Ex Parte Stevens et al

Board of Patent Appeals and Interferences

Mar 30, 2009

10290653 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CARLOS J. STEVENS and ROBERT E. WINKEL
____________

Appeal 2008-5935
Application 10/290,653
Technology Center 3600
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Decided:1 March 30, 2009
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Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5935
Application 10/290,653

STATEMENT OF THE CASE
Carlos J. Stevens and Robert E. Winkel (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 9-12 and 21,
which are all of the pending claims. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellants’ claimed invention is directed to an anti-backlash gear
system used in a gear train with multiple meshes. Specification 1:5-6.
Claim 21, reproduced below, is the only independent claim.
21. In a gear train having a ring gear, a pinion gear,
and a plurality of planet gears, the planet gears
meshing with both the ring gear and the pinion
gear, an anti-backlash mechanism comprising;
a first anti-backlash gear coupled to the
pinion gear and positioned to mesh with a first
planet gear,
a second anti-backlash gear coupled to the
pinion gear and positioned to mesh with a second
planet gear,
a third anti-backlash gear coupled to the
pinion gear and positioned to mesh with the ring
gear,
whereby the first anti-backlash gear controls
backlash between the first planet gear and the
pinion gear, the second anti-backlash gear controls
backlash between the second planet gear and the
ring gear, and the third anti-backlash gear controls
backlash between the pinion gear and the ring
gear.

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Application 10/290,653

The Rejections
Appellants seek review of the Examiner’s rejections of claims 21 and
9-12 under 35 U.S.C. § 112, first paragraph, as containing subject matter that
is not supported by the application as originally filed;2 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter of the invention; and under
35 U.S.C. § 103(a) as being unpatentable over Vranish (US 5,409,431,
issued Apr. 25, 1995) and Cairnes (US 2,663,198, issued Dec. 22, 1953).

SUMMARY OF DECISION
We AFFIRM.
ISSUES
The dispositive issues presented in this appeal are:
1. Do Appellants demonstrate the Examiner erred in determining that
claims 9-12 and 21 contain subject matter that is not sufficiently
described in the application as originally filed to convey to a person of

2 Although the Examiner characterizes this rejection as being based on
failure to comply with the enablement requirement (Answer 3), the
Examiner’s explanation of the rejection addresses new matter and subject
matter supported or not supported by the original disclosure, which pertain
to the written description requirement of 35 U.S.C. § 112, first paragraph.
The Examiner does not make any findings or provide any reasoning directed
to whether or not the application provides sufficient disclosure to enable one
of ordinary skill in the art to make and/or use the invention without undue
experimentation. See In re Strahilevitz, 668 F.2d 1229, 1232 (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 so as to shift the burden to the appellant to
show that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation.)
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Application 10/290,653

ordinary skill in the art that Appellants were in possession of the claimed
subject matter? Appellants rely on the fact that claim 21 is an original
claim and on an un-entered Figure 5 and accompanying description that
do not form part of the original disclosure to support their position that
the subject matter of claim 1 is supported in the application as originally
filed. Appeal Br. 6.
2. Do Appellants demonstrate the Examiner erred in determining that
claims 9-12 and 21 are indefinite? Appellants baldly assert that claim 21
particularly points out the subject matter of the invention and conclude
that, therefore, the part terminologies used in claim 21 need not
necessarily correspond with the parts as described in the Specification.
Appeal Br. 8.

FACTS PERTINENT TO THE ISSUES
FF1 Claim 21 is an original claim. It has not been amended since the
filing date of the application.
FF2 Appellants’ Specification as originally filed does not disclose three
anti-backlash gears. None of drawing Figures 1-4 contained in the
application on its filing date illustrates more than two anti-backlash
gears. The Abstract contained in the application on its filing date
discloses only two anti-backlash gears. Outside of claim 21, there is
no disclosure in the application as originally filed of a third anti-
backlash gear.
FF3 Appellants’ Specification as originally filed does not disclose an
anti-backlash gear coupled to the pinion gear. Rather, Appellants’
Specification discloses a conventional anti-backlash gear coupled to
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Application 10/290,653

gear 104, which meshes with first gear 102, which may or may not be
a pinion gear. Specification 3:20 to 4:18; Figures 1 and 2. In the
disclosed embodiment of Figure 4, the anti-backlash gears 136 and
138 are coupled to the planet gear 132 and mesh with the pinion gear
130 and internal ring gear 134, respectively. Specification 6:6-12;
Figure 4.
FF4 Appellants’ Figure 5 and accompanying description inserted into the
Specification (Amendment filed May 4, 2005), denied entry by the
Examiner as containing new matter, do not show any anti-backlash
gears coupled to the pinion gear. Rather, un-entered Figure 5 shows
three anti-backlash gears 158, 160, 162 coupled to three planet gears
152, 154, 156 and meshing with the internal ring gear 144 and the
pinion gear 142. The accompanying insertion into the Specification
describes the anti-backlash gears as being disposed between the
pinion gear 142 and the ring gear 144, which is consistent with Figure
5, but also describes the planet gears 152, 154, 156 as meshing with
corresponding anti-backlash gears 158, 160, 162, which appears to be
inconsistent with the illustration in Figure 5. Amendment filed May
4, 2005. Simply stated, Appellants’ Figure 5 and accompanying
description inserted into the Specification (Amendment filed May 4,
2005) also do not describe the subject matter of claim 21.
FF5 Excess clearance between teeth of meshing gears due to
manufacturing tolerances, radial play in gear support bearings,
incorrect center-to-center gear spacing, temperature variations, and
the like, results in “backlash” between the gears, such that in changes
of direction of rotation the clearance must be taken up before the gear
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teeth come into contact with each other. Specification 1:9-14. An
anti-backlash gear set includes a primary gear, which carries the
primary and anti-backlash load, and an anti-backlash gear, which
carries only the anti-backlash load. Specification 1:20-23. The
primary and anti-backlash gear are preloaded relative to one another
by displacement of a spring element, resulting in a zero backlash
between the teeth of the anti-backlash gear set and the mating gear
with tooth loads between the contacting teeth of the anti-backlash gear
set and mating gear below the preload level. Specification 1:24 to 2:2.
FF6 Based on Appellants’ discussion of backlash (FF5 and Specification
2:3-12), an anti-backlash gear controls backlash between the anti-
backlash gear set and a gear with which it meshes. There is no
indication that an anti-backlash gear can control backlash between the
anti-backlash gear set and a gear with which the anti-backlash gear set
does not mesh, or between a gear with which the anti-backlash gear
set meshes and another gear with which the anti-backlash gear set
does not mesh.
FF7 Claim 21 is internally inconsistent. The internal inconsistency stems
from the fact that the second anti-backlash gear is recited as being
coupled to the pinion gear and positioned to mesh with a second
planet gear, but is described in the “whereby” clause as controlling
backlash between the second planet gear and the ring gear, that is,
between a gear with which it meshes (the second planet gear) and a
gear with which it is not recited as meshing (the ring gear).

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PRINCIPLES OF LAW
The description requirement found in the first paragraph of 35 U.S.C.
§ 112 is separate from the enablement requirement of that provision. See
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560-64 (Fed. Cir. 1991). The
purpose of the written description requirement is to convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, the
applicant was in possession of the invention as now claimed. Id. at 1563-64.
The possession test alone, however, is not always sufficient to meet the
written description requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 969 (Fed. Cir. 2002). Rather, “the written description requirement
is satisfied by the patentee’s disclosure of ‘such descriptive means as words,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.’” Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997)). The written description requirement is not
necessarily met as a matter of law because the claim language appears in
ipsis verbis in the specification. Enzo, 323 F.3d at 968. “The appearance of
mere indistinct words in a specification or a claim, even an original claim,
does not necessarily satisfy [the written description] requirement.” Id. “The
disclosure must allow one skilled in the art to visualize or recognize the
identity of the subject matter purportedly described.” Id.
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 (CCPA 1977). In
determining whether this standard is met, the definiteness of the language
employed in the claim must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
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disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
A claim is indefinite if it is “insolubly ambiguous” and not “amenable
to construction.” Exxon Research & Eng'g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001).

ANALYSIS
Written Description
In light of our findings above, we conclude that the subject matter of
claim 21, as well as claims 9-12 depending from claim 21, is not sufficiently
described in the application as originally filed to convey to a person of
ordinary skill in the art that Appellants were in possession of the invention,
as claimed, at the time the application was filed. We fully appreciate that
claim 21 is an original claim. As noted above, however, this does not end
the inquiry. To satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the disclosure must allow one skilled in the art to
visualize or recognize the identity of the subject matter purportedly
described. Enzo, 323 F.3d at 968. In this case, given the internal
inconsistency within claim 21 itself and the inconsistency between what is
claimed and what is described in Appellants’ Specification and illustrated in
their drawings, the disclosure does not allow one skilled in the art to
visualize or recognize the identity of the subject matter of claim 21. In
particular, both the Specification and drawings and Appellants’ attempts to
amend the Specification and drawings to describe the subject matter of claim
21 persistently describe the anti-backlash gears as coupled to the planet
gears, and not to the pinion gear. Further, the recitation in the “whereby”
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clause of claim 21 that the second anti-backlash gear controls backlash
between the second planet gear and the ring gear is inconsistent with the
second anti-backlash gear being coupled to the pinion gear and positioned to
mesh with a second planet gear, as required in claim 21. The recitation in
the “whereby” clause appears instead to describe an arrangement wherein
the second anti-backlash gear is coupled to the second planet gear and
positioned to mesh with the ring gear, as described in Appellants’
Specification and drawings. Indeed, Appellants’ unsuccessful attempt to
illustrate and describe the subject matter of claim 21 in the un-entered Figure
5 and accompanying description is further evidence that the original
disclosure, including original claim 21, is not sufficient to allow one skilled
in the art to visualize or recognize the identity of the subject matter of claim
21.
Indefiniteness
The basis of the Examiner’s rejection of claims 9-12 and 21 is not
simply that the terms in claim 21 do not correspond with terms in the
Specification, as Appellants’ argument implies. As noted above, there is
substantial inconsistency between the descriptions and illustrations of the
gear train in Appellants’ Specification and drawings, which show the anti-
backlash gears coupled to the planet gears, not to the pinion gear, and the
gear train recited in claim 21, which recites the anti-backlash gears coupled
to the pinion gear. Moreover, the recitation in the “whereby” clause that the
second anti-backlash gear controls backlash between the second planet gear
and the ring gear is more consistent with the second anti-backlash gear being
coupled to the second planet gear, as disclosed in the Specification and
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drawings, than with the second anti-backlash gear being coupled to the
pinion gear, as required in claim 21.
No claim may be read apart from and independent of the supporting
disclosure on which it is based. We are thus required to read the claims in
light of the disclosure and in that light the anti-backlash gears as they appear
in the claim must take on the meaning ascribed to them in that disclosure.
The result is an inexplicable, indeed insoluble, inconsistency within claim
21, as well as claims 9-12 depending from claim 21, for the reasons
discussed above, which renders the claims indefinite under the second
paragraph of 35 U.S.C. § 112. See In re Cohn, 438 F.2d 989, 993 (CCPA
1971) (sustaining rejection of claims under 35 U.S.C. § 112, second
paragraph, as being indefinite, where the claims were inherently inconsistent
with the description, definitions, and examples appearing in applicant’s
specification).
Obviousness
We shall not sustain the Examiner's rejection of claims 9-12 and 21
under 35 U.S.C. § 103(a). For the reasons expressed above, these claims
are indefinite. Therefore, the prior art rejection must fall because it is
necessarily based on speculative assumption as to the meaning of the claims.
See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

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CONCLUSIONS OF LAW
Appellants fail to demonstrate the Examiner erred in determining that
claims 9-12 and 21 contain subject matter that is not sufficiently described in
the application as originally filed to convey to a person of ordinary skill in
the art that Appellants were in possession of the claimed subject matter.
Appellants fail to demonstrate the Examiner erred in determining that
claims 9-12 and 21 are indefinite.
Therefore, we sustain the rejections of claims 9-12 and 21 under
35 U.S.C. § 112, first paragraph and second paragraph. We do not sustain
the rejection of claims 9-12 and 21 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

JRG

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