Ex parte Schaldach

Board of Patent Appeals and Interferences

Aug 20, 1999

08719664 (B.P.A.I. Aug. 20, 1999)

Application for patent filed September 25, 1996. 1
According to the appellant, the application is a continuation
of Application 08/095,902, filed July 22, 1993, now U.S.
Patent No. 5,662,316, issued September 2, 1997.
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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KURT D. SCHALDACH
__________
Appeal No. 99-0075
Application 08/719,6641
___________
ON BRIEF
___________
Before McCANDLISH, Senior Administrative Patent Judge, and
McQUADE and CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Kurt D. Schaldach appeals from the final rejection of
claims 25 through 29, all of the claims pending in the
application. We reverse.
Appeal No. 99-0075
Application 08/719,664
In the final rejection (Paper No. 8), claims 25 through2
29 also stood rejected under the judicially created doctrine
of obviousness-type double patenting. The examiner has since
withdrawn this rejection in view of the terminal disclaimer
filed February 17, 1998 (see page 2 in the examiner’s answer,
Paper No. 17).
2
The invention relates to a “pallet clamping device for
automatically coupling and uncoupling a workpiece on a pallet”
(specification, page 1). Claim 25 is illustrative and reads
as follows:
25. A pallet clamping device comprising an air pressure
supply means to supply air pressure to said pallet clamping
device, a hydraulic vice, a pneumatic pilot valve, a
pneumatic-hydraulic pressure amplifier supplying hydraulic
prssure to said hydraulic vice, said pneumatic pilot valve
includes a power port, a control port, an exhaust port, an
amplification port and a retraction port, a first unlockable
pneumatic coupling, a second unlockable pneumatic coupling, a
piston, and conduit means, said piston alternately connecting
and disconnecting said first and said second unlockable
pneumatic couplings sequentially applying and removing said
air pressure to said pneumatic pilot control valve whereby
said hydraulic vice is alternately unlocked and locked.
Claim 25, and claims 26 through 29 by virtue of their
dependency from claim 25, stand rejected under 35 U.S.C. §
112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter the appellant regards
as the invention. The examiner explains that 2
Appeal No. 99-0075
Application 08/719,664
3
[i]n claim 25, line 9, the phrase “vice is
alternately unlocked and locked.” is vague and
indefinite. It is unclear what structure the vice
means is being locked or unlocked relative to. The
claim is so ambiguous that one skilled [in] the art
could interpret the language “unlocked” as actually
moving the jaws open or, alternatively, releasing a
lock such that another moving means is then capable
of moving the jaws. The phrase “unlockable
pneumatic coupling” (claim 25, lines 5 and 7) is not
understood. This phrase appears to be contradicted
by the language “whereby the vice is alternately
unlocked and locked” (claim 25, line 9). How can a
coupling that is “unlockable” (meaning incapable of
being locked) then be recited as being “locked”?
[answer, page 3].
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 determining whether this standard is met, 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.
Appeal No. 99-0075
Application 08/719,664
4
An analysis of the claim 25 limitations at issue in light
of the appellant’s disclosure shows the examiner’s concerns to
be unfounded.
More particularly, pages 1, 2, 5 and 6 in the appellant’s
specification and Figures 4 through 6 in the appellant’s
drawings clearly indicate that the recitation in claim 25 that
the hydraulic vice is alternately “unlocked and locked” refers
to the condition of the vice being locked or unlocked, i.e.,
clamped or unclamped, respectively, to a workpiece. Page 8 in
the appellant’s specification and Figures 9 through 11 in the
appellant’s drawings clearly indicate that recitation in claim
25 that the pneumatic couplings are “unlockable” simply
denotes that the mating components of the respective couplings
cannot be locked together. Although the limitations in
question might have been composed to make these meanings more
apparent on the face of the claim, they nonetheless are
reasonably precise and particular when read, as they are
required to be, in light of the underlying disclosure.
Appeal No. 99-0075
Application 08/719,664
5
Therefore, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claims 25 through 29.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 99-0075
Application 08/719,664
6
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JPM/pgg
Kenneth L. Mitchell
Suite 1520
1801 E 9th St.
Cleveland, OH 44114