Ex Parte Tanaka

Board of Patent Appeals and Interferences

Oct 26, 2005

09883279 (B.P.A.I. Oct. 26, 2005)

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written for publication and is not binding precedent of the Board.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 SHINOBU TANAKA
____________
Appeal No. 2005-1510
Application No. 09/883,279
____________
ON BRIEF
____________
Before FRANKFORT, PATE, and McQUADE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 2. Claims 3 through 9, the only other
claims in the application, stand allowed.
As noted on page 1 of the specification, appellant’s
invention relates to a load handling apparatus for a
counterbalance type forklift in which actions of lifting and
lowering a fork, and tilting a mast are conducted by means of a
single operating lever for handling a load. The load handling
apparatus is configured so as to prevent the action condition
from being suddenly changed by an erroneous operation, thereby
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Application No. 09/883,279
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improving safety. A further understanding of the invention can
be derived from a reading of claims 1 and 2 on appeal. A copy of
those claims can be found in the Appendix to appellant’s brief.
No prior art is relied upon by the examiner in rejecting the
appealed claims.
Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described
in the specification in such a way as to enable one skilled in
the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.
Rather than reiterate the examiner's commentary with regard
to the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellant regarding the rejection,
we make reference to the examiner's answer (mailed April 6, 2004)
for the reasoning in support of the rejection, and to appellant’s
brief (filed January 14, 2004) and reply brief (filed June 4,
2004) for the arguments thereagainst.
Appeal No. 2005-1510
Application No. 09/883,279
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OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
and to the respective positions articulated by appellant and the
examiner. As a consequence of our review, we have made the
determination that the examiner’s rejection under 35 U.S.C.
§ 112, first paragraph, will not be sustained. Our reasons
follow.
In rejecting claims 1 and 2 under 35 U.S.C. § 112, first
paragraph, the examiner has urged that the specification fails to
provide an enabling disclosure. More particularly, the examiner
contends that:
“[t]he second switching state is first said to
enable lifting and lowering of the forks of a
forklift truck. See the passage starting on line
10 starting with "that lifts..." and ending on
line 11 with "in a second switching state". The
next passage of the claim states that the lifting
and lowering of the fork is not enabled while the
switch is in the second switching state. Since the
specification is not enabling for the second
switching state to both enable and disable the
lifting and lowering of the forks, it is not
possible for the examiner to determine the
intended scope of the claim. Claim 2 is also
rejected as being dependent upon an unenabled
claim. As the scope of claim 1 is not able to be
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Application No. 09/883,279
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determined at this time, the scope of claim 2
is also unable to be determined as well”
(answer, page 3).
As a further explanation, in the paragraph bridging pages 5
and 6 of the answer, the examiner has made the determination that
the term “switching states” as used in the claims on appeal
“apply to the overall control system (reference numeral 7) and
not to the position of the switch as asserted by appellant.”
It is by now well-established law that the test for
compliance with the enablement requirement in the first paragraph
of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue
experimentation. In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA
1971). See also In re Scarborough, 500 F.2d 560, 182 USPQ 298
(CCPA 1974). Moreover, in rejecting a claim for lack of
enablement, it is also well settled that the examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement in order to substantiate the rejection. See In
re Strahilevitz, 668 F.2d 1229, 212 USPQ 561 (CCPA 1982); In re
Marzocchi, 439 F.2d 220, 169 USPQ 367 (CCPA 1971). Once this is
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Application No. 09/883,279
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done, the burden shifts to appellant to rebut this conclusion by
presenting evidence to prove that the disclosure in the
specification is enabling. See In re Doyle, 482 F.2d 1385, 179
USPQ 227 (CCPA 1973); In re Eynde, 480 F.2d 1364, 178 USPQ 640
(CCPA 1973).
In the present case, after reviewing the disclosure as set
for in the specification and the invention as seen in the
drawings of the application from the perspective of one of
ordinary skill in the art, and having considered the examiner’s
position as set forth on pages 3-6 of the answer, we are of the
opinion that the examiner has not met his burden of advancing
acceptable reasoning inconsistent with enablement. More
particularly, we are in agreement with appellant’s arguments in
the brief and reply brief that the examiner has misconstrued the
claim language “switching state” as being applicable to the
control system as a whole instead of to the position or state of
the switch (9) on the operating lever (3).
In our view the language of claim 1 on appeal itself makes
clear that the controller “tilts said mast when said operating
lever is tilted and said switch is in a first switching state” or
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Application No. 09/883,279
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“lifts or lowers said fork when said operating lever is tilted
and said switch is in a second switching state,” and “prevents
lifting and lowering of said fork when said switch is changed
from said first switching state to said second switching state
while said operating lever is tilted” (emphasis added). The
specification, pages 3-6, in our view, confirms this
understanding of the claim language. Thus, appellant’s
characterization of the claim language as noted on pages 5 and 6
of the brief and in the reply brief is correct and resolves the
enablement issue before us on appeal.
Accordingly, after a careful consideration of appellant’s
disclosure and of the arguments on both sides, it is our opinion
that the level of skill in this art is sufficiently high that the
ordinarily skilled artisan would have been able to make and use
appellant’s claimed invention as set forth in the claims on
appeal based on appellant’s disclosure and without the exercise
of undue experimentation.
For the above reasons, we will not sustain the examiner's
rejection of claims 1 and 2 under 35 U.S.C. § 112, first
paragraph, as being based on a non-enabling disclosure.
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In light of the foregoing, the decision of the examiner is
REVERSED.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 2005-1510
Application No. 09/883,279
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SUGHRUE MION ZINN
MACPEAK & SEAS, PLLC
2100 Pennsylvania Avenue, NW
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