Ex Parte Xia et al

Patent Trial and Appeal Board

Sep 30, 2016

12713604 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121713,604 02/26/2010
28524 7590 10/04/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Jian Y. Xia
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2010P03133US 5046
EXAMINER
SUNG, GERALD LUTHER
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
10/04/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIAN Y. XIA, ADAM D. PLANT, HANS-
WERGEN KIESOW, and MARTIN FERDINAND URBAN
Appeal2015-001075
Application 12/713,604
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-8, 10-13, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-001075
Application 12/713,604
CLAIMED SUBJECT MATTER
The claims are directed to a gas turbine driven electric power system
with constant output through a full range of ambient conditions. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1 A gas turbine driven electric power generating system
characterized by a single compressor of the system being
operative to provide a mass flow of compressed air to a
combustor of the system sufficient to support operation of the
combustor at a maximum design point of the combustor
throughout a full design range of ambient atmospheric conditions
of the system.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith
Hines
Utamura
us 3,974,645
us 5,768,884
US 6,202,400 B 1
REJECTIONS
Aug. 17, 1976
June 23, 1998
Mar. 20, 2001
Claims 1-8, 10-13 and 18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1-8, 10-13, and 18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1-8, 10-13, and 18 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-8, 10-13, and 18 are rejected under 35 U.S.C. § 112, second
paragraph, as being incomplete for omitting essential elements.
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Claims 1-8, 10-13, and 18 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Smith. 1
Claim 1-3, 5, 7, 8, 10, 12, and 18 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hines. 2,3
Claims 4 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hines and Smith.
Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hines and Utamura.
OPINION
The rejections under 35 U.S. C. § 112, first paragraph
The rejection of claims 1-8, 10--13and18 under 35 U.S.C. § 112,first
paragraph, as failing to comply with the enablement requirement
Appellants argue the rejection of claims 1-8, 10-13, and 18 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement as a group. Appeal Br. 3-5. We select claim 1 as the
representative claim, and claims 2-8, 10-13, and 18 will stand or fall with
claim 1. 37 C.F.R. § 41.37( c )(1 )(iv).
1 The statement of rejection did not include claim 18 which was discussed in
the body of the rejection. See Final Act. 9, 11. We consider this to be a
typographical error in the statement of the rejection.
2 The statement of the rejection included claims 9 and 11 which were not
discussed in the body of the rejection. See Final Act. 12, 14. We consider
this to be a typographical error in the statement of the rejection.
3 The statement of rejection did not include claim 18 which was discussed in
the body of the rejection. See Final Act. 12, 14--15. We consider this to be a
typographical error in the statement of the rejection.
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The test for compliance with the enablement requirement 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 Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The
determination that "undue experimentation" would have been needed to
make and use the claimed invention is not a single, simple factual
determination. Rather, it is a conclusion that may be reached by weighing
some or all of the following non-exhaustive list of factors: (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. Wands, 858 F.2d at 737.
Claim 1 is directed to providing a single compressor operative to
provide a mass flow of compressed air to a combustor to support operation
of the combustor at a "maximum design point" throughout a "full design
range of ambient atmospheric conditions of the system." Appeal Br. 15,
Claims App. Here, the Examiner finds
because the compression ratio of a compressor varies with
ambient air conditions, most specifically air density, the lack of
direction on how specifically to achieve the desired mass flow
rate in the sizing of the compressor to allow for the desired
"maximum design point" requires a person of ordinary skill in
the art to undergo undue experimentation to make a compressor
capable of achieving the design point.
Final Act. 3--4; see also Ans. 3-7.
In discussing whether the claims are enabling under 35 U.S.C. § 112,
first paragraph, Appellants and the Examiner address the definiteness of the
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claims (an issue which falls under the purview of 35 U.S.C. § 112, second
paragraph). See, e.g., Appeal Br. 4; Ans. 5. We discuss the separate
rejection under the second paragraph of 35 U.S.C. § 112, as made by the
Examiner, below. See MPEP § 217 4 ("The requirements of[] the first and
second paragraphs of pre-AIA 35 U.S.C. 112 are separate and distinct.")
The Examiner correctly points out, as to the lack of enablement
provided by claim 1, "the Appellant provides no analysis of the Wands
factors to properly rebut the enablement rejection in the office action filed
4/2/2014." Ans. 4; see also Final Act. 3 (where the Examiner discusses the
Wands factors). Appellants do not address any of the several factors
enumerated in In re Wands, and discussed by the Examiner, that might
persuade us to conclude that an ordinarily skilled artisan could reproduce the
claimed invention without undue experimentation.
Regarding the Wands factors listed above, the Examiner finds
regarding factor ( 6), that there is a high level of skill in the art, and factor
(7), there is a high level of predictability of the art. See Final Act. 3. The
Examiner correctly found that the Specification lacks specific guidance and
working examples of how to achieve the desired goal. Final Act. 3--4. The
only example in the portion of the Specification relied on by Appellants
provides an example of particular design considerations, a "least dense
expected ambient air condition" of "110°F, 40% relative humidity, and a
pressure of 13.0 pounds per square inch." The Specification then simply
states that "the compressor 28A is designed to supply enough compressed air
at this ambient condition to operate the combustor 30 (and other downstream
components) at its maximum design point." Spec. 3:31--4:4 (emphasis
added). There is no guidance as to how this design is actually achieved.
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The problem is that Appellants seek to preclude any particular way of
achieving the desired outcome without providing any specific examples of
how to do it. In failing to provide specific examples or other guidance,
Appellants leave the person of ordinary skill in the art in a position of
essentially having to guess regarding the proper sizing of a compressor
necessary to support operation of the combustor at a "maximum design
point" throughout a "full design range of ambient atmospheric conditions of
the system" as claimed. Absent specifics concerning these variables, the
designer is left with little information on which to base his design decisions
which greatly hinders the designer's ability to produce a viable system.
Consequently, based on the limited guidance provided by the Specification,
we agree with the Examiner that undue experimentation would be necessary
to achieve effective results under varying atmospheric conditions at different
locations.
Accordingly; based on the record presented; and for reasons discussed
above, we sustain the rejection of claims 1-8, 10-13, and 18 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
The rejection of claims 1--8, 10--13 and 18 under 35 U.S. C. § 112, first
paragraph, as failing to comply with the written description requirement
Regarding the written description requirement, the test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted). In this
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regard, the Examiner found that the application as originally filed does not
provide support for the limitation "a single compressor" claimed in
independent claims 1 and 7.
The Examiner finds "[t]he limitation 'a single compressor' found in
claims 1 and 7 was not present in the original specification at the time of
filing." Final Act. 5. The Examiner further notes: "[b]ecause typical gas
turbine compressors comprise of several blade stages, it is unclear whether
the term 'a single compressor' is used to define a single blade stage, a single
multi-blade stage, or a single compressor system. The written specification
does not describe any interpretation." Id.; see also Ans. 6-7.
Appellants argue "the specification and drawings show and describe a
single compressor throughout. It is well known in the art that a single
compressor may have one or more rows of blades on the same rotating
shaft." Appeal Br. 5. Essentially, Appellants agree with either of the first
two meanings proposed by the Examiner but not the third.
There does not appear to be any disagreement that, in this context, the
most appropriate definition of the term "single" is "[ n Jot accompanied by
another or others; solitary." The American Heritage Dictionary of the
English Language. (Houghton Mifflin 2011) (retrieved from
http:// search. credoreference. com/ content/ entry /hmdictenglang/ single/O; last
visited September 21, 2016).
During prosecution, Appellants' amended claims 1 and 7 to recite "a
single compressor" as opposed to simply "a compressor." See Response
Under 37 C.F.R. § 1.111, filed Dec., 27, 2013. Only the latter term, "a
compressor" has express support in the Specification. The term "single" is
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defined above by what it is not accompanied by, thereby effectively
rendering the term similar to a negative limitation. In Santarus, Inc. v. Par
Pharm., Inc.,694 F.3d 1344, 1351 (Fed. Cir.2012), the court stated that
"[ n ]egative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation."
Appellants' Specification does not appear to provide a reason to exclude
more than one compressor. While not necessarily dispositive (see, e.g.,
Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir.2015)), the
absence of any disclosure or discussion regarding a single compressor
weighs against the Specification being construed as implicitly disclosing the
exclusion of more than one compressor.
The amendment is a narrowing amendment in that it excludes more
than one compressor. However, the description requirement of 35 USC 112,
first paragraph may operate to defeat the patentability of a narrow but not a
broader claim. Irz re Smith; 458 F.2d 1389 (CCPA 1972).
Discussing the amendment, Appellants state:
The original claims recited "Q compressor", so a single
compressor meets the claims. Conversely, if a single prior
compressor does not meet the amended claims, it would not meet
the original claims. A prior gas turbine with multiple
compressors reads on this element of the claims if Q compressor
thereof meets it.
Appeal Br. 5 (emphasis in original). This argument is unclear.
Whether the application as filed permits a claim amendment that
operates to exclude multiple compressors depends on the content of
the Specification and drawings. That is, the issue remains whether the
narrowing limitation "single" with respect to "a" compressor is
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supported by the originally filed Specification and drawings. In this
regard, the term "single" pertains to a physical attribute of a thing in
that it informs how something relates to its physical surroundings.
From the definition above, it informs one that a single thing is not
accompanied by others. In contrast, a person of ordinary skill in the
art would understand the schematic diagrams of the compressor
shown in Figures 2 and 5 to be mere symbolic representations of
functions and relationships between elements without regard to
specific physical characteristics or attributes. In other words, the
Specification and the accompanying schematic drawings do not
disclose the physical attributes of the presently claimed single
compressor as it exists in space, i.e., attributes that relate to structural
characteristics of the compressor which might clearly identify it as a
single compressor "not accompanied by others."
We are mindful that the specification need not describe the claimed
invention in ipsis verbis to comply with the written description requirement.
In re Edwards, 568 F.2d 1349 (CCPA 1978). We are likewise mindful that
patent specifications are written for those skilled in the art and, as such, need
not spell out every precise detail which the claims may subsequently and
particularly be limited to. However, Appellants do not make the argument
that a person of ordinary skill in the art would have recognized Appellants
had possession of a system consisting of a single compressor despite the lack
of express disclosure of same. There is no argument or evidence to show
one of ordinary skill would have known from considering the Specification
and schematic drawings that "~ compressor" demonstrates possession of a
system limited exclusively to a "single compressor." The purpose of the
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written description requirement is to prevent an applicant from later
asserting that he invented that which he did not. Amgen Inc. v. Hoechst
Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). On the record
before us, in light of the arguments presented, we are not apprised as to how
the disclosure conveys that Appellants were in possession of the presently
claimed system, including a "single compressor," as of the filing date of the
application. Accordingly the Examiner's rejection for lack of descriptive
support under 35 U.S.C. § 112, first paragraph, is sustained.
The rejections under 35 U.S. C. § 112, second paragraph
The rejection of claims 1--8, 10--13 and 18 under 35 U.S. C. § 112, second
paragraph, as being indefinite
Appellants argue the rejection of claims 1-8, 10-13, and 18 under 35
U.S.C. § 112, second paragraph, as being indefinite as a group. Appeal Br.
6. We select claim 1 as the representative claim, and claims 2-8, 10-13, and
18 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner identifies at least two limitations that render claim 1
(and independent claim 7) indefinite. First, the Examiner finds "the
limitation 'a full design range of ambient atmospheric conditions' found in
claims 1 and 7 renders the claims indefinite because it is unclear what range
of ambient atmospheric conditions the compressor must operate in order to
read on the claimed invention." Final Act. 6.
Appellants argue: "[t]he design range of atmospheric conditions of a
power generating plant is always provided by the provider of the plant,
therefore it is always known and definite" (Appeal Br. 6) and that "[a]
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system is configured to accommodate conditions at a given installation site"
(Reply Br. 2).
The Examiner responds:
The fact that power plants provide the design ranges for a
specific engine does not mean that the claims are definite. The
Examiner may not import such design ranges into the claimed
limitation and such ranges are necessary to provide definiteness
to the claims. Furthermore, because such design ranges are
provided by each provider, the design ranges vary between
different engines and therefore provides a different claim scope
when applied to different engines and locations.
Ans. 7.
There is no dispute that a full design range of ambient atmospheric
conditions can vary dramatically from one geographic location to another
and hence have different meanings in different places. Further,
notwithstanding that the design range of atmospheric conditions of a
particular power generating plant may be known to a plant provider, such
personal knowledge does not render the claim language "a full design range
of ambient atmospheric conditions" definite. The problem from the
standpoint of a potential infringer is that
[B]ecause operating ranges vary from engine to engine and
location to location, if the claims are to be defined by each
specific engine/location, the scope of the claims would vary
between different engines and additionally between the same
engines at different locations. Thus, an ordinary skilled worker
could theoretically infringe the claim limitation in one location
but not in another.
Ans. 5.
In other words, the scope of "a full design range of ambient
atmospheric conditions" shifts based on the plant that is selected and the
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engine designer's preferences. These variable parameters do not provide the
requisite precision or clarity to one seeking to discern the scope of the claims
in order to design a non-infringing system.
Second, the Examiner determined that "the limitation 'a maximum
design point of the combustor' found in claims 1 and claim 7, in spirit,
renders the claims indefinite because the claimed maximum design point of
a combustor may by definition be altered." Final Act. 6; see also id. at 6-7.
The Examiner further states: "the maximum design point being definite in
specific engines does not make the claimed maximum design point definite."
Ans. 7.
Appellants argue the terms "'maximum design point' and 'maximum
power output' are defined in the specification on page 4, lines 26-32. The
maximum design point of every power plant combustor is specified for
engineering and installing the compressor as known in the art. Therefore it
is definite to one skilled in the art." Appeal Br. 6. Appellants further
contend that the "maximum design point of a combustor is not arbitrarily
changeable." Reply Br. 3.
Despite the Examiner's and Appellants' disagreement on whether the
maximum design point of the combustor may be arbitrarily set, Appellants
admit that the maximum design point of every power plant combustor is
different. As such, from objectively reading claim 1 and the Specification,
and similar to the "design range" limitation discussed above, one of ordinary
skill in the art would understand the scope of the phrase "maximum design
point" to change based at least on the intent of the designer and/ or the
implementation location.
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Similarly, the Specification does not provide standards for
ascertaining "a full design range of ambient atmospheric conditions" or
"maximum design point" so that one of ordinary skill in the art would
understand a precise and invariable scope when the claims are read in light
of the Specification. We must, therefore, agree with the Examiner that the
claims are indefinite.
Accordingly, based on the record presented, and for reasons discussed
above, we sustain the rejection of claims 1-8, 10-13, and 18 under 35
U.S.C. § 112, second paragraph, as being indefinite.
The rejection of claims 1--8, 10--13 and 18 under 35 U.S. C. § 112, second
paragraph, as being incomplete for omitting essential elements
The Examiner finds that "[t]he omitted elements are: The claimed
sizing of the compressor and the guide vane camber angles and the required
operating temperature range and the maximum design point." Final Act. 7.
Appellants' entire response to this rejection is: "[t]his rejection
combines rejections addressed above regarding sizing of the compressor,
guide vane camber angles, design temperature range, and maximum design
point. Each of these rejections is fully addressed above." Appeal Br. 7.
"[A ]rguments shall explain why the examiner erred as to each ground
of rejection contested by appellant." See 37 C.F.R. § 41.37(c)(l)(iv)
(emphasis added). "[A] 'ground of rejection' for purposes of [now
41.37(c)(iv)] is not merely the statutory requirement for patentability that a
claim fails to meet but also the precise reason why the claim fails that
requirement." Hyatt v. Dudas, 551 F. 3d 1307, 1312 (Fed. Cir. 2008)
(discussing In re McDaniel 293 F.3d 1379). "[T]he applicant can waive
appeal of a ground of rejection." Hyatt v. Dudas, 551 F. 3d at 1314. Here,
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Appellants waived appeal of this ground of rejection by failing to present
specific arguments explaining why the Examiner erred as to this particular
ground of rejection which differs from those previously discussed by
Appellants.
Accordingly, we summarily sustain the rejection of claims 1-8, 10-
13, and 18 under 35 U.S.C. § 112, second paragraph, as being incomplete for
omitting essential elements without considering the merits thereof.
The Prior Art Rejections
The rejection of claims 1--8, 10--13, and 18 under 35 U.S.C. § 102(b) as
being anticipated by Smith
The propriety of the Examiner's rejection of claim 1-8, 10-13, and 18
as anticipated by Smith hinges on our interpretation of the term "a full
design range of ambient atmospheric conditions." See Final Act. 8-9, 10-11;
Appeal Br. 4, 8-9, 10-11; Ans. 8; Reply Br. 2. However, we decline to
speculate about what Appellants intended to claim. Before a proper review
of the rejection under 35 U.S.C. § 102 can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Since claims 1 and 7 fail to satisfy the
requirements of the first and second paragraphs of 35 U.S.C. § 112 we
reverse, proforma, the rejection under 35 U.S.C. § 102 without comment on
the merits thereof. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI
2008) (citing In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language.))
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Accordingly, for the foregoing reasons, we do not sustain the rejection
of dependent claims 1-8, 10-13, and 18 under 35 U.S.C. § 102(b) as being
anticipated by Smith.
The rejection of claims 1-3, 5, 7, 8, 10, 12, and 18 under 35 U.S.C. § 102(b)
as being anticipated by Hines
The Examiner makes several assumptions about independent claims 1
and 7 and the Hines reference. One of those assumptions concerns the
recited "single compressor." More particularly, the Examiner determines:
With regards to the limitation "a single compressor" the
Applicant's specification does not provide written support for a
compressor having a single stage. Since the compressor likely
has multiple blade stages, the term "a single compressor" must
be interpreted to mean at least having several stages where
therefore, the compressor of Hines is then interpreted as "a single
compressor."
Final Act. 12.
Appellants contend that Hines does not disclose "a single compressor"
as called for in claims 1 and 7. Specifically, Appellants assert:
Hines does not provide a single compressor with the capacity
required. A compressor section with multiple compressors does
not meet the claim. Hines requires multiple compressors
(abstract: "includes a low pressure compressor, a high pressure
compressor, and ... "). Hines 12 and 16 do not constitute a single
compressor, since they are not attached to the same shaft. He
requires multiple compressors (abstract: "includes a low
pressure compressor, a high pressure compressor, and . . . ").
Each compressor is driven by a different turbine section (20 and
22 respectively). Therefore Hines does not meet the claims at
least because he does not meet the recited range with ~
compressor.
Appeal Br. 12 (emphasis in original).
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The Examiner responds: "the low pressure and high pressure of
compressor [sic] [of Hines] is a machine or a section of a machine that
compresses gases consisting of or having only one portion or feature and
therefore reads on the claimed scope. Ans. 9.
Figure 1 of Hines is a schematic diagram of a gas turbine engine and
its accompanying text sheds little light on what is physically envisioned by
that diagram. See Hines, col. 2:53---col. 3:16. Despite the Examiner's and
Appellants' competing contentions, we cannot ascertain whether the
compressor arrangement 12, 16 shown and described in Hines is a single,
multistage compressor or two distinct compressors. As discussed above
regarding the § 112-written-description rejection, "single" relates to a
physical attribute of the compressor's arrangement. For example, as the
Examiner alludes to, a two-stage compressor in a single housing or
enclosure may be regarded by some as a single, albeit two-stage, compressor
and by others as multiple, as opposed to a single, compressors. In any case,
based on Hines's schematic alone, there is ultimately insufficient evidence
of record to determine Hines's physical compressor arrangement. Thus, it
cannot be conclusively ascertained whether Hines employs a "single"
compressor. As the Examiner bears the burden of establishing patentability,
the Examiner's rejection cannot be sustained on the record before us. See In
re Warner, 379 F.2d 1011, 1016 (CCPA 1967) ("[T]he precise language of
35 U.S.C. § 102 that '(a) person shall be entitled to a patent unless,
'concerning novelty and unobviousness,' clearly places a burden of proof on
the Patent Office which requires it to produce the factual basis for its
rejection of an application under sections 102 and 103.")
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Accordingly, based on the record presented, and for the foregoing
reasons, we do not sustain the rejection of independent claims 1 and 7 and
dependent claims 2, 3, 5, 8, 10, 12, and 18 under 35 U.S.C. § 102(b) as being
anticipated by Hines.
The rejection of claims 4 and 11 under 35 U.S. C. § 103 (a) as being
unpatentable over Hines and Smith
The Examiner does not rely on Smith to cure the deficiencies of Hines
in connection with independent claims 1 and 7. Final Act. 15-16.
Accordingly, we do not sustain the rejection of dependent claims 4
and 11 under 35 U.S.C. § 103(a) as being unpatentable over Hines and
Smith.
The rejection of claims 6and13 under 35U.S.C.§103(a) as being
unpatentable over Hines and Utamura
The Examiner does not rely on Utamura to cure the deficiencies of
Hines in connection with independent claims 1 and 7. Final Act. 17.
Accordingly, we do not sustain the rejection of dependent claims 6
and 13 under 35 U.S.C. § 103(a) as being unpatentable over Hines and
Utamura.
DECISION
The Examiner's rejection of claims 1-8, 10-13 and 18 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is affirmed.
The Examiner's rejection of claims 1-8, 10-13 and 18 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed.
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The Examiner's rejection of claims 1-8, 10-13 and 18 under 35
U.S.C. § 112, second paragraph, as being indefinite is affirmed.
The Examiner's rejection of claims 1-8, 10-13 and 18 under 35
U.S.C. § 112, second paragraph, as being incomplete for omitting essential
elements is affirmed without considering the merits.
The Examiner's rejection of claims 1-8, 10-13, and 18 under 35
U.S.C. § 102(b) as being anticipated by Smith is reversed without
considering the merits.
The Examiner's rejection of claims 1-3, 5, 7, 8, 10, 12, and 18 under
35 U.S.C. § 102(b) as being anticipated by Hines is reversed.
The Examiner's rejection of claims 4 and 11 under 35 U.S.C. § 103(a)
as being unpatentable over Hines and Smith is reversed.
The Examiner's rejection of claims 6 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over Hines and Utamura is reversed.
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)(l )(iv).
AFFIRMED4
4 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed." 37 C.F.R.
§ 41.50(a)(l).
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