Ex Parte Zeh et al

Board of Patent Appeals and Interferences

Jun 30, 2004

09612394 (B.P.A.I. Jun. 30, 2004)

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written for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK A. ZEH and JACOB D. LEVINE
____________
Appeal No. 2004-0554
Application No. 09/612,394
____________
ON BRIEF
____________
Before FLEMING, BAHR, and BLANKENSHIP, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 21-40, all the claims pending in the instant application.
Claims 1-20 have been canceled.
Invention
The invention relates to a shocking or testing apparatus for
computer disc drives. See page 1 of Appellants' specification.
Figure 1 is a block diagram of a test system 100 configured to
test disc drive 102. The test system 100 includes drive tester
104 and shocker 106. Shocker 106 includes hydraulic valve 108,
Appeal No. 2004-0554
Application No. 09/612,394
2
valve actuator 110 and hydraulic actuator 112. See page 4 of
Appellants' specification. Figures 2 and 3 are a pictorial
representation of a portion of system 100, and a representation
showing valve 108 in partial cross section. Figures 2 and 3 show
that valve actuator 110 includes translational position generator
120, lever 122 and fulcrum assembly 138. Figures 2 and 3 also
show that valve 108 includes a valve housing 124 and a valve
spool 126 slidably movable within housing 124. See page 6 of
Appellants' specification. When channel 204 is aligned with the
inlet and outlet ports, hydraulic fluid under pressure is passed
from inlet end 114 to outlet end 116 which provides hydraulic
fluid under pressure to hydraulic actuator 112 which, in turn,
imparts a physical shock on disc drive 102. See page 7 of
Appellants' specification.
Independent claim 21 is representative of Appellants'
claimed invention and is reproduced as follows:
21. An impact tester for impact testing a test specimen,
comprising:
a fluid line containing a pressurized fluid;
a valve, comprising an open position and a closed position,
in the fluid line defining an upstream portion of the fluid line
containing the pressurized fluid and a downstream portion of the
fluid line isolated from the pressurized fluid in the closed
position of the valve and in fluid communication with the
pressurized fluid in the open position of the valve;
Appeal No. 2004-0554
Application No. 09/612,394
1 The Examiner has withdrawn the art rejections in order to
expedite the appeal. See page 2 of the Examiner's answer.
2 Appellants filed an appeal brief on July 17, 2003.
Appellants filed a reply brief on September 24, 2003. The
Examiner mailed out an Office communication on October 6, 2003,
stating that the reply has been entered.
3
an actuator momentarily moving the valve to the open
position independently of an upstream portion pressurized fluid
pressure, admitting a burst of pressurized fluid into the
downstream portion of the fluid line; and
an impact device accelerated by the burst of pressurized
fluid to impact against the test specimen.
References
The Examiner has not relied on any references.
Rejection at Issue
Claims 1-40 stand rejected under 35 U.S.C. § 112, first
paragraph, for containing subject matter which was not described
in the specification in such a way as to reasonably convey to one
skilled in the art that the inventors, at the time the
application was filed, had possession of the claimed invention.1
Throughout our opinion, we will make references to the brief
and the answer for the respective details thereof.2
OPINION
With full consideration being given the subject matter on
appeal, the Examiner's rejection and the arguments of Appellants
Appeal No. 2004-0554
Application No. 09/612,394
4
and the Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 21-40 under 35 U.S.C. § 112, first
paragraph.
The Examiner states that the ground for this rejection is
that claims 21 and 31 have been amended so that an actuator
momentarily moves "the valve to the open position independently
of an upstream portion pressurized fluid pressure." The Examiner
argues that there is no correlation between the dependence or
independence of the valve movement with respect to an upstream
portion pressurized fluid pressure disclosed in the application
as filed. See page 3 of the Examiner's answer.
The first paragraph of 35 U.S.C. § 112 requires that "the
specification shall contain the written description of the
invention[.]" 35 U.S.C. § 112, ¶ 1 (1994). This requires the
Appellant to "convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of
the 'written description' inquiry, whatever is now claimed."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). Thus, the inquiry is "'not a
question of whether one skilled in the art might be able to
construct the patentee's device from the teachings of the
Appeal No. 2004-0554
Application No. 09/612,394
5
disclosure. . . . Rather, it is a question whether the
application necessarily discloses that particular device.'"
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572,
41 USPQ2d 1961, 1966 (Fed. Cir. 1997), citing Martin v. Mayer,
823 F.2d 500, 504, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987) (quoting
Jepson v. Coleman, 314 F.2d 533, 536, 136 USPQ 647, 649-50 (CCPA
1963)).
An Applicant complies with the written description
requirement "by describing the invention, with all its claimed
limitations[.]" Id. "One does that by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully
set forth the claimed invention." Id. "[T]he written description
must include all of the limitations . . . or the applicant must
show that any absent text is necessarily comprehended in the
description provided and would have been so understood at the
time the patent application was filed." Hyatt v. Boone, 146 F.3d
1348, 1354-1355, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998).
Appellants argue that Figures 1, 2 and 3, and the
description in connection with these Figures, clearly show valve
108 operable solely under the control of actuator 110 to allow or
prevent the flow of pressurized fluid into fluid outlet 116 from
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Application No. 09/612,394
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inlet 114. Appellants argue that valve actuator 110 is neither
connected directly or indirectly with the fluid line. See page 4
of Appellants' brief. Appellants further argue that as can be
seen in Figures 2 and 3, to open and close valve 108, actuator
110 includes a translational movement generator 120, which
includes a pair of solenoids 128 and 130, and a lever 122,
pivotally connected to fulcrum 138, that has a first end 136
coupled to valve spool 126 and a second end 134 coupled to
translational movement generator 120. Appellants argue that
these components of the actuator, that cause valve movement, are
clearly separate from the fluid line and therefore independent
from the upstream fluid pressure in the fluid line. See page 2
of Appellants' reply brief.
We agree with Appellants that Figures 2 and 3 show that the
pair of solenoids 128 and 130 along with the other components of
the actuator causes the valve movement. However, we must look to
Appellants' specification to determine how the solenoids operate.
On page 5 of Appellants' specification, the specification
discloses that valve actuator 110 is a hydraulic piston, an air
piston, an electrical solenoid, or some other suitable
mechanical, pneumatic or electro-mechanical device for creating
translational movement of the spool in valve 108. Thus,
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Application No. 09/612,394
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Appellants' claims are broad enough in scope to cover several of
these above embodiments. For the embodiments in which the
solenoids would be an air piston or an electric solenoid, we find
that these components would provide an actuator for momentarily
moving the valve to the open position independently of an
upstream portion pressurized fluid pressure. Therefore, for
these embodiments we find that the specification does reasonably
convey to one skilled in the art, that the inventors at the time
the application was filed, had possession of the claimed
invention.
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Application No. 09/612,394
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In view of the foregoing, we have not sustained the
Examiner's rejection of claims 21-40 under 35 U.S.C. § 112, first
paragraph.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
MRF/lbg
Appeal No. 2004-0554
Application No. 09/612,394
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JOSEPH R. KELLY
WESTMAN, CHAMPLIN & KELLY, P.A.
INTERNATIONAL CENTRE SUITE 1600
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3319