Ex parte Zoughi et al.

Board of Patent Appeals and Interferences

Jan 5, 1999

08291354 (B.P.A.I. Jan. 5, 1999)

Application for patent filed August 16, 1994. According1
to appellants this application is a continuation of
Application No. 08/036,941, filed March 25, 1993, now
abandoned; which is a continuation of Application No.
07/960,238, filed October 13, 1992, now U.S. Patent No.
5,216,372, issued June 1, 1993; which is a continuation of
Application No. 07/737,344, filed July 29, 1991, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the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 REZA ZOUGHI and SASAN BAKHTIARI
____________
Appeal No. 96-2274
Application No. 08/291,3541
____________
ON BRIEF
____________
Before KRASS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
2
This is a decision on appeal from the final rejection of
claims 18 through 21, 25 and 27 through 31. Claims 1 through
17, 22 through 24, and 26 have been canceled. After the
final
Appeal No. 96-2274
Application No. 08/291,354
3
rejection, Appellants filed an amendment canceling claim 31
which was entered by the Examiner. Therefore, claims 18
through 21, 25 and 27 through 30 are properly before us for
our consideration on appeal.
The invention relates to a method and apparatus for using
microwave technology to precisely measure the thickness of the
layers of rubber covering the steel belts within a tire as a
function of the phase of the reflected microwave signal.
Independent claim 18 is reproduced as follows:
18. A method for making a determination related to
thickness of a material using microwave signals,
comprising:
providing an apparatus for generating a transmitted
microwave signal;
locating said apparatus relative to the material;
sending said transmitted microwave signal towards
the material using said apparatus and causing said
transmitted signal to be incident on the material;
receiving using said apparatus a reflected microwave
signal reflected by the material;
extracting information from said transmitted signal;
extracting information from said reflected signal;
determining a value using said extracted information
from said transmitted signal and said extracted
information from said reflected signal, with said value
related to phase of an effective reflection coefficient,
said effective reflection coefficient related to a ratio
of said transmitted microwave signal and said reflected
microwave signal, said determining step being dependent on
any distance between said apparatus and the material
and, when a distance is present between said apparatus and
the material, said determining step includes taking
into account said distance and
Appeal No. 96-2274
Application No. 08/291,354
Appellants filed an appeal brief on November 20, 1995. 2
Appellants filed a reply appeal brief on March 25, 1996. The
Examiner stated in the Examiner’s letter mailed April 19, 1996
that the reply brief has been entered and considered but no
further response by the Examiner is deemed necessary.
4
finding a thickness of the material using said value
related to said phase.
The Examiner does not rely on any references for the
rejection.
The specification is objected to under 35 U.S.C. § 112,
first paragraph, for failing to provide an adequate written
description of the invention. Claims 18 through 21, 25 and 27
through 30 stand rejected for the reasons set forth in the
objection to the specification. Claims 18 through 21, 25 and
27 through 30 stand rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter which appellants regard as
their invention.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the briefs and the answer for 2
Appeal No. 96-2274
Application No. 08/291,354
5
the details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 18 through 21, 25 and
27 through 30 are properly rejected under 35 U.S.C. § 112.
It is not clear whether the Examiner is objecting to the
specification on the basis of written description or
enablement. Our reviewing court has made it clear that
written description and enablement are separate requirements
under the first paragraph of 35 U.S.C. § 112. Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed.
Cir. 1991). Thus, we will treat these two issues separately.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
Appeal No. 96-2274
Application No. 08/291,354
6
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented
processes including those limitations." Wertheim, 541
F.2d at 262, 191 USPQ at 96 citing In re Smythe, 480 F.2d
1376, 1382, 178 USPQ 279, 284 (CCPA 1973). Furthermore, the
Federal Circuit points out that "[i]t is not necessary that
the claimed subject matter be described identically, but the
Appeal No. 96-2274
Application No. 08/291,354
7
disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983).
On page 3 of the answer, the Examiner argues that
Appellants' claims 18 and 25 require separate and independent
readings of the transmitted and received signals. The
Examiner argues that no such approach has been disclosed by
Appellants. From this argument, it appears that the Examiner
is arguing that the originally filed specification fails to
provide a description of separate and independent readings of
the transmitted and received signals as now later claimed by
Appellants.
In the reply brief, Appellants argue that the scope of
claims 18 and 25 encompasses the preferred embodiment as shown
in Figure 1 in which the standing wave made up of both the
transmitted and received signals as well as the embodiment in
which the signals are separately read. Appellants argue that
Appeal No. 96-2274
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8
they are not precluded from encompassing other embodiments in
the broadest aspects of their claimed invention.
We agree with Appellants that they are not precluded from
claiming in such a way as to encompass other embodiments,
however, we do not have to reach this holding for this issue
here. We note on page 18 of the originally-filed
specification the following is found:
The preceding discussion has assumed that the
transmitting and receiving functions are combined in
a single waveguide. This is the preferred
embodiment of the present invention. However, it
would be possible to implement the present invention
with separate transmitter and receiver which
determines the phase shift of the reflected signal
with respect to the transmitted signal.
From this description, we find that Appellants did have
possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by them.
Thus, we will not sustain the rejection on the basis of
written description.
Now, we will turn to the rejection based upon enablement.
In order to comply with the enablement provision of 35 U.S.C.
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9
§ 112, first paragraph, the disclosure must adequately
describe the claimed invention so that the artisan could
practice it without undue experimentation. In re Scarbrough,
500 F.2d 560, 565, 182 USPQ 298, 302 (CCPA 1974); In re
Brandstadter, 484 F.2d 1395, 1405-06, 179 USPQ 286, 294 (CCPA
1973); and In re Gay, 309 F.2d 769, 772, 135 USPQ 311, 315
(CCPA 1962). If the Examiner had a reasonable basis for
questioning the sufficiency of the disclosure, the burden
shifted to the Appellant to come forward with evidence to
rebut this challenge. In re Doyle, 482 F.2d 1385, 1392, 179
USPQ 227, 232 (CCPA 1973), cert. denied, 416 U.S. 935 (1974);
In re Brown, 477 F.2d 946, 950, 177 USPQ 691, 694 (CCPA 1973);
and In re Ghiron, 442 F.2d 985, 991, 169 USPQ 723, 728 (CCPA
1971). However, the burden was initially upon the Examiner to
establish a reasonable basis for questioning the adequacy of
the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Angstadt, 537 F.2d 498, 502,
190 USPQ 214, 218 (CCPA 1976); and In re Armbruster, 512 F.2d
676, 677, 185 USPQ 152, 153 (CCPA 1975).
Appeal No. 96-2274
Application No. 08/291,354
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The Examiner argues that the specification on page 18
fails to disclose any structure to any degree of enabling
detail. Appellants argue on page 3 of the reply brief that
the Examiner has only stated a conclusion. Appellants point
out that the Examiner did not provide any support for this
conclusion.
Upon a careful review of the record, we find that the
Examiner did not have a reasonable basis for questioning the
sufficiency of the disclosure, and thereby the burden did not
shift to the Appellants to come forward with evidence to rebut
Appeal No. 96-2274
Application No. 08/291,354
11
this challenge. We note that the Examiner has not provided
any reasonable basis for questioning the adequacy of the
disclosure. Furthermore, without any basis provided by the
Examiner, we do find that one of ordinary skill in the art
with only routine
experimentation would have been able to make and use a system
that has the capability to separately measure the transmitted
and received signals to obtain the phase difference between
these signals. Therefore, we will not sustain the Examiner's
rejection under 35 U.S.C. § 112, first paragraph.
Claims 18 through 21, 25 and 27 through 30 stand
rejected under 35 U.S.C. § 112, second paragraph, for failing
to particularly point out and distinctly claim the subject
matter which appellants regard as their invention. Analysis
of 35 U.S.C. § 112, second paragraph, should begin with the
determination of whether claims set out and circumscribe the
particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language
must be analyzed, not in a vacuum, but always in light of
teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art. In re Johnson, 558 F.2d
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Application No. 08/291,354
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1008, 1015, 194 USPQ 187, 193 (CCPA 1977), citing In re Moore,
439 F. 2d 1232, 1235, 169 USPQ 236, 238 (1971). Furthermore,
our reviewing court points out that a claim which is of such
breadth that it reads on subject matter disclosed in the prior
art is rejected under 35 U.S.C. § 102 rather than under 35
U.S.C. § 112, second paragraph. See In re Hyatt, 708 F.2d
712, 715, 218 USPQ
195, 197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904,
909, 164 USPQ 642, 645-46 (CCPA 1970).
Appellants point out on page 17 of the brief that the
Examiner has not offered any salient points or cogent
reasoning for rejecting Appellants' claims under 35 U.S.C. §
112, second paragraph. We also fail to find that the Examiner
has provided any reasons for this rejection. Without the
benefit of the Examiner's specific reasoning, we find that the
claims set out and circumscribe the invention with a
reasonable degree of precision and particularity in light of
teachings of the disclosure as it would be interpreted by one
possessing ordinary skill in the art. Therefore, we will not
sustain the Examiner's rejection under 35 U.S.C. § 112, second
paragraph.
Appeal No. 96-2274
Application No. 08/291,354
13
Appeal No. 96-2274
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14
In view of the foregoing, the decision of the Examiner
rejecting claims 18 through 21, 25 and 27 through 30 is
reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
MRF/sld
Appeal No. 96-2274
Application No. 08/291,354
15
Sheridan, Ross & Mcintosh
1700 Linclon Street
Suite 3500
Denver, CO 80203
Shereece
Appeal No. 96-2274
Application No. 08/291,354
APJ FLEMING
APJ SMITH
APJ KRASS
REVERSED
Prepared: January 21, 2000