Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ADRIANUS P.M.M. MOELANDS AND HERMAN SCHUTTE
Appeal No. 616-61
January 30, 1987
Application for Patent filed November 2, 1981, Serial No. 317,693, which is a Continuation-in-Part of Serial No. 310,686. Two-Wire Bus-System Comprising A Clock Wire And A Data Wire For Interconnecting A Number Of Stations
Jack E. Haken, et al. for appellants
Primary Examiner--Gareth D. Shaw
Before Spencer, Stahl, Lovell, Lindquist and Thomas
This is an appeal from the final rejection of claims 4, 9, 11 and 20. In her answer the examiner withdrew her rejection of claim 4 and allowed it. All other claims are allowed.
The invention pertains to data communication stations which are interconnected by a two-wire bus which forms a data communication system among the stations.
Representative claims 10 and 11 are reproduced below:
10. In a station for data transmission, the improvement comprising:
a clock terminal;
a time slot generator which produces a periodic clock signal at the clock terminal by first forcing the clock terminal to a first voltage level for a first interval of predetermined duration, by then allowing the clock terminal to assume a second voltage level for a second interval of predetermined duration, and by then again forcing the clock terminal to the first voltage level, and
means which detect the voltage level at the clock terminal and which cause the time slot generator to start the first interval whenever the voltage level at the clock terminal changes from the second voltage to the first voltage level.
11. A data transmission system comprising:
at least two of the data transmission stations of claim 10;
a clock bus interconnecting the clock terminals of the stations; and
means which maintain the clock bus at the second voltage level in the absence of forcing by the stations.
No references are relied on by the examiner.
Claims 9, 11 and 20 stand rejected under 35 U.S.C. 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claims 9, 11 and 20 also stand rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the appellants regard as their invention.
Rather than reiterate the arguments of the appellants and the xaminer, reference is made to the brief and the answer for the respective details thereof.
At the outset, we note that claims 7, 8, 10, 18 and 19 stand allowed and are not at issue before us. These claims in some form recite 'a data transmission station'. Respective dependent claims 9, 11 and 20 set forth a system comprising at least two of those stations in addition to further limitations.
*2 We also note that 35 U.S.C. 112, fourth paragraph, initially merely requires that a dependent claim contain 'a reference' to a claim previously set forth. It is clear to us that the claims at issue here do comply with this statutory requirement.
We hold that the language relating to plural data transmission stations or plural stations in dependent claims 9, 11 and 20 constitute 'a further limitation of the subject matter claimed' within 35 U.S.C. 112, fourth paragraph. This language in 35 U.S.C. 112, fourth paragraph, encompasses the situation presented here, where a dependent claim makes plural what is already set forth in that dependent claim's parent claim or claims. Claims 9, 11 and 20 essentially replicate that which is recited in the respective parent claims and add further limitations to the replication. Claims 9, 11 and 20 are not broader than their parent claims, but further restrict the subject matter thereof by adding limitations thereto. No element of any respective parent claim is deleted or replaced by any other element in claims 9, 11 and 20.
The fourth paragraph of 35 USC 112, also mandates that 'a claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.' Claims 9, 11 and 20 do include at least every limitation of the claims from which they respectively depend. Furthermore, a system which would infringe the plural stations of claims 9, 11 and 20 would certainly infringe the single station of claims 7 and 8, 10, 18 or 18 and 19. [FN1]
We will also not sustain the rejection of claims 9, 11 and 20 under 35 U.S.C. 112, second paragraph. This statutory provision merely requires that the claims set forth and circumscribe a particular area with a reasonable degree of precision and particularity. The definiteness of the claim language employed must not be analyzed 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 having ordinary skill in the pertinent art. In re Moore, 58 CCPA 1042, 439 F.2d 1232, 169 USPQ 236 (1971).
Even without considering dependent claims 9, 11 and 20 in light of the teachings of the prior art and of the particular application disclosure herein, we find that these claims do in fact set out and circumscribe a particular area of technology with a reasonable degree of precision and particularly. The examiner's comparison of the situation presented herein to her example at the bottom of page 3 of her answer is misplaced. We see a sufficient difference between a situation where the language 'said lever' appears in a dependent claim where no such 'lever' has been previously recited in a parent claim to that dependent claim, and the situation presented here where the language 'the stations' appears in a dependent claim where at least one station was previously recited in a parent claim. The situation presented here is not the same as a situation where no stations have been previously recited, since a station is previously recited. Significantly, there is an antecedent basis in the parent claims of claims 9, 11 and 20 to at least one station. We hold that under the circumstances of this case, use of the term 'the stations' is not vague and indefinite within 35 U.S.C. 112, second paragraph, since the metes and bounds of the subject matter in claims 9, 11 and 20 can readily be determined by one of ordinary skill in the art.
*3 Accordingly, the decision of the examiner rejecting claims 9, 11 and 20 under 35 U.S.C. 112, second and fourth paragraphs, is reversed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Robert F. Stahl
William F. Lindquist
James D. Thomas
FN1. We note that Senate Report 94-215 is silent regarding the legislative history of the language that became 35 U.S.C. 112, fourth paragraph. Additionally, we note in passing that we read MPEP § 608.01(n), page 600-32, revision II, December 1985, as being consistent with this decision.
Richard A. Spencer, Jr.
While I agree with the result as to the reversal of the rejection of claims 9, 11 and 20 under the fourth paragraph, of section 112, I respectfully dissent with respect to the reversal of the rejection of claims 9, 11 and 20 under the second paragraph of section 112. In order to set forth my position clearly, I initially address the second paragraph rejection.
Claim 7 is directed to a single data transmission station. Claim 8, dependent on claim 7, further modifies the subject matter of claim 7 and is clearly directed to a single data transmission station. Claim 9 recites '[a] data transmission system comprising: at least two of the data transmission stations of claim 8.' Claim 8 does not set forth a plurality of data transmission stations. In my opinion, the recitation 'at least two of the data transmission stations of claim 8' is manifestly indefinite. While it is reasonably clear what appellants consider to be their invention and what they intend to claim in claim 9, the language chosen does not accomplish their purpose.
Turning to the rejection under the fourth paragraph of section 112, I am of the opinion that the indefiniteness of claim 9 precludes an affirmance of this rejection. While claim 9 includes a reference to claim 8, I do not feel it can be characterized as dependent on claim 8 in view of the recitation 'at least two of the data transmission stations of claim 8' any more than it could be characterized as dependent on claim 8 if it read '[a] data transmission system comprising: the carburetor of claim 8. . . .' The fourth paragraph of section 112 provides that 'a claim in dependent form shall contain a reference to a claim previously set forth.' It does not provide that 'a claim in dependent form is one which contains a reference to a claim previously set forth.' The recitation in claim 9 of 'at least two of the data transmission stations of claim 8' is a reference to a claim not previously set forth.
Claims 11 and 20 suffer from deficiencies similar to those of claim 9. I would, accordingly, affirm the rejection of claims 9, 11 and 20 under the second paragraph of section 112 and reverse the rejection of claims 9, 11 and 20 under the fourth paragraph of section 112 but for reasons which differ from those of the majority.
*4 Charles N. Lovell
While I concur with the majority's holding that the claims here do not violate either the second or fourth paragraph of the statute, I reach this opinion via a different analysis. The error in the majority's opinion, as I view this matter, arises from the fact that they have treated claims 9, 11 and 20, just like the examiner and appellants, as constituting dependent claims within the purview of § 112. I disagree that these claims meet the statutory requirements for dependent claims.
Section 112 in pertinent part reads:
a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed.
In my view the change in § 112 which resulted in the fourth paragraph language in question here codified the provision of Rule 75(c) that requires a dependent claim to further limit another claim. The only exception that I am aware of to this requirement is in regard to product by process claims. The claims in issue clearly do not further limit or restrict the subject matter of the claims from which they refer back to. I view the questioned claims as wholly independent claims which refer back to and incorporate the subject matter of previous claims by reference. This is merely a shorthand form of claim drafting which eliminates the need for repeating the defined elements set forth in the referenced claims in much the same manner as tabular data, reference numerals or figures from a drawing are incorporated by reference into claims. The fourth paragraph of the statute does not apply when viewing the claims in this light.
As for the second paragraph rejection, I agree with the majority that claims 9, 11 and 20 circumscribe a particular area of subject matter with a reasonable degree of precision and particularity and, hence, do not violate the second paragraph of the statute.