Ex Parte Yun

Board of Patent Appeals and Interferences

Dec 16, 2003

09785273 (B.P.A.I. Dec. 16, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KYEONG-SUN YUN
____________
Appeal No. 2004-0096
Application No. 09/785,273
____________
ON BRIEF
____________
Before FRANKFORT, STAAB and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2 and 3,
which are all of the claims pending in this application. Claim 3 was amended
subsequent to the final rejection (see Paper Nos. 9 and 12).
We REVERSE and enter new grounds of rejection pursuant to 37 CFR
§ 1.196(b).
BACKGROUND
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Application No. 09/785,273
Page 2
The appellant’s invention relates to a water pail equipped with an air passageway
in the outlet thereof to pass through external air so that the contents contained in the
pail are smoothly exhausted out (specification, page 1). According to appellant, the
invention is an improvement over prior art containers provided with a separate hole
spaced from the outlet (specification, page 1). A copy of the claims under appeal is set
forth in the appendix to the appellant’s brief.
The examiner relied upon the following prior art reference in rejecting the
appealed claims:
Reap 1,676,711 Jul. 10, 1928
Claims 2 and 3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Reap.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 13) for the examiner's complete reasoning in support of the rejection and to
the brief (Paper No. 11) for the appellant’s arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied Reap patent, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
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Application No. 09/785,273
Page 3
Before addressing the patentability of claims 2 and 3 under 35 U.S.C. § 102, it is
essential that we understand the scope and content thereof. A basic and important rule
of claim construction is that the language of the claim defines the scope of the
protected invention. Yale Lock Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The
scope of letters patent must be limited to the invention covered by the claim, and while
the claim may be illustrated it cannot be enlarged by language used in other parts of the
specification."); Autogiro Co. of Am. v. United States, 384 F.2d 391, 396, 155 USPQ
697, 701 (Ct. Cl. 1967) ("Courts can neither broaden nor narrow the claims to give the
patentee something different than what he has set forth [in the claim]."). See also
Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908);
Cimiotti Unhairing Co. v. American Fur Ref. Co., 198 U.S. 399, 410 (1905).
Accordingly, "resort must be had in the first instance to the words of the claim" and
words "will be given their ordinary and accustomed meaning, unless it appears that the
inventor used them differently." Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759,
221 USPQ 473, 477 (Fed. Cir. 1984). Second, it is equally "fundamental that claims
are to be construed in the light of the specifications and both are to be read with a view
to ascertaining the invention." United States v. Adams, 383 U.S. 39, 49, 148 USPQ
479, 482 (1966).
With these principles in mind, we turn to the language of claims 2 and 3 on
appeal. Claim 2 requires, inter alia, “a detachable air passageway member which
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Application No. 09/785,273
Page 4
1 The term “detach” is defined as “to unfasten or separate and remove; disconnect; disengage”
(Webster's New World Dictionary, Third College Edition (Simon & Schuster, Inc. 1988)).
2 To stick fast; stay attached. Id.
includes a bisection member which is dimensioned to fit and detachably adhere to an
inside surface of an outlet of a fluid container” and claim 3 recites a bisection member
which is “dimensioned to fit and detachably adhere to an inside surface of an outlet of a
fluid container” wherein the bisection member “has a width dimension of said outlet
such that the edges of the bisection member frictionally engage said outlet to adhere
said bisection member to the outlet.” Inasmuch as the sole dispute in this appeal is
focused on the interpretation of the term “detachable,” as used in appellant’s claims, it
is essential that we understand what is meant by detachable adherence within the
context of appellant’s invention. When understood according to their ordinary and
customary usage, the terms “detachable”1 and “adhere”2 would seem to be inconsistent
with one another so as to render the phrase “detachably adhere” oxymoronic in nature.
We thus turn to appellant’s specification in an attempt to determine what is meant by
this phrase.
Appellant’s specification (page 3) informs us that the bisection member 31 is
“adhered” to divide the inside outlet 10, that an air guide member 32 is “adhered” to
both sides of the lower bisection parts of the outlet and “adhered” to form
predetermined air passageway 40 and that the air guide member 32 is provided to be
“adhered” along the inner surface of the outlet 10 and is provided not to be stuck at the
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Application No. 09/785,273
Page 5
3 We also note that the reference numerals 31 and 32 appear to be reversed in Figure 4.
inside surface of the side of the water pail 20. This detailed description of the invention
mentions nothing about the air passageway or bisection member being “detachable” or
“detachably adhered” to the outlet. Nevertheless, page 4 of appellant’s specification
cites as one of the advantages of appellant’s invention that, “since the air passageway
is detachably formed, it is possible to facilitate cleaning thereof.” Accordingly, it is not
apparent from this written description how the air passageway or bisection member is
secured on the container or whether or to what degree such securement is detachable
and appellant’s drawing Figures 2a, 2b, 3 and 4 do nothing to clarify this point.3 While
the summary of the invention on page 2 of appellant’s brief states that the bisection
member 31 “bisects the outlet and has a width equal to a dimension of the outlet such
that the edges of the bisection member frictionally engage the outlet to adhere the
bisection member to the outlet” and claim 3, which was not an original claim, contains a
similar recitation, Figure 2b in appellant’s application appears to illustrate the bisection
member 31 having a width which is less than the diameter of the outlet and edges
which meet the inner surface of the outlet 10 at points which are not diametrically
opposed, thereby implying that frictional engagement of the bisection member with the
outlet is not the means of adherence of the bisection member and air passageway to
the container.
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Application No. 09/785,273
Page 6
The legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). 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
disclosure as it would be interpreted by one possessing the ordinary level of skill in the
pertinent art. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In light of the above, we must reach the conclusion that one of ordinary skill in
the art would not be able to determine what is meant by the terminology “detachable”
and “detachably adhere” in claim 2 so as to ascertain the scope thereof as required by
35 U.S.C. § 112, second paragraph. Likewise, especially in view of the illustration of
the bisection member in appellant’s Figure 2b, one of ordinary skill in the art would be
unable to ascertain what dimensions of the bisection member are required to meet the
functions of detachable adherence and frictional engagement recited in claim 3. For
the foregoing reasons, we enter a new ground of rejection of claims 2 and 3 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the appellant regards as the invention.
Further, pursuant to our authority under 37 CFR § 1.196(b), we also reject claims
2 and 3 under the first paragraph of 35 U.S.C. § 112 because the specification does not
provide adequate disclosure of the invention so as to enable one of ordinary skill in the
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Application No. 09/785,273
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art to make and/or use the same. For the reasons discussed above, one of ordinary
skill in the art would not be able to determine from appellant’s underlying disclosure
how the bisection member and air passageway are secured to the container so as to be
“detachably adhered.”
Additionally, also pursuant to our authority under 37 CFR § 1.196(b), claim 3 is
rejected under 35 U.S.C. § 112, first paragraph, as the specification, as originally filed,
does not provide support for the invention as is now claimed. As discussed above,
appellant’s specification and drawings as originally filed provide no hint that the edges
of the bisection member frictionally engage the outlet as recited in claim 3.
We shall not sustain the examiner's 35 U.S.C. § 102 rejection of claims 2 and 3
as being anticipated by Reap. 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, 134 USPQ 292, 295 (CCPA 1962). In particular, as discussed above, the
meaning of the terminology “detachably adhered” and the dimensional limitation
required to meet this recitation in claim 3, which is the sole issue in dispute with regard
to this rejection, is not clear in light of appellant’s underlying disclosure. 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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Application No. 09/785,273
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CONCLUSION
To summarize, the decision of the examiner to reject claims 2 and 3 under 35
U.S.C. § 102(b) is reversed and new rejections of claims 2 and 3 under the first and
second paragraphs of 35 U.S.C. § 112 are entered pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b).
37 CFR § 1.196(b) provides that, "A new ground of rejection shall not be considered
final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or
a showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
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Application No. 09/785,273
Page 9
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR 1.1969(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
Appeal No. 2004-0096
Application No. 09/785,273
Page 10
Charles F. Wieland III
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. Box 1404
Alexandria, VA 22313-1404