Application of Barker
Decision Date | 15 September 1977 |
Docket Number | Patent Appeal No. 76-659. |
Citation | 559 F.2d 588 |
Parties | Application of Frank S. BARKER and Willis G. Pehl. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Robert W. Beach, Seattle, Wash., atty. of record, for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Henry W. Tarring, II, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board) rejecting claim 18 in application serial No. 504,317, filed September 9, 1974, for "Prefabricated Shingle Panels." We affirm.
Appellants' invention is a method of making prefabricated panels of wooden shingles. Their amended specification describes the invention as follows (all italicized material added by amendment; material deleted not shown):
The theory of the regular modular panels shown in Figures 7 and 10 is that they are constructed according to a type established for the present invention by their shingles being of different selected predetermined widths to form a predetermined series or pattern which may repeat within a length of a panel, and which will repeat from panel to panel because of such regularity. The shingles used at corresponding locations in all panels will sic are alike in width and the shingles in all the panels are arranged in a corresponding predetermined series as to width, so that, if adjacent panels are offset by a predetermined amount, there will always be assurance that all of the cracks or joints between adjacent shingles in adjacent courses will be out of registration.
Figs. 7 and 10 of appellants' application are as follows:
The specification continues:
Claim 18, the sole claim on appeal, was introduced by an amendment and is directed to the method of making such shingle panels:
18. The method of making substantially uniform, regular modular prefabricated shingle panels which comprises selecting individual wooden shingles of at least three different predetermined widths, each shingle having a tip portion and a butt portion and being tapered in thickness away from the butt portion toward the tip portion, selecting elongated backing boards all of substantially the same predetermined length and width, each backing board having a length at least as great as the aggregate width of at least six shingles and of a width less than one-half the length of a shingle, laying the selected shingles of different predetermined widths in only a single course in each of at least two repetitive identical series, each series including at least three different selected, predetermined widths along the length of each backing board with their lengths extending transversely to the length of such backing board, with their tip portions overlying the backing board and with their butt portions overhanging one edge of the backing board in free cantilever fashion without any underlayer for a distance at least as great as the width of the backing board and thereby forming substantially identical shingle arrangements in all panels with respect to such widths of the shingles, and securing the shingles to the backing boards in such arrangements only by their tip portions. Emphasis supplied.
The rejections by the examiner were based on prior art and on double patenting and were reversed by the board. Acting pursuant to its authority under 37 CFR 1.196(b), it then entered three new rejections against claim 18: 35 U.S.C. § 112, first paragraph, "as being based on a specification that fails to contain a written description of the invention defined in this claim"; 35 U.S.C. § 112, first paragraph, "as being based on a specification that does not enable one of ordinary skill in the art to practice the claimed invention"; and 35 U.S.C. § 132 for "introducing new matter into the disclosure." (The board's opinion makes clear that "disclosure" includes the claim.) The board specifically pointed to the step in claim 18 that recites "selecting elongated backing boards . . . each backing board having a length at least as great as the aggregate width of at least six shingles" (board's emphasis) as the basis for the rejections.
On appellants' request for reconsideration, the board declined to withdraw any of the rejections. It noted that claim 18 does not have the status of an original claim and that the limitation of "at least six shingles" is outside the embodiments illustrated and described in the specification.
OPINIONAppellants argue that the "enablement" requirement of the first paragraph of 35 U.S.C. § 112 cannot be read separately from the "description" requirement therein.1 They would interpret the phrase in section 112 "in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same" as modifying "description"; thus, a sufficient description of the invention for purposes of the statute would be a description that enables one skilled in the art to make and use the invention. We do not agree.
This court has clearly recognized that there is a description of the invention requirement in 35 U.S.C. § 112, first paragraph, separate and distinct from the enablement requirement. In re Bowen, 492 F.2d 859, 864, 181 USPQ 48, 52 (Cust. & Pat.App.1974); In re Smith, 481 F.2d 910, 914-15, 178 USPQ 620, 623-25 (Cust. & Pat.App.1973); In re Moore, 439 F.2d 1232, 1235, 58 CCPA 1042, 1047, 169 USPQ 236, 238-39 (1971). A specification may contain a disclosure that is sufficient to enable one skilled in the art to make and use the invention and yet fail to comply with the description of the invention requirement. Fields v. Conover, 443 F.2d 1386, 1391, 58 CCPA 1366, 1372, 170 USPQ 276, 280 (1971); In re Ruschig, 379 F.2d 990, 995-96, 54 CCPA 1551, 1558-59, 154 USPQ 118, 123 (1967).2
Obviously, if there were a description enabling "any person skilled in the art . . . to make and use," there would be no need to require a description of the "manner and process of making and using." As a principle of statutory construction, it is presumed that Congress did not use superfluous words.3 No evidence has been offered to rebut that presumption in this case.
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