Ex Parte Oberheim

Patent Trial and Appeal BoardOct 23, 2012

11803762 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/803,762 05/16/2007 Stephen C. Oberheim 0212.78271 7173 24978 7590 10/23/2012 GREER, BURNS & CRAIN 300 S WACKER DR 25TH FLOOR CHICAGO, IL 60606 EXAMINER LEE, LAURA MICHELLE ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 10/23/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN C. OBERHEIM ____________ Appeal 2010-009767 Application 11/803,762 Technology Center 3700 ____________ Before LINDA E. HORNER, PATRICK R. SCANLON and TIMOTHY J. O’HEARN, Administrative Patent Judges. O’HEARN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stephen C. Oberheim (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 3-5, 8, 9, 11 and 12 under 35 U.S.C. §112, first paragraph, for lack of a written description. Claims 2, 6, 7 and 10 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-009767 Application 11/803,762 2 THE INVENTION Appellant’s claimed invention relates to a table saw having a measurement and display system for positioning a fence that is used to guide the piece of wood that is being cut. Spec. 3. The Specification discloses several different alternative embodiments. Claims 1 and 12 are independent. Claim 1, reproduced below, is representative of the subject matter on appeal and the disputed language is highlighted in italics. 1. A table saw having a main table top surface and a saw blade that is at least partially extendable above the top surface, said table saw comprising: a fence rail located on the front of said saw and having a table top extension that abuts said main table top and at least one table extension rail, said table top extension being connected to the fence rail, the fence rail being slidably attached to said table extension rail so that said table top extension can be separated from said main table top to increase the effective area of the top surface of said table saw; a removable fence that is laterally adjustable relative to the blade of the saw along said fence rail; a separate display rail vertically spaced apart from but extending parallel to said fence rail and being connected thereto at opposite end portions of said fence rail; a sensor strip positioned generally parallel to the fence rail on said display rail, said sensor strip configured to provide digital signals that are indicative of specific positions along the length thereof; a sensing unit movable along said sensor strip and operatively connected to the fence, said sensing unit generating signals indicative of the specific lateral position of the fence; at least one switch operatively connected to a processing unit for establishing one of two reference positions when Appeal 2010-009767 Application 11/803,762 3 selectively activated, one of said reference positions indicating said table top extension is fully separated from said main table top and the other reference position indicating said table top extension is unseparated from said main table top; a processing unit connected to said sensing unit for receiving said position indicating signals and for calculating the distance between said fence and one of said reference positions and for generating display signals indicative of said calculated distance; and a display unit electrically connected to said processing unit configured to receive change display signals and provide a digital display of said calculated distance; said display unit being slidable along said display rail and being mechanically and electrically connected to said sensing unit and said processing unit, said sensing unit and processing unit being operable to determine said calculated distance based upon said switch being selectively activated to establish when said table top extension is fully separated from said main table top and when it is unseparated. THE REJECTION Claims 1 and 12 are the only independent claims. Both include a clause like the one italicized above which associates a reference position switch with a table top extension. The Examiner rejected these claims under 35 U.S.C. § 112, first paragraph, finding that this recited subject matter was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. Appeal 2010-009767 Application 11/803,762 4 ISSUE Appellant argues that the position of the extension table shown in the embodiment illustrated in Figures 1 and 2 could be made to cooperate with the movement of the sensing rail shown in the different embodiment illustrated in Figures 7 and 8. App. Br. 11–13. Appellant relies on the Figures and the portions of the Specification that describe these embodiments as support for this argument. The Examiner responds that nothing in the Specification sets forth the interoperability of the green and red reference positions and switches with the position of the table top extension. Ans. 3-4. The Examiner also observes that other features of the embodiments shown in Figures 1 and 2 and in the different embodiment shown in Figures 8 and 9 make it impossible to combine those features in the way that is stated in the disputed claim language. Ans. 7. In the Reply Brief, Appellant concludes that “one skilled in the art would understand the construction and functional operability of this invention.” Reply Br. A–5. Was the Examiner incorrect in the determination that the original Specification and Drawings did not show that the Appellant had possession of the invention recited in the claims and therefore did not meet the written description requirement of Section 112? Appeal 2010-009767 Application 11/803,762 5 ANALYSIS To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The claimed invention need not be recited in haec verba in the original specification to satisfy the written description requirement. Id. at 1352. “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). We agree with the Examiner that there is no disclosure in the Appellant’s Specification and Drawings which shows that the inventor had possession of the invention recited in the claims. We find no disclosure that explains an operable relationship between the “reference positions” recited Appeal 2010-009767 Application 11/803,762 6 in the claims and the “fully separated” or “unseparated” condition of the table top extension. Accordingly, we sustain the rejection of claims 1, 3-5, 8, 9, 11, and 12 under 35 U.S.C. § 112, first paragraph. Appellant asks us to review the Examiner’s objections to the drawings. App. Br. 10-11. That issue is reviewable by petition under 37 C.F.R. § 1.181, and is not within the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of Patent Examining Procedure (MPEP) §§ 706.01, 1002, and 1201. CONCLUSION The Examiner correctly determined that the original Specification and Drawings did not show that the Appellant had possession of the invention recited in the claims and therefore did not meet the written description requirement of Section 112. DECISION The Examiner’s rejection of claims 1, 3-5, 8, 9, 11 and 12 under 35 U.S.C. § 112, first paragraph, is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED. mls