Wright, In re
| Decision Date | 24 January 1989 |
| Docket Number | No. 88-1521,88-1521 |
| Citation | 866 F.2d 422,9 USPQ2d 1649 |
| Parties | , 9 U.S.P.Q.2d 1649 In re Richard F. WRIGHT. |
| Court | U.S. Court of Appeals — Federal Circuit |
Mark P. Levy, Smith & Schmacke, Dayton, Ohio, argued, for appellant. With him on the brief was Richard H. Sayler.
Harris A. Pitlick, Office of the Sol., Arlington, Va., argued, for appellee. With him on the brief were Fred E. McKelvey, Sol. and Charles A. Wendel, Associate Sol.
Before FRIEDMAN and RICH, Circuit Judges, and BENNETT, Senior Circuit Judge.
This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board) affirming the examiner's rejection of claims 1-20, all the claims of application serial No. 770,538, filed August 28, 1985 for "Method for Forming Images Using Free Flowing Photosensitive Microcapsules." We reverse.
All claims have been treated by both the PTO and appellant Wright as a group and stand rejected on two distinct grounds: (1) obviousness under 35 U.S.C. Sec. 103 in view of the disclosures of U.S. patents to Macaulay, No. 3,016,308, and Sanders, No. 4,440,846, the latter being assigned to the Mead Corporation, Dayton, Ohio, assignee of Wright's application at bar, the real party in interest; and (2) a rejection based on 35 U.S.C. Sec. 112 and predicated on the addition to all three independent claims as originally filed of an identical limitation, in order to distinguish the invention from prior art. The PTO contends the limitation is not supported by the specification. This limitation is shown in italics in illustrative claim 1 reproduced below.
There are three independent claims, 1, 6, and 13, the rest of the 20 claims being variously dependent. The rejections do not necessitate any separate consideration. Claim 1 in its present form reads (emphasis ours):
1. A method for forming images which comprises:
subjecting said layer of microcapsules to a uniform rupturing force such that said microcapsules rupture and image-wise release said internal phase, and
removing microcapsules from said support.
In the application as filed, claim 1 was exactly the same except that the word "and" took the place of the emphasized clause, which was added later. The examiner's Sec. 112 rejection was explained by him in his Answer on appeal to the board as follows It is the position of the examiner that new limitation to microcapsule having term "not permanently fixed" is not supported in the disclosure and therefore is a new matter. The words "not permanently fixed" do not appear in the specification as originally filed and it is questionable whether appellant's specification, unequivocally teaches the absence of permanently fixed microcapsules.
This is the rejection under Sec. 112 which the board sustained but in doing so it added its own thinking in a somewhat different vein:
We shall sustain this rejection. We agree with appellant that the invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of Sec. 112. [case omitted] Nonetheless, the question remains as to whether the meaning of "not permanently fixed thereto" is sufficiently described in the specification to inform the public what said language is intended to encompass. From our review of the present disclosure, we are convinced that this limitation is subject to different interpretations and the specification is devoid of adequate guidelines to direct the public to the correct meaning. In this connection, it will be noted that the disputed terminology is not limited to a temporary positioning of the microcapsules on the support, but would include a relatively protracted, but "not permanent", bonding of the microcapsules to the support.
Despite the self-evident differences between what the examiner said and what the board said, the board did not suggest that it was making a new rejection under 37 CFR 1.196(b).
Although the examiner did not mention "the description requirement of Sec. 112," the board apparently took that to be the true basis of the examiner's rejection, notwithstanding the fact that its own reasoning partakes more of the notion that "not permanently fixed" is either vague and indefinite or of indeterminate breadth. But these were not stated to be grounds of rejection.
The brief for the Solicitor of the PTO, in the three pages devoted to the Sec. 112 rejection, repeats what the board said and attempts to clarify it by saying:
[T]he inquiry is whether [an] artisan is made aware from the description in appellant's specification that he regarded as part of his invention--and so described in the specification--the concept that the microcapsules are "not permanently fixed."
And again:
The present case does not involve a breadth-description matter; the present case involves a definition-description matter, i.e., whether the specification describes the invention in a way to justify the manner in which it is now claimed.
When the scope of a claim has been changed by amendment in such a way as to justify an assertion that it is directed to a different invention than was the original claim, it is proper to inquire whether the newly claimed subject matter was described in the patent application when filed as the invention of the applicant. That is the essence of the so-called "description requirement" of Sec. 112, first paragraph, which opens with the words: "The specification shall contain a written description of the invention...." The invention is, necessarily, the subject matter defined in the claim under consideration. The question arises in a variety of situations some of which are catalogued in In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1973). As our predecessor court said in that case:
The specification as originally filed must convey clearly to those skilled in the art the information that the applicant has invented the specific subject matter later claimed. In re Ruschig, supra, 54 CCPA [1551] at 1559, 379 F.2d at 996, 154 USPQ at 123. When the original specification accomplishes that, regardless of how it accomplishes it, the essential goal of the description requirement is realized.
In deciding the issue, the specification as a whole must be considered.
As also pointed out in Smith and as admitted by the board, "the claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement." The fact, therefore, that the exact words here in question, "not permanently fixed", are not in the specification is not important. From the wording of the examiner's rejection it would seem that he did not know that; at least he wanted to be shown an "unequivocal teaching" that the microcapsules are not permanently fixed. The board, on the other hand, launched into a discussion of whether the meaning of the words is clear and whether the specification contains "guidelines" as to what they mean. It felt the words were open to "different interpretation", which goes to the scope of the phrase rather than support for it. We deem this to be an irrelevant inquiry. These are common, garden variety words known to every English-speaking person. The Associate Solicitor who argued this appeal (who was not the author of the brief) said he had no difficulty understanding their meaning, nor do we.
We have read the specification, in the light of which all that the claims say must be construed, and we have considered it against the background of the prior art partially shown by the references relied on. We are fully convinced that the process of the claims, containing the words "not permanently fixed", is described in the specification.
The method disclosed in both words and drawings comprises four manipulative steps: 1. microcapsules in the form of a free-flowing...
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