Ex parte Genatossio
| Decision Date | 05 August 1998 |
| Docket Number | 369,Application 29/052,Appeal 98-2069 |
| Parties | Ex parte LOUIS F. GENATOSSIO |
| Court | Patent Trial and Appeal Board |
Before HAIRSTON, STAAB, and NASE, Administrative Patent Judges.
DECISION ON APPEAL
NASE Administrative Patent Judge.
This is a decision on appeal from the examiner's final rejection of the single design claim pending in this design application.
We AFFIRM.
Louis F. Genatossio (appellant) appeals from the rejection of the following design claim:
The ornamental design for audio signal processing unit substantially as shown and described.
On March 28, 1996, the appellant filed this design application with a claim to: The ornamental design for audio signal processing substantially as shown and described. On November 20, 1996, the examiner's first Office action (Paper No 2) was mailed. In that action, the examiner rejected the claim as being indefinite under 35 U.S.C. § 112, second paragraph, because the use of the term "substantially" therein. On February 25, 1997, the appellant filed a response (Paper No. 3) requesting withdrawal of the 35 U.S.C. § 112, second paragraph rejection. Additionally, the appellant amended the claim to read as follows: The ornamental design for audio signal processing unit substantially as shown and described. On May 21, 1997, the examiner's final Office action (Paper No 4) was mailed. No references were relied upon by the examiner in rejecting the claim, the sole rejection of the design claim being based on the second paragraph of 35 U.S.C. § 112.
The examiner's statement of the rejection is as follows:
Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant regarding the § 112 rejection, we make reference to the examiner's answer (Paper No. 9, mailed January 15, 1998) for the examiner's complete reasoning in support of the rejection, and to the appellant's brief (Paper No. 8, filed October 31, 1997) and reply brief (Paper No. 10, filed March 20, 1998) for the appellant's arguments thereagainst.
OPINIONIn reaching our decision in this appeal, we have given careful consideration to the appellant's drawings, specification and claim and to the respective positions articulated by the appellant and the examiner. As a consequence of our review, we will sustain the examiner's rejection of the claim under 35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims to set out and circumscribe a particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008, 1015, 194 U.S.P.Q. 187, 193 (CCPA 1977). In making this determination, the definiteness of the language employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for compliance with the requirement for definiteness of 35 U.S.C. § 112, second paragraph, is primarily whether the claims meet the threshold requirements of clarity and precision, not whether more suitable language or modes of expression are available. If the scope of the invention sought to be patented cannot be determined from the language of the claims with a reasonable degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph, is appropriate.
In order to make a rejection, the examiner has the initial burden to establish a reasonable basis to question whether the claim sets out and circumscribes a particular area with a reasonable degree of precision and particularity. That is, the examiner must provide a reasonable explanation as to why the scope of protection provided by the claim is not adequately set forth with a reasonable degree of certainty. Assuming that sufficient reason for such doubt exists, a rejection for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention will be proper on that basis.
Once the examiner has established a reasonable basis to question the clarity of the claimed invention, the burden falls on the applicant to present persuasive arguments, supported by suitable proofs where necessary, that the designer of ordinary skill in the art would be able to ascertain the scope of the invention sought to be patented using the disclosure as a guide.
Thus, the dispositive issue in this appeal is whether the appellant's disclosure, considering the ordinary skill of the designer in the art as of the date of the appellant's application, would have aided a person of such skill in determining the scope of the appellant's claim. The threshold step in resolving this issue as set forth supra is to determine whether a reasonable basis exists to question whether the claim sets out and circumscribes a particular area with a reasonable degree of precision and particularity.
With this as background, we analyze the specific rejection under 35 U.S.C. § 112, second paragraph, made by the examiner of the claim on appeal.
The claim terminology found objectionable by the examiner, i.e., "substantially," is a term of degree, inherently imprecise as to its exact meaning. When a word of degree is used, such as the term "substantially" in the claim, it is necessary to determine whether the disclosure provides some standard for measuring that degree. See Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 U.S.P.Q. 568, 573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as the term of degree mentioned supra, may not be precise, does not automatically render the claim indefinite 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.[2]
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 U.S.P.Q. 634, 641 (Fed. Cir. 1985)(quoting from Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 136, 118 U.S.P.Q. 122, 132 (2d Cir.), cert, denied, 358 U.S. 884, 119 U.S.P.Q. 501 (1958)), the court added:
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, one fundamental purpose of a claim is to define the scope of protection[3] and hence what the claim 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 a claim 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 U.S.P.Q. 204, 208 (CCPA 1970).
Another fundamental purpose of a claim is to define the scope of the claim. 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 U.S.P.Q.2d 1468, 1472 (Fed. Cir. 1988).
We appreciate that Seattle Box, Shatterproof Glass and the other cases cited above involved utility applications rather than design applications. Nevertheless, we think that the court's underlying rationale applies regardless of whether the claim in question appears in a utility application or a design application. See Ex parte Pappas, 23 U.S.P.Q.2d 1636, 1638 (Bd. Pat. App. & Int. 1992) ().
In the present instance, the appellant's disclosure consists of seven drawing figures illustrating a single embodiment of an ornamental design for an audio signal processing unit, and a specification containing a brief narrative description of the actual article embodying the design and a description of the relationship of the drawing figures to one another. In the present case, we find no standard or guideline whatsoever in the appellant's disclosure...
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