Ex Parte Mayersak

Board of Patent Appeals and Interferences

Nov 18, 2010

10443621 (B.P.A.I. Nov. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/443,621 05/23/2003 Joseph R. Mayersak 28,465 6688
7590 11/19/2010
Burns Doane Swecker & Mathis LLP
PO Box 1404
Alexandria,, VA 22313-1404
EXAMINER
CHAMBERS, TROY
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
11/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH R. MAYERSAK
____________

Appeal 2009-006481
Application 10/443,621
Technology Center 3600
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Joseph R. Mayersak (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 3, 12, 14, 16-18, and 29-33.
Appellant cancelled claims 2, 4-11, 13, 15, and 19-28. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to a terradynamic penetrator and a cavity
running penetrator.
Claims 1 and 30, reproduced below, are representative of the subject
matter on appeal.
1. In a terradynamic penetrator having an
elongated body, the improvement comprising:
a nose pin attached to the elongated body at
a first end, said nose pin sized relative to a size of
the elongated body to create a terradynamic cavity
in a target through which said body passes
substantially entirely within said cavity in which
said nose pin is of stepped configuration having a
quadratic or higher order polynomial function
relationship.

30. In a cavity running penetrator having an
elongated body, the improvement comprising:
a nose pin attached to the elongated body at
a first end, said nose pin sized relative to a size of
the elongated body to create a terradynamic cavity
in a material being penetrated, wherein said body
runs substantially entirely within said terradynamic
cavity.

The Rejections
The following Examiner’s objection and rejections are before us for
review:
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The Amendment filed January 30, 2006 is objected to under 35 U.S.C.
§ 132(a) for introducing new matter into the disclosure.2 Ans. 3.
Claims 1, 3, 12, 14, 16-18, 29, 31-333 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.4 Ans. 4.
Claim 1, 3, 12, 14, 16-18, 29, and 31-335 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point

2 While objections are not usually considered to be under the Board’s
jurisdiction, in this instance since the objection to the Amendment filed
January 30, 2006 for new matter added to the Specification directly bears on
the Examiner’s rejection with respect to the written description requirement
under 35 U.S.C. § 112, first paragraph, we will address this objection.
3 On page 4 of the Answer, the Examiner’s second rejection under 35 U.S.C.
§ 112, first paragraph, should have included claims 31, 32, and 33. Claim 31
should have been included because it has the same claim language as claim 1
(i.e., “said nose pin is of stepped configuration having a quadratic or higher
order polynomial function relationship”) which the Examiner is arguing is
not supported by the original disclosure. Claim 33 should have been
included because claim 33 should be dependent upon claim 31 and not claim
30 because the subject matter of the stepped configuration only has
antecedent basis if claim 33 is dependent upon claim 31. Claim 32 should
have been included because it is dependent upon claim 1 and therefore, has
the same claim language as claim 1.
4 We have consolidated the rejection of claims 32 and 33 on page 4 of the
Answer and the rejection of claims 1, 3, 12, 14, 16, 17, 18, and 29 on pages
4-5 of the Answer into a single rejection since both rejections concern the
written description requirement under 35 U.S.C. § 112, first paragraph.
5 On page 5 of the Answer, the Examiner should have included claims 3, 12,
14, 16-18, 29, and 31-33 in the claim listing of the claims rejected under 35
U.S.C. § 112, second paragraph, because claims 3, 12, 14, 16-18, 29, and 32
are either directly or indirectly dependent upon claim 1 and thus, include the
subject matter concerning the “quadratic or higher order polynomial function
relationship”. Claims 31 and 33 should have been included for the reasons
discussed in footnote 3 supra.
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out and distinctly claim the subject matter which Appellant regards as the
invention. Ans. 5.
Claims 1, 12, 14, and 29-33 are rejected under 35 U.S.C. § 102(b) as
anticipated by Calfee (U.S. Patent No. 3,282,216, issued Nov. 1, 1966).
Ans. 5.
Claims 1, 12, 16, 29, and 30 are rejected under 35 U.S.C. § 102(e) as
anticipated by Mayersak (U.S. Patent No. 6,540,175 B1, issued Apr. 1,
2003). Ans. 7.
Claims 3, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Calfee or Mayersak. Ans. 9.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issues
In light of the Appellant’s contentions and the Examiner’s positions,
the issues before us are as follows:
(1) Did the Examiner err in objecting to the Amendment filed January
30, 2006 under 35 U.S.C. § 132(a) for introducing new matter into the
disclosure because the variables x, y, d, and k were not defined?
(2) Did the Examiner err in rejecting claims 1, 3, 12, 14, 16, 17, 18,
29, and 31-33 under 35 U.S.C. § 112, first paragraph, for failing to comply
with the written description requirement because the recitation of “said nose
pin is of stepped configuration having a quadratic or higher order
polynomial function relationship” constitutes new matter?
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(3) Did the Examiner err in rejecting claims 32 and 33 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement because the recitation of “wherein a diameter of
each step of the stepped configuration is selected as a function of the
terradynamic cavity created by the nose pin for a given velocity of the
terradynamic penetrator” is not supported by the original disclosure?
(4) Did the Examiner err in rejecting claims 1, 3, 12, 14, 16-18, 29,
and 31-33 under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the invention because the
recitation of “having a quadratic or higher order polynomial function
relationship” is indefinite?
(5) Did the Examiner err in concluding that claims 1, 12, 14, and 29-
33 are anticipated under 35 U.S.C. § 102(b) by Calfee?
(6) Did the Examiner err in concluding that claims 1, 12, 16, 29, and
30 are anticipated under 35 U.S.C. § 102(e) by Mayersak?
Analysis
Issue 1
Appellant contends that original Figures 2 and 4 support the
Amendments to the Specification of January 30, 2006. App. Br. 7.
Appellant also contends that the Amendments to the Specification of
January 30, 2006 merely add textual descriptions of features that were
already disclosed in original Figure 4. Id. In other words, Appellant
contends that the addition of the reference character “d” to the Specification,
on page 9, line 20, after the words “nose pin diameter” and the addition of
the formula shown in original Figure 4 along with a description of the
variables of Figure 4, namely,
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with “d” being the nose pin diameter, with x and y
being points along the x and y axes of Figure 4,
and with k being a constant (e.g., 2.0 as shown in
Figure 4 for hydrodynamic cavitation),

to the Specification, on page 10, line 10, after the words “parabolic
equation”, is not new matter, but rather is simply relating information in
words that was already conveyed in Figure 4. App. Br. 7-8. Appellant also
contends that original Figure 4 includes a “cavity description” represented as
a quadratic or higher order polynomial function relationship. App. Br. 8.
Appellant also contends that because the Figures constitute part of the
original disclosure, no new matter was added to the Specification when the
equation and description thereof were added by amendment on January 30,
2006. App. Br. 9. Finally, Appellant also contends that “[i]t is well
established patent practice that originally filed Figures constitute part of the
original disclosure and can be relied upon for support of claim features.”
Reply Br. 1.
The Examiner’s position is that Appellant’s Amendment filed on
January 30, 2006 added new matter to the Specification because the original
Specification did not discuss variables x, y, d, and k. Ans. 3. More
specifically, the Examiner posits that although the original Specification did
include the formula in Figure 4, the formula included undefined variables x,
y, d, and k so that Appellant’s attempt to define those unknown and
undefined variables by inserting language stating that x and y are equivalent
to data points on the graph of Figure 4, that d is the diameter of the nose pin,
and that k is a constant, is new matter. Ans. 11.
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
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matter be described identically, but the disclosure as originally filed must
convey to those skilled in the art that applicant had invented the subject
matter later claimed. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Stated using somewhat different terminology, the applicant must convey,
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, (Fed. Cir. 1991). Precisely how close
the original description must come to comply with the description
requirement must be determined on a case by case basis. In re Smith, 458
F.2d 1389, 1395 (CCPA 1972). The inquiry into whether the description
requirement is met is a question of fact. In re Wertheim, 541 F.2d 257, 262,
(CCPA 1976); In re Ruschig, 379 F.2d 990, 996 (CCPA 1967).
We agree with Appellant that the Amendment filed on January 30,
2006 does not add new matter to the Specification and is supported by the
original disclosure of Figure 4. Indeed, Appellant’s additions to the
Specification do no more than elaborate on what was already disclosed in
original Figure 4. One of ordinary skill in the art would understand that
original Figure 4 clearly set forth a parabolic equation defining a cavity
generated by the nose pin of the penetrator. The penetrator shown in Figure
4 clearly shows a nose pin of a diameter “d” and a length in inches measured
along the x-axis. The nose pin of the penetrator generates a cavity which has
a cross track in inches measured along the y-axis and a constant “k”,
wherein “K = 2.0” for the particular cavity of Figure 4 as shown by the lead
line leading from K = 2.0 to cavity.
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In view of the foregoing, we do not sustain the Examiner’s objection
of the Amendment filed January 30, 2006 under 35 U.S.C. § 132(a) for
introducing new matter into the disclosure.
Issue 2
Appellant contends that the original disclosure of Figure 4 supports
the claim 1’s recitation of “said nose pin is of a stepped configuration having
a quadratic or higher order polynomial function relationship.” App. Br. 10.
Appellant also contends that, contrary to the Examiner’s statement that there
is no support in the originally filed Specification for the recitation that the
nose pin is of a stepped configuration having a quadratic or higher order
polynomial function relationship, the cavity description in Figure 4 clearly
supports the claim 1 limitations. Id.
The Examiner’s position is that there does not appear to be support in
the originally filed Specification for the Appellant’s amendment to the
claims to require the nose pin to be of a stepped configuration having a
quadratic or higher order polynomial function relationship. Ans. 4. The
Examiner posits that Appellant’s allegation that support for the nose pin
being of stepped configuration having a quadratic or higher order
polynomial function relationship can be found in Figure 4 is without merit
because the formula in Figure 4 is clearly labeled “cavity description” and
the variables x, y, d, and k have not been described in the Specification.
More particularly, the Examiner posits that “Paragraph [0056] of the
[S]pecification clearly describes ‘the cavity’ as having a parabolic
relationship and not the nose pin.” Ans. 4-5.
The description requirement found in the first paragraph of 35 U.S.C.
§ 1l2 is separate and distinct from the enablement requirement of that
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provision. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-
1563 (Fed. Cir. 1991)). The purpose of the written description requirement
in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.” Id.
“[T]he test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad at
1351. This test “requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the art.”
Id. “Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Id. This inquiry is a question of fact. Id.
(citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985)).
We agree with the Examiner that the parabolic formula in Figure 4 of
the Drawings clearly defines the cavity being made by the nose pin of the
penetrator, but does not appear to have anything to do with a stepped nose
pin. Indeed, the parabolic formula in Figure 4 is clearly labeled with the
words “CAVITY DESCRIPTION.” Additionally, the variable “k” in the
parabolic formula is shown by “K = 2.0” having a lead line leading to the
cavity, not the nose pin, which cavity is clearly not of a stepped
configuration. Finally, it is unclear from the disclosure of Figure 4 whether
the upper case “K” (i.e., “K=2.0”) in Figure 4 should even be taken as
representing the same parameter as the lower case “k” in the parabolic
formula in Figure 4. Upper and lower case letters are often used to represent
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different values in the same formula. Appellant’s Specification defines a
stepped nose pin as one having a configuration as shown in either Figure 2
(see the original Specification, page 9, lines 13-15 which describes the
cavity penetrator as having a stepped nose pin) or Figure 12 (see the original
Specification, page 14, lines 16-20, describing Figure 12 as disclosing
stepped nose pins). The nose pin shown in Figure 4 appears to be one of the
nose pins shown in Figure 9 and according to Appellant’s disclosure, the
Figure 9 nose pins do not have a stepped configuration.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1, 3, 12, 14, 16, 17, 18, 29, and 31-33 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Issue 3
Appellant contends that Figure 2 illustrates a stepped configuration of
the nose pin and each step is selected such that the penetrator only touches
the medium being penetrated on its nose pin front face as discussed at page
9, lines 13-16 of the Specification. App. Br. 11. Appellant also contends
that the ability to generate a terradynamic cavity is a function of penetrator
velocity, and the terradynamic cavity can be described by a parabolic
equation such as that shown in Figure 4 and described in the specification at
page 10, lines 4-12. Id. Finally, Appellant concludes that a terradynamic
cavity is created by a stepped nose configuration with a diameter of each
step being selected as a function of the terradynamic cavity created for a
given velocity. Id.
The Examiner’s position is that the recitation of “wherein a diameter
of each step of the stepped configuration is selected as a function of the
terradynamic cavity created by the nose pin for a given velocity of the
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terradynamic penetrator” in claims 32 and 33 is not supported by the original
disclosure. Ans. 4.
We agree with the Examiner that the recitation of claims 32 and 33 is
not supported by the original disclosure. Appellant has not pointed to
anywhere in the original disclosure that provides support for the subject
matter of claims 32 and 33. Moreover, Appellant’s arguments appear to
state that a terradynamic cavity is defined in terms of the stepped
configuration of the nose pin of the penetrator and the stepped configuration
of the nose pin of the penetrator is defined in terms of the terradynamic
cavity. This is circular logic.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 32 and 33 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Issue 4
Appellant contends that the Examiner’s rejection of claim 1 under 35
U.S.C. § 112, second paragraph, as being indefinite should be reversed for
reasons similar to those concerning why the 35 U.S.C. § 112, first paragraph,
rejection should be reversed. App. Br. 10.
The Examiner’s position is that “it is not known what is meant or
encompassed by the phrase ‘having a quadratic or higher order polynomial
function relationship.’” Ans. 5. The Examiner posits that “[t]he stepped
configuration of a nose pin can be described using a linear function” and
“[i]t is not clear how the [Appellant] arrives at a quadratic or higher order
function.” Id.
We are unconvinced by the Examiner that claim 1’s language of
“having a quadratic or higher order polynomial function relationship” is
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indefinite under 35 U.S.C. § 112, second paragraph. We find that the claim
language of “having a quadratic or higher order polynomial function
relationship” would be clearly understood by one of ordinary skill in the art.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 3, 12, 14, 16-18, 29, and 31-33 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
Issue 5
Appellant contends that claims 1, 12, 14, and 29-33 are not anticipated
under 35 U.S.C. § 102(b) by Calfee. App. Br. 11. More particularly,
Appellant contends that Calfee does not disclose a terradynamic penetrator
having a nose pin and elongated body. Id. Appellant also contends that
Calfee does not teach a nose pin sized relative to a size of the elongated
body to create a terradynamic cavity in a target through which the body
passes substantially entirely within the cavity and being of a stepped
configuration having a quadratic or higher order polynomial function
relationship. Id. Appellant also contends that Calfee teaches away from
Appellant’s quadratic or higher order polynomial function relationship of the
stepped nose pin configuration because Calfee teaches the desirability of a
linear relationship in the Figure 2 nose configuration. App. Br. 11-12.
The Examiner’s position is Calfee discloses a terradynamic penetrator
because, from a search of the prior art, the Examiner has determined
“terradynamic” to mean the creation of a cavity while penetrating the earth.
Ans. 7. The Examiner posits that Calfee’s terradynamic pentetrator has an
elongated body 3 and a nose pin 4 with a stepped configuration as shown in
Figures 2-5. Id. The Examiner also posits that Calfee’s nose pin structure is
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no different than Appellant’s nose pin structure so that Calfee’s nose pin is
capable of performing the same function as Appellant’s. Id. Hence, the
Examiner posits that the nose pin of Calfee is capable of creating a
terradynamic cavity through which the body passes substantially entirely
within the cavity. Id.
Calfee discloses a nose cone and tail structures for an air vehicle.
Title. The air vehicle may be a missile or a spacecraft. Col. 1, ll. 14-15. As
shown in Figures 1 and 2, a missile 2 has a main body portion 3 and a nose
section or cone 4. Col. 2, ll. 24-33. The nose section 4 is constructed in a
series of progressive steps 5, 6, 7, 8. Col. 2, ll. 34-36. The outer
circumference or leading edge 9 of each step 5, 6, 7, 8 is aligned with each
of the other edges 9 so that the edges of each step may be joined by a single
straight line 10 as shown in phantom in Figure 2. Col. 2, ll. 36-39. The
embodiments shown in Figures 3-5 also have a nose section 104, 204, and
304, respectively, which have a straight line relationship of the leading edges
of the steps. Col. 2, ll. 51-68.
We agree with Appellant that Calfee’s stepped nose pins as shown in
Figures 2-5 are all defined by a linear function relationship (see phantom
line 10 in Fig. 2, col. 2, ll. 36-39, and unnumbered phantom lines in each of
Figures 3-5). Thus, Calfee’s stepped nose pins do not meet the claim
recitation of “a quadratic or higher order polynomial function relationship.”
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 12, 14, and 29-33 under 35 U.S.C. § 102(b) as anticipated by
Calfee. Since the Examiner’s rejection of claims 3, 17, and 18 under 35
U.S.C. § 103(a) depends upon the same erroneous finding concerning Calfee
disclosing a quadratic or higher order polynomial function relationship, we
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also do not sustain the Examiner’s rejection of claims 3, 17, and 18 under 35
U.S.C. § 103(a) as unpatentable over Calfee.
Issue 6
Appellant contends that although Mayersak does mention a
terradynamic cavity, there is no teaching to size a nose pin relative to a size
of the elongated body of the penetrator to create a terradynamic cavity as
recited in claims 1 and 30. App. Br. 13. Appellant also contends that
Mayersak does not teach or suggest a nose pin of stepped configuration
having a quadratic or higher order polynomial function relationship. Id.
The Examiner’s position is that, with respect to claims 1 and 30,
Mayersak discloses a terradynamic penetrator having an elongated body and
a nose pin which creates a terradynamic cavity in a target through which the
body passes. Ans. 8. The Examiner posits that Figure 22 of Mayersak
shows a nose pin of stepped configuration which has a diameter less than the
diameter of the elongated body so that the nose pin would “necessarily have
the same relationship to the body as disclosed in the instant application.” Id.
Mayersak discloses a system for clearing buried and surface mines.
Title. The system uses darts, delivered by mine clearing munition, which are
capable of penetrating the soil or water in a cavitating generating mode
using a small tungsten nose pin to cause the high velocity dart to create a
cavity. Col. 3, ll. 1-4. The anti-mine dart tungsten nose and high velocity is
designed to create a cavity while penetrating dirt in a terradynamic
cavitation concept to allow the dart to penetrate to and defeat mines in soil
up to two feet. Col. 3, ll. 11-15. The dart employs a cavity-generating nose
shape to allow the dart to penetrate in hydrodynamic cavitating and
terradynamic cavitating modes in stable penetration to reach the mine. Col.
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7, ll. 13-17. The stand-off nose pin of the dart is designed to have the
appropriate diameter to allow stable penetration during the penetration of
soils while also generating a cavity about the countermine dart during the
penetration process. Col. 8, ll. 22-26. The ability to generate a terradynamic
cavity is the result of the high velocity of the dart during the penetration
which essentially causes the soil to “flow” off the flat of the hardened
tungsten nose pin and creates a cavity which has a diameter larger than the
diameter of the penetrating countermine dart. Col. 8, ll. 36-41.
We agree with Appellant that Mayersak does not teach a nose pin
sized relative to a size of the elongated body to be capable of creating a
terradynamic cavity as required by claims 1 and 30, nor does Mayersak
teach a nose pin being of a stepped configuration as required by claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 12, 16, 29, and 30 under 35 U.S.C. § 102(e) as anticipated by
Mayersak. Since the Examiner’s rejection of claims 3, 17, and 18 under 35
U.S.C. § 103(a) as unpatentable over Mayersak rests on the same erroneous
finding concerning a nose pin sized to create a terradynamic cavity, we also
do not sustain the Examiner’s rejection of claims 3, 17, and 18 under 35
U.S.C. § 103(a) as unpatentable over Mayersak.
CONCLUSIONS
The Examiner erred in objecting to the Amendment filed January 30,
2006 under 35 U.S.C. § 132(a) for introducing new matter into the
disclosure because the variables x, y, d, and k were not defined.
The Examiner did not err in rejecting claims 1, 3, 12, 14, 16, 17, 18,
29, and 31-33 under 35 U.S.C. § 112, first paragraph, for failing to comply
with the written description requirement because the recitation of “said nose
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pin is of stepped configuration having a quadratic or higher order
polynomial function relationship” constitutes new matter.
The Examiner did not err in rejecting claims 32 and 33 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement because the recitation of “wherein a diameter of
each step of the stepped configuration is selected as a function of the
terradynamic cavity created by the nose pin for a given velocity of the
terradynamic penetrator” is not supported by the original disclosure.
The Examiner erred in rejecting claim 1, 3, 12, 14, 16-18, 29, and 31-
33 under 35 U.S.C. § 112, second paragraph, for failing to particularly point
out and distinctly claim the invention because the recitation of “having a
quadratic or higher order polynomial function relationship” is definite.
The Examiner erred in concluding that claims 1, 12, 14, 29, 30, 31,
32, and 33 are anticipated under 35 U.S.C. § 102(b) by Calfee.
The Examiner erred in concluding that claims 1, 12, 16, 29, and 30 are
anticipated under 35 U.S.C. § 102(e) by Mayersak.
DECISION
We affirm the rejection of claims 1, 3, 12, 14, 16-18, 29, and 31-33
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the objection to the Amendment filed on January 30, 2006
under 35 U.S.C. § 132(a) for introducing new matter into the disclosure, the
rejection of claims 1, 3, 12, 14, 16-18, 29, and 31-33 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention,
the rejection of claim 1, 12, 14, and 29-33 under 35 U.S.C. § 102(b) as
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anticipated by Calfee (U.S. Patent No. 3,282,216, issued Nov. 1, 1966), the
rejection of claims 1, 12, 16, 29, and 30 under 35 U.S.C. § 102(e) as
anticipated by Mayersak (U.S. Patent No. 6,540,175 B1, issued Apr. 1,
2003), and the rejection of claims 3, 17, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over either Calfee or Mayersak.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

Klh

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