Ex parte Nelson

Board of Patent Appeals and Interferences

Feb 23, 1998

08335496 (B.P.A.I. Feb. 23, 1998)

Application for patent filed November 7, 1994. According1
to appellant, this application is a continuation of Application
08/045,631 filed April 9, 1993, now U.S. Patent No. 5,373,991
issued December 20, 1994.
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not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PHILIP L. NELSON
_____________
Appeal No. 96-3613
Application 08/335,4961
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and CRAWFORD, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 27
through 36. In the answer (page 2) dated May 30, 1996, the
examiner indicates that claims 28 and 30 are now objected to as
being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the
Appeal No. 96-3613
Application 08/335,496
2
limitations of the base claim and any intervening claims. Claims
8, 9, and 37 through 44, the only other claims remaining in the
application, stand allowed. In light of the above, we have
claims 27, 29, and 31 through 36 before us for review.
Appellant’s disclosed invention pertains to a foam dispenser
for dispensing a foaming liquid substance. An understanding of
the invention can be derived from a reading of exemplary claim
27, a copy of which appears in the appendix to appellant’s brief.
The following rejection is the sole rejection on appeal.
Claims 27, 29, and 31 through 36 stand rejected under
35 U.S.C. § 112, first paragraph, as being based upon a
specification which, as originally filed, does not support the
claimed invention.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the answer filed
May 30, 1996 (Paper No. 11), while the complete statement of
appellant’s argument can be found in the brief (Paper No. 10).
As to the rejection of claims 27, 29, and 31 through 36,
appellant indicates (brief, page 7) that they stand or fall
together. Thus, we select claim 27 for review and shall focus
our attention exclusively thereon below; 37 CFR § 1.192(c)(7).
Appeal No. 96-3613
Application 08/335,496
3
OPINION
In reaching our conclusion on the issue raised in this
appeal, this panel of the board has carefully considered
appellant’s specification, drawing, and claims, and the
respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We affirm the examiner’s rejection of claim 27 under
35 U.S.C. § 112, first paragraph. It follows that claims 29 and
31 through 36 stand with claim 27.
The description requirement of 35 U.S.C. § 112, first
paragraph, is separate and distinct from the enablement
requirement. That one skilled in the art might realize from
reading a disclosure that something is possible is not a
sufficient indication to that person that the something is part
of an appellant's invention. See In re Barker, 559 F.2d 588,
593, 194 USPQ 470, 474 (CCPA 1977). 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, rather than the
presence or absence of literal support in the specification for
Appeal No. 96-3613
Application 08/335,496
4
the claim language. Further, the content of the drawings may
also be considered in determining compliance with the written
description requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
We are in accord with the examiner’s stated position in the
answer (Paper No. 11) to the effect that the subject matter of
claim 27 lacks descriptive support in the original disclosure.
It follows that claims 29 and 31 through 36 fall with claim 27.
A reading of appellant’s originally filed specification,
claims, and drawing readily reveals to us that this original
disclosure simply does not convey that the present inventor had
possession at that time of the now claimed undisclosed embodiment
wherein the sealing surface protruding from the door is
configured to seal with “the outer surface” of the dispensing
passage, and the lock extending from the door is configured to
engage “the inner surface” of the dispensing passage. As
indicated above, the circumstance that one skilled in the art
might realize from reading a disclosure that something is
possible (an undisclosed variation) is not a sufficient
indication to that person that the something is part of an
Appeal No. 96-3613
Application 08/335,496
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appellant's invention. We, of course, fully appreciate that, as
a general proposition, a claim may be broader than the specific
embodiment disclosed in a specification. However, an inventor is
entitled to claims only as broad as a disclosure will allow. See
In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA
1981). In the present case, we, like the examiner, have
determined that the claims on appeal are simply not descriptively
supported by the underlying original disclosure.
The argument advanced by appellant in the brief (Paper No.
10) does not persuade us that the examiner erred in rejecting
appellant’s claims under 35 U.S.C. § 112, first paragraph.
In support of the view that the rejection is unsound,
appellant argues (brief, pages 10 and 11) that an ordinarily
skilled artisan would “realize” from a review of the original
disclosure in this application that the disclosed sealing and
locking relationships “could be” repositioned as a “variation” of
the embodiment specifically disclosed. As is evident from our
analysis, supra, this is not a convincing line of reasoning for
overcoming the rejection before us based upon a lack of
description (35 U.S.C. § 112, first paragraph).
We conclude by noting that appellant has indicated that as
an “important feature” of the invention the door includes a
Appeal No. 96-3613
Application 08/335,496
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cylindrical projection (specification, page 9) and that the
geometry of the foam dispensing passage and sealing cylindrical
projection, inter alia, are such as to clear the dispensing
passage and screen upon opening without any degradation in
performance in producing foaming (specification, page 10). As
discerned throughout the specification (pages 13 and 14, and page
16), the focus is upon sealing engagement of the projection with
the “interior” surface of the dispensing passage, i.e., the
cylindrical sealing exterior surface 60 seats against the
cylindrical “interior” surface of the dispensing passage
(specification, page 14). It appears to us that the undisclosed
embodiment would require the lock to engage some structure (a
pair of molded keepers, for example) on the inner (interior)
surface of the dispensing passage downstream of the orifice and
screen. In our opinion, the aforesaid structure (molded on the
interior surface) which, of course, remains on the inner surface
when the door is in opened position and the dispenser is in use,
may reasonably be expected to effect some degree of degradation
in performance in producing foaming, contrary to appellant’s
expressed expectation for the disclosed dispenser (specification,
page 10). Thus, the undisclosed embodiment would not appear to
us to have been contemplated by appellant within the framework of
Appeal No. 96-3613
Application 08/335,496
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the original disclosure in this application. See Gentry Gallery,
Inc. v. Berkline Corporation, 97-1076,-1194,-1182 (Fed. Cir.
Jan. 27, 1998).
In summary, this panel of the board has affirmed the
rejection of claims 27, 29, and 31 through 36 under 35 U.S.C.
§ 112, first paragraph.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-3613
Application 08/335,496
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Joseph M. Rolnicki
Rogers, Howell & Haferkamp
7733 Forsyth Blvd., Ste. 1400
St. Louis, MO 63105