Ex parte Baehler

Board of Patent Appeals and Interferences

Jun 23, 1998

08484729 (B.P.A.I. Jun. 23, 1998)

Application for patent filed June 7, 1995.1
1
Paper No. 13
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte THOMAS W. BAEHLER
______________
Appeal No. 97-3071
Application 08/484,7291
_______________
ON BRIEF
_______________
Before CALVERT, MEISTER and ABRAMS, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Thomas W. Baehler (the appellant) appeals from the final
rejection of claims 1-13 and 15, the only claims remaining in
the application.
Appeal No. 97-3071
Application 08/484,729
2
We REVERSE and, pursuant to our authority under 37 CFR
§ 1.196(b), enter new rejections of the appealed claims under
35 U.S.C. § 112, first and second paragraphs.
The appellant’s invention pertains to (1) a piston, (2) a
cylinder block assembly and (3) a method for reducing wear on
a piston bore surface. Independent claims 1, 8 and 15 are
further illustrative of the appealed subject matter and copies
thereof may be found in the appendix to the brief.
The reference relied on by the examiner is:
Fryklund 3,592,105 July 13,
1971
Claims 1-13 and 15 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Fryklund.
We have carefully considered the subject matter defined
by these claims. However, for reasons stated infra in our new
rejections entered under the provisions of 37 CFR § 1.196(b),
considerable speculations are necessary to determine how to
make and use the invention defined by these claims, and to
determine what in fact is being claimed. Since a rejection on
Appeal No. 97-3071
Application 08/484,729
3
prior art cannot be based on speculations and assumptions (see
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA
1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970)), we are constrained to reverse the examiner's
rejections of claims 1-13 and 15 under 35 U.S.C. § 102(b). We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the § 102(b) rejection.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Claims 1-13 and 15 are rejected under 35 U.S.C. 112,
first paragraph, as being based on a non-enabling disclosure.
We initially observe that the test regarding enablement is
whether the disclosure, as filed, is sufficiently complete to
enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. In re Wands,
858 F.2d 731, 737 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) and In
re Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 302 (CCPA
1974). The experimentation required, in addition to not being
undue, must not require ingenuity beyond that expected of one
of ordinary skill in the art. See In re Angstadt, 537 F.2d
Appeal No. 97-3071
Application 08/484,729
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498, 504, 190 USPQ 214, 218 (CCPA 1976).
Here, the appellant in the specification states that, in
order to reduce wear on the piston bore surface (i.e., the
surface of the bore or cylinder in which the piston
reciprocates), the piston should be provided with an “extended
curvature” having a radius which is of “sufficient” magnitude
to provide “continuous, tangential cooperation” between the
extended curvature and the surface of the bore in which it
reciprocates (see, e.g., page 13, lines 6-12; page 14, lines
11-17). These portions of the specification also state that
the “extended curvature” may be only on an extreme end portion
or continue the entire length of the piston. Page 13 of the
specification also states that
The continuous, tangential cooperation is
preferably of a conjugate nature, such that a
rolling motion occurs between the piston 38 and the
piston bore surface 32, as opposed to a sliding,
discontinuous, non-uniform motion. This cooperation
reduces wear on the piston bore surface 32 of the
cylinder block 14, by reducing the Hertzian or
contact stresses present from the “cocked” position
of the piston 38 within the piston bore 26, as the
piston 38 reciprocates and simultaneously rotates
within the piston bore 26 of the cylinder block 14.
While the instant invention contemplates a range of
radial dimensions to achieve the desired wear
reduction function, a radius R in the range of
Appeal No. 97-3071
Application 08/484,729
5
approximately 60" to 80" is preferred. [Lines 12-
24.]
The problem is, however, that the specification does not
provide any meaningful guidance in selecting parameters (e.g.,
what is the extent of an “extended” curvature, relative to
other curvatures such as a simply “rounding” of the corner of
the piston, and what radius of curvature, relative to the
other dimensions of the piston, is “sufficient”) which would
yield the claimed result. This problem is exemplified by the
fact that, according to the appellant, neither “rounding” the
corner of the piston (see specification, page 14, lines 7-9)
nor the arrangement of Fryklund (which appears to have an
extended curvature similar to that described in lines 10-17 of
the specification) will perform the function in question. It
thus appears that only very particular parameters will do.
However, no guidance has been provided for selecting these
particular parameters, and it does not appear from the record
that there
are any established criteria or techniques for making such a
selection that the artisan would be aware of. While page 13
of the specification does state that “a radius R in the range
Appeal No. 97-3071
Application 08/484,729
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of approximately 60" to 80" is preferred,” this information,
without knowing the piston size (i.e., the diameter and
length) would appear to be of little value. From our
perspective, the appellant’s disclosure is merely an
invitation to experiment, rather than an explanation to the
skilled artisan as to how to make and use the claimed
invention.
Claims 1-13 and 15 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter the appellant regards as
the invention. Independent claims 1, 8 and 15 are drafted in
either a means or step plus function format as provided for in
paragraph 6 of § 112 which means or step, according to that
provision, will be “construed to cover the corresponding
structure, material, or acts described in the specification
and equivalents thereof.” Failure to describe adequately the
necessary structure, material, or acts in the written
description means that the drafter has failed to comply with
the mandate of the second paragraph of
§ 112. In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884
Appeal No. 97-3071
Application 08/484,729
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(Fed. Cir. 1997) and In re Donaldson, 16 F.3d 1189, 1195, 29
USPQ2d 1845, 1850 (Fed. Cir. 1994). Here, we are of the
opinion that the appellant has failed to adequately describe
the necessary structure and acts for the reason we have stated
above with respect to the rejection of these claims under the
first paragraph of § 112 and, for this reason, claims 1-6, 8-
13 and 15 fail to comply with the requirements of the second
paragraph of
§ 112.
With respect to claim 7 (which is not drafted in a means
or step plus function format), we observe that the purpose of
the second paragraph of § 112 is to provide those who would
endeavor, in future enterprises, to approach the area circum-
scribed by the claims of a patent, with adequate notice
demanded by due process of law, so that they may more readily
and accurately determine the boundaries of protection involved
and evaluate the possibility of infringement and dominance.
In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). Moreover,
no claim may be read apart from and independent of the
Appeal No. 97-3071
Application 08/484,729
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supporting disclosure on which it is based. See In re Cohn,
438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we are of
the opinion that the recitation of an “extended curvature”
introduces uncertainty into the claim which would preclude one
skilled in the art from determining the metes and bounds of
the claimed subject matter. As we have noted above in the
rejection under the first paragraph of § 112, the appellant’s
specification fails to provide any meaningful guidance as to
what the extent of an “extended” curvature is and what radius
of curvature, relative to the other dimensions of the piston,
is “sufficient” to yield the claimed result. Thus, when read
in light of the specification, one undertaking in future
enterprises would be at a loss to know what structure was
intended to be encompassed by an “extended curvature.”
In summary:
The rejection of claims 1-13 and 15 under 35 U.S.C. §
102(b) is reversed.
New rejections of claims 1-13 and 15 under 35 U.S.C. §
Appeal No. 97-3071
Application 08/484,729
9
112, first and second paragraphs, has been made.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 97-3071
Application 08/484,729
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§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
James M. Meister ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Neal E. Abrams )
Administrative Patent Judge )

Appeal No. 97-3071
Application 08/484,729
-11-
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