Ex Parte Cotter

Board of Patent Appeals and Interferences

Jan 30, 2004

09746795 (B.P.A.I. Jan. 30, 2004)

1Appellant submitted an amendment subsequent to the final
rejection which cancelled nonelected claims 11-16, and this
amendment was indicated by the examiner as entered upon a notice
of appeal. See the amendment dated Oct. 9, 2002, Paper No. 6,
entered as per the Advisory Action dated Oct. 16, 2002, Paper No.
7. However, we note that, contrary to the examiner’s notation on
the amendment and the Advisory Action, the amendment of Paper No.
6 has not been physically entered into the file record. Upon
return of this application to the jurisdiction of the examiner,
the examiner should ensure that the record is correct and this
amendment entered.
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for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JONATHAN P. COTTER
____________
Appeal No. 2004-0051
Application No. 09/746,795
____________
ON BRIEF
____________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claim 18.1 The remaining claims pending in this
application are claims 1-10 and 17, which stand allowed by the
Appeal No. 2004-0051
Application No. 09/746,795
2
examiner (Brief, page 2; Answer, page 2, ¶(3)). We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a tool 10
for installing retaining rings 12 in different size cylinder bodies
14, which tool has a handle lever 18 carrying a gripper 20 that
engages a groove 34 in the cylinder body 14, a relatively movable
compressing lever 22 with an engaging surface 110 for compressing
the retaining ring 12 and a pair of links 24 pivotally connected by
pins 144, 150 to the levers to slidably displace and pivot the
compressing lever 22 relative to the handle lever 18 (Brief, page
5). A copy of the sole claim on appeal is attached as an Appendix
to this decision.
Claim 18 stands rejected under 35 U.S.C. § 112, first
paragraph, “as containing subject matter which was not described in
the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor(s), at the time the
application was filed, had possession of the claimed invention.”
Answer, page 3. We affirm the examiner’s rejection essentially for
the reasons stated in the Answer and those reasons set forth below.

Appeal No. 2004-0051
Application No. 09/746,795
3
OPINION
The examiner finds that this application was filed on Dec. 22,
2000, and appellant submitted an amendment dated July 30, 2002
(Paper No. 4) which added claim 18, now on appeal (Answer, page 3).
The examiner finds that newly presented claim 18 for the first time
recites that the slot 84 can be located in either the handle lever
or the compressing lever (id.). The examiner concludes that this
newly claimed subject matter is “new matter” as the descriptive
portion of the specification makes no suggestion whatsoever
that the “slot” can be located in either the handle lever or
the compressing lever, only providing support for the slot being
located in the handle lever (id.). We agree.
Appellant argues that claim 18 is “simply broad enough to
literally encompass or cover an installation tool having a slot in
either one of the levers,” in short reading on a tool in which the
slot is in the compression lever and the levers are connected by a
pin in the slot and carried by the handle lever (Brief, page 11).
Appellant argues that claim 18 is broad enough to cover a “simple
reversal” of the locations of the slot 84 and the pin 120 of the
preferred embodiment (Brief, page 12; Reply Brief, page 2).
Appellant also argues that the written description emphasizes that
it is the “relative movement” of the levers in conjunction with the
Appeal No. 2004-0051
Application No. 09/746,795
2141 F.2d 522, 61 USPQ 122 (CCPA 1944) and 134 F.3d 1473, 45
USPQ2d 1498 (Fed. Cir. 1998), respectively.
3Many of appellant’s arguments in the Brief are directed to
the issue of enablement (e.g., see pages 12 and 16). We need not
respond to these arguments other than to note that the examiner’s
rejection is solely directed to the written description
requirement of section 112, first paragraph, and the enablement
requirement is separate and distinct from the written description
requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991)..
4
slot and pin and a link pivotally connecting the lever to advance
the ring engaging surface and compress the retaining ring that
constitutes the “basic approach” of the inventor’s method and tool,
not the location of the slot (Brief, pages 13-14; Reply Brief, page
2). Finally, appellant cites In re Vickers and Gentry Gallery v.
Berkline Corp.2, arguing that the slot 84 in this appeal is not an
essential element of the invention (Reply Brief, pages 2-4).3
Appellant’s arguments are not persuasive. Contrary to
appellant’s interpretation of claim 18 as a broad generic claim, we
determine that claim 18 specifically recite two species, one with
the slot in the handle lever and one with the slot in the
compressing lever. Since the “slot in the compressing lever”
species is not disclosed in the original specification or claims,
there is no compliance with the written description requirement of
Appeal No. 2004-0051
Application No. 09/746,795
5
the first paragraph of section 112. See Ex parte Ohshiro, 14
USPQ2d 1750, 1752 (Bd. Pat. App. & Int. 1990).
To satisfy the written description requirement, one skilled in
the art, reading the original disclosure, must “immediately discern
the limitation at issue” in the claims. Waldemar Link Gmbh & Co.
v. Osteonics Corp., 32 F.3d 556, 558, 31 USPQ2d 185, 1857 (Fed.
Cir. 1994). “It 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 disclosure....Rather, it is a question whether the
application necessarily discloses that particular device.’” Martin
v. Mayer, 823 F.2d 500, 505, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987),
quoting Jepson v. Coleman, 314 F.2d 533, 536, 136 USPQ 647, 649-50
(CCPA 1963). The written description requirement is not satisfied
if the disclosure would lead one to speculate as to “modifications
that the inventor might have envisioned, but failed to disclose.”
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (Fed. Cir. 1997). Contrary to appellant’s discussion of
Gentry Gallery (Reply Brief, pages 3-4), there is no new “essential
element” test mandating an inquiry into what an inventor considers
to be essential to his invention. See Cooper Cameron Corp. v.
Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323, 62 USPQ2d
1846, 1850-51 (Fed. Cir. 2002). The Court in Gentry “applied and
Appeal No. 2004-0051
Application No. 09/746,795
6
merely expounded upon the unremarkable proposition that a broad
claim is invalid when the entirety of the specification clearly
indicates that the invention is of a much narrower scope.” Cooper
Cameron Corp. v. Kvaerner Oilfield Prods., Inc., supra.
For the foregoing reasons and those stated in the Answer, we
determine that the originally filed disclosure does not support the
two species required by claim 18 on appeal. Accordingly, we affirm
the examiner’s rejection of claim 18 for failure to comply with the
written description requirement of the first paragraph of 35 U.S.C.
§ 112.
Appeal No. 2004-0051
Application No. 09/746,795
7
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-0051
Application No. 09/746,795
8
REISING, ETHINGTON, BARNES, KISSELLE,
LEARMAN & McCULLOCH, P.C.
P.O. Box 4390
TROY, MI 48099-4390
Appeal No. 2004-0051
Application No. 09/746,795
9
APPENDIX
18. A retaining ring installation tool, comprising;
a handle lever having a first end and a second end;
a gripper carried by the handle lever and engageable with a
sidewall of a cylinder to locate and anchor the tool relative to
the cylinder;
a compressing lever, a slot in one of the levers, the
compressing lever connected to the handle lever for movement
between first and second positions with a portion slidably and
pivotally connected in the slot, the compressing lever having a
ring engaging surface for releasably receiving a portion of a
retaining ring; and
a link pivotally connected to the handle lever and operably
connecting the compressing lever to the handle lever whereby when
the compressing lever is moved relative to the handle lever from
its first position toward its second position, the link slidably
displaces the compressing lever in the slot to advance the ring
engaging surface and compress the retaining ring.