Ex parte Gompertz et al.

Board of Patent Appeals and Interferences

May 28, 1998

08489257 (B.P.A.I. May. 28, 1998)

Application for patent filed June 14, 1995. According to1
the appellants, the application is a continuation of Application
No. 08/381,016, filed January 30, 1995, now abandoned, which was
a continuation of Application No. 08/025,105, filed March 2,
1993, now abandoned.
Claims 13, 14 and 17 through 19 were amended subsequent to2
the final rejection.
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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL A. GOMPERTZ
and
ART B. DAWSON
____________
Appeal No. 97-2650
Application No. 08/489,2571
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 12 through 14 and 17 through 19, which are
all of the claims pending in this application.2
Appeal No. 97-2650
Application No. 08/489,257
We REVERSE.
Appeal No. 97-2650 Page 3
Application No. 08/489,257
BACKGROUND
The appellants' invention relates to an electrically
operated barrier system for preventing access to a passageway.
An understanding of the invention can be derived from a reading
of exemplary claim 12, which appears in Appendix B of the
appellants' brief.
Claims 12 through 14 and 17 through 19 stand rejected under
35 U.S.C. § 112, first paragraph, for failing to provide an
adequate written description of the invention.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejection, we make reference to the examiner's answer (Paper No.
28, mailed February 12, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellants'
brief (Paper No. 27, filed October 23, 1996) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
Appeal No. 97-2650 Page 4
Application No. 08/489,257
drawings, and to the respective positions articulated by the
appellants and the examiner. As a consequence of our review, we
will not sustain the examiner's rejection under 35 U.S.C. § 112,
first paragraph. Our reasoning for this determination follows.
The examiner rejected claims 12 through 14 and 17 through 19
under 35 U.S.C. § 112, first paragraph, for the reasons set forth
in the objection to the specification. The specification was
objected to as failing to provide an adequate written description
of the invention. Specifically, the examiner stated (answer, pp.
3-4) that
[t]he specification fails to disclose the structure which
comprises the following elements: chain end coupler; chain
guide; taut switch; sensor plate; indicator arm; drive
member, drive shaft, and gear box as to their structural
relationship with the sprocket pulley; equipment plate; it
is not known how the solenoid bolt 27 as indicated in the
amended drawings passes through the chain guide 32 and the
chain end coupler 31 inasmuch as the drawings do not
illustrate an aperture to allow the passage of the solenoid
bolt 27 therethrough; it is not known what structure permits
movement of the sprocket pulley; it is not known what
circuitry the circuit board 41 comprises.
It is well settled that the written description and
enablement requirements are separate and distinct from one
another and have different tests. See In re Wilder, 736 F.2d
1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984); In re Barker, 559
Appeal No. 97-2650 Page 5
Application No. 08/489,257
F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977); and In re Moore,
439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971). However,
because of the variety of concerns stated by the examiner, it is
not entirely clear to us exactly which requirement the examiner's
rejection is based upon. Accordingly, we will review the claims
as having been rejected under both the written description and
enablement requirements.
Written description
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language.
Further, the content of the drawings may also be considered in
determining compliance with the written description requirement.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 217 USPQ
1089, 1096 (Fed. Cir. 1983). Thus, a rejection based on the
written description requirement is fully defeated by a
specification which describes the invention in the same terms as
Appeal No. 97-2650 Page 6
Application No. 08/489,257
the claims. See In re Bowen, 492 F.2d 859, 864, 181 USPQ 48, 52
(CCPA 1974).
We have reviewed the specific concerns stated by the
examiner in this rejection of claims 12 through 14 and 17 through
19, but find nothing therein which supports a rejection based
upon the written description requirement of 35 U.S.C. § 112,
first paragraph. In addition, we have reviewed the subject
matter recited in the claims under appeal and have determined
that these claims do comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
For the reasons set forth above, the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the subject
matter recited in claims 12 through 14 and 17 through 19.
Enablement
An analysis of whether the claims under appeal are supported
by an enabling disclosure requires a determination of whether
that disclosure contained sufficient information regarding the
subject matter of the appealed claims as to enable one skilled in
Appeal No. 97-2650 Page 7
Application No. 08/489,257
the pertinent art to make and use the claimed invention. The
test for enablement is whether one skilled in the art could make
and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See
United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d
1217, 1223 (Fed. Cir. 1988), cert. denied, 109 S.Ct. 1954 (1989);
In re Stephens, 529 F.2d 1343, 1345, 188 USPQ 659, 661 (CCPA
1976).
In order to make a rejection, the examiner has the initial
burden to establish a reasonable basis to question the enablement
provided for the claimed invention. See In re Wright, 999 F.2d
1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (examiner
must provide a reasonable explanation as to why the scope of
protection provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the
manner and process of making and using an invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as being in compliance with the enablement requirement of
35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein
Appeal No. 97-2650 Page 8
Application No. 08/489,257
which must be relied on for enabling support. Assuming that
sufficient reason for such doubt exists, a rejection for failure
to teach how to make and/or use will be proper on that basis.
See In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA
1971). As stated by the court, "it is incumbent upon the Patent
Office, whenever a rejection on this basis is made, to explain
why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with
acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure." In re Marzocchi, 439 F.2d
at 224, 169 USPQ at 370.
Thus, the threshold step in resolving this issue as set
forth supra is to determine whether the examiner has met his
burden of proof by advancing acceptable reasoning inconsistent
with enablement. This the examiner has not done.
While the examiner is correct that the drawings do not
illustrate an aperture to allow the passage of the solenoid bolt
27 through the chain guide 32, the original specification (page
Appeal No. 97-2650 Page 9
Application No. 08/489,257
In the amendment filed June 30, 1994, the appellants3
changed "24" to --26-- on page 6 and in Figures 3 and 7.
9, lines 22-29) clearly teaches that in an alternative embodiment
the solenoid bolt passes through one side of the chain guide 32,
through the chain end coupler 31 and through the other side of
the chain guide 32 to lock the chain structure in the raised
position.
As to the examiner's inquiry as to what structure permits
movement of the sprocket pulley, the original disclosure clearly
shows in Figures 3 and 7 that (1) the sprocket pulley is mounted
upon a support (denoted by # 12) which is spring biased away from
plate 24 (position shown in Figure 3), and (2) the sprocket3
pulley and support (denoted by # 12) can be moved closer to
plate 24 by compressing the spring (position shown in Figure 7).
With regard to what circuitry the circuit board 41 comprises, we
agree with the appellants' view (brief, pp. 11-12) that the
design of the circuit board is well within the skill of an
artisan.
For the reasons set forth above, it is our view that the
original disclosure contained sufficient information regarding
Appeal No. 97-2650 Page 10
Application No. 08/489,257
the subject matter of the appealed claims as to enable one
skilled in the pertinent art to make and use the claimed
invention.
Appeal No. 97-2650 Page 11
Application No. 08/489,257
CONCLUSION
To summarize, the decision of the examiner to reject claims
12 through 14 and 17 through 19 under 35 U.S.C. § 112, first
paragraph, is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2650 Page 12
Application No. 08/489,257
PETER G. CARROLL
MEDLEN & CARROLL
SUITE 2200
220 MONTGOMERY STREET
SAN FRANCISCO, CA 94104
APPEAL NO. 97-2650 - JUDGE NASE
APPLICATION NO. 08/489,257
APJ NASE
APJ FRANKFORT
APJ COHEN
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 19 May 98
FINAL TYPED: