Ex parte Kloster

Board of Patent Appeals and Interferences

Aug 24, 1998

08096581 (B.P.A.I. Aug. 24, 1998)

Application for patent filed July 21, 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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRIEDER KLOSTER
____________
Appeal No. 96-0122
Application No. 08/096,5811
____________
ON BRIEF
____________
Before HAIRSTON, TORCZON and CARMICHAEL, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 7. In an Amendment After Final (paper number 12), claims
1 and 3 through 7 were amended. After entry of the amendment,
the examiner allowed claims 6 and 7, and objected to claims 3 and
4 as being dependent upon a rejected base claim, but explained
that these claims would be allowable if rewritten in independent
form including all of the limitations of the base claim and any
Appeal No. 96-0122
Application No. 08/096,581
2
intervening claims (Answer, page 1). Accordingly, claims 1, 2
and 5 remain before us on appeal.
The disclosed invention relates to a method and a device for
determining a residual playing time and an available total
playing time of a magnetic tape on a supply reel and a take-up
reel in a magnetic-tape cassette.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method of determining the playing time of a magnetic
tape on a supply reel and a take-up reel in a magnetic-tape
cassette, said method comprising the steps:
briefly winding the magnetic tape from the supply reel to
the take-up reel;
generating and counting first winding pulses (i , i )1 2
relating to the amount of rotation of said supply reel and said
take-up reel during said step of briefly winding the magnetic
tape;
subsequently extracting the magnetic tape accommodated in
the magnetic-tape cassette over a given length (L );H
generating and counting second winding pulses (j , j )1 2
relating to the amount of rotation of said supply reel and said
take-up reel during said step of extracting the magnetic tape;
and
calculating a residual playing time (T ) of the magneticR
tape left in the magnetic-tape cassette on the basis of values
determined for the counted first and second winding pulses (i ,1
i , j , j ,) and on the basis of given values relating to the2 1 2
thickness (d) and speed (v) of the magnetic tape, to the hub
Appeal No. 96-0122
Application No. 08/096,581
3
diameter (K) of the supply and take-up reels, and to the number
(u) of winding pulses generated per revolution of the supply and
take-up reels.
No references were relied on by the examiner in the
rejections.
Claims 1, 2 and 5 stand rejected under the first and second
paragraphs of 35 U.S.C. § 112 as being based upon a non-enabling
disclosure, and for indefiniteness.
Reference is made to the brief and the answer for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse the 35 U.S.C. § 112 rejections.
According to the examiner (Answer, page 3):
The disclosure sets forth specific tape winding
and extraction steps with rotational values to be
measured during those steps. It also sets forth
specific formulae using those rotational values with
other known values to determine the total playing time
or the residual playing time. There is no disclosure
of other formulae or any other guidance for determining
these times without the two formulae disclosed.
It is the examiner’s position (Answer, page 4) that the claims
“do not recite the critical formulae disclosed in the
specification,” and that “[t]he disclosure does not enable one
skilled in the art to determine the claimed times without using
the formulae disclosed.” The examiner has additionally stated
Appeal No. 96-0122
Application No. 08/096,581
4
that the claims “are indefinite and incomplete because they do
not recite the critical formulae disclosed in the specification”
(Answer, page 4).
Appellant argues that it is permissible to broadly claim the
method and apparatus without the limitations of the particular
formulae (Brief, pages 2 and 4), and that:
While the specification only recites one
winding/extracting procedure and one set of formulae to
use with the winding/extracting procedure, Appellant
submits that Appellant is not limited to claiming only
the described winding/extracting procedure along with
the disclosed formulae. Rather, Appellant is permitted
to claim the procedure alone if the disclosed procedure
by itself is patentably distinct from the prior art.
As indicated supra, appellant’s decision to not include the
formulae for calculating the playing times in the claims has led
to rejections under the first and the second paragraphs of
35 U.S.C. § 112.
As a lexicographer, appellant may choose the language of the
claims. On the other hand, the language chosen for the claims
must set out and circumscribe a particular area with a reasonable
degree of precision and particularity when read in light of the
application disclosure as they would be by one possessing
ordinary skill in the art. See In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971).
Appeal No. 96-0122
Application No. 08/096,581
See In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023,2
1027 (Fed. Cir. 1997).
“Mathematical precision should not be imposed for its own3
sake.” Modine Manufacturing Co. v. International Trade
5
Appellant acknowledges (Brief, page 2) that [i]n all prior
art methods, it is necessary to perform at least two winding
operations (in addition to the loading operation).” If the
claimed invention is indeed “patentably distinct from the prior
art” (Brief, page 3), then appellant is under an obligation to
specifically define the claimed invention so that it does not
read on the prior art methods. When the claims on appeal are
given their broadest reasonable interpretation, they do not2
preclude the additional winding operation of the acknowledged
prior art. The claimed invention can only be distinguished over
the acknowledged prior art by reading the formulae from the
disclosure into the step-plus-function limitations of the claims.
“During patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.” In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The claims before
us require a calculation of a residual playing time (T ) (claimsR
1 and 5) and a calculation of an available total playing time
(T ) (claim 2), and such mathematical calculations can not beG 3
Appeal No. 96-0122
Application No. 08/096,581
Commission, 75 F.3d 1545, 1557, 37 USPQ2d 1609, 1617 (Fed. Cir.),
cert.denied, 116 S.Ct. 2523 (1996).
Keeping in mind that appellant has never relied on the4
provisions of the sixth paragraph of 35 U.S.C. § 112 or In re
Donaldson, 16 F.3d 1189, 29 USPQ 1845 (Fed. Cir. 1994) to
distinguish the claimed invention over any applied prior art.
“When the meaning of claims is in doubt . . . they are5
properly declared invalid.” Amgen Inc. v. Chugai Pharmaceutical
Co. Ltd., 927 F.2d 1200, 1218, 18 USPQ2d 1016, 1031 (Fed. Cir.
1991).
6
performed without looking to appellant’s disclosure for the
specific steps involved in the mathematical calculations. Thus,
we will look to appellant’s disclosure for an understanding of
the steps needed to solve the required calculations of claims 1,
2 and 5. When we turn to appellant’s disclosure for an4
understanding of the calculation steps, the meaning of the
claimed calculations is no longer in doubt, and the claims5
satisfy the provisions of the second paragraph of 35 U.S.C.
§ 112. The indefiniteness rejection of claims 1, 2 and 5 is
reversed. The non-enablement rejection under the first paragraph
Appeal No. 96-0122
Application No. 08/096,581
The enablement clause of the first paragraph of 35 U.S.C.6
§ 112 requires that the disclosure adequately describe the
claimed invention so that the artisan could practice it without
undue experimentation. See Genentech Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1364, 42 USPQ2d 1001, 1004 (Fed. Cir.), cert.
denied, 118 S.Ct. 397 (1997).
7
of 35 U.S.C. § 112 is reversed because the examiner has not
questioned the adequacy of the disclosed formulae per se to teach
one of ordinary skill in the art to make and/or use the claimed
invention without undue experimentation.6
DECISION
The decision of the examiner rejecting claims 1, 2 and 5
under the first and second paragraphs of 35 U.S.C. § 112 is
reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD TORCZON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-0122
Application No. 08/096,581
8
Corporate Patent Counsel
U.S. Philips Corporation
580 White Plains Rd.
Tarrytown, NY 10591
KWH/jrg
JENINE GILLIS

Appeal No. 96-0122
Serial No. 08/096,581
Judge HAIRSTON

Judge TORCZON
Judge CARMICHAEL
Received: 11 Aug 98
Typed: 11 Aug 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
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