Ex parte COWAN

Board of Patent Appeals and Interferences

May 15, 1998

08429150 (B.P.A.I. May. 15, 1998)

Application for patent filed April 26, 1995.1
1
Paper No. 18
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(2) is not binding precedent of the Board.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 MICHAEL F. COWAN
______________
Appeal No. 97-4182
Application 08/429,1501
_______________
ON BRIEF
_______________
Before MEISTER, MCQUADE and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Michael F. Cowan (the appellant) appeals from the final
rejection of claims 1 and 2, the only claims present in the
application.
We AFFIRM-IN-PART.
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Application 08/429,150
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The appellant’s invention pertains to a lightweight vertical
wall tent. Independent claim 1 is further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the substitute brief.
The references relied on by the examiner are:
Hibbert 3,800,814 April 2, 1974
Nuttall (British Patent) 462,552 Mar. 11, 1937
Claims 1 and 2 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellant
regards as the invention.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the British patent in view of Hibbert.
The examiner’s rejections are explained on pages 2-4 of the
final rejection. The arguments of the appellant and the examiner
in support of their respective positions may be found on pages
1-7 of the substitute brief and pages 4-6 of the answer.
OPINION
As a preliminary matter, we base our understanding of the
appealed subject matter upon the following interpretation of the
terminology appearing in the claims. In line 38 of claim 1 (as
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Application 08/429,150
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it appears in the appendix to the substitute brief) we interpret
“a fabric canopy” to be -- the fabric canopy -- since this canopy
was previously set forth in line 3.
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and by the examiner in the answer.
As a consequence of this review, we will sustain the rejection of
claim 2 under 35 U.S.C. § 112, second paragraph. We will not,
however, sustain the rejections of claim 1 under 35 U.S.C. § 112,
second paragraph, or claims 1 and 2 under 35 U.S.C. § 103.
Initially we note that the substitute brief raises questions
as to the propriety of the examiner’s refusal to enter the
substitute specification filed on April 12, 1996 (Paper No. 3).
We must point out, however, that under 35 U.S.C. § 134 and 37 CFR
§ 1.191, appeals to the Board of Patent Appeals and Interferences
are taken from the decision of the primary examiner to reject
claims. We exercise no general supervisory power over the
examining corps and decisions of primary examiners to enter or
deny entry of papers is not subject to our review. See Manual of
Patent Examining Procedure (MPEP) §§ 1002.02(c) and 1201 (6th
ed., Rev. 3, Jul. 1997); In re Mindick, 371 F.2d 892, 894,
Appeal No. 97-4182
Application 08/429,150
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152 USPQ 566, 568 (CCPA 1967) and In re Deters, 515 F.2d 1152,
1156, 185 USPQ 644, 648 (CCPA 1975). Thus, the relief sought by
the appellant would have properly been presented by a petition to
the Commissioner under 37 CFR § 1.181.
Considering now the rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, it is the examiner’s position that:
The claim(s) are narrative in form and replete
with indefinite and functional or operational language.
The structure which goes to make up the device is
merely inferentially claimed, or has not been clearly
and positively specified.
The preamble of the claims appears to direct to a
wall tent, whereas the body of the claims set forth the
method of erecting it. It is unclear what [applicant]
is claiming.
In addition, it is unclear whether applicant is
claiming a rain fly by itself or in combination with a
fabric canopy.
Moreover, the phrases “the correct length” on
line, “the correct position of a diagonal anchor” on
line 16 of claim 1, “the correct position of a lateral
anchor” on line 15, “the positions of all eight anchors
and the preset lengths of all eight guy ropes being a
function of, and calculated from, the dimensions of the
erect fly” on lines 10-11 of claim 1, “the correct
preset length” on lines 19 and 21 of claim 1 are
indefinite as being vague in their meaning. [Final
rejection, pages 2 and 3.]
We will not support the examiner’s position. The legal
standard for indefiniteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re
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Application 08/429,150
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Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). As explained by the court in In re Steppan, 394 F.2d
1013, 1019, 156 USPQ 143, 148 (CCPA 1967):
The problem, in essence, is thus one of determining who
shall decide how best to state what the invention is.
By statute, 35 U.S.C. 112, Congress has placed no
limitations on how an applicant claims his invention,
so long as the specification concludes with claims
which particularly point out and distinctly claim that
invention.
In short, there is only one basic ground for rejecting a claim
under the second paragraph of § 112, namely, the language
employed does not set out and circumscribe a particular area
sought to be covered with a reasonable degree of precision and
certainty. See, e.g., In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971).
With specific regard to the examiner’s contention that the
claims are narrative in form and replete with functional
language, the court in In re Swinehart, 439 F.2d 210, 213,
169 USPQ 226, 229 (CCPA 1971) stated:
there is no support, either in the actual holdings of
our prior cases or in the statute, for the proposition,
put forward here, that “functional” language, in and of
itself, renders a claim improper [under 35 U.S.C.
§ 112, second paragraph].
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611
(CCPA 1981):
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“It is well settled that there is nothing intrinsically
wrong in defining something by what it does rather than
what it is.”
As to the examiner’s concern that recitations regarding
the method of erecting the tent have been recited, a product-by-
process claim does not inherently conflict with the second
paragraph of § 112 (In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972)) and product claims may be drafted to include
process steps to wholly or partially define the claimed product
(Hallman, 655 F.2d at 215, 210 USPQ at 611)).
As to the examiner’s contention that it is unclear whether
a rain fly is being claimed by itself or in combination with a
fabric canopy, we believe it is readily apparent that the
“lightweight vertical wall tent” defined in claim 1 comprises
both a rain fly and a fabric canopy that are in their fully
erected state (see, e.g., lines 1-4 and lines 36-42).
With respect to the examiner’s concern over the recitations
of “correct” lengths and positions, we must point out that, not
only does claim 1 expressly set forth what the “correct” lengths
and positions are, these limitations are clearly defined on pages
8 and 9 of the specification.
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Application 08/429,150
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In view of the foregoing, we will not sustain the rejection
of claim 1 under 35 U.S.C. § 112, second paragraph,.
We reach a different conclusion, however, with respect to
claim 2 inasmuch as this claim is totally inconsistent with claim
1 from which it depends. That is claim 1, as we have noted
above, clearly sets forth the combination of a rain fly and a
canopy in their erected state, with the canopy being set forth as
being guyed to or supported by the fly. On the other hand, claim
2 (which depends from claim 1) in an apparent contradistinction
sets forth a fly that is either (1) used with or without a canopy
underneath or (2) attached or unattached to the canopy, thus
resulting in an inexplicable inconsistency that renders this
claim indefinite. That is, it raises the question of whether (1)
a fly per se (e.g., as illustrated in Fig. 1) is being claimed,
(2) a fly per se in its erected state (e.g., as illustrated in
Fig. 2) is being claimed or (3) a fly in an erected state in
conjunction with a canopy underneath (e.g., as set forth in
parent claim 1 and depicted in Fig. 3) is being claimed. Since
we are of the opinion that claim 2 does not reasonably apprise
those of skill in the art of its scope, we will sustain the
examiner’s rejection of this claim under 35 U.S.C. § 112, second
paragraph.
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Application 08/429,150
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Turning to the rejection of claim 1 under 35 U.S.C. § 103 as
being unpatentable over the British patent in view of Hibbert, it
is the examiner’s position that:
[The] British publication shows a rain fly 4
having 2 guy ropes (14) attached to each corner and
ground anchor as shown in fig. 1, poles (6) support the
ridge end of the fly. [The] British publication does
not show a canopy supported by the rain fly. However,
Hibbert teaches attaching a canopy (20) to the rain fly
(22) to form a tent structure. Therefore, it would
have been obvious to one skilled in the art to provide
[the] British publication ’552 with a canopy supported
by the rain fly as taught by Hibbert to form a tent
structure. [Final rejection, page 4.]
The examiner’s position is not sustainable. Claim 1
expressly requires that the erected fly form a structure
“entirely supporting and sheltering a fabric canopy that is
suspended beneath it” (lines 37 and 38). Even if we were to
agree with the examiner that the awning 22 of Hibbert can be
considered to be a “fly,” there is absolutely nothing in the
combined teachings of the British patent and Hibbert which would
suggest an arrangement wherein an erected fly forms a structure
that entirely supports the canopy. In the British patent there
is no canopy whatsoever. In Hibbert the canopy is entirely
supported by end frame members 15, with the canopy and end frame
members in turn supporting the awning 22. This being the case,
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Application 08/429,150
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we will not sustain the rejection of claim 1 under 35 U.S.C.
§ 103 based on the combined teachings of the British patent and
Hibbert.
Considering last the rejection of claim 2 under 35 U.S.C.
§ 103 as being unpatentable over the British patent in view of
Hibbert, for the reasons set forth above with respect to the
rejection of this claim under the second paragraph of § 112, we
are of the opinion that no reasonably definite meaning can be
ascribed to certain language appearing in this claim. In
comparing the subject matter defined by claim 2 with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in fact
is being claimed. Since a rejection on 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 con-
strained to reverse the examiner's rejection of claim 2 under
35 U.S.C. § 103. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the § 103
rejection.
The rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, is reversed.
Appeal No. 97-4182
Application 08/429,150
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The rejection of claim 2 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The rejection of claims 1 and 2 under 35 U.S.C. § 103 is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 97-4182
Application 08/429,150
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Michael F. Cowan
5196 Sonora Drive
North Vancouver,
BC Canada V7R 3V6
JMM/cam