Ex parte Gerfast et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08161978 (B.P.A.I. Feb. 26, 1998)

Application for patent filed December 3, 1993. According1
to the appellants, this application is a continuation of
Application 07/945,599, filed September 16, 1992, now abandoned,
which is a continuation of Application 07/732,729, filed July 18,
1991, now abandoned, which is a continuation of Application
07/464,290, filed January 12, 1990, now abandoned, which is a
continuation-in-part of Application 07/322,617, filed March 13,
1989, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEN R. GERFAST, EUGENE S. JOHNSON,
EDDIE T. MORIOKA, THEODORE A. SCHWARZ
and ROBERT W. TAPANI
_____________
Appeal No. 95-0833
Application 08/161,9781
______________
ON BRIEF
_______________
Before URYNOWICZ, THOMAS and KRASS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
Appeal No. 95-0833
Application 08/161,978
2
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 10 to 13, which constitute all the
claims remaining in the application.
The pertinent portion of independent claim 10 on appeal is
clause b:
a second indicator opening indicating the
nature of the tape in the data tape
cartridge, said second indicator opening
extending around a corner from the front to
the side of the data tape cartridge such that
a tape drive sensor positioned on either said
front or said side of said data tape
cartridge could detect said second indicator
opening.
There are no references relied on by the examiner.
Claims 10 to 13 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to provide an adequate written description
of the claimed invention as well as failing to provide an
enabling disclosure thereof.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the briefs and the answer for the
respective details thereof.
OPINION
We reverse both rejections.
Appeal No. 95-0833
Application 08/161,978
3
“The test of enablement is whether one reasonably skilled in
the art could make or[sic and] use the invention from the
disclosures in the patent coupled with information known in the
art without undue experimentation.” United States v.
Telectronics, Inc., 857 F.2d 778,785, 8 USPQ2d 1217, 1223 (Fed.
Cir. 1988), citing Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986). The
specification need not disclose what is well known in the art.
In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir.
1991).
The test to be applied under the written description portion
of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of later
claimed subject matter. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir. 1991); rehearing
denied, (Fed. Cir. July 8, 1991) and rehearing en banc denied,
(Fed. Cir. July 29, 1991).
It is noted that claims 10 through 13 were not originally
filed claims. They were added initially by an amendment on
December 3, 1993, with the current version of claim 10 being
entered in the amendment filed on March 3, 1994. None of the
Appeal No. 95-0833
Application 08/161,978
4
originally filed claims contains subject matter relating to the
disputed language set forth above. As such, we must look to the
originally filed specification to reach a proper determination of
this issue. We also characterize the drawings as they were
originally filed, and not renumbered in accordance with the
extensive file history in this application. Further, we note
that the examiner’s reasoning for lack of “support” implicitly
refers to the written description portion of 35 U.S.C. § 112,
first paragraph. In re Higbee, 527 F.2d 1405, 1406, 188 USPQ
488, 489 (CCPA 1976).
The initial portion of claim 10's clause b reproduced
earlier is that the second indicator opening extend around a
corner from the front to the side of the data tape cartridge.
The only embodiment among the seven figures originally presented
in this application which would appear to correspond to this
language is that embodiment shown in Fig. 6. Our study of the
drawings as filed, as well as the written description portion of
the specification as filed, leads us to conclude that appellants’
arguments with respect to the Fig. 4 embodiment are misplaced
since only Fig. 6 can be construed in any manner to have an
opening which extends around the corner from the front to the
Appeal No. 95-0833
Application 08/161,978
5
side of the cartridge. This is apparent from an inspection of
Fig. 6.
The corresponding language initially found in the
specification as filed describing this figure is the following at
page 8, lines 16 to 21:
A recess 100 is used, and in this embodiment
it preferably extends to the side wall such
that portion 150 of the front wall is not
present. This provides a location that a
first switch in a suitably adapted drive may
sense to determine whether the cartridge is
of the present invention (emphasis added).
In accordance with the initial figures, Fig. 3 shows that
the cartridge front wall is labeled as element 18, the front wall
portion thereof is labeled 150 and the edge wall to the right of
the figure is labeled 41. A study of the specification as a
whole indicates that the language just quoted above indicating
that a switch determines whether the cartridge is of the present
invention corresponds to the second indicator of clause b of
claim 10 on appeal in such a manner that it would indicate the
nature of the tape therein.
In the modified Fig. 6 embodiment discussed at page 11 of
the specification, one in which four switches are utilized by the
tape drive, the following is indicated at lines 7 through 11:
For the switch which determines which type of
cartridge is present, the preferred area is
Appeal No. 95-0833
Application 08/161,978
6
the sidemost portion of the recess 100, i.e.,
in the position where the front wall portion
150 (see Figure 3) is present in a previously
used cartridge (emphasis added).
The language here indicates a correspondence between the initial
description of Fig. 6 and that of Fig. 3, although it may have
been better stated in such a manner to indicate that the front
wall portion 150 of Fig. 3 would have been indicated to be a part
of the prior art cartridge.
The examiner’s new matter of objection under 35 U.S.C. § 132
and the basis of the current rejections under 35 U.S.C. § 112,
relate to the language inserted at page 11, line 12 of the
specification by amendment on March 3, 1994, with the current
amended version of claim 10 on appeal:
As will be apparent from the drawing, this
sidemost portion of the opening 100 also can
be detected by a drive sensor positioned
either at the front or the side of the
cartridge (emphasis added).
Continuing in the same paragraph at page 11, lines 14 to 18
state the following:
For the switch which determines write
protection for a previously used cartridge,
Appeal No. 95-0833
Application 08/161,978
7
the preferred area is the other portion of
the recess 100, as that is the location of
the file protect device in presently used
cartridges (emphasis added).
Again, it would have been perhaps better stated that the location
of prior art industry standard cartridges would have utilized the
so-called other portion of the recess 100 in a manner to be
consistent with that initially described in location area 100 of
Fig. 3.
Our assessment of these teachings and showings of the
specification and drawings as originally filed is consistent with
appellants’ comments made at the bottom of page 8 of the
principal Brief on appeal that the claimed data cartridge having
two detectable openings comprise the first opening being recess
100 at the left side thereof as shown in Fig. 6 and the second
opening being the right side of the same recess opening 100 also
depicted in Fig. 6. Since the industry standard location of the
first indicator opening in clause a of claim 10 on appeal is
write-protected and permanently open, a portion of region 100 of
necessity would comprise this first indicator opening. The
description at page 11, lines 14 through 18, quoted above,
indicates that the preferred area for the write protection for
previously used cartridge is the “other” or left portion of the
Appeal No. 95-0833
Application 08/161,978
8
recess 100 and, in conjunction with the remaining quoted
teachings at the noted specification pages 8 and 11, the
“sidemost portion” must be the right portion of recess 100 as
depicted in Fig. 6.
Although there is no explicit, plainly stated or plainly
shown teachings or suggestions in the disclosures and drawings as
filed, we agree with the inserted language at page 11, line 12,
that it would have been apparent from the drawing to the artisan
that the location of the switching mechanism or sensor in the
tape drive itself to sense what type of cartridge is present,
that the drawing would have implied to the artisan in the Fig. 6
representation, that the switch of the tape drive could be
located in the region of the corner of the cartridge either on
the front of portion 18 or on the side of portion 41 of the
cartridge itself. These findings are consistent with the
following guidance.
The manner in which the specification as filed meets the
written description requirement is not material. The requirement
may be met by either an express or an implicit disclosure. In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). An
Appeal No. 95-0833
Application 08/161,978
9
invention claimed need not be described in ipsis verbis in order
to satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph. In re Lukach, 442 F.2d 967, 969, 169
USPQ 795, 796 (CCPA 1971). The question is not whether an added
word was the word used in the specification as filed, but whether
there is support in the specification for the employment of the
word in the claims, that is, whether the concept is present in
the original disclosure. See In re Anderson, 471 F.2d 1237,
1244, 176 USPQ 331, 336 (CCPA 1973).
When the subject matter of claim 10 is considered as a
whole, the claimed tape drive is only passively claimed. What is
positively claimed and disclosed is a cartridge to be placed into
a suitable tape drive. What is positively recited in clause b of
claim 10 is that the second indicator opening extends around a
corner from the front to the side of the tape cartridge. Such is
clearly shown in Fig. 6 as indicated earlier. The location of
the sensor or switches in the tape drive itself, which again is
passively claimed in claim 10, is not shown in Fig. 6 but
discussed only in a general manner in the specification as filed.
Thus, the other question language of the examiner of clause b of
Appeal No. 95-0833
Application 08/161,978
10
claim 10 on appeal “such that a tape drive sensor positioned on
either said front or said side of said data tape cartridge could
detect said second indicator opening” is a passive recitation
applicable to the passively recited tape drive.
In view of all of these considerations, it is apparent that
we must reverse the rejection of claims 10 to 13 under the
written description portion of the first paragraph of 35 U.S.C.
§ 112. We reach a similar conclusion as to the enablement
rejection as well. The initial written portion of the
specification as well as the initial drawing figures 1 to 3
clearly indicate and teach to the artisan what is well-known in
the art, especially making reference to industry standard
locations for various sensing or switching elements in tape
drives for particular industry standard tape cartridges. The
other figures are discussed having different front or side switch
locations within the tape drive as well. Thus, there appears to
be no enablement question rising to the level of undue
experimentation to the artisan which would justify sustaining a
rejection regarding the location of the tape drive sensor being
Appeal No. 95-0833
Application 08/161,978
Since our review of the written description and drawings2
in Fig. 6 as filed indicates to us that there was an implicit
disclosure of the location of a switching element either on the
side or the front of the cartridge to be consistent with the
clearly disclosed Fig. 6 embodiment showing a second indicator
opening extending around a corner from the front to the side of
the cartridge, the outstanding objection under 35 U.S.C. § 132 to
the amendment to page 11, line 12, filed on March 3, 1994 should
be withdrawn.

11
positioned either on the front or the side of the tape
cartridge. 2
In view of the foregoing, we have reversed both rejections
of claims 10 to 13 under 35 U.S.C. § 112, first paragraph.
Therefore, the decision of the examiner is reversed.
REVERSED
Appeal No. 95-0833
Application 08/161,978
12
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES D. THOMAS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERROL A. KRASS )
Administrative Patent Judge )
3M OFFICE OF INTELLECTUAL PROP. COUNSEL
P. O. Box 33427
St. Paul, MN 55133-3427