Ex parte Theller

Board of Patent Appeals and Interferences

Jun 12, 1998

08260635 (B.P.A.I. Jun. 12, 1998)

Application for patent filed June 16, 1994. According to1
the appellant, the application is a continuation of Application
No. 07/980,853, filed November 24, 1992, now U.S. Patent No.
5,331,858.
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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HUTTON W. THELLER
____________
Appeal No. 97-2451
Application No. 08/260,6351
____________
ON BRIEF
____________
Before COHEN, MEISTER, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection
of claims 1 and 2. Claims 9, 10 and 16 have been allowed.
Claims 3 to 8 and 13 to 15 have been objected to as depending
from a non-allowed claim. Claims 11 and 12 have been canceled.
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-2451 Page 2
Application No. 08/260,635
BACKGROUND
The appellant's invention relates to a hot tack tester. A
copy of claims 1 and 2 appears in the appendix to the appellant's
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
DTC Hot Tach Tester Operation Instructions Prior to 11/1991
Topwave DTC Hot Tach Tester Brochure Prior to 11/1991
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over DTC Hot Tach Tester Operation Instructions in
view of Topwave DTC Hot Tach Tester Brochure.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejection, we make reference to the examiner's answer (Paper No.
14, mailed November 1, 1996) and the supplemental examiner's
answer (Paper No. 16, mailed January 14, 1997) for the examiner's
complete reasoning in support of the rejection, and to the
appellant's brief (Paper No. 13, filed October 7, 1996) and reply
Appeal No. 97-2451 Page 3
Application No. 08/260,635
brief (Paper No. 15, filed December 16, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Before addressing a rejection based upon prior art, it is an
essential prerequisite that the claimed subject matter be fully
understood. Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. §§ 102 and 103 begins with a
determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories
Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Appeal No. 97-2451 Page 4
Application No. 08/260,635
The appellant argues (brief, pp. 13-15 and 24-25) that the2
applied prior art does not teach or suggest the claimed
substantial cooling period. The examiner determined (answer, p.
4) that the claimed substantial cooling period was inherently met
by exposing the sample (i.e., strip) to ambient conditions upon
removal of the sample from the heat sealing location.
Our review of independent claim 1 reveals that we are unable
to derive a proper understanding of the scope and content
thereof. Specifically, the terminology "cooling said seal during
said delamination to a temperature substantially below the
initial temperature of said seal upon removal from said heat
sealing location" and "applying a pulling force to said pulling
portions . . . to rapidly remove the heat seal segment from the
heat seal location" in independent claim 1 raise definiteness
issues under 35 U.S.C. § 112, second paragraph.2
The terminologies "substantially below" and "rapidly remove"
are terms of degree. When a word of degree is used, such as the
terminologies "substantially below" and "rapidly remove" in claim
1, it is necessary to determine whether the specification
provides some standard for measuring that degree. See Seattle
Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
Appeal No. 97-2451 Page 5
Application No. 08/260,635
See White v. Dunbar, 119 US 47, 51-52 (1886) and Townsend3
Engineering Co. v. HiTec Co. Ltd., 829 F.2d 1086, 4 USPQ2d 1136,
1139 (Fed. Cir. 1987).
Admittedly, the fact that some claim language, such as the
terms of degree mentioned supra, may not be precise, does not
automatically render the claim indefinite and hence invalid under
the second paragraph of § 112. Seattle Box, supra.
Nevertheless, the need to cover what might constitute
insignificant variations of an invention does not amount to a
license to resort to the unbridled use of such terms without
appropriate constraints to guard against the potential use of
such terms as the proverbial nose of wax.3
In Seattle Box, the court set forth the following
requirements for terms of degree:
When a word of degree is used the district court must
determine whether the patent's specification provides
some standard for measuring that degree. The trial
court must decide, that is, whether one of ordinary
skill in the art would understand what is claimed when
the claim is read in light of the specification.
In Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758
F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985), the court
added:
Appeal No. 97-2451 Page 6
Application No. 08/260,635
See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 2244
USPQ 617 (Fed. Cir. 1985).
If the claims, read in light of the specifications
[sic], reasonably apprise those skilled in the art both
of the utilization and scope of the invention, and if
the language is as precise as the subject matter
permits, the courts can demand no more.
Indeed, the fundamental purpose of a patent claim is to
define the scope of protection and hence what the claim4
precludes others from doing. All things considered, because a
patentee has the right to exclude others from making, using and
selling the invention covered by a United States letters patent,
the public must be apprised of what the patent covers, so that
those who approach the area circumscribed by the claims of a
patent may more readily and accurately determine the boundaries
of protection in evaluating the possibility of infringement and
dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
208 (CCPA 1970).
In the present case, we have reviewed the appellant's
disclosure to help us determine the meaning of the above-noted
terminologies from claim 1. That review has revealed that the
appellant used the terminology "substantially below" only in
original claim 1. In addition, pages 7 and 10 of the
Appeal No. 97-2451 Page 7
Application No. 08/260,635
specification provide that the air conducting apparatus 60
provide a constant stream of conditioned ambient air, preferably
at a flow rate of one liter per second or greater. The review
has also revealed that the appellant used the terminology
"rapidly remove" only on page 3 of the specification. Page 3 of
the specification provides that the ends of the strip are rapidly
moved apart, desirably at a rate above 20 cm/second, to rapidly
remove the sealed portion of the strip from the heat seal dies.
However, it would be inappropriate, in view of the claim
differentiation doctrine (the doctrine of claim differentiation
states the presumption that "the difference between claims is
significant." Tandon Corp. v. United States Int'l Trade Comm'n,
831 F.2d 1017, 1023, 4 USPQ2d 1283, 1288 (Fed. Cir. 1987)), to
interpret "rapidly remove" to mean a speed of at least 20
cm/second since dependent claim 14 adds that limitation to claim
1. Accordingly, it is our view that the disclosure does not
provide explicit guidelines defining the terminologies
"substantially below" and "rapidly remove" (claim 1).
Furthermore, there are no guidelines that would be implicit to
one skilled in the art defining the terminologies "substantially
below" and "rapidly remove" as used in claim 1 that would enable
one skilled in the art to ascertain what is meant by
Appeal No. 97-2451 Page 8
Application No. 08/260,635
"substantially below" and "rapidly remove." For example, one
cannot ascertain if the temperature drop of the seal caused by
exposure to ambient conditions during delamination as in the
applied prior art constitutes "cooling said seal during said
delamination to a temperature substantially below the initial
temperature of said seal upon removal from said heat sealing
location." Additionally, one cannot ascertain if applying the
same pulling force to the pulling portions to remove the heat
seal segment from the heat seal location and then to
progressively delaminate the seal as in the applied prior art
constitutes "applying a pulling force to said pulling portions
. . . to rapidly remove the heat seal segment from the heat seal
location." Absent such guidelines, we are of the opinion that a
skilled person would not be able to determine the metes and
bounds of the claimed invention with the precision required by
the second paragraph of 35 U.S.C. § 112. See In re Hammack,
supra.
Since the appellant's specification fails to set forth an
adequate definition as to what is meant by the terminologies
"substantially below" and "rapidly remove" recited in claim 1,
Appeal No. 97-2451 Page 9
Application No. 08/260,635
the appellant has failed to particularly point out and distinctly
claim the invention as required by the second paragraph of
35 U.S.C. § 112.
Appeal No. 97-2451 Page 10
Application No. 08/260,635
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final5
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. Office 63, 122 (Oct. 21, 1997)) permits the Board to
reject any pending claim including allowed and objected to
claims.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.5
Claims 1 to 8 and 13 to 16 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention.
As set forth previously, our review of the specification
leads us to conclude that one of ordinary skill in the art would
not be able to understand the metes and bounds of the
terminologies "substantially below" and "rapidly remove" in
independent claim 1. Likewise, one of ordinary skill in the art
would not be able to understand the metes and bounds of the
terminology "substantially below" in independent claim 16.
Additionally, we conclude that one of ordinary skill in the art
would not be able to understand the metes and bounds of the
terminology "substantially higher" in dependent claim 13 since
Appeal No. 97-2451 Page 11
Application No. 08/260,635
the appellant's specification fails to set forth an adequate
definition as to what is meant by that terminology.
Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 103
We emphasize again here that claim 1 contains unclear
language which renders the subject matter thereof indefinite for
the reasons stated supra as part of our new rejection under
35 U.S.C. § 112, second paragraph. We find that it is not
possible to apply the prior art to claim 1 in deciding the
question of obviousness under 35 U.S.C. § 103 without resorting
to speculation and conjecture as to the meaning of the questioned
limitations in claim 1. This being the case, we are therefore
constrained to reverse the examiner's rejection of claim 1 and
claim 2 which depends therefrom under 35 U.S.C. § 103 in light of
the holding in In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). This reversal of the examiner's rejection is based
only on the technical grounds relating to the indefiniteness of
the claims.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 and 2 under 35 U.S.C. § 103 is reversed and a new rejection of
Appeal No. 97-2451 Page 12
Application No. 08/260,635
claims 1 to 8 and 13 to 16 under 35 U.S.C. § 112, second
paragraph, has been added pursuant to provisions of 37 CFR
§ 1.196(b).
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. 53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. 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 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. . . .
Appeal No. 97-2451 Page 13
Application No. 08/260,635
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)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2451 Page 14
Application No. 08/260,635
CORWIN R. HORTON
STE. 2001, THE PARK
25 MANN DR.
KENTFIELD, CA 94904
APPEAL NO. 97-2451 - JUDGE NASE
APPLICATION NO. 08/260,635
APJ NASE
APJ COHEN
APJ MEISTER
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 09 Jun 98
FINAL TYPED: