Ex parte Bolza-Schunemann

Board of Patent Appeals and Interferences

Apr 22, 1998

08356227 (B.P.A.I. Apr. 22, 1998)

Application for patent filed December 19, 1994. According1
to appellant, the application is a National stage application
under 35 U.S.C. § 371 of PCT/DE93/00525, filed June 18, 1993.
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CLAUS A. BOLZA-SCHUNEMANN

_____________
Appeal No. 97-1437
Application 08/356,2271
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-1437
Application 08/356,227
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claim 18, the only claim remaining in this
application. Claims 1 through 17 have been canceled.
The subject matter on appeal is directed to a drive
for a multi-color, web-fed, rotary printing press. As noted on
page 2 of appellant's brief, the printing press and drive
therefore are "shown in somewhat schematic fashion in Figs. 1 and
2 of the drawings." A copy of claim 18 can be found in Appendix
A of appellant's brief.
On page 3 of the examiner's answer (Paper No. 12), it
is noted that "[t]he rejection of the claims [sic, claim 18] on
prior art as set forth in the final rejection is withdrawn."
Accordingly, there are currently no prior art references relied
upon by the examiner in rejecting the appealed claim.
Appeal No. 97-1437
Application 08/356,227
3
The sole rejection presented for our review is that of
claim 18 under 35 U.S.C. § 112, first paragraph, as being based
on a specification which fails to provide an enabling disclosure,
i.e., which fails to adequately teach one skilled in the art how
to make and use the claimed invention. On pages 4 through 11 of
the answer, the examiner presents a commentary of why he
considers the present disclosure to be "indefinite and
insufficient."
Rather than reiterate the details of the conflicting
viewpoints advanced by the examiner and appellant regarding the
rejection, we make reference to the examiner's answer (Paper
No. 12, mailed October 24, 1996) for the examiner's reasoning in
support of the rejection, and to appellant's brief (Paper No. 11,
filed August 5, 1996) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claim 18,
Appeal No. 97-1437
Application 08/356,227
4
and to the respective positions articulated by appellant and the
examiner. As a consequence of our review we have reached the
determination which follows.
Looking to the examiner's rejection of claim 18 on
appeal, we observe that the first paragraph of 35 U.S.C. § 112
requires, inter alia, that the specification of a patent (or
an application for patent) enable any person skilled in the art
to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those skilled in the art to make and
use the invention without "undue experimentation." In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That
some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is "undue." Id.
at 736-37, 8 USPQ2d at 1404.
Moreover, in rejecting a claim for lack of enablement,
it is well settled that the examiner has the initial burden of
producing reasons that substantiate the rejection. See In re
Appeal No. 97-1437
Application 08/356,227
5
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982);
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). Once this is done, the burden shifts to the appellant to
rebut this conclusion by presenting evidence to prove that the
disclosure in the specification is enabling. See In re Doyle,
482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973), cert.
denied, 416 U.S. 935 (1974); In re Eynde, 480 F.2d 1364, 1370,
178 USPQ 470, 474 (CCPA 1973).
In the case before us, we believe the examiner has not
met his burden of advancing acceptable reasons inconsistent with
enablement. While we appreciate the examiner's discomfiture over
the somewhat schematic illustration of the invention in
appellant's drawings, and the paucity of details concerning the
various gearing connections and the connections for the drive
motors (26) of the individual printing units, we nonetheless do
not find that these issues individually or collectively rise to
the level of non-enablement.
In this regard, it is our opinion that the level of
skill in this art (i.e, the multi-color, web-fed, rotary printing
press art) is sufficiently high that the ordinarily skilled
Appeal No. 97-1437
Application 08/356,227
6
artisan would have been able to fashion a printing press drive
arrangement of the type defined in appellant's claim 18 on appeal
based on appellant's disclosure, without the exercise of undue
experimentation, and that such printing press drive would be
capable of operation in the manner claimed and generally
disclosed by appellant. More particularly, we point to, and note
our agreement with appellant's arguments on pages 5 through 11
of the brief. Further, in evaluating the level of skill in the
pertinent art, we have reviewed the prior art made of record in
the application by appellant in several Information Disclosure
Statements (Paper Nos. 1½, 5 and 13). Like appellant, we find
that these prior art references are particularly relevant to
understanding the level of knowledge in the art at the time of
filing of the present application and to whether one skilled in
the art would have been able to make and use the invention
claimed herein without undue experimentation. Note particularly,
the patent to Hajek (U.S. Patent No. 5,341,735). The mere fact
that material extraneous to the originally filed disclosure, but
known to those of ordinary skill in the art at the time of filing
of the application, might be relied upon by the artisan in making
and using the disclosed printing press drive is not fatal. As
the Court made clear in In re Gaubert, 524 F.2d 1222, 1226,
Appeal No. 97-1437
Application 08/356,227
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187 USPQ 664, 667 (CCPA 1975), citing Martin v. Johnson,
454 F.2d 746, 751, 59 CCPA 769, 775, 172 USPQ 391, 395 (1972),
[e]nablement is the criterion, and every
detail need not be set forth in the written
specification if the skill in the art is such
that the disclosure enables one to make the
invention.
For the above reasons, we will not sustain the
examiner's rejection of claim 18 under 35 U.S.C. § 112, first
paragraph, as being directed to a non-enabling disclosure.
The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 97-1437
Application 08/356,227
8
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1437
Application 08/356,227
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Douglas R. Hanscom
Jones, Tullar & Cooper, P.C.
P.O. Box 2266 - Eads Station
Arlington, VA 22202