Ex Parte Reisgies

Board of Patent Appeals and Interferences

Sep 26, 2007

10643521 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today is not binding precedent
of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ROLF W. REISGIES
___________

Appeal No. 2007-2589
Application No. 10/643,521
Technology Center 3600
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Decided: September 26, 2007
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD and ANTON W.
FETTING, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
The Appellant appeals from a rejection of claims 11-18. Claims 1-10 have
been withdrawn from consideration by the Examiner. Claims 11-18 stand rejected
under 35 U.S.C. § 103 as follows: claims 11-15 and 17 over Ferris (US 3,019,763)
in view of Smith (US 4,250,836), and claims 16 and 18 over Ferris in view of
Smith and van der Lely (US 6,044,793). Each of the Appellant’s independent
Appeal 2007-2589
Application 10/643,521
claims (11 and 12) requires “means for adjustably mounting wheels to the carriage
body so that the wheels can be moved up and down with respect to the carriage
body.”
As set forth in the Manual of Patent Examining Procedure (MPEP)
§ 2181(I) (8th ed., rev. 3, Aug. 2005):
A claim limitation will be interpreted to invoke 35 U.S.C. § 112, sixth
paragraph, if it meets the following 3-prong analysis:
(A) the claim limitations must use the phrase “means for” or “step
for;”
(B) the “means for” or “step for” must be modified by functional
language; and
(C) the phrase “means for” or “step for” must not be modified by
sufficient structure, material or acts for achieving the specified function.

The Examiner states that “the instant application was not examined in light
of the invoking of 35 U.S.C. § 112 6th paragraph and as such, the claims must be
interpreted as broadly as their terms reasonably allow as per MPEP 2111.01” (Ans.
6). The Examiner argues (Ans. 2-3):
MPEP 2181 states that a claim limitation will be presumed to invoke
35 U.S.C. 112, sixth paragraph, if it meets the 3-prong analysis. Claims 11
and 12 do not meet the third prong of this analysis, that being: the phrase
“means for” or “step for” must not be modified by sufficient structure,
material or acts for achieving the specified function. In both independent
claims, the “means for adjustably mounting wheels to the carriage” has
further been modified by acts for achieving the specified function, i.e. “so
that the wheels can be moved up and down”.

The Examiner’s statement that “so that the wheels can be moved up and
down” is an act is incorrect. That phrase does not recite an act of moving the
wheels up and down. Instead, it is part of the recitation of the function of
adjustably mounting wheels to the carriage body so that the wheels can be moved
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Appeal 2007-2589
Application 10/643,521
up and down with respect to the carriage body. Hence, the Examiner erred in
examining the application without invoking 35 U.S.C. § 112, 6th paragraph.
We therefore remand the application to the Examiner to examine the claims
as invoking the claim construction requirements of 35 U.S.C. § 112, 6th paragraph.

REMANDED

JRG

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