slide? If so what are they? [final rejection, page
2).
Rather than reiterate the examiner's full explanation of
this rejection and the conflicting viewpoints advanced by the
examiner and appellant, we refer to pages 2 and 3 of the final
rejection (Paper No. 8, mailed March 19, 1997), pages 2
through 4 of the examiner's answer (Paper No. 13, mailed
January 13, 1998), appellant’s brief (Paper No. 12, filed
November 28, 1997) and reply brief (Paper No. 14, filed March
16, 1998) for the full exposition thereof.
OPINION
Appeal No. 98-2456
Application No. 08/748,158
-4-
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we will not sustain the examiner’s
rejection of claims 10, 14, 23, 24, 27 and 28 before us on
appeal. Our reasons follow.
After reviewing appellant’s specification and claims, and
appellant’s arguments in the brief and reply brief, it is our
opinion that the scope and content of the subject matter
embraced by appellant’s claims on appeal are reasonably clear
and definite, and fulfill the basic requirement of 35 U.S.C. §
112, second paragraph, that they provide those who would
endeavor, in future enterprise, to approach the area
circumscribed by the claims, with the adequate notice demanded
by due process of law, so that they may more readily and
accurately determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance. See
In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
Appeal No. 98-2456
Application No. 08/748,158
-5-
It is by now well settled that product claims may be
drafted to include process steps to wholly or partially define
the claimed product, and that to the extent that the process
limitations distinguish the claimed product from the prior
art, they must be given the same consideration as traditional
product characteristics or limitations. See In re Hallman,
655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981). This type
of claim is referred to as a product-by-process claim and, as
noted in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972), does not inherently conflict with the second
paragraph of 35 U.S.C. § 112. However, due to the lack of
physical description in a product-by-process claim, this form
of claim does impose a certain burden with regard to
determining the patentability thereof, since in spite of the
fact that the claims may recite only process limitations, it
is the patentability of the product claimed and not the
recited process steps which must be established. Accordingly,
when the prior art discloses a product which reasonably
appears to be either identical with or only slightly different
than a product claimed in a product-by-process claim, a
rejection based alternatively on either section 102 or section
Appeal No. 98-2456
Application No. 08/748,158
-6-
103 of the statute is eminently fair and acceptable. Id. at
688. The rationale for this conclusion is that the Patent and
Trademark Office is not equipped to manufacture products by
the myriad of processes put before it and then obtain prior
art products and make physical comparisons therewith. Thus,
this burden is shifted to the appellant in those instances
where prior art is applied by the examiner against product-by-
process claims and appellant must specifically point out or
demonstrate how the process limitations structurally
distinguish the claimed product from the product of the prior
art, which may be made by a different process.
In the present case, the examiner has not applied prior
art against the product-by-process claims before us on appeal.
Instead, the examiner has taken the position that the
structural limitations imposed on the claimed product by the
process limitations are "unclear," and has imposed on
appellant the requirement that he (appellant) specifically
point out the structural limitations imposed on the claimed
product. In particular, the examiner has inquired as to
whether there are "structural differences between an injection
Appeal No. 98-2456
Application No. 08/748,158
-7-
molded device [product] and one that is injection molded [in a
mold] without a slide" and, if so, has required appellant to
state what they are.
While it is not entirely clear to us exactly what
structural limitations or physical characteristics might be
imparted to the plastic handle of appellant's razor as a
result of being "formed as a single piece in a plastic
injection mold" (claim 23) or "formed as a single piece in a
plastic injection mold without a slide" (claims 10 and 24), we
nonetheless find the examiner's requirement here to be
unreasonable. As is apparent from the above-noted case law,
appellant is normally only put to the burden of specifying the
exact structural limitations imposed on the claimed product by
the process limitations when the examiner has applied prior
art which teaches, discloses or makes obvious a product which
reasonably appears to be either identical with or only
slightly different than a product claimed in a product-by-
process claim. This the examiner has not done in the present
application, since no prior art has been applied by the
examiner. Accordingly, we do not see that appellant should be
Appeal No. 98-2456
Application No. 08/748,158
We are particularly of this view since the examiner has2
already allowed claims (e.g., claims 2, 3, 9, 16 and 17) which
include one or the other of the process limitations questioned
by the examiner in the rejection before us on appeal.
-8-
put to the onerous task of pointing out the specific
structural limitations imposed on the claimed product by the
recited process limitations.2
Like the Court in In re Hughes, 496 F.2d 1216, 1218,
182 USPQ 106, 108 (CCPA 1974), we do not consider that
defining the product of the present application in terms of
the process by which it is made makes the language of the
claims imprecise or indefinite. Their scope, if anything, is
more definite in reciting a novel product made by a specific
process, which process would have been fully understood by one
of ordinary skill in the art. Thus, we conclude that these
claims do not create a definiteness problem under 35 U.S.C. §
112, second paragraph, and for that reason will not sustain
the examiner's rejection before us on appeal.
Appeal No. 98-2456
Application No. 08/748,158
-9-
The decision of the examiner rejecting claims 10, 14, 23,
24, 27 and 28 under 35 U.S.C. § 112, second paragraph, is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
clm
Appeal No. 98-2456
Application No. 08/748,158
-10-
Thomas E. Poulsen
P.O. Box 281151
Lamoille, NV 89828