Ex parte IWAMOTO et al.

Board of Patent Appeals and Interferences

May 12, 1998

08299123 (B.P.A.I. May. 12, 1998)

Application for patent filed September 2, 1994.1
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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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SHOJI IWAMOTO and KAZUO ITAKURA
________________
Appeal No. 97-1626
Application 08/299,1231
________________
ON BRIEF
________________
Before CALVERT, Administrative Patent Judge, McCANDLISH,
Senior Administrative Patent Judge and STAAB, Administrative
Patent Judge.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 and 3-10. Subsequent to the final rejection,
Appeal No. 97-1626
Application 08/299,123
The amendments filed subsequent to the final rejection2
are amendment “B” (Paper No. 8, submitted May 6, 1996) and
amendment “C” (Paper No. 12, submitted July 30, 1996).
Although the examiner has indicated that each of these
amendment have been entered (examiner answer, page 2), they
have not as yet been physically entered. The examiner may
wish to correct this oversight.
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appellants
amended claims 1, 3 and 5, and canceled claim 8. Thus,2
claims 1, 3-7, 9 and 10 remain before us for review.
Appellants’ invention pertains to a pallet conveyor for
use in a production line comprising a series of intermittent
conveyors, and supplementary conveyors disposed between
adjacent intermittent conveyors. As explained by appellants
on page 3 of the specification, “the pallet conveyor of the
present invention is easy [sic] adjustable to any production
line by removing or adding appropriate number of intermittent
conveyors and supplementary conveyors.” Independent claim 1,
a copy of which appears in the appendix to appellants’ brief,
is exemplary of the appealed subject matter.
In rejecting the claims under 35 U.S.C. § 102(b) and 35
U.S.C. § 103, the examiner relied upon the references listed
Appeal No. 97-1626
Application 08/299,123
In the statement of the rejections on pages 3 and 4 of3
the answer, the examiner inadvertently included canceled
claims 2 and 8.
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below:
Schlegel 2,719,625 Oct. 4, 1955
Ota 3,253,692 May 31, 1966
Masino et al. (Masino) 3,858,519 Jan. 7, 1975
The appealed claims are rejected as follows:3
(a) claims 1, 3 and 4, under 35 U.S.C. § 102(b), as being
anticipated by Masino;
(b) claims 5-7 and 9, under 35 U.S.C. § 103, as being
unpatentable over Masino in view of Ota; and
(c) claim 10, under 35 U.S.C. § 103, as being
unpatentable over Masino in view of Schlegel.
The rejections are explained in the examiner’s answer
(Paper No. 14, mailed August 27, 1996).
The opposing viewpoints of appellants are set forth in
the brief (Paper No. 13, filed July 30, 1996) and the reply
brief (Paper No. 15, filed October 28, 1996).
Masino pertains to a “transfer conveyor assembly
comprising in essence a receiving part A, a transfer part B,
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Application 08/299,123
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and a discharge part C. The transport receptacles 1, 2, 3, 4
and 5, which serve for receiving [articles for transport,] . .
. are guided in an endless T-rail 6” (column 2, lines 10-15).
The carrier chain 7 is driven intermittently (column 2, lines
10-12) and includes members 7a for engaging the receptacles.
Transfer part B comprises two horizontally spaced, parallel
endless belts 8 and 9 continuously driven by motor 8a (column
2, lines 32-34). As seen in Figure 2 and described at column
2, lines 34-46, the upper reaches of belts 8, 9 frictionally
engage the lower surfaces of receptacles coming off receiving
part A for transferring the receptacles to discharge part C.
Part C comprises a carrier chain 10 similar to carrier chain 7
of part A for receiving receptacles from part B and conveying
them to a downstream work station. Ultimately, receptacles
coming off discharge part C are recycled to receiving part A
by means of endless band 11. In all instances, receptacles
remain engaged with and are guided by endless T-rail 6.
Claim 1, the sole independent claim on appeal, calls for
a plurality of intermittent conveyors being intermittently
driven, and a supplemental conveyor being constantly driven
and disposed between an adjacent two of said intermittent
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Application 08/299,123
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conveyors. In addition, the supplemental conveyor is required
to be “removably attachable” to the adjacent intermittent
conveyors.
In rejecting claim 1 as being anticipated by Masino, the
examiner has found that members 7 and 10 of Masino constitute
intermittently driven conveyors and that members 8, 9
constitute a continuously driven conveyor. As to the
requirement that the supplemental conveyor is “removably
attachable” to the intermittent conveyors, the examiner has
taken the position that “conveyors 8, 9 [of Masino] are
removable the same way they were mounted by screwdrivers,
hammers, wrenches, etc. Note anything man made is removably
detached by screwdrivers, hammers, wrenches, saws, torches or
explosives” (answer, page 3).
While we appreciate the point the examiner is trying to
make, the examiner’s broad interpretation of “conveyor” and
“removably attachable” is improper in this instance because it
fails to take into account appellants’ disclosure. When read
in light of appellants’ specification, the term “conveyor” in
this instance constitutes not merely the belts 19 and 20 of
the intermittent conveyors and/or the endless belt 33 of the
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Application 08/299,123
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supplementary conveyor, but also the components (frame, guide
rollers, pulleys, etc.) that support such endless belts and
enable the belts to convey pallets. See appellants’
specification, page 5, first paragraph (“the first
intermittent conveyor 3 is constituted of . . .”) and the
paragraph spanning pages 6-7 of the specification (“The first
supplemental conveyor 9 is constituted by . . .”). Therefore,
Masino’s carrier chain 7, endless belts 8 and 9, and carrier
chain 10 cannot, by themselves, be properly regarded as
corresponding to any of the claimed “conveyors,” in our view.
Rather, T-rail 6, common to each of the carrier chains 7 and
10, endless belts 8 and 9, and endless belt 11, must, at a
minimum, also be regarded as part of any conveyor in Masino.
As to the claim 1 requirement that the supplementary
conveyor is “removably attachable” to the intermittent
conveyors, the examiner’s position that this requirement
includes components which are detachable by saws, torches or
explosives is unreasonable. This is especially so in light of
appellants’ disclosure on page 6 of the specification that the
supplementary conveyors are formed “as a unit,” and the
disclosure on page 7 of the specification that the
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supplementary and intermittent conveyors are constructed such
that the pallet conveyor as a whole may be “easy [sic, easily]
adjustable” to any production line by removing and adding an
appropriate number of supplementary or intermittent conveyors.
Stated differently, one of ordinary skill in the art would not
consider conveyors which require the use of saws, torches
and/or explosives in order to separate them to be “removably
attachable” in the sense intended here. The examiner’s view
to the contrary in essence reads the term “removably
attachable” out of the claim.
The examiner also considers that “removably attachable”
includes components which are detachable by screwdrivers,
hammers or wrenches. However, Masino is silent as to whether
or not the T-rail 6, which we regard as a necessary part of
any conveyor in Masino, is made up of components which are
connected such that they may be separated from each other in
this manner, and it is speculative to presume that this is the
case.
In light of the above, we cannot sustain the examiner’s
§ 102 rejection of claim 1, or claims 3 and 4 which depend
therefrom. We also cannot sustain the examiner’s § 103
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Application 08/299,123
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rejection of dependent claims 5-7 and 9 since the additionally
applied Ota reference does not make up for the deficiencies of
Masino discussed above.
Turning to the § 103 rejection of claim 10 as being
unpatentable over Masino in view of Schlegel, admittedly,
Schlegel discloses as a general principle that it is known to
secure together various components of a single conveyor by
means of arms 16, 17 and removable fasteners 18, 25, etc.
However, it is not clear why one of ordinary skill would
consider this teaching to be relevant to Masino’s T-rail, nor
how this teaching is to be applied to Masino in a manner which
would result in the claimed subject matter in the absence of
appellants’ own disclosure. Accordingly, we conclude that the
proposed combination is based on the use of impermissible
hindsight. The rejection of dependent claim 10 therefore also
will not be sustained.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new rejections.
Claims 1, 3-7, 9 and 10 are rejected under 35 U.S.C. §
112, first paragraph, as being based on a disclosure that
fails to provide descriptive support for the invention as now
Appeal No. 97-1626
Application 08/299,123
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claimed.
Subsequent to the final rejection, independent claim 1
was amended to include “first means for transferring said
pallets from a most downstream one of said series of
intermittent conveyors to said feed back conveyor after said
work pieces are removed from said pallets” and “second means
for transferring said pallets from said feed back conveyor to
a most upstream one of said series of intermittent conveyors
while putting a first one of said work pieces on each of said
pallets.”
Appellants’ description of what occurs at the upstream
end of the production line is found on page 9 of the
specification and reads as follows:
When assembling the above described film unit 40
on the production line as shown in Fig. 2, first the
basic body 53 is supplied from a parts supply
section 69 onto the pallet 13. The basic body 53 is
fixedly positioned on the pallet 13 by confining
projections 13a and 13b formed on the top surface of
the pallet 13. The pallet 13 is then put on the
rails 25 of the first intermittent conveyor 3 of the
pallet conveyor 1.
Appellants’ description of what occurs at the downstream
end of the production line is found on page 11 of the
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specification and reads:
The unit body 43 assembled in this way is
removed from the pallet 13 by a sorting device 76,
and is conveyed on a conveyor 77 toward the next
working station wherein the unit body 43 is wrapped
with the outer casing 44. The empty pallet 13 is
fed back to the supply section 69 through the feed-
back conveyor 78.
A careful reading of the above reveals that there is no
mention whatsoever of any apparatus, and in particular the
sorting device 76, for transferring pallets from the most
downstream one of the intermittent conveyors to the feed back
conveyor 78. Likewise, there is no mention whatsoever of any
apparatus, and in particular the parts supply section 69, for
transferring pallets from the feed back conveyor 78 to the
most upstream one of the intermittent conveyors. In addition,
there is no representation whatsoever in drawing Figure 2 or
any other drawing figure of any cooperation or interconnection
between the feed back conveyor 78 and either the sorting
device 76 or the parts supply section 69 for carrying out the
transferring functions recited in the means-plus-function
limitations of claim 1.
Means-plus-function language in a claim must be construed
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Application 08/299,123
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to cover the corresponding structure described in the
specification and equivalents thereof. In re Donaldson Co.,
Inc., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994). While the step of transferring pallets from a most
downstream one of the intermittent conveyors to the feed back
conveyor and the step of transferring pallets from the feed
back conveyor to a most upstream one of the intermittent
conveyors may perhaps be inferred from appellants’
specification, there is no disclosure, inherent or otherwise,
of any corresponding structure or apparatus for performing
such steps, much less any equivalent structure that is also
covered by the means-plus-function language of claim 1.
Furthermore, the circumstance that the above noted steps of
transferring pallets to and from the feed back conveyor may be
performed by a human being does not provide descriptive
support for the means-plus-function limitations added to claim
1. See Fredkin v. Irasek, 397 F.2d 342, 347-48, 158 USPQ 280,
285 (CCPA), cert. denied, 393 U.S. 980 (1968) and Keeleric v.
Kistler, 128 USPQ 442, 446 (Bd. Pat. Int. 1958), both citing
with approval Wilcox v. Danner, 53 F.2d 711, 716, 12 USPQ 16,
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Application 08/299,123
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21 (CCPA 1931) (“We are clear that the manual drawing away of
the glass from the device by Wilcox did not constitute a means
for guiding away the glass called for in the counts in
question and in the specifications of the parties.”) Compare
In re Bernhart, 417 F.2d 1395, 1399, 163 USPQ 611, 615 (CCPA
1969) (a human being is not the equivalent of a machine).
In light of the foregoing, appellants’ disclosure fails
to provide descriptive support as required by 35 U.S.C. § 112,
first paragraph, for the “first means for transferring” and
the “second means for transferring” limitations added to claim
1 during prosecution.
Claims 1, 3-7, 9 and 10 are further rejected under 35
U.S.C. § 112, second paragraph, for failing to particularly
point out and distinctly claim the subject matter which
appellants regard as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to 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).
The purpose of the requirement found in the second paragraph
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Application 08/299,123
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of 35 U.S.C. § 112 is to provide those who would endeavor, in
future enterprise, to approach the area circumscribed by the
claims of a patent with the adequate notice demanded by due
process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate
the possibility of infringement and dominance. In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
In the present case, the area set out and circumscribed
by the “first means for transferring” and the “second means
for transferring” limitations of claim 1 is obscured by
failure of the specification to describe any corresponding
structure for performing the functions specified in these
limitations. As stated by the court in In re Donaldson Co.,
16 F.3d at 1195, 29 USPQ2d at 1850 (Fed. Cir. 1994):
. . . if one employs means-plus-function language in
a claim, one must set forth in the specification an
adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly
claim the invention as required by the second
paragraph of section 112.
See also In re Dossel, 115 F.3d 942, 946, 42 USPQ2d 1881, 1884
(Fed. Cir. 1997), wherein the court stated:
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Application 08/299,123
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Failure to describe adequately the necessary
structure, materials, or acts in the written
description means that the drafter has failed to
comply with the mandate of § 112 ¶ 2 . . . the
mandate that all claims must particularly point out
and distinctly claim the subject matter which the
applicant regards as his invention.
Such is the case here, in our view. Accordingly, the
claims do not comply with the second paragraph of 35 U.S.C. §
112.
In summary and for the reasons above, (1) the decision of
the examiner refusing to allow claims 1, 3-7, 9 and 10 as
amended by amendments filed subsequent to the final rejection
is reversed, and (2) new rejections of claims 1, 3-7, 9 and 10
under 35 U.S.C. § 112, first and second paragraphs, are
entered pursuant to 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
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37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
HARRISON E. McCANDLISH ) BOARD OF PATENT
Senior Administrative Patent Judge ) APPEALS AND
Appeal No. 97-1626
Application 08/299,123
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) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-1626
Application 08/299,123
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Sughrue Mion Zinn MacPeak & Seas
2100 Pennsvania Avenue, NW
Washington, DC 20037