Ex Parte Weiss

Board of Patent Appeals and Interferences

Feb 22, 2007

10415798 (B.P.A.I. Feb. 22, 2007)

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for publication and is not binding precedent of the Board.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 MICHAEL WEISS
____________

Appeal 2006-1675
Application 10/415,798
Technology Center 3700
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Decided: February 22, 2007
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
Upon review of the image file wrapper record for this application, we
determine that this appeal is not ready for decision at this time.
Accordingly, pursuant to the authority and provisions of
37 C.F.R. § 41.50(a)(1)(2006), we remand this application to the jurisdiction
of the Examiner for action consistent with our comments below.

Appeal 2006-1675
Application 10/415,798

I. Brief Summary of Prosecution History Prior to Appeal
The record shows that Appellant filed a first submission of national
application papers on May 2, 2003. Those papers included a copy of an
unexecuted declaration identifying PCT Application No. PCT/DE02/03185,
an English translation of a Specification, and a Preliminary Amendment.
The Specification, as translated, is directed to a heating element including “a
stranded wire (6, 6’) . . . [having ] a relatively large number of filaments
wires” (Specification Translation 3). The Specification also discloses that
“[t]he stranded wire is twisted only loosely” (id.).
In the Preliminary Amendment, Appellant (1) significantly amended
the content of the May 2, 2003 English translation of the Specification, (2)
canceled original claims 1-8 and presents new claims 9-27, and (3) presented
amended Figure 1. After further application papers were filed on September
12, 2003, a NOTICE OF ACCEPTANCE OF APPLICATION UNDER 35
U.S.C. 371 AND 37 CFR 1.495 was mailed on October 07, 2003. On this
record, it is unclear whether the Preliminary Amendment was considered as
part of the original application.
The Preliminary Amendment to the Specification principally added
the content of original claims 1-8 to the content of the Specification. The
Preliminary Amendment also amended the Specification to include a
reference to a heating element having a “stranded wire . . . with a plurality of
filament wires and [the strand] is only loosely twisted” (Preliminary
Amendment 3; emphasis deleted) and to “loosely wound filament wires” (id.
at 6; emphasis deleted). Newly added independent claim 9 recites “a
stranded wire (6, 6’) . . . comprising a plurality of filament wires (9, 9’)
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Application 10/415,798

which are, at most, only loosely twisted together.” Newly added claims 22,
25, and 26 also recite the plurality of filament wires as twisted.
In a non-final Office Action mailed May 20, 2004, the Examiner
objected to the drawing under 37 C.F.R. § 1.83(a) as not showing “every
feature of the invention specified in the claims” (non-final Office Action 2).
The Examiner specifically required “the twisted filament wires twisted at a
rate between 0 and 10 must be shown as claimed in the claims 22 and 26 or
the feature(s) canceled from the claim(s)” (id.). In addition, the Examiner
stated that “[n]o new matter should be entered” (id.). The Examiner made
no comments with respect to the Preliminary Amendment to the
Specification.
Appellant replied on August 20, 2004 by filing: (1) a second
amendment to the Specification, (2) a second amended Figure 1, (3) new
Figure 2, (4) a second amendment to the claims, and (5) Remarks to the
Examiner’s non-final Office Action. The Amendment to the Specification
principally added textual reference related to the new Figure 2 in the content
of the Specification. On pages 8 through 9 of the Remarks section,
Appellant maintained that no new matter was added in making the above
noted amendments.
In the Final Office Action mailed November 15, 2004, the Examiner
noted that the drawings submitted on August 20, 2004 were accepted
(Final Office Action 1). No other comments were made with respect to the
drawings and the amendments to the Specification and the claims.

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Application 10/415,798

II. 35 U.S.C. § 112, Second Paragraph Concerns
Independent claim 9 recites “the stranded wire (6, 6’) comprising a
plurality of filament wires (9, 9’) which are, at most, only loosely twisted
together.”
There is a conflict in the record as to what is being twisted that
frustrates an attempt to provide a reasonable interpretation of the claimed
subject matter consistent with the Specification and drawing. According to
independent claim 9, the filament wires (9, 9’) are “loosely twisted
together.” In contrast, page 3 of the Specification, as amended on August
20, 2004, discloses: “As shown in Figure 2, the stranded wire (6, 6’) is
twisted only loosely.” On the other hand, Figure 2 shows subunits of
twisted filaments with these subunits also being twisted to form a twisted
strand. Appellant furthers this frustration in their discussion in the Brief of
the claim limitation “at most, only loosely twisted” by first stating that there
are “small gaps between the filament wires (9, 9’)” (Br. 8) and subsequently
indicating that the gaps “exist . . . between the strands” (id.). Thus, the
record is inconsistent as to whether the filaments, the strand(s) or both are
“loosely twisted.” In light of this inconsistency, there is a possible violation
under § 112, second paragraph, that the Examiner needs to address and
resolve on the written record.
In response to this Remand, the Examiner must address and resolve on
the written record of this application whether the claim language “at most,
only loosely twisted” refers to the filament wires, the strand wire or both and
whether the claim language complies with the second paragraph
requirements of § 112.

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Appeal 2006-1675
Application 10/415,798

III. 35 U.S.C. § 112, First Paragraph (written description) Concerns
We additionally note that there is a possible violation of
§ 112, first paragraph, (written description) since the amended disclosure
regarding Figure 2 does not appear to be supported by the original
disclosure.
As noted above, Figure 2 shows subunits of twisted filaments with
these subunits also being twisted to form a twisted strand. The original
disclosure does not appear to describe subunits of twisted filaments with
these subunits also being twisted to form a twisted strand, as illustrated in
Figure 2.
In response to this Remand, the Examiner must address this issue and
resolve it on the written record by reviewing the English translation of the
Specification of May 2, 2003, the Preliminary Amendment of May 2, 2003,
and the Amendment of August 20, 2004 to make a determination of whether
the Amendments to the Specification, the claims and the drawing comply
with the written description requirement of the first paragraph of
35 U.S.C. § 112.

IV. Claim Interpretation
The record before us contains no adequate interpretation of the
claimed subject matter by Appellant or Examiner. If the above discussed
§ 112 issues are resolved and the prior art rejection is maintained, the
Examiner must respond to this Remand by interpreting the claims on the
written record consistent with Office policy.
In interpreting the claims, the Examiner should be mindful that,
during examination, claim language is given its broadest reasonable
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Application 10/415,798

interpretation that is consistent with the Specification. In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Additionally, a
Specification is examined for whatever enlightenment by way of definitions
or otherwise it may provide to construing claim language. Id. When
interpreting a claim, the Specification is usually the single best guide to the
meaning of disputed claim language. Phillips v. AWH Corp., 415 F.3d
1303, 1315, 1321, 75 USPQ2d 1321, 1327, 1332 (Fed. Cir. 2005).
Further, we note that, on pages 7 through 8 of the Brief, Appellant
argues that the independent claim 9 limitation “a plurality of filament wires
(9, 9’) which are, at most, loosely twisted together” distinguishes over the
primary reference to Futahashi. In arguing this position, Appellant
“assume[s] that the filament wires 4a of Futahashi are conventional, tightly
twisted wires” (Br. 7). Appellant does not provide any information as to
what is considered “conventional, tightly twisted wires.” Thus, Appellant
has not fully explained why independent claim 9 distinguishes from the
primary reference to Futahashi. This information is necessary to adequately
interpret the appealed claims.
Thus, in response to this Remand, the Examiner must also require
Appellant to define what is meant by “conventional, tightly twisted wires”
(Br. 7) and to provide any available evidence which supports the definition.

IV. English Translation Needed
In the Answer, the Examiner maintains a § 103(a) rejection of
appealed claims 9-27 over the Japanese Patent No. 2001237052A to
Futahashi in view of U.S. Patent No. 5,824,996 to Kochman (Answer 2). In
so doing, the Examiner does not rely on a verified English language
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Application 10/415,798

translation of the Japanese language patent document. Rather, the Examiner
relies on a computer (machine) translation of the Japanese document. A
review of the computer (machine) translation reveals that it is inadequate to
make the factual findings necessary for a full review of the issues on appeal.
If the Examiner maintains the rejection under § 103 after responding
to the § 112 concerns noted above, a verified translation of Futahashi must
be provided by the Examiner in response to this Remand.

CONCLUSION
Accordingly, this application is remanded to the Examiner for
appropriate action on the following:
1. to address and resolve on the written record of this application
whether the claim phrase “at most, only loosely twisted” refers to the
filament wires, the strand wire or both and whether the claim language
complies with the second paragraph requirements of § 112;
2. to address and resolve on the written record of this application
whether the amendments to the Specification, the claims and the drawing
comply with the written description requirement of the first paragraph of
35 U.S.C. § 112;
3. if the § 112 issues are resolved and the prior art rejection is
maintained, to interpret the claims on the written record consistent with
Office policy;
4. if the Examiner maintains the rejection under § 103 after
responding to the § 112 concerns noted above, to provide a full verified
translation of Futahashi; and
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Application 10/415,798

5. to require Appellant to define what is meant by “conventional,
tightly twisted wires” (Br. 7).
We hereby remand this application to the Examiner, via the Office of
a Director of the Technology Center, for appropriate action in view of the
above comments.
This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(2006) is not made for further consideration of a rejection. Accordingly,
37 C.F.R. § 41.50(a)(2) does not apply.

REMANDED

sld

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