Ex Parte Olson

Board of Patent Appeals and Interferences

Apr 30, 2009

11387602 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. OLSON
____________

Appeal 2009-0836
Application 11/387,602
Technology Center 3600
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Decided1: May 01, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MEDLEY.

Opinion Concurring filed by Administrative Patent Judge JAMESON LEE.

MEDLEY, Administrative Patent Judge.

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 11/387,602

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DECISION ON APPEAL
A. STATEMENT OF THE CASE
Michael A. Olson (“Olson”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-5, 15 and 16. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
References Relied on by the Examiner
Deike 4,339,114 Jul. 13, 1982
Forzelias 4,368586 Jan. 18, 1983
Hanson 5,269,623 Dec. 14, 1993
The Rejections on Appeal
The Examiner rejected claims 1-5, 15 and 16 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
The Examiner rejected claims 1-5, 15 and 16 as indefinite under 35
U.S.C. § 112, second paragraph.
The Examiner rejected claims 1-4 as unpatentable under 35 U.S.C.
§ 103(a) over Deike.
The Examiner rejected claim 5 as unpatentable under 35 U.S.C.
§ 103(a) over Deike and Forzelias.
The Examiner rejected claim 15 as unpatentable under 35 U.S.C.
§ 103(a) over Deike and Hanson.
The Examiner rejected claim 16 as unpatentable under 35 U.S.C.
§ 103(a) over Deike, Hanson and Forzelias.
Claims 1-5, 15 and 16 stand or fall together. (App. Br. 10-12).
The Invention
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Referring to figure 1, reproduced below [numbers from figure 1
inserted], Olson discloses a mobile barrier [10] that includes a freestanding
base [100], an adjustable lifting means, a pair of uprights [200] extending
from the base [100], and a planar panel [600] of expanded steel [650] or
perforated steel which is supported by the pair of uprights [200]. (Abs.;
Spec. pp. 7, 11-13).
Olson’s figure 1 is reproduced below:

Figure 1 depicts a mobile barrier device.
Claim 1, reproduced from the Claim Appendix of the Appeal Brief,
reads as follows:
A mobile barrier device for control of wind and windborne
contaminants, the mobile barrier device comprising a massive
freestanding base, two uprights extending generally upward
from the base, a steel planar panel selected from the group
consisting of i) expanded planar panels and ii) perforated planar
panels, supported by the uprights, and an adjustable lifting
means wherein each said planar panel has from 40 to 83 percent
open area.

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B. ISSUES
1. Has Olson shown that the Examiner erred in finding that the
limitation “each said planar panel has from 40 to 83 percent open area” does
not comply with the written description requirement?
2. Has Olson shown that the Examiner erred in finding that the term
“massive” renders the claims indefinite?
C. FINDINGS OF FACT
Olson’s Disclosure
1. Referring to figure 1, reproduced above [numbers from figure 1
inserted], Olson describes a mobile barrier [10] having a base [100]
which supports uprights [200], and a panel [600] including screen
[650]. (Spec. p. 11, ll. 14-17, p. 12, l. 1).
2. Base [100] is described as massive, wide, smooth and stable having a
heavy weight, broad stance and large surface area that make it
resistant to sinking and tipping in unstable ground. (Spec. p. 12, ll.
21-23)
3. Base [100] comprises a 8”x8” x ¼” main longitudinal tube that is 20
feet in length. (Spec. p. 26, ll. 15-17).
4. Base [100] also includes four transverse 8”x8” x ¼” foot tubes that
are approximately 4 feet in length, providing an overall transverse
footprint of approximately 8 feet. (Spec. p. 26, ll. 17-19).
5. Planar panels [600] are detachable and interchangeable and can
include a “closed” screen to control wind or an “open” screen to
control litter. (Spec. p. 23, ll. 10-12).
6. Referring to Olson’s figure 10, reproduced below [numbers from
figure 10 inserted], Olson describes an open screen [650] of 1.5” x 13
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gage flattened expanded steel with an open area of approximately 83
percent. (Spec. p. 23, ll. 14-16).
7. Olson’s figure 10 is reproduced below:

Figure 10 depicts a flattened expanded steel screen.
8. Referring to Olson’s figure 11, reproduced below [numbers from
figure 11 inserted], Olson describes a closed screen [650’] of 16-gage
perforated steel with an open area of approximately 50 percent,
preferably in the range of 40 to 60 percent. (Spec. p. 23, ll. 15-17).
Olson’s figure 11 is reproduced below:

Figure 11 depicts a perforated steel screen.
Deike
9. Deike describes a fencing system that includes metal tubular sills [33]
that support panels [11]. (Col. 4, ll. 23-24; col. 7, ll. 3-18; claim 25;
fig. 2).
10. Panels [11] are 4 feet high by 8 feet in length, or larger. (Col. 3, ll.
52-67; col. 6, ll. 60-65).
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D. PRINCIPLES OF LAW
Written Description
“The function of the description requirement 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 (CCPA 1976). “[T]o satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.” Purdue Pharma
L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). But, “the
applicant must . . . 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.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-1564 (Fed Cir.
1991) (emphasis in original).
In cases involving ranges, the CCPA recognized that:
Mere comparison of ranges is not enough, nor are mechanical
rules a substitute for an analysis of each case on its facts to
determine whether an application conveys to those skilled in the
art the information that the applicant invented the subject matter
of the claims. In other words, we must decide whether the
invention appellants seek to protect by their claims is part of the
invention that appellants have described as theirs in the
specification.

In re Wertheim, 541 F.2d 257, 263 (CCPA 1976)(emphasis in original).
In Wertheim, claim 1 was directed to a range of “at least 35%” but the
application, of which benefit was sought, described a range of 25-60%. The
CCPA held that:
[W]e are of the opinion that the PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
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invention defined by the claims. By pointing to the fact that
claim 1 reads on embodiments outside the scope of the
description, the PTO has satisfied its burden.

Id. at 263-264. As Wertheim failed to present evidence rebutting the PTO’s
finding, the CCPA went on to hold claim 1 unpatentable for lack of written
description. The CCPA however, determined that claims directed to a range
of “between 35% and 60%” were described as they fell within the range
identified in the application taken in combination with specific embodiments
of 36% and 50%. Id. at 264-265.
Indefiniteness
“[T]he definiteness of the language employed 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 Moore, 439 F.2d 1232,
1235 (CCPA 1971).
The test for definiteness is “whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806, F.2d
1565 (1986). “When the meaning of claims is in doubt, especially when . . .
there is close prior art . . .” a finding of indefiniteness is proper. Amgen, Inc.
v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991).
E. ANALYSIS
Written Description
Independent claim 1 recites “a steel planar panel selected from the
group consisting of i) expanded planar panels and ii) perforated planar
panels . . . wherein each said planar panel has from 40 to 83 percent open
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area.” (App. Br. 13). We construe the claim language to require either (1)
expanded steel planar panels with from 40 to 83 percent open area, or (2)
perforated steel planar panels with from 40 to 83 percent open area.
The Examiner finds that the claim limitation “each said planar
panel has from 40 to 83 percent open area” constitutes new matter
because it is not supported by the original disclosure. (Ans. 4). The
Examiner finds that Olson describes two different embodiments; one
embodiment (expanded steel panel) depicted in figure 10 that has
approximately 83 percent open area; and a second embodiment
(perforated steel panel) depicted in figure 11 having an open area in
the range of 40 to 60 percent. (Ans. 4; FF2s 6-7).
Olson argues that the embodiments of the invention should be
collectively considered and are analogous to examples in a patent
application where the metes and bounds of ranges can be gathered and
inserted into the claims. (Reply Br. 1). Olson further argues that the
language of the Specification constitutes preferred embodiments of
the invention, and does not “place brackets on the whole of the
invention”. (Reply Br. 2).
To satisfy the written description requirement, the disclosure as
originally filed must convey with reasonable clarity to those skilled in
the art that the inventor was in possession of the invention. Olson’s
originally filed disclosure demonstrates that Olson had possession of
an open screen [650] of flattened expanded steel having an open area
of approximately 83 percent. (FF 6). Olson’s originally filed
disclosure also demonstrates that Olson had possession of a closed

2 FF denotes Finding of Fact.
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screen [650’] of perforated steel with an open area in the range of 40
to 60 percent. (FF 7).
However, Olson’s original disclosure does not provide
description for an open screen [650] of flattened expanded steel with
an open area less than approximately 83 percent (i.e., from 40 percent
to less than approximately 83 percent). Olson’s original disclosure
also does not provide description for a closed screen [650’] of
perforated steel with an open area greater than 60 percent (i.e., from
61 to 83 percent).
Like Wertheim, the Examiner finds that Olson is now claiming
embodiments (ranges) outside the scope of the description provided in
the Specification. Olson does not present evidence rebutting the
Examiner’s findings, e.g., demonstrating that one skilled in the art
would have recognized that the distinct embodiments formed a
generic range encompassing both expanded and perforated steel
panels. (Ap. Br., Evidence Appendix “not applicable”). On this
record, Olson fails to demonstrate that one of ordinary skill in the art
would understand that Olson possessed the claimed ranges based on
the limited disclosure provided in the Specification.
For all these reasons, Olson fails to demonstrate that the
Examiner erred in finding that “each said planar panel has from 40 to
83 percent open area” does not comply with the written description
requirement.
Indefiniteness
Claim 1 further recites a “mobile barrier device comprising a massive
freestanding base . . . .” (App. Br. 13).
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The Examiner determines that the term “massive”, used in
independent claims 1 and 15, is a relative term which renders the claims
indefinite. (Final Rejection 3; Ans. 5). The Examiner determines that one
of ordinary skill in the art would not be reasonably apprised of the scope of
the invention because the term is not defined in the claims and the
Specification does not provide a disclosure as to the scale of what is meant
by the term “massive”. (Final Rejection 3; Ans. 5).
Olson argues that there is sufficient information in its Specification to
apprise one skilled in the art of the scope of the invention because the
Specification describes the construction of the device from steel and gives
the overall dimensions of the device components. (App. Br. 10, see FFs 2-
3). Olson also provides a dictionary definition for “massive” as being
formed of or consisting of a large mass: having a bulky form. (App. Br. 10).
Olson argues that the dictionary meaning describes what the inventor meant.
(App. Br. 10).
The question of whether the claims are indefinite turns on whether
those skilled in the art would understand what is claimed when read in light
of the specification. Based on Olson’s arguments (see App. Br. 10-11) and
disclosure (see FFs 2-4), those skilled in the art would not be able to
understand what is claimed based on the use of “massive”. It is unclear
whether the base [100] dimensions, steel construction, mass (i.e., weight), or
combination thereof render the base “massive”. The metes and bounds of
“massive” as used in Olson’s disclosure are indeterminate. More
specifically, it is unclear what those skilled in the art would consider the
lower threshold, in terms of dimensions, mass or material of construction,
between a base that is or is not “massive”. Would a base [100] made of, for
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example, aluminum be considered “massive”? Olson’s Specification
describes the base [100] as having a longitudinal tube that is 20 feet in
length and four transverse foot tubes having an overall transverse footprint
of approximately 8 feet. (FFs 3-4). Would a base [100] having a
longitudinal tube of only 10 feet in length with an overall footprint of
approximately 4 feet (i.e., half the size) also be considered “massive”?
We appreciate that ordinarily it is difficult to establish that a claim is
indefinite in light of the teachings of the prior art and the application
disclosure. However, a finding of indefiniteness is proper when there is
close prior art and the meaning of the claim is in doubt as is the case before
us. In other words, enhanced precision in claim drafting is essential when
the prior art is close.
Deike, the primary reference relied upon by the Examiner, constitutes
close prior art. The Examiner finds that Deike describes a mobile barrier
device including a base [33] (i.e., tubular sills) that is massive. (Final
Rejection 6; Ans. 6). Deike’s tubular sills [33] are arguably massive
because they must provide sufficient support for panels [11] that are 4 feet
high by 8 feet in length, or larger. (FFs 8-9). Olson attempts to distinguish
the claimed invention by arguing that Deike’s system is not massive as it is
manufactured from lightweight steel rod. (App. Br. 11). Olson’s arguments
further demonstrate that metes and bounds of the term “massive” must be
determined before analyzing the patentability of the claims in light of the
prior art. Since the prior art is close, and the metes and bounds of “massive”
cannot be ascertained, the Examiner’s determination that the term “massive”
renders the claim indefinite is proper.
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For all these reasons, we find that Olson has not demonstrated that the
Examiner erred in rejecting claims 1-5, 15 and 16 as indefinite.
Rejection of claims 1-5, 15 and 16 over the prior art
Since the meets and bounds of claims 1-5, 15 and 16 are speculative, as
discussed above, we do not address the prior art rejections with respect to
those claims. See in re Steele, 305 F.2d 859, 863 (CCPA 1962).
F. CONCLUSION
1. Olson has not demonstrated that the Examiner erred in finding that
the limitation “each said planar panel has from 40 to 83 percent open area”
does not comply with the written description requirement.
2. Olson also has not demonstrated that the Examiner erred in
determining that the term “massive” renders the claims indefinite.
G. ORDER
The decision of the Examiner rejecting claims 1-5, 15 and 16 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement is affirmed.
The decision of the Examiner rejecting claims 1-5, 15 and 16 as
indefinite under 35 U.S.C. § 112, second paragraph is affirmed.
No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

LEE, Administrative Patent Judge. Concurring.

I concur.

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