Ex parte CARLSON

Board of Patent Appeals and Interferences

Feb 27, 1998

08173698 (B.P.A.I. Feb. 27, 1998)

Application filed December 20, 1993 for Reissue of U.S.1
Patent No. 5,104,156, issued April 14, 1992, based on
Application No. 07/599,654, filed October 18, 1990.
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(2) is not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN A. CARLSON
__________
Appeal No. 97-2785
Application No. 08/173,698 1
__________
HEARD: Feb. 04, 1998
__________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and STAAB, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of reissue claims 5 through 8 in this application
Appeal No. 97-2785
Application 08/173,698
A copy of the claims 5-8 as appended to appellants brief2
is attached to this decision.
2
for reissuing appellant’s Patent No. 5,104,156 . The original2
patent claims 1 through 4, which are the only other claims in
the application, have been allowed.
The invention disclosed in appellant’s ‘156 patent
relates to a remote control assembly 10 having a flexible,
motion transmitting core element 12 extending through a
flexible conduit 14. The core element 12 may be utilized as a
push/pull cable for such components as a steering member or
throttle member in a marine craft or other vehicle. In order
to detachably secure the flexible conduit 14 to a support
structure 20, the control assembly 10 includes a female
housing 28 and a male coupler end fitting 22. The female
housing 28 is fixed to the support structure 20. The male
coupler end fitting 22 is attached to an end of the flexible
conduit 14 and is releasably locked in the female housing 28
by a locking element such as a spring biased locking ring 32
(Figure 2) or a retractable locking bolt 112
(Figure 3) to thereby couple the flexible conduit 14 to the
Appeal No. 97-2785
Application 08/173,698
In each of the rejected independent reissue claims added in3
this reissue application, the body of the claim is
inconsistent with the preamble of the claim in that the body
recites the combination of the flexible conduit (14) and
elements of the male fitting assembly whereas the preamble is
directed to the male fitting assembly per se. In each of these
claims, we have interpreted the preamble as defining a
structure which includes the elements recited in the body to
establish consistency between the preamble and the body of the
claim. It is noted that each of these independent reissue
claims incorrectly recites that the male coupler fitting
assembly is identified by the reference numeral 10. In
contrast, the descriptive portion of the specification applies
the reference numeral 10 to designate the remote motion-
transmitting control assembly. With particular regard to
claims 6 and 8, we have interpreted the recitation of
“opposite sides” of the flexible conduit to mean the opposite
ends of the conduit. With further regard to claims 6 and 8, we
have interpreted the recitation of “either side” of the
cylindrical body portion to mean either end of the body
portion.
3
female housing 28. According to claim 1, the only3
independent claim in the original patent, the male coupler
body is formed with a truncated surface means (29) which
slopes upwardly at a constantly changing slope.
Urging that the original patent claims 1 through 4 were
too narrow because of the limitation pertaining to the
truncated surface means, appellant introduced claims 5 through
8. Claims 5 through 7 broaden the limitation pertaining to the
truncated surface, and claim 8 deletes this limitation all
Appeal No. 97-2785
Application 08/173,698
The “new matter” rejection under § 251 “is tantamount to a4
rejection on the basis that the claimed subject matter has not
been described in the manner required by 35 USC [sic, U.S.C.]
112, first paragraph.” In re Salem, 553 F.2d 676, 681, 193
USPQ 513, 517-519 (CCPA 1977).
4
together.
In the examiner’s answer, claims 5 through 8 “are
rejected under 35 USC [sic, U.S.C.] 251 as being drawn to new
matter or if inappropriate claims 5-8 are rejected under 35
U.S.C. 112, first paragraph, as containing subject matter
which was not described in the specification in such a way as
to reasonably convey to one skilled in the art that the
inventor(s), at the time the application was filed, had
possession of the claimed invention”
(answer, pages 2-3). Claim 8 additionally stands rejected4
under 35 U.S.C. § 112, second paragraph, as being indefinite.
The basis for the rejections under § 251 and § 112, first
paragraph, appears to be the same, namely that the broadened
reissue claims 5 through 8 are unsupported by appellant’s
original disclosure. According to the examiner,
[n]owhere in the original disclosure is there a
basis for the invention being practiced without
“a constantly changing slope”. No part of the
Appeal No. 97-2785
Application 08/173,698
5
patent is seen to teach nor is it seen to lie
within the scope of the patent claims to have a
slope which does not constantly change. [answer,
page 6].
The rejections of the appealed claims under § 251 and §
112, first paragraph are not sustainable. The critical inquiry
in these rejections of the broadened reissue claims is whether
the original disclosure indicates or suggests that the omitted
or broadened limitation “was essential or critical to either
the operation or patentability of the invention.” In re
Peters, 723 F.2d 891, 893, 221 USPQ 952, 953 (Fed. Cir. 1983).
In the present case, the examiner has not established
that the limitation pertaining to the truncated surface means
as defined in patent claim 1 was either critical or essential
to either the operation or the patentability of the invention.
In fact, mere cursory inspection of the embodiment shown in
Figure 2 of the patent drawings reveals that because the
truncated surface 29 is spaced from the locking ring 32 except
at a point immediately adjacent to the relief surface 26, it
may be of any configuration so long as it does not interfere
with the movement of the locking ring to its illustrated
locking position.
Appeal No. 97-2785
Application 08/173,698
6
Thus, in the present case, the broadened reissue claims 5
through 8 merely omit or broaden an unnecessary limitation as
was the case in Peters. Accordingly, we cannot sustain the
rejections of appealed claims 5 through 8 under § 251 and §
112, first paragraph.
With regard to the rejection of claim 8 under the second
paragraph of § 112, the examiner’s difficulty with the claim
language centers on the recitation of the “means for coacting
between a female housing, said space and relief to retain said
male coupler and flexible conduit in said female housing.”
Typically, the term “between” is used to refer to some element
or structure interacting with or lying intermediate two
physical objects.
In the present case, however, the term “between” is used
to define the relationship of the coacting means with respect
to two objects (namely, the female housing and the relief) and
a space. In the first place, it is not clear how a structure
such as the coacting means can coact with a space for any
purpose, let alone the claimed purpose. Furthermore, it is not
clear from the claim language whether the coacting means is
intended to coact between the female housing, on the one hand,
Appeal No. 97-2785
Application 08/173,698
7
and the relief and the space, on the other hand, or whether
the coacting means is intended to coact between the female
housing and the space, on the one hand, and the relief, on the
other hand. This claim language is therefore indefinite
because it fails to define the metes and bounds of the
invention with a reasonable degree of precision. See In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976). We
will therefore sustain the rejection of claim 8 under the
second paragraph of § 112.
In summary, we have reversed the examiner’s rejections of
claims 5 through 8 under § 251 and § 112, first paragraph, and
we have affirmed the examiner’s rejection of claim 8 under §
112, second paragraph.
The examiner’s decision rejecting the appealed claims is
affirmed in part.
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Appeal No. 97-2785
Application 08/173,698
8
Administrative Patent Judge )
INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Harold W. Milton, Jr.
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