Ex parte Buschmann et al.

Board of Patent Appeals and Interferences

Sep 29, 1998

08147179 (B.P.A.I. Sep. 29, 1998)

Application for patent filed November 03, 1993.1
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(2) is not binding precedent of the Board.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 JEFFREY P. BUSCHMANN and DAVID L. SHELTON
_____________
Appeal No. 96-2298
Application 08/147,1791
______________
ON BRIEF
_______________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 13, all of the claims in the application.
Appellants’ invention pertains to an incandescent lamp
with shock resisting supports. An understanding of the
Appeal No. 96-2298
Application 08/147,179
In claim 7, line 1, “where in” should obviously be --wherein--.2
2
invention can
be derived from a reading of exemplary claim 1, a copy of
which appears in the appendix to the brief.
The following rejection is the sole rejection before us
for review.
Claims 1 through 13 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the answer
(Paper No. 15), while the complete statement of appellants’
argument can be found in the brief (Paper No. 14).
OPINION
In reaching our conclusion on the indefiniteness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification, drawing, and claims,2
Appeal No. 96-2298
Application 08/147,179
In the brief (pages 6 through 8), appellants discuss an amendment3
after final rejection. This amendment was denied entry (Paper No. 9). Review
of the appropriateness of the denial of entry of an amendment is by way of
petition, not appeal. Thus, the content of the amendment is not before us, and
we will not address the substance of the aforementioned discussion by
appellants in the brief.
3
and the respective viewpoints of appellants and the examiner. 3
As a
consequence of our review, we make the determination which
follows.
We reverse the examiner’s rejection of appellants’ claims
under the second paragraph of 35 U.S.C. 112.
In assessing the indefiniteness issue raised in this
appeal, we keep in mind the following principles. Relative to
the requirements of 35 U.S.C. § 112, second paragraph, the
court in In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970) stated that
[i]ts purpose is to provide those who would
endeavor, in future enterprise, to approach
the area circumscribed by the claims of a
patent, with the 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
Appeal No. 96-2298
Application 08/147,179
4
and dominance.
Additionally, claims are considered to be definite, as
required by the second paragraph of 35 U.S.C. § 112, when they
define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity. See In re
Venezia, 530 F.2d 956, 958 189 USPQ 149, 151 (CCPA 1976). It
must also be kept in mind
that claim language is read in light of the specification as
it would be interpreted by one of ordinary skill in the art.
See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983).
We turn now to the matters of concern to the examiner as
raised in the rejection (answer, page 3).
It is evident that the examiner views the location of the
spacer and seal as indefinite. The examiner inquires as to
how the seal and spacer are located relative to each other.
Further, the examiner questions whether the seal is the same
Appeal No. 96-2298
Application 08/147,179
5
element as the spacer and/or sleeve. The examiner also makes
reference to the language of claims 3 and 13 as regards the
relative location of the separator.
Having read claims 1, 3 and 13, in particular, in light
of the underlying disclosure, it is quite apparent to this
panel of the board that the language criticized by the
examiner in the claims is broad, not indefinite. Just because
a claim is broad does not mean that it is indefinite. See In
re Miller, 441 F.2d
689, 693, 169 USPQ 597, 600 (CCPA 1971) and Ex parte
Scherberich, 201 USPQ 397, 398 (Bd. App. 1977).
The specification (pages 4 through 11) clearly reveals that
the seal at the distal end of the first leg 22 is not the same
element as the separately defined spacer 38 and/or sleeve. The
language of the claims must, therefore, be understood as
reciting these distinct entities. As to the questioned location
of the spacer and seal recited in claims 1 and 13, we find that
Appeal No. 96-2298
Application 08/147,179
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these components are definitely positioned as expressly set
forth in these claims. The circumstance that their relative
positioning with respect to one another, as described and
depicted in the underlying disclosure, is not set forth in the
claims is simply a matter of claim breadth, not indefiniteness.
The claim broadly, but fairly, sets forth where the spacer and
seal are positioned. It is also clearly evident to us that the
positioning of the sleeve and separator is definitely set forth
in claims 3 and 13. Once again, it is our opinion that the
examiner’s concern addresses claim breadth, not indefiniteness.
For the reasons set forth, supra, we conclude that the claim
language of concern to the
examiner is definite in meaning and, thus, in conformance with
the requirements of 35 U.S.C. 112, second paragraph.
The decision of the examiner is reversed.
REVERSED
Appeal No. 96-2298
Application 08/147,179
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)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
vsh
Appeal No. 96-2298
Application 08/147,179
8
William E. Meyer
Osram Sylvania, Inc.
100 Endicott Street
Danvers, MA 01923