Ex parte Creixell

Board of Patent Appeals and Interferences

May 20, 1998

08170332 (B.P.A.I. May. 20, 1998)

Application for patent filed May 24, 1994. According1
to appellant, this application is a National stage application
under 35 U.S.C. § 371 of PCT/ES93/00037, filed April 30, 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not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSE LUIS BELIL CREIXELL
__________
Appeal No. 97-2902
Application No. 08/170,3321
__________
HEARD: May 7, 1998
__________
Before STONER, Chief Administrative Patent Judge, COHEN and
ABRAMS, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 17 and 19-36. Claims 1-16 and 18
have been canceled. No claims have been allowed.
Appeal No. 97-2902
Application No. 08/170,332
2
The appellant's invention is directed to a suspension
system for motorcycles and the like. The subject matter
before us on appeal is illustrated by reference to claim 17,
which has been reproduced in an appendix to the Appeal Brief.
THE REJECTION
Claims 17 and 19-36 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.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Appeal Brief and the Reply Brief.
OPINION
Each of the appellant’s independent claims contains the
limitation that there be a swinging arm coupling a wheel to
the frame of the vehicle, and that this swinging arm be
arranged such that a virtual line joining the two pivot points
on the swinging arm be substantially parallel to a line
extending from the point of tangency of the wheel with the
Appeal No. 97-2902
Application No. 08/170,332
3
ground to a point that is defined by the intersection of a
line which runs perpendicular to the ground from the point of
tangency of a wheel opposite the wheel coupled by the swinging
arm
and a line extending substantially parallel to the
ground at the height of the center of gravity of the
vehicle and rider assembly in a position of positive
and negative acceleration in a horizontal direction.
The relationship between the swinging arm and the various
lines is shown in Figure 2 of the drawings and accompanying
explanation in the specification. As discussed below, this
has been amplified by the Briefs and the exhibits that
accompanied them.
It is the examiner’s position that certain language in
the three independent claims fails to conform to the second
paragraph of 35 U.S.C. § 112, in that the claims therefore are
indefinite. The examiner explains on page 4 of the Answer
that
[t]he sole issue presented on this appeal is whether
Appellant may rely upon the center of gravity of a
“vehicle and rider assembly” to define the present
invention. More particularly, the issue is whether
Appellant may rely upon the center of gravity of a
rider of the vehicle to particularly point out and
distinctly claim the subject matter which applicant
regards as the invention.
Appeal No. 97-2902
Application No. 08/170,332
4
According to the examiner, this is because the center of
gravity of the rider will vary depending upon the weight and
the position of the individual. The appellant argues in
rebuttal that the rejection on indefiniteness is ill-founded.
Our understanding of the appellant’s position is that while
the center of gravity of a rider inherently varies with height
and weight, the “center of gravity of the vehicle and rider
assembly in a position of positive and negative acceleration
in a horizontal direction” is a factor that would have been
understood by one of ordinary skill in the art, and that
determining it would have been within the skill of the
artisan.
The second paragraph of 35 U.S.C. § 112 requires that
claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In determining whether this standard is met, the definiteness
of the language employed in the claims must be analyzed, not
in a vacuum, but always in the light of the teachings of the
prior art and of the disclosure of the application as it would
Appeal No. 97-2902
Application No. 08/170,332
5
be interpreted by one possessing the ordinary level of skill
in the pertinent art. Id. The appellant has explained
in the specification the dynamics of the forces which act upon
the class of vehicles to which his invention is directed, as
well as the problem and the solution that his invention
provides. We agree with the examiner that this does not
explicitly include an explanation of the effect of the height
and weight of the rider upon the center of gravity of the
“vehicle and rider assembly.” However, the guidance we have
received from our reviewing court, stated above, does not
limit us to looking to the specification for an understanding
of the words of the claims. It directs that the language of
the claims be interpreted from the perspective of one of
ordinary skill in the art. In our view, the appellant has
established that one of ordinary skill in the art would have
known that the position of positive and negative acceleration
in a horizontal direction is that which is shown in Exhibit 4,
and would have possessed sufficient knowledge and skill to
determine the height of the center of gravity of the vehicle
and rider assembly when in such a position. Of particular
interest are the explanations regarding the negligible effect
Appeal No. 97-2902
Application No. 08/170,332
6
of the height of the rider when in the recited position, as
well as the relationship between the weight of the rider, the
wheelbase of the motorcycle, and the parallel lines through
the swinging arm and the “virtual line” recited in the claims.
We therefore are persuaded by the explanations and
arguments offered by the appellant on pages 5 and 9-13 of the
Brief, as supported by the exhibits accompanying it, that the
terminology in issue is not indefinite, and that the rejection
should not be sustained.
Appeal No. 97-2902
Application No. 08/170,332
7
The decision of the examiner is reversed.
REVERSED
BRUCE H. STONER, JR., Chief )
Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 97-2902
Application No. 08/170,332
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