Ex parte SCHMIDT et al.

Board of Patent Appeals and Interferences

Jul 16, 1998

07873309 - (D) (B.P.A.I. Jul. 16, 1998)

Application for patent filed April 24, 1992. 1
-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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WARREN E. SCHMIDT, RANDALL S. WAYLAND,
JAMES R. HALLADAY, TEJBANS S. KOHLI
________________
Appeal No. 96-1121
Application 07/873,3091
________________
ON BRIEF
________________
Before WEIFFENBACH, PAK and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-21, which are all of the claims in the application.
Appeal No. 96-1121
Application 07/873,309
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Claim 1 is illustrative and reads as follows:
1. A fluid mounting for connecting a supported member
to a supporting member, comprising:
(a) a housing formed to be attached to one of said
supporting and supported members;
(b) a first elastomer section which is loaded primarily
only in compression attached to said housing and defining at
least a portion of a first fluid chamber;
(c) a second elastomer section which is loaded primarily
only in shear attached to said housing and defining at least a
portion of a second fluid chamber;
(d) at least one fluid passageway interconnecting said
first and said second fluid chambers;
(e) a piston formed to be attached to the other of said
supporting and supported members, said piston interacting with
said first and said second fluid chambers and said first and
said second elastomer sections such that relative movement
between said supported member and supporting member oscillates
a fluid through said at least one fluid passageway and back
and forth between said first and said second fluid chambers.
THE REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 112, first
paragraph, on the ground that the specification fails to
provide an enabling disclosure for the claimed invention.
Claims 1-14 stand rejected under 35 U.S.C. § 112, second
Appeal No. 96-1121
Application 07/873,309
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paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellants regard as the invention.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded. Accordingly, these rejections will be reversed.
Rejection under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of
ordinary skill in the art to make and use the claimed
invention without undue experimentation. See In re Wright,
999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993);
Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984).
The examiner asserts that appellants’ specification is
nonenabling because the claims do not recite a number of
characteristics of the device described in the specification
(answer, pages 3-5). The examiner does not explain, however,
Appeal No. 96-1121
Application 07/873,309
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and it is not apparent to us, why one of ordinary skill in the
art, in view of appellants’ specification, could not have made
and used appellants’ claimed invention without undue
experimentation. Accordingly, we find that the examiner has
not carried his burden of establishing a prima facie case of
lack of enablement.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner asserts that there is no antecedent basis
for “the other of said supporting and supported members” in
element (e) of claim 1 and element (f) of claim 12 (answer,
page 5).
The preamble of each of claims 1 and 12 recites that the
fluid mounting is for connecting a supported member to a
supporting member. Element (a) of each claim recites that the
housing is to be attached to one of these members. Element
(e) of claim 1 and element (f) of claim 12 state that the
piston is to be attached to the other member. Thus, the
meaning of “the other of said supporting and supported
members” in claims 1 and 12 is clear. We therefore will not
sustain the rejection under 35 U.S.C. § 112, second paragraph.
Appeal No. 96-1121
Application 07/873,309
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DECISION
The rejections of claims 1-21 under 35 U.S.C. § 112,
first paragraph, on the ground that the specification fails to
provide an enabling disclosure for the claimed invention, and
of claims 1-14 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the
subject matter which appellants regard as the invention, are
reversed.
REVERSED
CAMERON WEIFFENBACH )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 96-1121
Application 07/873,309
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TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-1121
Application 07/873,309
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Richard K. Thomson
Lord Corporation
P.O. Box 10038
Erie, PA 16514-0038