Ex parte Robbins

Board of Patent Appeals and Interferences

Aug 29, 2001

08873876 (B.P.A.I. Aug. 29, 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for publication and is not binding precedent of the Board.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 STEVEN E. ROBBINS
____________
Appeal No. 2001-0378
Application No. 08/873,876
____________
ON BRIEF
____________
Before COHEN, ABRAMS, 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 to 18, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/873,876
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The appellant's invention relates to a resilient sole
having a controlled stiffness and slow shape recovery
following compressive deformation to provide enhanced
stability (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Pendergast 4,633,877 Jan. 6, 1987
Claims 1 to 18 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 the appellant regards as the invention.
Claims 1 to 18 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described in
the specification in such a way as to enable one skilled in the art
to which it pertains, or with which it is most nearly connected, to
make and/or use the invention.
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Claims 1 to 3, 7 to 11 and 15 to 18 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Pendergast.
Claims 4 to 6 and 12 to 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Pendergast.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 28,
mailed June 23, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 27,
filed May 19, 2000) and reply brief (Paper No. 29, filed
August 28, 2000) 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 reference, to the declaration
under 37 CFR § 1.132 by Steven Robbins (Paper No. 26, filed
May 19, 2000) and to the respective positions articulated by
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the appellant and the examiner. As a consequence of our
review, we make the determinations which follow.
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The indefiniteness rejection
We will not sustain the rejection of claims 1 to 18 under
35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
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Application No. 08/873,876
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terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented can be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
With this as background, we turn to the specific reason set
forth by the examiner as the basis for the rejection under
35 U.S.C. § 112, second paragraph. The examiner stated (answer, p.
4) that the phrase "resiliency index ..." as used in the claims under
appeal is vague and indefinite because "it is not clear what
materials applicant intends to encompass with such language. We do
not agree for the reasons set forth in the brief, the reply brief,
and the reasons that follow.
The independent claims on appeal read as follows:
1. A sole for use in an article of footwear in proximity to a
plantar surface of a foot, said sole having a resiliency index
in the range from about .05 to about .5, the resiliency index
being defined as a ratio (R-M)/(P-M), wherein P is a thickness
measured when only a pre-load is applied, M is a thickness
measured when both the pre-load and a main load are applied,
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1 Breadth of a claim is not to be equated with
indefiniteness. See In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971).
and R is the maximum recovered thickness within one second
immediately following removal of the main load.
9. An article of footwear including a sole in proximity of
afoot receiving surface of said article of footwear, said sole
having a resiliency index in the range from about .05 to about
.5, the resiliency index being defined as a ratio (R-M)/(P-M),
wherein P is a thickness measured when only a pre-load is
applied, M is a thickness measured when both the pre-load and a
main load are applied, and R is the maximum recovered thickness
within one second immediately following removal of the main
load.
In our view, the phrase "resiliency index ..." as used in the
claims under appeal is not vague and indefinite because the metes and
bounds of the claimed invention is defined with a reasonable degree
of precision and particularity. It is clear to us that the appellant
intends to encompass all materials having the claimed resiliency
index with such language. In that regard, it is well-settled that
the mere breadth of a claim does not in and of itself make a claim
indefinite.1
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For the reasons set forth above, the decision of the
examiner to reject claims 1 to 18 under 35 U.S.C. § 112,
second paragraph, is reversed.
The enablement rejection
We will not sustain the rejection of claims 1 to 18 under
35 U.S.C. § 112, first paragraph.
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
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).
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In order to make a nonenablement 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
the truth or accuracy of any statement in a supporting
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2 The appellant may attempt to overcome the examiner's
doubt about enablement by pointing to details in the
disclosure but may not add new matter. The appellant may also
submit factual affidavits under 37 CFR § 1.132 or cite
references to show what one skilled in the art would have
known at the time of filing the application.
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.
Once the examiner has established a reasonable basis to
question the enablement provided for the claimed invention, the
burden falls on the appellant to present persuasive arguments,
supported by suitable proofs where necessary, that one skilled in the
art would be able to make and use the claimed invention using the
disclosure as a guide. See In re Brandstadter, 484 F.2d 1395, 1406,
179 USPQ 286, 294 (CCPA 1973). In making the determination of
enablement, the examiner shall consider the original disclosure and
all evidence in the record, weighing evidence that supports
enablement2 against evidence that the specification is not enabling.
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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 fact, the
examiner has not provided any cogent reasoning as to why the
appellant's disclosure would not have enabled a person of ordinary
skill to make and use the claimed invention without undue
experimentation. Instead, the examiner (answer, p. 3) questions
how the claimed range of the resiliency index was determined
and that only a single example of a suitable material was
provided.
In our opinion the examiner has not met his burden of proof by
advancing acceptable reasoning inconsistent with enablement for the
following reasons.

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Factors to be considered in determining whether a disclosure
would require undue experimentation include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the
nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. See
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
citing Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int.
1986).
In this case, the examiner has focused only on one of the
above-noted eight factors (i.e., working examples) as the
basis that led the examiner to conclude that the scope of any
enablement provided to one skilled in the art is not
commensurate with the scope of protection sought by the
claims. Since the examiner has not weighed all the factors,
the examiner's conclusion of nonenablement cannot be
sustained. As stated in the Manual of Patent Examining
Procedure (MPEP) § 2164.02 (Seventh Edition, Rev. 1, Feb. 2000)
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When considering the factors relating to a
determination of non-enablement, if all the other factors
point toward enablement, then the absence of working
examples will not by itself render the invention
non-enabled. In other words, lack of working examples or
lack of evidence that the claimed invention works as
described should never be the sole reason for rejecting
the claimed invention on the grounds of lack of
enablement.
. . .
The presence of only one working example should
never be the sole reason for rejecting claims as being
broader than the enabling disclosure, even though it is a
factor to be considered along with all the other factors.
To make a valid rejection, one must evaluate all the
facts and evidence and state why one would not expect to
be able to extrapolate that one example across the entire
scope of the claims.
Furthermore, when all the factors are considered, it is
our view that it would not require undue experimentation to
practice the invention as set forth in the claims under
appeal. In that regard, we note that in addition to the one
example provided by the appellant, the appellant also provides
guidance in the specification to select a material for the
sole having a resiliency index in the range from about .05 to about
.5. This teaching would direct an artisan practicing the
claimed invention to choose any material having the claimed
resiliency index. Moreover, the quantity of experimentation
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necessary to test a material to determine its resiliency index
appears to be small since all that would be necessary is to test the
material as set forth in the appellant's discussion of Figure 3.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 18 under 35 U.S.C. § 112, first
paragraph, is reversed.
The anticipation rejection
We will not sustain the rejection of claims 1 to 3, 7 to
11 and 15 to 18 under 35 U.S.C. § 102(b).
To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665,
667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
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circumstances is not sufficient. If, however, the
disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the
performance of the questioned function, it seems to be
well settled that the disclosure should be regarded as
sufficient.
Thus, a prior art reference may anticipate when the claim
limitation or limitations not expressly found in that
reference are nonetheless inherent in it. See In re Oelrich,
666 F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations,
it anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986). However, inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d
1362, 1365, 52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas
Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943,
1946-47 (Fed. Cir. 1999).
The position of the examiner as set forth in the anticipation
rejection before us in this appeal (answer, p. 4) is that the sole of
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Pendergast made from PVC foam with a Shore A hardness of from 5A to
50A inherently would have a resiliency index in the range from about
.05 to about .5.
We find the examiner's position to be without merit. As set
forth above, inherency may not be established by probabilities
or possibilities. In our view, Pendergast's teachings of a sole
made from PVC foam with a Shore A hardness of from 5A to 50A would
not inherently have a resiliency index in the range from about .05 to
about .5 for the reasons set forth in Steven Robbins' declaration
under 37 CFR § 1.132. The mere fact that one particular PVC
foam (i.e., the PVC aerated polymer foam of Shore A5 hardness
identified on page 14 of the specification) has a resiliency
index in the range from about .05 to about .5 is not a sufficient
basis to conclude that Pendergast's sole made from PVC foam with a
Shore A hardness of from 5A to 50A would inherently have a resiliency
index in the range from about .05 to about .5.
Since all the limitations of claims 1 to 3, 7 to 11 and 15 to
18 are not disclosed in Pendergast for the reasons set forth above,
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the decision of the examiner to reject claims 1 to 3, 7 to 11 and 15
to 18 under 35 U.S.C. § 102(b) is reversed.
The obviousness rejection
We will not sustain the rejection of dependent claims 4
to 6 and 12 to 14 under 35 U.S.C. § 103 for the reasons set
forth above with respect to their parent claims. In that
regard, we note that in the rejection under 35 U.S.C. § 103
before us in this appeal the examiner has not found the
difference identified above between Pendergast and claims 1
and 9 to have been obvious at the time the invention was made
to a person of ordinary skill in the art.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 18 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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JONATHAN P. OSHA
FISH & RICHARDSON
601 THIRTEENTH STREET NW
WASHINGTON, DC 20005
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JVN/jg