Ex parte MOODY

Board of Patent Appeals and Interferences

Jun 30, 1998

08502408 (B.P.A.I. Jun. 30, 1998)

Application for patent filed July 14, 1995.1
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not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL E. MOODY
__________
Appeal No. 97-3198
Application No. 08/502,4081
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and PATE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-3, which constitute all of the
claims remaining of record in the application.
The appellant's invention is directed to a high-torque
quiet gear. The subject matter before us on appeal is
Appeal No. 97-3198
Application No. 08/502,408
2
illustrated by reference to claim 1, which has been reproduced
in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Gribben 1,785,812 Dec. 23,
1930
Kiser, Jr. (Kiser) 4,078,445 Mar. 14,
1978
THE REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Gribben.
Claims 1-3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gribben in view of Kiser.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
New Rejections By The Board
of Patent Appeals and Interferences
Appeal No. 97-3198
Application No. 08/502,408
3
At the outset, pursuant to our authority under 37 C.F.R.
§ 1.196(b), we enter the following new rejections:
(1) Claims 1-3 are rejected under 35 U.S.C. § 112, first
paragraph, as the specification does not contain a description
of the invention as presently set forth in the claims.
Claim 1 recites an inner hub having a plurality of
circumferentially spaced elongated arms extending radially
outwardly, an outer ring member having a plurality of
circumferentially spaced elongated teeth extending radially
inwardly and received in the spaces between the elongated
arms, and a relatively incompressible elastomeric member
received in space between the side surfaces of the arms and
the teeth. The opposed adjacent side surfaces of the arms and
the teeth extend substantially parallel to one another. The
relationship between the arms and the teeth further requires
“said arms and said teeth intermeshing substantially entirely
along an entire length of said side surfaces” (emphasis
added), and this gives rise to the problem under the first
paragraph of Section 112.
The limitation quoted above was added by the first
amendment (Paper No. 3). It was not present in the original
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Application No. 08/502,408
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claims, nor does it appear in the specification. With regard
to the relationship between the opposed side surfaces of
adjacent arms and teeth, the specification teaches only that
they “at least partially overlap” (pages 4 and 6; emphasis
added), which clearly provides no support for “substantially
entirely.” Some degree of overlap is shown in the drawing,
but no amplifying information is provided from which the
percent of overlap shown can be determined. Thus, from the
original disclosure, there is no support for the phrase in
issue, that is, one of ordinary skill in the art receives no
guidance in the specification with regard to the meaning to be
attached to “substantially entirely” along an entire length.
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. See Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562-1563, 19 USPQ2d 1111, 1116 (Fed. Cir.
1991). Here, we are of the view that the original disclosure
does not meet this requirement with regard to the
“substantially entirely” limitation later added by the
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Application No. 08/502,408
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appellant, and therefore does not satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph.
(2) Claims 1-3 also are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite in that they fail to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Because a patentee has the right to exclude others from
making, using and selling the invention covered by the patent
(35 U.S.C. 154), the public must be apprised of exactly what
the patent covers, so that those who would approach the area
circumscribed by the claims of a patent may readily and
accurately determine the boundaries of protection involved and
evaluate the possibility of infringement and dominance. It is
to this that the second paragraph of 35 U.S.C. 112 is
directed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970). It is our view that the phrase
“substantially entirely along an entire length of said side
surfaces,” which appears in independent claim 1, is
indefinite.
As we pointed out above with regard to the rejection
under the first paragraph of Section 112, the original
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Application No. 08/502,408
“Substantially” is defined as considerable in quantity,2
but not wholly, and “entirely” means largely, but not the full
extent, Merriam Webster’s Collegiate Dictionary, Tenth
Edition, 1996, pages 1174 and 386.
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disclosure of the appellant’s invention does not include this
language. The only clue provided in the specification as to
the extent of overlap of the opposed sides of the arms and
teeth in the appellant’s invention is that they “at least
partially overlap” (pages 4 and 6). This not only is not
synonymous with “substantially entirely” but is, in our view,
contradictory thereof, which fuels the issue of what
constitutes “substantially entirely.” Turning to the common
definitions of these two words does not alleviate the
situation. When a word of degree is used in a claim, the2
specification must provide some standard for measuring that
degree, so that one of ordinary skill in the art would
understand what is claimed when the claim is read in light of
the specification. See Seattle Box Co., Inc. V. Industrial
Crating & Packing, Inc., 731 F.2d 818, 824, 221 USPQ 568, 574
(Fed. Cir. 1984). In the present case, it is our view that
one of ordinary skill in the art would not be so taught.
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Application No. 08/502,408
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Thus, it is our view that the metes and bounds of the
appellant’s claims cannot be determined. This is illustrated
by considering that the appellant has urged that the Gribben
arrangement displays a 50-60 percent overlap and thus does not
fall within the scope of the invention as recited in the
claims (Brief, page 6), even though such an overlap clearly
falls within the “at least partially overlap” scope of the
invention as described in the specification. How much
intermeshing of arms and gears is necessary to fall within the
scope of claim 1 is indeterminable to one of ordinary skill in
the art from the record before us.
The Examiner’s Rejections
When no definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become unpatentable,
but rather the claim becomes indefinite. See In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Since it
is clear to us that considerable speculation and assumptions
are necessary to determine the metes and bounds of what is
being claimed, and since a rejection cannot be based upon
speculation and assumptions, we are constrained not to sustain
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Application No. 08/502,408
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the examiner's rejections. See In re Steele, 309 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). We hasten to point out,
however, that this action should not be construed as an
indication that the claimed subject matter would have been
patentable over the prior art cited against the claims. We
have not addressed that issue, for to do so would require on
our part the very speculation which formed the basis of our
rejection under the second paragraph of Section 112.
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Application No. 08/502,408
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SUMMARY
The rejection of claims 1 and 2 under Section 102(b) is
not sustained.
The rejection of claims 1-3 under Section 103 is not
sustained.
New rejections of claims 1-3 have been entered under the
first and second paragraphs of Section 112.
The decision of the examiner is reversed.
This decision contains a new ground 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.”
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
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Application No. 08/502,408
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ground 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, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
Appeal No. 97-3198
Application No. 08/502,408
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)
)
WILLIAM F. PATE, III )
Administrative Patent Judge)
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Application No. 08/502,408
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