Ex Parte Rathert

Board of Patent Appeals and Interferences

Jul 28, 2006

10051577 (B.P.A.I. Jul. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HORST RATHERT
____________

Appeal No. 2006-0524
Application No. 10/051,577
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 3, 8,
14, 19 and 20 pending in this application.

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BACKGROUND
The appellant's invention relates to a three-side trimmer for trimming blocks for
hardback books and in brochures (specification, p. 1). A copy of the claims under appeal
is set forth in the appendix to the appellant's brief.
THE PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Sarring 3,722,336 Mar. 27, 1973
Mohr 5,279,196 Jan. 18, 1994

THE REJECTIONS

Claims 1, 2, 3, 8, 14, 19 and 20 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement.
Claims 2, 14 and 20 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Claims 1 to 3, 8 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sarring.

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Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the answer
(mailed March 18, 2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed February 22, 2005) and reply brief (filed May 17, 2005)
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 examiner. As a consequence of
our review, we make the determinations which follow.
We turn first to the examiner's rejection of claims 2, 14 and 20 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the enablement requirement. In support
of this rejection, the examiner states:
There are tow problems with this part of the specification, the
first part . . . being that it is not clear what forces are
transmitted, and the second part. . . is that it is not clear how
one would build such a device even if one did understand
what forces are transmitted [answer at page 3].

At the outset, we note that an analysis of whether the claims under appeal are
supported by an enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed claims as to
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enable one skilled in the pertinent art to make and use the claimed invention. 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).
In order to make a rejection, the examiner has the initial burden to establish a
reasonable basis to question the enablement provided for the claimed invention. See In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of protection provided by a
claim is not adequately enabled by the disclosure). A disclosure which contains a
teaching of the manner and process of making and using an invention in terms which
correspond in scope to those used in describing and defining the subject matter sought
to be patented must be taken as being in compliance with the enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to doubt the objective truth of
the statements contained therein which must be relied on for enabling support.
Assuming that sufficient reason for such doubt exists, a rejection for failure to teach how
to make and/or use will be proper on that basis. See In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). As stated by the court, "it is incumbent upon
the Patent Office, whenever a rejection on this basis is made, to explain why it doubts
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the truth or accuracy of any statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need for the applicant to go to
the trouble and expense of supporting his presumptively accurate disclosure." In re
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
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 this issue as set forth supra 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.
In our view, the examiner has not explained why a person of ordinary skill in the
art would not be able to construct the claimed trimmer, with some experimentation,
having cutting units in a unit frame that substantially absorbs all flow of forces from the
squeezing cut. Such an explanation is necessary because force and vibration
absorption techniques are well known in the art.
The examiner also states that one reading the claims would not know how the
pressing elements adaptors work. Specifically, the examiner states that one of ordinary
skill in the art would not know how the telescoping adaptors are shutter like and
accordion like. We will not sustain this rejection because none of the claims recite
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because the claims on appeal do not recite telescoping adaptors and accordian like
adaptors.
In regard to the examiner's rejection of claims 1 to 3, 8 and 20 under 35 U.S.C.
§ 103 as being unpatentable over Sarring, we make reference to our new rejection infra
where we explain why the claim limitation of a "closed compact unit" in claim 1 does not
comply with the second paragraph of 35 U.S.C. § 112. Rejections based on 35 U.S.C.
§ 103 should not be based upon considerable speculation as to the meaning of terms
employed and assumptions as to the scope of the claims In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). When no reasonably definite meaning can be
ascribed to certain terms in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970). Accordingly, we are constrained to reverse the examiner's rejection
of claim 1 as well as claims 2, 3, 8 and 20 as being unpatentable over Sarring. This
reversal is not based upon any evaluation of the merits thereon and does not preclude
the examiner's advancement of a rejection predicated upon the applied prior art against
a definite claim.

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New Ground of Rejection
Pursuant to 37 CFR § 41.50(b), we enter the following new rejection.
Claims 1, 2, 8, 14, 19 and 20 are rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the subject matter which
appellant regards as the invention.
The test for compliance with the second paragraph of Section 112, is "whether the
claim language, when read by a person of ordinary skill in the art in light of the
specification, describes the subject matter with sufficient precision that the bounds of the
claimed subject matter are distinct." In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471,
476 (CCPA 1975). In other words, does a claim reasonably apprise those of skill in the
art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994).
Independent claim 1 recites:
block head pressing element being a closed compact unit
with a block head pressing drive. . .
block foot pressing element being a closed compact unit with
a block foot pressing drive. . .
block front pressing element being a closed compact unit with
a block front pressing drive. . .

We note that the phrase "closed compact unit" is not used in the specification. In
addition, the pressing units 15, 19 and 22 are not depicted in Figures 2 and 3 as within
what one would consider a closed unit with press driving elements 3, 20. Rather, the
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pressing units 15, 19, and 22 appear to be intermingled with the surrounding elements.

Appellant asserts that the pressing elements along with the drive elements 3, 20
are all connected to a unit frame which connects all these elements to form the "closed
compact unit." However, the unit frame connects not only the pressing elements 15, 19
and 22 and the pressing drive elements 3 and 20 but also the cutting units and as such
is not closed in the sense of including only pressing elements and elements to drive the
pressing elements. Therefore, it is not clear what the term "closed" means in claim 1.
In addition, as claim 2 recites that the cutting units have a unit frame, it appears that the
unit frame recited in claim 2 is in addition to the closed compact unit. Thus the scope of
claim 1 along with claim 2 is unclear.
Claim 19 has similar language to claim 1 and thus is indefinite for the reasons
stated in regard to claim 1.
Claim 20 includes the limitation of the "closed compact unit" in regard to the
pressing elements and the term "unit frame" with regard to the cutting units and thus is
unclear for the same reasons stated above for claims 1 and 2.
In summary:
The examiner 's rejection of claims 2, 14 and 20 under 35 U.S.C. § 112, first
paragraph is not sustained.
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The examiner's rejection of claims 1 to 3, 8 and 20 is reversed on procedural
grounds.
A new rejection of claims 1, 2, 8, 14, 19 and 20 has been made.
In addition to not reversing the examiner's decision in regard to the claims, this
opinion includes a new ground of rejection pursuant to 37 CFR § 41.50(b). Section
41.50(b) of 37 CFR provides
When the Board makes a new ground of rejection, the appellant,
within two months from the date of the decision, must
exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as
to the rejected claims: (1) Reopen prosecution. Submit
an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new evidence not previously of record is made
which, in the opinion of the examiner, overcomes the new
ground of rejection stated in the decision. Should the
examiner reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
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If appellant elects prosecution before the examiner and this does not result in
alREVERSED; 37 CFR § 41.50(b).(???-something's missing--please fill in). Thanks.
REVERSED; 37 CFR § 41.50(b)

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0524
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