Ex parte Negus et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

08190950 (B.P.A.I. Apr. 30, 1998)

Application for patent filed February 3, 1994. 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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHARLES C. NEGUS, ROBERT I. RUDKO,
STEPHEN J. LINHARES and STEPHEN M. PEREZ
________________
Appeal No. 95-4462
Application 08/190,9501
________________
HEARD: APRIL 8, 1998
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-11, all the claims pending in the application.
Appeal No. 95-4462
Application 08/190,950
Subsequent to a new ground of rejection in the2
examiner’s answer, claim 1 was amended by an “amendment” found
within the body of the reply brief (Paper No. 11). We point
out, however, that the practice of using the reply brief in
lieu of a separate paper to amend claims is improper and
inappropriate. See the last paragraph of MPEP 1208 and the
penultimate sentence of 37 CFR § 1.193(b). Since the reply
brief includes on page 1 the handwritten note “Please Enter,”
and since the examiner has responded in the supplemental
examiner’s answer (Paper No. 12) in a manner which indicates
that the “amendment” included in the reply brief has been
accepted, we will assume that the version of claim 1 found on
pages 1 and 2 of the reply brief constitutes a correct copy of
appealed claim 1.
The term “the heart wall” lacks antecedent basis.3
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Appellants’ invention pertains to a handpiece for use
with a medical laser system. A basic understanding of the
invention can be derived from a reading of exemplary claim 1,
the sole independent claim on appeal, which reads as follows:2
1. A handpiece for a medical laser system comprising:
a barrel having a passage for transmitting a laser
beam; and
a contacting wall attached to one end of said
barrel, said wall including: an aperture in communication with
said passage in the barrel, a solid face extending radially
outward from said aperture to the periphery of said contacting
wall, and a knurled surface on said face for preventing
movement of said contacting wall with respect to the heart
wall during surgery;[3]
wherein said aperture has a diameter which is
substantially similar to the diameter of said passage; and
Appeal No. 95-4462
Application 08/190,950
The examiner inadvertently failed to include the4
Vassiliadis reference in the list of references relied upon on
page 3 of the answer.
These are new rejections made for the first time in the5
examiner’s answer. In each instance, the examiner no longer
includes the McFee reference (incorrectly denominated “Fee” in
the final rejection) in support of the rejection. Since the
rejections in the final rejection relying in part on McFee
have not been restated in the examiner’s answer, we presume
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wherein said periphery of said contacting wall has a
diameter which is at least twice the diameter of said aperture
in order to provide greater surface area over which to
disperse the pressure imposed by said handpiece on the heart
wall and to facilitate perpendicular alignment of the
handpiece with respect to the heart wall.
The references of record relied upon by the examiner in
support of the rejections are:4
Pollock 1,135,465 Apr. 13,
1915
Sharon et al. (Sharon) 3,865,113 Feb. 11,
1975
Vassiliadis et al. (Vassiliadis) 4,940,411 Jul. 10,
1990
Claims 1-5 and 8-11 stand rejected under 35 U.S.C. § 103
as being unpatentable over Sharon in view of Pollock. Claims
6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sharon in view of Pollock and further in
view of Vassiliadis.5
Appeal No. 95-4462
Application 08/190,950
that they have been withdrawn. See Ex parte Emm, 118 USPQ
180, 181 (Bd. App. 1957).
-4-
The rejections are explained in the examiner’s answer
(Paper No. 10) and the supplemental examiner’s answer (Paper
No. 12).
The opposing viewpoints of appellants are set forth in
the brief (Paper No. 9) and the reply brief (Paper No. 11).
OPINION
We have encountered substantial difficulty in
understanding precisely what is meant by certain claim
language in the appealed claims. Our difficulty centers on
the recitation added to claim 1 subsequent to the final
rejection that the diameter of the aperture “is substantially
similar to” the diameter of the passage in the barrel.
When words of degree such as “substantially similar” are
used in a claim, our reviewing court has directed us to look
to appellants’ specification to determine if it contains “some
standard for measuring that degree,” that is, whether one of
ordinary skill in the art would understand the scope or metes
and bounds of the claimed subject matter when read in light of
the specification. See Seattle Box Co. v. Industrial Crating
Appeal No. 95-4462
Application 08/190,950
-5-
& Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed.
Cir. 1984).
In the present case, the question raised by appellants’
claim language is how far the diameter of the aperture may
depart from the diameter of the passage in the barrel and yet
be considered “substantially similar to” the barrel passage
diameter. In looking to appellants’ specification for the
necessary guidance, we find nothing therein that would
reasonably apprise one of ordinary skill in the art as to the
threshold between those aperture diameters that are “similar
to” a given passage diameter and those that are not, much less
those aperture diameters that are “substantially similar to” a
given passage diameter and those that are not. In fact,
appellants’ specification gives no hint whatsoever as to the
degree to which the diameter of the aperture may depart from
the diameter of the passage and yet be considered
“substantially similar” thereto.
Absent the necessary guidelines for making such a
determination, there is no way for us to determine the scope
of the claimed subject matter with a reasonable degree of
precision for evaluating the possibility of infringement and
Appeal No. 95-4462
Application 08/190,950
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dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970).
While we might speculate as to what is meant by that
claim language, our uncertainty provides us with no proper
basis for making the comparison between that which is claimed
and the prior art as we are obligated to do. Rejections under
35 U.S.C. § 103 should not be based upon “considerable
speculation as to meaning of the terms employed and
assumptions as to the scope of such claims.” In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no
reasonably definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of the
appealed claims as being unpatentable over the prior art. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections. We take no
position as to the pertinence of the prior art as applied by
the examiner in his rejections.
Appeal No. 95-4462
Application 08/190,950
-7-
Pursuant to our authority under 37 CFR 1.196(b), we make
the following new rejections.
Claims 1-11 are rejected under 35 U.S.C. § 112, second
paragraph. For the reasons discussed above, the appealed
claims fail to particularly point out and distinctly claim the
subject matter which appellants regard as the invention for
the reasons discussed above. Specifically, we are unable to
determine with any reasonable degree of precision the metes
and bounds of the terminology “said aperture has a diameter
which is substantially similar to the diameter of said
passage” appearing in claim 1.
Claims 1-11 are also rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification that fails
to provide descriptive support for the invention as now
claimed. Our difficulty with the claim language with respect
to the description requirement found in the first paragraph of
§ 112 is based on the recitation added to claim 1 subsequent
to the final rejection that the periphery of the contacting
wall has a diameter which is “at least twice” the diameter of
the aperture in the contacting wall.
As stated in In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
Appeal No. 95-4462
Application 08/190,950
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1089, 1096 (Fed. Cir. 1983) (citations omitted):
[t]he test for determining compliance with the
written description requirement [found in the first
paragraph of 35 U.S.C. § 112] 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. The content of the drawings may
also be considered in determining compliance with
the written description requirement.
The requirement that the diameter of the periphery of the
contacting wall is “at least twice” the diameter of the
aperture in the wall encompasses a range of ratios which
includes the ratio 2 as a lower limit, and which has no upper
limit. There is no support in the original disclosure for the
diameter of the periphery of the contacting wall 32 being
twice the diameter of the aperture 26, as now covered by claim
1. Likewise, there is no support in the original disclosure
for the diameter of the periphery of the contacting wall 26
being any diameter greater than twice the diameter of the
aperture 26, as also now covered
Appeal No. 95-4462
Application 08/190,950
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by claim 1. Accordingly, appellants’ specification does not
provide descriptive support for the claim limitation in
question.
With respect to our new rejections, we have considered
the remarks found in appellants’ communication submitted April
17, 1998 (Paper No. 18), but do not find them to be persuasive
that the specification provides adequate support for the claim
language in question.
Summary
The standing rejections of the appealed claim under
35 U.S.C. § 103 are reversed on procedural grounds. We take
no position as to the pertinence of the prior art as applied
by the examiner in his rejections.
Pursuant to our authority under 37 CFR § 1.196(b), new
rejections of the appealed claims under 35 U.S.C. § 112, first
and second paragraphs, have been made.
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)).
Appeal No. 95-4462
Application 08/190,950
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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
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, 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
Appeal No. 95-4462
Application 08/190,950
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)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4462
Application 08/190,950
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