Ex Parte Stevens

Board of Patent Appeals and Interferences

Feb 10, 2006

10435858 (B.P.A.I. Feb. 10, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___

Ex parte JOSHUA WILLIAM STEVENS
____________

Appeal No. 2006-0028
Application No. 10/435,858
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL

Joshua William Stevens appeals from the final rejection
(mailed October 14, 2004) of the sole claim pending in the
application.

Appeal No. 2006-0028
Application No. 10/435,858

2
THE INVENTION
The invention relates to “a method for enhancing the
efficiency of freighting dangerous goods” (specification, page 1).
The claim reads as follows:
A method of enhancing the efficiency of freight movement of
dangerous goods, the method comprising utilizing wing-in-ground
craft, types A or B, equipped to haul dangerous goods.
THE REJECTIONS
The claim stands rejected under 35 U.S.C. § 112, first
paragraph, as being based on a specification which is non-enabling
with respect to the claimed invention.
The claim also stands rejected under 35 U.S.C. § 102(b) as
being anticipated by “TAF VIII-2 Jörg IV from Botec,” The WIG Page
Datasheet no. 57 (The WIG Page © 1996-2003)(Jörg).1
Attention is directed to the brief (filed April 27, 2005) and
answer (mailed June 14, 2005) for the respective positions of the
appellant and examiner regarding the merits of these rejections.

1 The appellant has not challenged the examiner’s implicit determination that the Jörg reference
is prior art with respect to the claimed invention under § 102(b).
Appeal No. 2006-0028
Application No. 10/435,858

3

DISCUSSION
I. The 35 U.S.C. § 112, first paragraph, rejection
The examiner’s explanation indicates that this rejection is
predicated on an alleged failure of the appellant’s specification
to comply with the enablement requirement of § 112, ¶ 1. Hence,
the dispositive issue is whether the appellant’s disclosure,
considering the level of ordinary skill in the art as of the date
of the application, would have enabled a person of such skill to
make and use the claimed invention without undue experimentation.
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563-64 (CCPA
1982). In calling into question the enablement of the appellant's
disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement. Id.
The examiner considers the appellant’s disclosure to be non-
enabling because
[i]t is unclear from the specification and claims how
exactly the applicant's vehicle is equipped to haul
dangerous goods. It is also unclear what structure the
vehicle has and what parts are needed in the vehicle.
Due to the breadth of the claim at hand the examiner is
unable to determine exactly how the items being carried
are secured and what the items are that are being
secured. Also it is unclear from the applicant's
specification what exactly the law says. Because laws
Appeal No. 2006-0028
Application No. 10/435,858

4
change over time it is necessary for the applicant to
provide the law and clearly show what is being claimed

and how the vehicle is to accomplish the method being
claimed. Also a list of items that are included in the
law is needed in the specification. For all of the above
reasons the specification must clearly set forth the
invention and how it is functioning in accordance to the
method claimed [answer, pages 3-4].
The examiner has not cogently explained, however, and it is
not apparent in this case involving relatively predictable
mechanical subject matter, why the appellant’s disclosure,
notwithstanding its lack of explicit detail as to the particular
construction of the wing-in-ground craft and the exact manner in
which it is equipped to haul dangerous goods, would not have
enabled a person of ordinary skill in the art to make and use the
claimed invention without undue experimentation.
Moreover, the appellant’s specification and claim are not as
broad as the examiner seems to think. The specification formally
defines the terms “wing-in-ground craft” and “dangerous goods” by
referring to publications which ostensibly were publically
available as of the May 12, 2003 filing date of the instant
application. With regard to “wing-in-ground craft,” the
Appeal No. 2006-0028
Application No. 10/435,858

5
specification states that “[t]he wing-in-ground craft as utilized
in this invention are defined in the international maritime
organization manual, ‘INTERIM GUIDELINES FOR WING-IN-GROUND (WIG)
CRAFT’, December 16, 2002, page 10, under section 4.45.1 and
4.45.2” (pages 1-2), a copy of which is of record. As for
“dangerous goods,” the specification states that “[t]he inventive
method allows for transportation of materials that are currently[ ]2
classified or restricted as dangerous goods under 49 CFR [Code of
Federal Regulations] or IATA DGR [International Air Transport
Association Dangerous Goods Regulations] . . . [which] definition
is what is intended to be the meaning of dangerous goods herein”
(page 3). These definitions also apply to the subject terms as
used in the claim. See McGill, Inc. v. John Zink Co., 736 F.2d
666, 674, 221 USPQ 944, 949 (Fed. Cir.), cert. denied, 469 U.S.
1037 (1984) (“[w]ords which were defined in the specification must
be given the same meaning when used in a claim”). The examiner has
failed to point out why a person of ordinary skill in the art would

2 We understand the word “currently” to mean as of the date the instant application was filed.
Appeal No. 2006-0028
Application No. 10/435,858

6
not have had access to the cited publications or found them
reasonably clear as to the terms defined.
Thus, the examiner has not advanced acceptable reasoning for
the proposition that the appellant’s disclosure, considering the
level of ordinary skill in the art as of the date of the
application, would not have enabled a person of such skill to make
and use the claimed invention without undue experimentation.
Consequently, we shall not sustain the standing 35 U.S.C. § 112,
first paragraph, rejection of the claim.

II. The 35 U.S.C. § 102(b) anticipation rejection
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). It is not necessary that the reference teach
what the subject application teaches, but only that the claim read
on something disclosed in the reference, i.e., that all of the
limitations in the claim be found in or fully met by the reference.
Kalman v. Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781,
789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Appeal No. 2006-0028
Application No. 10/435,858

7
The appellant does not dispute that Jörg discloses type A or B
wing-in-ground craft of the sort recited in the claim, but does
contend that anticipation does not lie because Jörg “does not
disclose anything about the use of the vessel for moving ‘dangerous
goods’, nor does it disclose how one equips such a vessel to
accomplish the movement of ‘dangerous goods’” (brief, page 3).

This argument is unpersuasive as it is not commensurate with
the broad scope of the claim. More particularly, the claim does
not set forth any step of actually using the wing-in-ground craft
to move or haul dangerous goods. The only step recited in the
claim merely calls for an unspecified utilization of wing-in-ground
craft, types A or B, equipped to haul dangerous goods. This rather
broadly defined step reads on the disclosure by Jörg of the
utilization of wing-in-ground craft, presumably types A or B. The
appellant has not explained, and it is not evident, why the Jörg
wing-in-ground craft is not equipped to haul or carry dangerous
goods. Although the appellant submits that the claim requires the
craft to be so equipped in accordance with the relevant code and
regulations, the claim does not contain any limitation to this
effect. The appellant amended the claim during prosecution to
remove the recitation that the craft be equipped “pursuant to the
Appeal No. 2006-0028
Application No. 10/435,858

8
international maritime dangerous good code, to freight such
dangerous goods.” As this limitation is no longer present, it is
improper to read it back into the claim. During patent
examination, claims are to be given their broadest reasonable
interpretation consistent with the underlying specification without
reading limitations from the specification into the claims. In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
Hence, the appellant’s position that the subject matter
recited in the claim distinguishes over that disclosed by Jörg is
unconvincing. Therefore, we shall sustain the standing 35 U.S.C.
§ 102(b) rejection of the claim as being anticipated by Jörg.
SUMMARY
Since at least one rejection of the claim has been sustained,
the decision of the examiner to reject the claim is affirmed.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
Appeal No. 2006-0028
Application No. 10/435,858

9
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Comment [jvn1]: Type address
Appeal No. 2006-0028
Application No. 10/435,858

10
McKellar IP Law, LLP
784 South Poseyville Road
Midland, MI 48640

JPM/ki