Ex Parte OlsonDownload PDFBoard of Patent Appeals and InterferencesApr 30, 200911387602 (B.P.A.I. Apr. 30, 2009) Copy Citation 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 ____________ Decided1: May 01, 2009 ____________ 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). Appeal 2009-0836 Application 11/387,602 2 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 Appeal 2009-0836 Application 11/387,602 3 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. Appeal 2009-0836 Application 11/387,602 4 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 Appeal 2009-0836 Application 11/387,602 5 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). Appeal 2009-0836 Application 11/387,602 6 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 Appeal 2009-0836 Application 11/387,602 7 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 Appeal 2009-0836 Application 11/387,602 8 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. Appeal 2009-0836 Application 11/387,602 9 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). Appeal 2009-0836 Application 11/387,602 10 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 Appeal 2009-0836 Application 11/387,602 11 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. Appeal 2009-0836 Application 11/387,602 12 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. Appeal 2009-0836 Application 11/387,602 13 MAT MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 Copy with citationCopy as parenthetical citation