Ex parte Weissenberger et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08445866 (B.P.A.I. Jun. 29, 1998)

Application for patent filed May 22, 1995. According to appellants,1
this application is a continuation of Application 08/151,804, filed November
15, 1993.
1
Paper No. 34
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ULF WEISSENBERGER
and ANDREAS WEISSENBERGER
______________
Appeal No. 97-1224
Application 08/445,866 1
_______________
ON BRIEF
_______________
Before ABRAMS, STAAB and CRAWFORD, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 2, 4, 5, 7-9 and 11-13, which constituted all of
Appeal No. 97-1224
Application 08/445,866
Rejections of claim 11 under 35 U.S.C. § 112, second paragraph, and 352
U.S.C. § 102(e) became moot when claim 11 was canceled after the final
rejection.
2
the claims remaining of record in the application. Subsequently,
claims 5 and 11 were canceled, leaving claims 2, 4, 7-9, 12 and
13 before us on appeal.
The appellants’ invention is directed to an apparatus for
cutting cardboard blanks to produce picture mounts having framing
cut outs with beveled interior apertures. The subject matter
before us on appeal is illustrated by reference to claim 13,
which has been reproduced in an appendix to the Amended Brief on
Appeal.
THE REJECTION
Claims 2, 4, 7-9, 12 and 13 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon a specification which
“does not provide support for the invention as now claimed”
(Answer, page 2).2
The rejection is explained in the Examiner's Answer and
Supplemental Answer.
The opposing viewpoints of the appellants are set forth in
the Brief and the Reply Brief.
Appeal No. 97-1224
Application 08/445,866
3
OPINION
After consideration of the positions and arguments presented
by both the examiner and the appellants, we have concluded that
the rejection should not be sustained. Our reasons for this
decision follow.
The appellants’ invention requires that a cutting blade move
in first and second longitudinal directions which are transverse
of one another in order to cut out a rectangular opening in a
cardboard blank, and that the blade be oblique to the blank to
create a beveled edge. The blade must smoothly enter and exit
the blank, and must be reoriented with respect to the blank in
order to make the transverse cuts. This rejection is based upon
the examiner’s belief that the specification does not enable one
of ordinary skill in the art to make and use the invention, in
that no structure is disclosed for performing these two tasks.
According to the examiner, “there is no structure set forth for
the blade performing a penetration movement obliquely downwardly
into the cardboard and a return or retraction movement,” or for
“raising the blade and reorienting the knife at a new oblique
angle to perform a transverse cut” (Answer, pages 2 and 3).
Appeal No. 97-1224
Application 08/445,866
4
The appellants’ argument which we find to be dispositive of
the issue of enablement is that providing structures for
accomplishing these tasks would have been within the skill of the
artisan, without undue experimentation, and therefore the
enablement rejection is not well taken. The appellants have
provided evidence in support of this position in the form of
several patents.
It is well established case law that the test regarding the
enablement requirement of 35 U.S.C. § 112, first paragraph, is
whether the disclosure, as filed, is sufficiently complete as to
enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation. See Atlas
Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576,
224 USPQ 409, 413 (Fed. Cir. 1984). In the present case, we
appreciate the examiner’s discomfiture over the lack of infor-
mation and illustration regarding the two features to which
objection was taken. However, we share the appellants’ opinion
that the level of skill in this art is such that one of ordinary
skill in the art would have been able, without undue experi-
mentation, to fashion mechanisms which would permit the blade
Appeal No. 97-1224
Application 08/445,866
5
to enter and exit the blank in a suitable manner, and provide for
reorienting the blade with respect to the blank so that second
cuts transverse to the first cuts could be accomplished. This
conclusion is supported by evidence in the form of the patent to
Mood (cutting blade entry and exit) and to Schnetzer (rotatable
cutting blades), which were noted by the appellants. As our
reviewing court made clear in In re Gaubert, 524 F.2d 1222, 1226,
187 USPQ 664, 667 (CCPA 1975), citing Martin v. Johnson, 454 F.2d
746, 172 USPQ 391 (CCPA 1972),
[e]nablement is the criterion, and every detail need
not be set forth in the written specification if the
skill in the art is such that the disclosure enables
one to make the invention.
It would appear that the examiner’s basis for the rejection
is premised on the mistaken belief that only material set forth
in the appellants’ disclosure is available to demonstrate
enablement. As the case law cited above indicates, that belief
is in error.
Appeal No. 97-1224
Application 08/445,866
6
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 97-1224
Application 08/445,866
7
Laurence R. Brown
Laurence, Brown & Associates
2001 Jefferson Davis Hwy. #408
Arlington, VA 22202
NEA/cam