Ex parte Ottemann

Board of Patent Appeals and Interferences

Mar 31, 1998

08254978 (B.P.A.I. Mar. 31, 1998)

Application for patent filed June 07, 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(2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM C. OTTEMANN
__________
Appeal No. 97-2227
Application 08/254,9781
__________
ON BRIEF
__________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
William C. Ottemann (the appellant) appeals from the
final rejection of claims 1-13, the only claims present in the
application.
Appeal No. 97-2227
Application 08/254,978
Notwithstanding the examiner’s statement on page 3 of the answer that2
the copy of the claims in the appendix to the brief “is correct,” we note that
in claim 1 (as reproduced in this appendix) “said second drive train means”
should be -- and second drive train means --.
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter a new rejection of
claims 9-13.
The appellant’s invention pertains to a sailboat winch
having four speeds at successively higher gear ratios.
Independent claim 1 is further illustrative of the appealed2
subject matter and reads as follows:
1. A sailboat winch having four speeds at
successively higher gear ratios comprising a support
base, a drum rotatably mounted on said support base,
a central rotary drive shaft extending within said
drum, first drive means between said shaft and said
drum for driving said drum at a gear ratio, first
drive train means between said shaft and said drum
for driving said drum in a third and fourth gear at
a first location on said drum, and second drive
train means between said shaft and said drum,
independent of said first drive train means, for
driving said drum in a second gear at a second
location on said drum.
The references relied on by the examiner are:
Atfield et al. (Atfield) 4,725,043 Feb. 16, 1988
Dudden GB 2 109 489 Jun. 02, 1983
Appeal No. 97-2227
Application 08/254,978
This rejection was set forth as a new ground of rejection in the3
answer.
3
(Great Britain)
Claims 1, 2 and 9-13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Atfield.
Claims 3-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atfield in view of Dudden.
Claims 1-9, 12 and 13 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point and distinctly claim the subject matter
which the appellant regards as the invention.3
The examiner’s rejections are explained on pages 4-7 of
the answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages
11-16 of the brief, pages 1-5 of the reply brief, pages 8-10
of the answer and pages 2 and 3 of the supplemental answer.
OPINION
As a preliminary matter, we base our understanding of the
appealed subject matter upon the following interpretation of
Appeal No. 97-2227
Application 08/254,978
All reference to lines in claims in this decision is with respect to4
the claims as they appear in the appendix to the appellant’s brief.
If the examiner believed that claim 9 was indefinite under 35 U.S.C. §5
112, second paragraph, then the examiner should have likewise rejected
dependent claims 10 and 11 on this ground, since they would suffer from the
same deficiencies as parent claim 9 by virtue of their dependency thereon.
4
the terminology appearing in the claims. In claim 1, line 5,4
we interpret “a third and fourth gear” to be -- a third and
fourth gear ratio -- and, line 7, “a second gear” to be -- a
second gear ratio --. This interpretation is necessary in
order to provide consistency with the previously recited “a
first gear ratio” (claim 1, line 4).
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and by the examiner in
the answer. As a consequence of this review, we will not
sustain any of the above-noted rejections. We will, however,
enter a new rejection of claims 9-13 under 35 U.S.C. § 112,
second paragraph.
Considering first the rejection of claims 1-9, 12 and 13
under 35 U.S.C. § 112, second paragraph, it is the examiner’s
position that:5
Appeal No. 97-2227
Application 08/254,978
5
With respect to Claims 1 and 12, lines 6 and 7,
respectively, it is unclear as to what constitutes
an independent second drive train means. In other
words, how can the second drive train means be
“independent” when it shares the same drive shaft
(10) with the first drive train means. In this
case, the second drive train means is not truly
“independent” since the first drive train means and
the second drive train means depend on the main
shaft.
Further, claims 1-9, 12 and 13, are vague and
indefinite. It is not clear as to what elements the
“means” of the first drive train and the second
drive train encompasses.
With respect to Claim 13, it is unclear whether
or not the winch shifts through the claimed sequence
because of the use of “can.” [Answer, page 7.]
In support of this position the supplemental answer
states
that:
Page 9 of the specification as well as instant
figure 2 discloses members 66 and 68 and secondary
shaft 54 which is located between the drive shaft 10
and drum 12. The secondary shaft 54 is clearly in
the drive train of both first and second gear ratios
and members 66 and 68 are needed to disengage the
first gear ratio and engage either the second or
third gear ratio. In other words, to engage the
first and second gear ratios, a common shaft is
used, namely secondary shaft 54. [Page 2.]
We do not agree with the examiner’s position. The
purpose of the second paragraph of Section 112 is to basically
Appeal No. 97-2227
Application 08/254,978
6
insure, with a reasonable degree of particularity, an adequate
notification of the metes and bounds of what is being claimed.
See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208
(CCPA 1970). When viewed in light of this authority, we
cannot agree with the examiner that the metes and bounds of
claims 1-9, 12 and 13 cannot be determined for the reasons
noted by the examiner. A degree of reasonableness is
necessary. As the court stated in In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971), the determination of
whether the claims of an application satisfy the requirements
of the second paragraph of § 112 is
merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a
reason-able degree of precision and particularity.
It is here where the definiteness of language
employed must be
analyzed -- not in a vacuum, but always in light of
the teachings of the prior art and of the particular
application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the
pertinent art. [Emphasis ours; footnote omitted.]
As to the position set forth in the supplemental answer,
the examiner has treated the “secondary shaft 54" as an
entirely separate element from the claimed central drive
Appeal No. 97-2227
Application 08/254,978
7
shaft. However, consistent with the appellant’s specification
and the claimed subject matter as a whole, one of ordinary
skill in this art would consider the shaft 10 and the
secondary shaft 54 to collectively define the claimed central
drive shaft. Note, for example, that claim 3 (which depends
on claim 1) sets forth that the sun gear is “secured on said
shaft.” Inasmuch as (1) the only shaft previously recited is
the “central rotary drive shaft” in parent claim 1 and (2)
that the sun gear 80 is in fact mounted on secondary shaft 54,
it would be readily apparent to the artisan that the claimed
“central rotary drive shaft” refers collectively to drive
shaft 10 and secondary shaft 54. This is particularly the
case, since these two shafts are splined together and rotate
as a unit to provide rotary motion to the various gears.
As to the position in the answer, the examiner apparently
believes that the second drive train means cannot be
considered to be independent of the first drive train means
since they are both driven by the same “shaft.” However, as
the appellant has correctly articulated on pages 1 and 2 of
Appeal No. 97-2227
Application 08/254,978
It is readily apparent that the appellant and, indeed the reference6
Atfield (see, e.g., column 6, lines 47-53), have used the term “automatically”
in other than its normal sense. That is, it is used in the sense that, once a
given gear ratio has been selected (e.g., by depressing button 64 or moving
8
the reply brief:
The drive trains are the gearing between the drive
shaft [i.e. collectively shafts 10 and 54 which are
splined together] and the drum. The shaft and the
drum are both “common” elements in that they are
engaged with the two drive trains. The drive shaft
and drum are recited as separate elements in the
claims. The drive trains are recited as being
between the drive shaft and the drum. Thus, the
drive trains are separate and independent in the
sense that they are capable of separate and inde-
pendent operation between the shaft and the drum. .
. . The shaft does not form a part of the drive
trains as claimed.
With respect to the examiner’s contention that it is not
clear as to what elements the first and second drive train
“means” encompass, consistent with the appellant’s
specification the artisan would understand the first drive
train means to encompass elements 30, 32, 34, 36, 38, 40, 44,
46, 48, 50 and 52 and the second drive train means to
encompass elements 80, 82, 84 and 86.
As to the examiner’s contention that the word “can” in
the recitation in claim 13 that “said winch can shift
automatically through the sequence of first, third and6
Appeal No. 97-2227
Application 08/254,978
operating lever 108), an interchange to a different gear ratio may be
accomplished by simply reversing the direction of shaft rotation.
9
fourth . . .” (footnote added), the artisan would interpret
“can shift automatically” to be -- shifts automatically --.
Since we are not of the opinion that claims 1-9, 12 and
13 are indefinite for the reasons stated by the examiner, we
will not sustain the rejection of these claims under 35 U.S.C.
§ 112, second paragraph.
Turning to the rejections of claims 1-13 under 35 U.S.C.
§ 103, for reasons stated infra in our new rejection under the
provisions of 37 CFR 1.196(b), we are of the opinion that
claims 9-13 fail to satisfy the requirements of 35 U.S.C. 112,
second paragraph. We note that normally a claim which fails
to comply with the second paragraph of § 112 will not be
analyzed as to whether it is patentable over the prior art
since to do so would of necessity require speculation with
regard to the metes and bounds of the claimed subject matter.
See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96
(CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). In this
Appeal No. 97-2227
Application 08/254,978
10
instance, however, we are of the opinion that the rejection of
claims 9-11 cannot be sustained on the basis of those portions
of the subject matter defined by these claims that we can
understand. Additionally, with respect to claims 12 and 13,
in an effort to avoid piecemeal appellate review (see Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993) and
Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984)), we make
the following interpretations of the terminology appearing in
these claims for the purpose of reaching the rejections based
on prior art. In claim 12, lines 4 and 7, we interpret
“common drive train means” to be -- partially common drive
train means --.
Turning specifically to the rejections based on prior
art, the examiner concedes that Atfield does not teach a
second drive means that is independent of the first drive
train means (independent claim 1) or a second gear drive train
means that is separate and independent of a “partially” common
drive train means (independent claim 12) but, nevertheless,
takes the position that
It is desired that a winch be efficient per turn of
the main drive shaft. A second drive train having a
Appeal No. 97-2227
Application 08/254,978
11
common gear train as the third and fourth gears will
be
inefficient because of the long drive train to the
final drive gear. In view of the above
consideration, it would have been obvious to one of
ordinary skill in the art to provide Atfield et al
with a second drive train, separate and independent
of the first drive train, between the shaft and drum
to obtain a more efficient second drive train as
well as to reduce wear and tear on the gears
comprising the first drive train. [Answer, pages 4
and 5.]
We must point out, however, that obviousness under § 103
is a legal conclusion based on factual evidence (In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and
the examiner may not resort to speculation or unfounded
assumptions to supply deficiencies in establishing a factual
basis (see In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967)). The mere fact that, generally speaking, (1)
a second drive train which has a common gear train with the
third and fourth gears might be inefficient or (2) that
providing a second drive train which is separate and
independent of the first drive train would reduce wear and
tear, does not provide a sufficient basis for concluding that
such an arrangement would have been “obvious.” Instead, it is
Appeal No. 97-2227
Application 08/254,978
12
well settled that in order to establish a prima facie case of
obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). Here, there is absolutely no suggestion whatso-
ever in Atfield for making the modification which the examiner
seeks to dismiss as “obvious.”
With respect to independent claim 9, the examiner con-
tends that Atfield in Fig. 1 clearly shows a “torsion spring
(87)” (answer, page 9). We have carefully reviewed the teach-
ings of Atfield but find no mention whatsoever of a “torsion
spring.” As to the examiner’s reliance on Atfield’s Fig. 1,
the spring depicted therein appears to be a coil spring, not a
torsion spring. In any event, claim 9 expressly requires a
torsion bar having ends, with one end being secured to disen-
gage means and means for applying rotary torque to the other
end. There is nothing in Atfield which would even remotely
Appeal No. 97-2227
Application 08/254,978
13
suggest such an arrangement.
As to claims 3-8, the examiner has additionally relied on
the teachings of Dudden. We have, however, carefully reviewed
the teachings of this reference, but find nothing therein
which would overcome the deficiencies of Atfield that we have
noted above.
In view of the foregoing, we will not sustain the rejec-
tions of claims 1-13 under 35 U.S.C. § 103.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claims 9-13 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention. The purpose of the second
paragraph of § 112 is to provide those who would endeavor, in
future enterprises, to approach the area circumscribed by the
claims of a patent, with adequate notice demanded by due
process of law, so that they may more readily and accurately
determine the boundaries of protection involved and evaluate
the possibility of infringement and dominance. In re Hammack,
Appeal No. 97-2227
Application 08/254,978
14
supra, 427 F.2d at 1382, 166 USPQ at 208. Moreover, in order
to satisfy the requirements of the second paragraph of § 112,
a claim must accurately define the invention in the technical
sense. See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492-93 (CCPA 1973). In addition, when determining the metes
and bounds of claimed subject matter, no claim may be read
apart from and independent
of the supporting disclosure on which it is based. See In re
Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Applying these principles to claims 9-13, we do not
believe that the subject matter defined therein has been set
forth with the requisite degree of precision and particular-
ity. Specifically, in line 4 of independent claim 9 it is
unclear whether the recitation “said drive means” refers to
“rotatable drive means” (line 2) or “unidirectional drive
means” (line 3). It is also unclear what structure “unidirec-
tional drive means” (line 3) is intended to encompass. Inas-
much as this claim recites “disengage means for manually
Appeal No. 97-2227
Application 08/254,978
15
disengaging said unidirectional drive means,” it would at
first appear this unidirectional drive means corresponded to
ring gear 84. However, line 2 of claim 9 has previously set
forth “rotatable drive means for providing . . . second gear”
and, to the extent that ring gear 84 can be considered to be a
“drive means,” it is a necessary part of the rotatable drive
means for providing second gear, rather than an entirely
different element as the claim sets forth (compare, e.g.,
claim 12 wherein the appellant has set forth (“means for
engaging and disengaging said second gear drive train means”).
Moreover, independent claim 12 sets forth “common” drive
train means between the shaft and drum for providing third and
fourth gears. We must point out, however, that while some
elements of the drive train means for providing third and
forth gears are “common” (e.g., elements 34, 36, 38, 40)
others are not (e.g., elements 30, 32, 44, 46, 48, 50, 52).
Thus, claim 12 does not accurately define the subject set
forth therein in a technical sense.
Appeal No. 97-2227
Application 08/254,978
16
In addition claim 13 sets forth that the winch “can shift
only between second and third gears with the second gear drive
trains means being engaged” (emphasis ours). Page 9 of the
specification states, however, that when “second gear is
engaged, the winch can only be driven in first, second and
third gears” (emphasis ours). Thus this claim, when read in
light of the specification, results in an inexplicable incon-
sistency which renders it indefinite.
In summary:
The rejections of (1) claims 1-9, 12 and 13 under 35
U.S.C. § 112, second paragraph, and (2) claims 1-13 under 35
U.S.C. § 103 are reversed.
A new rejection of claims 9-13 under 35 U.S.C. § 112,
second paragraph, has been made.
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. 97-2227
Application 08/254,978
17
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial re-
view.”
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 con-
nection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-2227
Application 08/254,978
18
REVERSED
37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-2227
Application 08/254,978
19
Russle W. Pyle
Juettner, Pyle, Lloyd & Piontek
221 North Lasalle Street
Suite 850
Chicago, IL 60601