Ex parte Schonmeier et al.

Board of Patent Appeals and Interferences

Feb 25, 1998

08322731 (B.P.A.I. Feb. 25, 1998)

Application for patent filed October 13, 1994. According1
to appellants the application is a continuation of Application
07/849,022, filed April 21, 1992, now abandoned.
-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journal and (2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HERBERT SCHONMEIER, PETER HOFFMANN,
HARTMUT DROPCZYNSKI and REINHARD SCHONEN
________________
Appeal No. 96-1678
Application 08/322,7311
________________
HEARD: FEBRUARY 4, 1998
________________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN and
STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 19, 21 and 26. Claims 20, 22-25 and 27-32, the only other
claims remaining in the application, stand withdrawn from
Appeal No. 96-1678
Application 08/322,731
Our understanding of this German language reference is2
derived from a translation prepared in the Patent and Trademark
Office, a copy of which is appended to this opinion.
-2-
consideration by the examiner pursuant to 37 CFR § 1.142(b).
Appellants’ invention pertains to a winding machine for
winding a web onto a core. A basic understanding of the
invention can be derived from a reading of exemplary claim 19, a
copy of which is appended to appellants’ main brief.
In rejecting appellants’ claims under 35 U.S.C. § 103, the
examiner has relied upon the references listed below:
Voss et al. (Voss) 3,497,151 Feb. 24, 1970
Salmela et al. (Salmela) 4,895,315 Jan. 23, 1990
Scheuter 4,969,609 Nov. 13, 1990
Sackenreuter et al. (Sackenreuter) 4,993,310 Feb. 19, 1991
Röder (German Patent) 1,047,001 Dec. 18, 19582
The following rejections are before us for review:
(a) claims 19, 21 and 26 under 35 U.S.C. § 112, second
paragraph, “as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention” (answer, page 4);
(b) claim 19 under 35 U.S.C. § 103 as being unpatentable
over Röder in view of Scheuter and Salmela;
Appeal No. 96-1678
Application 08/322,731
-3-
(c) claim 21 under 35 U.S.C. § 103 as being unpatentable
over Röder in view of Scheuter and Salmela, and further in view
of Voss;
(d) claim 26 under 35 U.S.C. § 103 as being unpatentable
over Röder in view of Scheuter and Salmela, and further in view
of Sackenreuter.
The rejections are explained in the examiner’s answer (Paper
No. 29) and the supplemental examiner’s answer (Paper No. 35).
The opposing viewpoints of appellants are set forth in the
main brief (Paper No. 27) and the reply brief (Paper No. 33).
The 35 U.S.C. § 112, second paragraph, rejection
The examiner’s § 112 rejection is founded upon three alleged
deficiencies in independent claim 19. Specifically, the examiner
considers that (1) claim 19, lines 32-36 (“said guide means being
spaced axially from said longitudinal ends of said upper wedge-
shaped gap . . .”) is inaccurate because the opposite is true,
i.e., the sealing elements are axially spaced from the gap, (2)
claim 19, lines 17-18 (“to enable insertion of a cutter for said
web through said lower wedge-shaped gap”) is a statement of
intended use, and (3) the word “transverse” in claim 19, line 37-
38 (“means mounting said sealing elements for displacement
Appeal No. 96-1678
Application 08/322,731
The examiner no longer maintains that the last three lines3
of claim 19 are inaccurate. See page 3 of the supplemental
answer.
-4-
transverse to an axis of said roll . . .”) is inaccurate.3
With respect to (1), we simply disagree with the examiner
that the terminology of claim 19, lines 32-36 is inaccurate. As
pointed out in the substitute specification at page 10, line 25
through page 11, line 1, and as clearly illustrated in Figures 2
and 3, the guide means (incorrectly numbered element 1 in Figures
2 and 3) is axially offset relative to the upper wedge-shaped gap
in order to accommodate therebetween sealing element 18 when the
sealing element is in its operative (solid line) position.
Concerning (2), it is our view that the terminology found
objectionable by the examiner is not merely a statement of
intended use, but rather a part of the means-plus-function
limitation found in lines 15-18 of the claim (“means for lowering
. . . through said lower wedge-shaped gap”). In any event, even
if the terminology in question was merely a statement of intended
use, there is nothing intrinsically wrong with the technique of
claiming something in terms of what it does rather than what it
is. In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971).
Appeal No. 96-1678
Application 08/322,731
-5-
As to (3), the substitute specification at page 13, lines
22-26, states with respect to the Figure 3 embodiment that “[t]he
axial movement of the sealing elements 18 at the utmost ends of
the air distributor 15 require then only a subsequent lowering .
. . which creates the required free space for the sliding
carriage 9” (emphasis added). Consistent with the above, Figure
3 shows in phantom lines a first axially displaced position of
the sealing element 18 relative to its operative (solid line)
position, and a second transversely lower position thereof
relative to its operative position. In light of this disclosure,
we cannot accept the examiner’s position that the word
“transverse” in line 39 of claim 19 is inaccurate.
In light of the above, we shall not sustain the standing
35 U.S.C. § 112, second paragraph, rejection of the appealed
claims.
The 35 U.S.C. § 103 rejections
We take up next for consideration the standing § 103
rejection of claim 19. Like the examiner, we appreciate that
Röder discloses a first arrangement in the form of air
distributor 5-8 and sealing elements 10, 11 for controlling
contact pressure between support rollers 1, 2 and wound roll 4.
We also appreciate that Scheuter discloses a second arrangement
Appeal No. 96-1678
Application 08/322,731
-6-
in the form of core gripping pins 17, carriages 18 riding on
guides 19, and thrust motors 20 for controlling the contact
pressure between support rollers 11, 12 and wound roll 14. In
addition, we are in accord with the examiner (answer, page 8)
that both of these arrangements perform substantially the same
function. Where we part company with the examiner, however, is
in the examiner’s assertion that it would have been obvious to
the ordinarily skilled artisan to provide the arrangement of
Scheuter in Röder as a supplement thereto because “[o]ne of
ordinary skill in the art would have recognized the limitation in
the upward force created by the air pressure and the
effectiveness of the sealing elements [of Röder] if the roll size
increases beyond a certain size” (answer, page 9).
The examiner has pointed to nothing in the collective
teachings of the references themselves, nor provided a logical
line of reasoning, to support the proposition that the ordinarily
skilled artisan would have found the Röder arrangement to be
ineffective for its stated purpose. Accordingly, the examiner’s
position as to the motivation for supplementing the contact
pressure control arrangement of Röder with that of Scheuter is
sheer speculation. From our perspective, Röder and Scheuter
merely teach alternative arrangements for accomplishing a given
Appeal No. 96-1678
Application 08/322,731
-7-
result, rather than an enhancement of one arrangement in view of
the other. As to the examiner’s additional reliance on Salmela,
we have reviewed this reference but find nothing therein which
makes up for the deficiencies of Röder and Scheuter in this
regard. This constitutes a first reason necessitating reversal.
In addition, the examiner concedes that Röder does not
disclose means for lowering the air distributor 5-8 vertically,
as called for in claim 19. The examiner has taken the position,
however, that “[t]o movably dispose the air distributor 5-8 so
that it may be moved out of the operating position would have
been obvious to a person having ordinary skill in the art seeking
to facilitate maintenance and repair” (answer, page 6).
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). In making such
a rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. Id. Here, the examiner has failed to advance
any factual basis to support the conclusion that it would have
been obvious to one of ordinary skill in the art to modify Röder
Appeal No. 96-1678
Application 08/322,731
-8-
in the manner proposed. The mere fact that Röder could be so
modified is not sufficient in this respect. See In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). This
constitutes an additional reason necessitating reversal.
In light of the above, we shall not sustain the § 103
rejection of claim 19. With respect to the § 103 rejections of
claims 21 and 26, we have also reviewed the Voss and Sackenreuter
references applied, respectively, thereagainst but find nothing
therein to make up for the deficiencies of Röder, Scheuter and
Salmela noted above. Therefore, we also shall not sustain the
§ 103 rejections of claims 21 and 26.
New rejections pursuant to 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR § 1.196(b), we enter
the following new rejections.
Claims 19, 21 and 26 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter which appellants regards as
the invention.
Claim 19, lines 15-17, calls for “means for lowering said
air distributor at least in part from said lower wedge-shaped
gap,” while claim 19, lines 37-38, calls for “means mounting said
Appeal No. 96-1678
Application 08/322,731
While we appreciate that certain embodiments of appellants’4
invention have the seal elements 18 mounted for transverse
movement independent of the air distributor 15, this does not
appear to be the case with respect to the elected species of
Figures 2-3.
-9-
sealing elements for displacement transverse to an axis of said
roll . . . .” Because the function recited in lines 37-38 is not
recited as being an additional function of the “means” of lines
15-17, but instead is attributed to an apparently different
means, a fair reading of appellants’ claim terminology is that
the “means” of lines 37-38 is separate and distinct from the
“means” of lines 15-17. This circumstance results in an
inability to determine precisely what disclosed structure in the
elected species of Figures 2-3 corresponds to the “means” of
lines 37-38. In this regard, it is clear that the lifting
cylinder 17 lowers the air distributor 15 from the lower wedge-
shaped gap between the support cylinders 2, 3, as called for in
lines 15-17 of claim 19. However, lifting cylinder 17 would also
appear to be the only disclosed structure in Figures 2-3 capable
of performing the function of displacing the sealing elements 18
transverse to the axis of the wound roll 6, as called for in
lines 35-37 of claim 19. Accordingly, we are left to speculate4
as to precisely what disclosed structure corresponds to the
“means mounting said sealing elements for displacement transverse
Appeal No. 96-1678
Application 08/322,731
-10-
to an axis of said roll . . .” (claim 19, lines 37-39).
Further, the means-plus-function limitation of claim 19,
lines 37-39, reads in full “means mounting said sealing elements
for displacement transverse to an axis of said roll out of paths
of said heads as said heads are lowered toward said upper wedge-
shaped gaps” (emphasis added). Our review of appellants’
specification reveals no disclosure whatsoever of any structure
for providing a condition responsive relationship between
displacement of the sealing elements 18 transverse to the axis of
the wound roll 6 and lowering of the heads 9, 10 toward the
wedge-shaped gaps between the support cylinders 2, 3. This
circumstance increases our difficulty in determining precisely
what disclosed structure corresponds to the “means” of lines
35-37.
As stated by our present court of review in In re Donaldson
Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994):
Although paragraph six [of 35 U.S.C. § 112] statutorily
provides that one may use means-plus-function language
in a claim, one is still subject to the requirement
that a claim “particularly point out and distinctly
claim” the invention. Therefore, if one employs
means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure
showing what is meant by that language. If an
applicant fails to set forth an adequate disclosure,
the applicant has in effect failed to particularly
point out and distinctly claim the invention as
Appeal No. 96-1678
Application 08/322,731
-11-
required by the second paragraph of section 112.
[emphasis added]
This is precisely the case here, in our view.
Claims 19, 21 and 26 are also rejected under 35 U.S.C.
§ 112, first paragraph, as being based on a disclosure that fails
to comply with the description requirements of this section of
the statute.
The test for determining compliance with the description
requirement found in the first paragraph of 35 U.S.C. § 112 is
whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The content of
the drawings may also be considered in determining compliance
with the written description requirement. Id. Because the
disclosure as originally filed does not disclose mounting the
sealing elements 18 for displacement transverse to the axis of
the wound roll 6, wherein said transverse displacement is
conditioned upon the heads being lowered toward the upper wedge-
shaped gap between the support cylinders 2, 3, the limitation
Appeal No. 96-1678
Application 08/322,731
-12-
calling for “means mounting said sealing elements for
displacement transverse to an axis of said roll out of paths of
said heads as said heads are lowered toward said upper wedge-
shaped gaps” (claim 19, lines 37-39; emphasis added) lacks
descriptive support.
Summary
The examiner’s rejections of claim 19, 21 and 26 under
35 U.S.C. § 112, second paragraph, and 35 U.S.C. § 103 are
reversed.
New rejections of claims 19, 21 and 26 under 35 U.S.C.
§ 112, first and second paragraphs, have been made pursuant to
our authority under 37 CFR § 1.196(b).
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that 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
Appeal No. 96-1678
Application 08/322,731
-13-
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-1678
Application 08/322,731
-14-
Herbert Dubno
The Firm of Karl F. Ross
P.O. Box 900
5676 Riverdale Avenue
Riverdale (Bronx), NY 10471-0900