Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE HANS OETIKER
Appeal No. 88-3440
April 30, 1990
Harrison E. McCandlish
Examiner-in-Chief
This appeal is from the examiner's rejection of claims 1 through 20, which are all the claims in the application. [FN1]
*16 Appellant's invention is directed to a clamping band in the form of a strap which is adapted to be looped around a hose or other object and which is provided with locking means for interconnecting the free ends of the strap to secure it around the hose or other object. The clamping band is provided near one end with what appellant refers to as an "Oetiker ear" in the form of a deformable, radially outwardly offset portion. As we understand it, this Oetiker ear is expandable upon looping the clamping band around the hose and then contracts once the ends of the strap are interconnected to tighten the band against the hose.
Claims 1 and 16 are the only independent claims on appe al. A copy of these claims, as they appear in appellant's brief, is appended hereto.
The following references are relied upon by the examine r in support of her rejection of the appealed claims:
Oetiker (Oetiker '584) 4,237,584 Dec. 9, 1980
Oetiker (Oetiker '012) 4,299,012 Nov. 10, 1981
Oetiker (Oetiker '004) [FN2] 4,492,004 Jan. 8, 1985
(filed Dec. 3, 1982)
Claims 1, 2, 9, 10 and 16 stand finally rejected under 35 U.S.C. 102(b) as being anticipated by Oetiker '012, and claims 3 through 5, 7 and 8 stand finally rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '584.
In addition to these rejections, the following new grou nds of rejection have been applied against claims 6, 11 through 15 and 17 through 20 in the examiner's answer: [FN3]
1. Claim 6 is provisionally rejected under the judicially-created doctrine of obviousness-type double patenting as being unpatentable over the combination of claims 1 and 14 in appellant's copending application Serial No. 922,408 in view of Oetiker '012.
2. Claims 11 through 15 are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '004.
3. Claims 17 through 20 are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '004 as applied in the rejection of claim 11 above, and further in view of Oetiker '584.
Considering first the new grounds of rejection of claim s 11 through 15 and 17 through 20 based on Oetiker '004 and the other Oetiker patents, since Oetiker '004 is appellant's own patent and hence appellant's own work, it does not qualify as prior art under 35 U.S.C. 102(a). See In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). Also, since Oetiker '004 issued after appellant's parent application Serial No. 622,765 and since the subject application is simply a continuation of that parent application, Oetiker '004 does not constitute prior art under 35 U.S.C. 102(b). Accordingly, Oetiker '004 does not qualify as prior art to support a rejection under 35 U.S.C. 103. For these reasons, the examiner's § 103 rejections of claims 11 through 15 and 17 through 20 cannot be sustained.
Turning now to the § 102 rejection of claim 16 based on Oetiker '012, appellant's arguments supporting patentability are directed to only two limitations: first, the recitation that the tab-like hook member (which is readable on the tab member 33) extends in a longitudinal direction of the band means and second, the recitation that the reinforcing depression means in the bridging portion of the deformable ear is of generally pan-shaped configuration, with the area of the depression means occupying at least 35% of the non-reinforced area of the bridging portion.
As for the first limitation pertaining to the tab-like hook member, appellant argues that rather than extending longitudinally, the tab-like member 31 of Oetiker '012 extends transversely of the band. We cannot accept this position.
Admittedly, the bend line for the tab member 31 in Oeti ker '012 extends transversely of the band while the bend line for the tab member 33 in appellant's subject application is disclosed as extending longitudinally of the band. However, neither claim 1 nor any of the other appealed claims recites the bend line or more particularly the orientation thereof relative to the longitudinal axis of the band. Instead, claim 1, as well as the other claims on appeal, merely recite that the tab-like hook extends in the longitudinal direction of the band means without making any reference to the bend line or to the orientation thereof. Thus, this claim language is broad enough to read on the tab member 31 of Oetiker '012 in the sense that the length of the tab member extending transversely of the bend line does extend in the longitudinal direction of the band. As such, we cannot agree that the tab-like hook member distinguishes from Oetiker '012 simply by reciting that it extends in the longitudinal direction of the band means.
We also cannot agree that the claimed subject matter ect matter distinguishes from Oetiker '012 by reciting that the depression means is generally pan-shaped encompassing at least about 35% of the non-reinforced area of the bridging portion. [FN4] According to its dictionary definition, [FN5] a pan is "a metal, earthenware, or plastic container (as a warming pan, dustpan, dishpan) for domestic use that is usu. [and hence not necessarily] broad, shallow and open % y(4)27" Thus, when the claim language is given its broadest reasonable interpretation as required in In re Sneed, 710 F.2d 1544, 218 USPQ 385 (Fed.Cir.1983), a pan-shaped depression or depression means is not required to have a flat bottom and is not even required to be broad and shallow.
Moreover, rather than just being pan-shaped, the depres sion means in claim 16 is more broadly defined as being generally pan-shaped. When this claim language is given its broadest reasonable interpretation, it reads on the depression 17 shown in Figure 15 of Oetiker '012. The mere fact that depression 17 in Oetiker '012 is described as being a "groove" does not establish a distinction between the structure in the reference and the subject matter defined in claim 16. Simply stated, the recitation that the depression means is "generally pan-shaped" is broad enough to read on what might be regarded as a groove such as the depression shown in Figure 15 of Oetiker '012.
Furthermore, it is apparent from Figure 15 of Oetiker ' 012 that the depression 17 occupies at least about 35% of the non-reinforced area (i.e., the undepressed area) of the bridging portion. Accordingly, we find that all of the limitations defined in claim 16, especially as argued, are found in Oetiker ' 012. We therefore agree with the examiner that claim 16 is anticipated by Oetiker '012, and we will therefore sustain the § 102 rejection of claim 16.
Turning now to the § 102 rejection of claim 1, the recitation that the tab-like hook extends in the longitudinal direction of the band means does not distinguish from Oetiker '012 for the reasons discussed supra with respect to the rejection of claim 16. The only other difference argued over Oetiker '012 is that it does not disclose the generally pan-shaped relatively flat configuration of the depression means. However, for reasons stated infra in our new rejection under 37 C.F.R. 1.196(b), no reasonably definite meaning can be ascribed to this limitation. It therefore is not possible to apply the prior art to claim 1 in deciding the question of patentability without requiring speculation as to what is meant by a configuration that is generally pan-shaped and yet relatively flat. Accordingly, we are constrained to reverse the examiner's rejection of claim 1, as well as claims 2 through 5 and 7 through 10, which are in the chain of dependency from claim 1, under the holding in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) without reaching the issues raised by the obviousness rejection.
Turning now to the provisional double patenting rejection of claim 6, appellant does not argue that the combination of elements defined in claims 1, 2 and 6 of the subject application distinguishes from the combination of claims 1 and 14 of appellant's copending application Serial No. 922,408 by reciting that the depression means has a generally pan-shaped, relatively flat configuration, whatever that language may be construed to mean. Instead, the only argument advanced in support of patentability of this claim is that neither the copending application nor the Oetiker '012 patent teaches a tab-like hook extending in the longitudinal direction (see page 9 of the reply brief). However, for reasons discussed supra, merely reciting that the tab-like hook extends in the longitudinal direction of the band means does not distinguish from the orientation of the tab-like hook 31 in the Oetiker '012 patent. According to the specification in Oetiker '012, the tab-like hook 31 is advantageously utilized to guide the inner and outer band portions relative to each other during initial contraction of the ear. In light of this teaching, it would have been obvious to utilize such a tab-like hook, as well as the cold-deformed support hooks 32 of Oetiker '012, for interconnecting the ends of the band defined in the combination of claims 1 and 14 of appellant's copending application Serial No. 922,408. Accordingly, the invention defined by claim 6 (which includes the subject matter of claims 1 and 2) would have been obvious from the subject matter of claims 1 and 14 in appellant's copending application Serial No. 922,408 in light of the prior art, thus satisfying the test for the obviousness-type double patenting rejection as set forth, for example, in In re Lonci, 774 F.2d 100, 225 USPQ 645 (Fed.Cir.1985) .
Appellant's declaration filed October 23, 1986 [FN6] and the Hauf declaration filed August 4, 1987 (Paper No. 5) concerning commercial success and other evidence of non-obviousness have not been asserted by appellant against the double patenting rejection, which constituted a new ground of rejection in the examiner's answer. In any event, even if this declaration evidence were considered to be applicable to the obviousness-type double patenting rejection in the application at bar, no nexus has been established between such evidence and the merits of the claimed invention to show that the commercial success asserted in the two declarations was the direct result of the unique characteristics of the claimed invention (namely the hook means including the tab-like member) and not due to other causes. In fact, both declarations indicate that the alleged commercial success was due at least in part to the particular configuration of the reinforcing depression in the ear of the clamping band.
Lacking a showing of the requisite nexus, the evidence of commercial success cannot be accorded substantial weight. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed.Cir.1985) and In re Heldt, 433 F.2d 808, 167 USPQ 676 (CCPA 1970). Thus, the declaration evidence, even if considered, does not rebut the examiner's showing that the invention defined in claim 6 of the subject application is an obvious modification of the subject matter defined by claims 1 and 4 of appellant's copending application.
Under 37 C.F.R. 1.196(b) the following new ground of rejection is entered against claims 1 through 15 and 17 through 20:
Claims 1 through 15 and 17 through 20 are rejected unde r 35 U.S.C. 112, second paragraph, as being indefinite and hence failing to particularly point out and distinctly claim the subject matter which appellant regards as his invention.
Starting with claim 1, our first difficulty with the cl aim language centers on the recitation that the configuration of the depression means is both generally pan-shaped and relatively flat. We fail to see how a configuration can be pan-shaped (which implicitly requires a depression or an upstanding wall surface) and yet be relatively flat. This claim language cannot be interpreted to mean that the depression means is pan-shaped with a relatively flat bottom because the claim language would then be a duplication of dependent claim 3 which recites that the depression means includes a bottom portion that is relatively flat.
Our next difficulty with the language in claim 1 stems from the recitation that the configuration of the depression means is relatively flat. The term "relatively" is a word of degree. When a word of degree is used, it is necessary to determine whether a specification provides some standard for measuring that degree. See Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed.Cir.1984).
In the present case, we find no standard or guidelines in appellant's specification to determine to what extent a surface or configuration may depart from a flat surface and yet be regarded as being "relatively flat." Furthermore, there is no evidence here that one of ordinary skill in the art would understand the metes and bounds or boundaries of protection when the claim is read in light of the specification. See Seattle Box Company, Inc., supra. See also In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For these reasons, claim 1 is further rendered indefinite by the recitation that the depression means is relatively flat.
Our next difficulty with the language of claim 1 stems from the recitation that the depression means occupies at least about 35% of the area of the bridging portion in its "non-reinforced condition." It is not clear from appellant's specification what is meant by the "non-reinforced condition." Certainly, there is no antecedent basis in claim 1 for the recitation of the non-reinforced condition. The specification, incidently, states that the area occupied by bottom part 24 should be at least 35 percent of the area occupied by the "non-reinforced bridging portion % y(3)27" (specification, page 6, lines 16-17).
For the foregoing reasons, we conclude that claim 1 is indefinite and therefore fails to comply with the second paragraph of § 112. Being directly or indirectly dependent from claim 1, claims 2 through 15 and 17 through 20 are subject to the same criticism discussed supra with respect to claim 1.
Claim 3 is further indefinite in that it recites that t he bottom portion is relatively flat. As stated supra, the term "relatively" is a word of degree for which there are no explicit guidelines in appellant's specification to enable one skilled in the art to distinguish the claimed structure from structures in which the bottom portion of the depression means is not relatively flat. Absent such guidelines, we do not think that a skilled person would be able to understand what is being claimed and thus to determine the boundaries of the claimed invention with the precision required by the second paragraph of § 112. See In re Hammack, supra.
Dependent claim 8 is subject to a similar criticism jus t discussed with respect to dependent claim 3. With regard to claim 8, there are no guidelines in appellant's specification to enable one skilled in the art to determine what radii of curvature are relatively small from those radii of curvature that are something other than being relatively small. For this reason alone, claim 8 is considered to be indefinite apart from the criticisms outlined supra with respect to claims 1 and 3.
Claim 4 is rendered further indefinite by the recitatio n that the leg portions "have a length of the order of 5 mm,% y(4)27" There are no guidelines in appellant's specification to enable one skilled in the art to determine whether or not a given leg portion has a length "of the order of 5 mm."
Claim 4 is also indefinite in that it appears to claim the same element twice, namely the bottom portion which is already recited in claim 3. Dependent claim 5 also is indefinite in that it too claims the bottom portion twice.
Finally, dependent claims 4, 5, 7 and 17 are further indefinite in that there is no proper antecedent basis for the recitation of the "non-recessed bridging portion."
In summary:
1. The § 102 rejection of claims 1, 2, 9 and 10 is reversed.
2. The § 103 rejection of claims 3 through 5, 7, 8, 11 through 15 and 17 through 20 is also reversed.
3. The § 102 rejection of claim 16 is affirmed.
4. The provisional double patenting rejection of claim 6 is also affirmed.
5. A new ground of rejection has been entered against c laims 1 through 15 and 17 through 20 under 37 C.F.R. 1.196(b).
The examiner's decision rejecting the appealed claims i s affirmed-in-part.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof '37 C.F.R. 1.197).
With respect to the new rejection under 37 C.F.R. Y37 C.F.R. 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 U.S.C. 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
No time period for taking any subsequent action in conn ection with this appeal may be extended under 37 C.F.R. 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
AFFIRMED-IN-PART 37 C.F.R. 1.196(b)
Examiner-in-Chief
William F. Pate, III
Examiner-in-Chief
Lawrence J. Staab
Examiner-in-Chief
FN1. Claims 1 through 16 are reproduced in appellant's brief. Claims 17-20 are reproduced in the examiner's answer.
FN2. The examiner neglected to list this third Oetiker patent in her answer. Since appellant has presumed (see the reply brief) that the examiner intended to refer to appellant's patent No. 4,492,004, so shall we.
FN3. The new grounds of rejection of these claims apparently replaces the earlier rejections of these claims in the final office action (Paper No. 2). Note Ex parte Emm, 118 USPQ 180 (Bd.App.1957).
FN4. Consistent with appellant's specification (see page 6) we have interpreted the claim limitation concerning the "non-reinforced area" to mean the undepressed region of the bridging portion of the ear. It is also noted that this limitation in claim 16 differs from the recitation in claim 1 that the depression means occupies at least about 35% of the area of the bridging portion in its non-reinforced condition. If the recitation of the non-reinforced condition of the bridging portion is interpreted to be the bridging portion before the generally pan-shaped depression is formed, then the depression means of claim 1 is defined as occupying at least about 35% of the total area of the bridging portion, whereas the depression means of claim 16 is recited to occupy at least 35% of only the non-reinforced area, that is, the undepressed area of the bridging portion.
FN5. See Webster's Third New International Dictionary (G. & C. Merriam Company, 1971).
FN6. This declaration and appellant's accompanying letter have not been docketed on the file wrapper and therefore have not been assigned paper nos.
APPENDIX
1. A clamp structure capable of withstanding very high tightening forces, comprising clamping band means providing in its closed condition an inner band portion and an outer band portion each terminating in a free end, mechanical interconnecting means adapted to close the clamping band means into a closed clamp structure including outwardly extending hook means near the free end of the inner band portion adapted to engage with aperture means near the free end of the outer band portion, means operable for tightening the clamp structure circumferentially about an object to be fastened after engagement of at least one hook means in the corresponding aperture means including deformable ear means, each ear means including two generally outwardly extending leg portions and a bridging portion between said leg portions, said bridging portion being provided with reinforcing means, at least one of said hook means being a cold-deformed hook having force-engaging abutment surface means while another hook means is a pressed-out tab-like hook extending in the longitudinal direction of the band means, and said reinforcing means being in the form of depression means extending in the longitudinal direction of the band means and of generally pan-shaped, relatively flat configuration with the area of said depression means occupying at least about 35% of the area of the bridging portion in its non-reinforced condition.
16. An open clamp structure capable of withstanding ver y high tightening forces, comprising clamping band means providing in its closed condition an inner band portion and an outer band portion each terminating in a free end, mechanical interconnecting means including outwardly extending hook means near the free end of the inner band portion adapted to engage with aperture means near the free end of the outer band portion, means operable for tightening the clamp structure about an object to be fastened after engagement of at least one hook means in the corresponding aperture means including deformable ear means, each ear means including two generally outwardly extending leg portions and a bridging portion between said leg portions, said bridging portion being provided with reinforcing means, further means operable in the closed clamp structure to assure a substantially smooth gap-free transition devoid of any step in the circumferential direction from the free end of the inner band material to the ring-like configuration formed by the adjoining band portion of the band means, at least one of said hook means being a cold-deformed hook having force-engaging abutment surface means while another hook means is a tab-like, pressed-out member which extends generally in the longitudinal direction of the band means, and said reinforcing means being formed by generally pan-shaped depression means whose area encompasses at least about 35% of the non-reinforced area of the bridging portion.
APPENDIX G
January 29, 1991
McCandlish, Pate and Staab
Examiners-in-Chief
Examiner-in-Chief
ON REQUEST FOR RECONSIDERATION
Appellant has requested reconsideration of our decision dated April 30, 1990, wherein we reversed the examiner's rejections of claims 1 through 5, 7 through 15 and 17 through 20, affirmed the examiner's rejections of claims 6 and 16 and, pursuant to 37 CFR 1.196(b), entered a new ground of rejection against claims 1 through 15 and 17 through 20 under the second paragraph of 35 USC 112.
The first page and part of the second page of appellant 's request for reconsideration is devoted to the operation of appellant's hose clamp and addresses what appellant calls our "apparent misunderstanding" of the operation of the clamp as set forth on page 2 of our decision. We shall deal with this matter later. Suffice it to say at this time that if there were a misunderstanding about the use or operation of appellant's clamp, it is not relevant to our decision.
With regard to our affirmance of the § 102 rejection of claim 16, appellant's arguments as set forth in the request for reconsideration are still confined to the limitations stated in the paragraph bridging pages 3 and 4 of our decision. In these arguments, appellant takes issue with our interpretation of the limitation pertaining to the tab-like hook member and, on page 4 of the request for reconsideration, accuses us of ignoring limitations in the claim.
As a mere cursory reading of page 4 of our decision wil l indicate, however, we in no sense "ignored" the claim limitation pertaining to the tab-like member or any other claim limitation, for that matter.
Indeed, the issue here is one of claim interpretation, not one of ignoring claim limitations. To assert otherwise only beclouds the issues.
As appellant would apparently have it, the claim langua ge pertaining to the tab-like member in claim 16 should be interpreted to mean that the bend line of the tab-like member extends longitudinally of the band. We cannot agree with this claim interpretation.
While it is true that claims are to be interpreted in light of the specification, it does not follow that limitations from the specification may be read into the claims. Sjolund v. Musland, 847 F.2d 1573, 6 USPQ2d 2020 (Fed.Cir.1988). More generally, it is well settled that during patent examination, claims must be interpreted as broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed.Cir.1989).
In the present case, claim 16 does not even recite the bend line for the tab-like member, let alone the orientation of that bend line relative to the band. Appellant nevertheless argues on page 4 of the request for reconsideration:
"Appellant has clearly described in the specification what he means by the language in the claims which is identical with that in the specification." (request for reconsideration, page 4)
Such an argument that the claim should include everything which apparently appellant described in the specification about the tab-like member is legally unsound. Indeed, the fact that claims are to be interpreted in light of the specification does not mean that everything expressed in the specification must be read into the claims. Raytheon Co. v. Roper Corp., 724 F.2d 951, 220 USPQ 592 (Fed.Cir.1983).
In the final analysis, when the language in claim 16 is interpreted as broadly as its terms reasonably allow, the limitation pertaining to the tab-like member does not distinguish from the '012 Oetiker reference for the reasons stated on page 4 of our decision. The mere fact that we have interpreted the claim language in a manner not to appellant's liking does not mean, as appellant asserts, that we ignored limitations in the claim.
With regard to the recitation of the generally pan-shaply pan-shaped depression means, appellant again accuses us of having ignored a claim limitation. Like the situation pertaining to the tab-like member, however, the issue here is not one of ignoring a claim limitation, but one of claim interpretation. It is true that, as argued by appellant, the broadest reasonable interpretation of the claim language must be consistent with the specification as ruled in In re Sneed, supra. It does not follow, however, that limitations from the specification may be read into the claims as appellant would have us do in this case. See Sjolund v. Musland, supra.
When claim 16 is interpreted as broadly as its terms reasonably allow, the recitation that the depression means is generally pan-shaped does not limit the claim to a depression or depression means having a flat bottom or even a depression or depression means that is broad and shallow as we pointed out on page 5 of our decision. In short, the recitation that the depression means is generally pan-shaped does not limit the claim to the shape of a frying pan inasmuch as the definition of a pan shape is broader than that of a frying pan.
Furthermore, as pointed out on page 5 of our decision, claim 16 is not limited to a depression means which is just pan-shaped, but instead more broadly defines the configuration of the depression means as being generally pan-shaped. We reiterate that when this claim language is interpreted as broadly as the terms reasonably allow, it is broad enough to read on the depression shown in Figure 15 of the '012 Oetiker patent.
Furthermore, although it is true that appellant may be his own lexicographer, it is equally true that the patent specification must support the asserted definition or definitions, as the case may be. Jonsson v. Stanley Works, 903 F.2d 812, 14 USPQ2d 1863 (Fed.Cir.1990). In the present case, the specification attempts no particular definition for the claimed tab-like member or the generally pan-shaped configuration of the depression. Accordingly, the legal principle that appellant may be his own lexicographer may not be used as an excuse to fashion his own definition after the fact in order to read limitations into the claim that clearly are not there.
Appellant's attempt to equate claim 16 to claim 1 and t he ensuing discussion of claim 1 as set forth on page 3 of the request for reconsideration are unpersuasive and serve only to further becloud the issues since it is clear that there are limitations in claim 1 which are not in claim 16.
As for appellant's contention that we sustained the examiner's § 102 rejection of claim 16 on grounds advanced for the first time in our decision, suffice it to say that we have simply agreed with the examiner's basic position and elaborated on that position in responding to appellant's arguments.
Appellant also contends that we incorrectly interpreted the limitation in claim 16 which defines the area of the depression means as encompassing at least about 35% of the "non-reinforced area of the bridging portion" (emphasis added). According to appellant, we should have interpreted this limitation to mean the "total non-reinforced area of the bridging portion before it is provided with the pan-shaped depression" (emphasis added) (request for reconsideration, page 6). This argument is untenable.
There is nothing in the specification or in claim 16 it self that limits the non-reinforced area to the total area of the bridging portion before it is provided with the pan-shaped depression. Instead, the language in claim 16 is unambiguously clear and differs from the language in claim 1 as pointed out in footnote 4 on page 4 of our decision.
In support of his decision concerning the double patent ing rejection of claim 6, appellant cites In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed.Cir.1986) for the principle that the patent disclosure may not be used as prior art. As far as this point is concerned, Kaplan is not applicable since there is no indication that the examiner considered the invention defined in claim 6 as being an obvious variation of what appellant disclosed rather than what appellant claimed. Indeed, in our decision, we confined ourselves to the subject matter claimed in appellant's copending patent application and concluded that, as argued (only one difference was argued as pointed out on page 6 of our decision), the examiner did not err in her double patenting rejection.
In our decision, we cited in In re Longi, 759 F.2d 88 7, 225 USPQ 645 (Fed.Cir.1985) for the legal principle concerning obviousness type of double patenting rejections. This principle or rule is not limited to the facts in Longi, as appellant seems to suggest on page 9 of the request for reconsideration.
Furthermore, the mere fact that the examiner chose not to apply a double patenting rejection to claim 1 or to claim 2 (which were both rejected on other grounds) does not mean that the obviousness type double patenting rejection of claim 6 is improper.
As for the evidence of commercial success, we did more than merely "insinuate" that appellant did not assert this evidence against the double patenting rejection (see page 9 of the request for reconsideration). Instead, we expressly stated that this evidence was not asserted against the double patenting rejection. Our review of the record confirms the correctness of this finding.
We are unpersuaded by appellant's argument that the evi dence of commercial success "could not have been asserted when submitted, against the obviousness-type double-patenting rejection because the latter was raised only in the Examiner's Answer" (request for reconsideration, page 9). Appellant had ample opportunity to assert the evidence of commercial success, even though filed earlier, against the double patenting rejection in view of the fact that the double patenting rejection was a new ground of rejection. See 37 CFR 1.193(b) and MPEP § 1208.03.
Despite the opportunity to assert the evidence of comme rcial success against the double patenting rejection, appellant chose not to do so in his reply brief. Appellant's reliance upon this evidence to overcome the double patenting rejection is therefore considered to be waived. See generally Ex parte Hindersinn, 177 USPQ 78, 80 (Bd.App.1971).
In any event, should it be determined that appellant may belatedly rely upon the evidence of commercial success to overcome the double patenting rejection, we now state that appellant's arguments concerning the requisite nexus are unpersuasive. The statements set forth in Mr. Oetiker's declaration and quoted on page 10 of the request for reconsideration does not establish which features of appellant's clamp were responsible for the asserted commercial success, if indeed, there was any commercial success in the first instance.
As for the Hauf declaration, the declarant's conclusion ary statement in paragraph 9 of the declaration is unsupported by objective evidence and therefore is entitled to little weight. See, for example, In re Greenfield, 571 F.2d 1185, 197 USPQ 227 (CCPA 1978). See also In re DeBlauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984).
The statements in paragraph 8 of the Hauf declaration a re in the nature of hearsay and thus are not entitled to any substantial weight. See generally Schreiber Manufacturing Co. Inc. v. Saft America Inc., 11 USPQ2d 1439 (D.C., E.D.Mich.1989).
As for appellant's reliance upon Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed.Cir.1988), we refer appellant to Ex parte Remark, 15 USPQ2d 1498 (BPAI 1990).
In any event, there is no evidence to show that the commercial success was due to the tab-like hook member or, more particularly, to the orientation thereof.
Considering next the new ground of rejection against cl aims 1 through 15 and 17 through 20 under the second paragraph of 35 USC 112, the following is a summary of the indefinite claim language constituting the bases for the new rejection:
(I) The recitation in claim 1 that the depression means is both generally pan-shaped and relatively flat.
(II) The term "relatively" in the phrase "generally pan-shaped, relatively flat configuration" in claim 1.
(III) The expression "non-reinforced condition" in cl aim 1 and elsewhere.
(IV) The term "relatively" in the expression "relati vely flat" in claim 3.
(V) The term "relatively" in the expression "relativ ely small radii of curvature" in claim 8.
(VI) The expression "of the order of" in claim 4. Thi s expression complicates the definition of the distance by which the bottom portion is recessed from the non-recessed bridging portion in claim 4. According to claim 4, this distance is defined as being less than the length of of the order of 5 mm "but approaching the order of 5 mm" (emphasis added).
(VII) The double recitation of the term "bottom portio n" first as "a bottom portion" in parent claim 3 and then as "a respective bottom portion" in dependent claim 4. Dependent claim 5 also claims the bottom portion twice. [FN1]
(VIII) The lack of proper antecedent basis for the reci tation of the "non-recessed bridging portion" in dependent claims 4, 5, 7 and 17.
Considering first the use of the term "relatively" in the expressions "relatively flat" in claims 1 and 3 and "relatively small" in claim 8, the fact that the term "relatively" constitutes a term of degree admittedly does not automatically render the claims indefinite and hence unpatentable under the second paragraph of § 112. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed.Cir.1984). Nevertheless, this 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. [FN2]
In Seattle Box, the court set forth the following requirements for the use of 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, 225 USPQ 634 (Fed.Cir.1985), the court added:
If the claims, read in light of the specifications, 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.
Even appellant appears to concede that the permissible use of terms of degree is subject to the condition that the claims when read in light of the specification must reasonably apprise those skilled in the art both of the utilization and scope of the invention. See Shatterproof Glass Corp., supra. Indeed, the fundamental purpose of a patent claim is to define the scope of protection and hence what the claim precludes other from doing. See generally, In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed.Cir.1987).
Having determined the requirements for the claim langua ge in issue, the next question is whether on the record before us, those requirements are met. We think not.
In defense of the term "relatively" in the expression "generally pan-shaped, relatively flat configuration" in claim 1 and also in the expression "a bottom portion which is relatively flat" in claim 3, appellant is content to argue as follows:
The Board's problem with the word "relatively" in conjunction with flat is equally flawed because of the disclosure that the bottom part may also have a slight curvature with a large radius of curvature (page 5, line 30 to page 6, line 2). To suggest that a person skilled in the art would not understand the metes and bounds of protection when the claim is read in the light of the specification is thus clearly untenable. (request for reconsideration, page 13).
The citation to the specification mentioned in the fore going quotation is as follows:
"However, if so desired, the bottom part may also have a slight curvature, particularly a concave curvature with a relatively large radius of curvature." (emphasis added, specification, pages 5 and 6)
The foregoing guideline or standard, which is the only one pointed out by appellant, is as vague as the claim language itself, for it requires an interpretation as to what is meant not merely by a large radius of curvature, but a "relatively large radius of curvature" (emphasis added). As such, the specification offers no standards to establish a threshold or demarcation between radii of curvature that may be relatively large and radii of curvature that may be less than relatively large. Hence, those skilled in the art would not be apprised of the radius of curvature at which the pan-shaped configuration (claim 1) and the bottom of the depression (claim 3) become too curved to be considered to be relatively flat.
Appellant has chosen not to proffer any evidence as to whether those of ordinary skill in the art would be reasonably apprised of the scope of the phrase "relatively flat" in claims 1 and 3 when the language is read in light of the specification. Instead, appellant has contented himself to rely merely upon argument that "[t]o suggest that a person skilled in the art would not understand the metes and bounds of protection when the claim is read in light of the specification is thus clearly untenable" (request for reconsideration, page 13). It is well settled, however, that arguments of counsel cannot take the place of evidence. See, for example, In re DeBlauwe, supra.
Turning now to the use of the term "relatively" in dependent claim 8 for defining the radii of curvature of the rounded-off corners, this recitation of the term "relatively" partakes of the same difficulties encountered with the use of the term in the phrase "relatively flat" discussed supra. Furthermore, not only must one skilled in the art determine the scope of the word "small", which by itself is a term of degree, but additionally must determine the scope of a radius that is "relatively small".
With regard to our § 112 rejection of claim 8, we find no arguments specifically directed at the language "relatively small" in this claim. [FN3] It follows that appellant has pointed to no standards or guidelines for enabling one skilled in the art to reasonably establish what may be construed as not just small, but "relatively small" (emphasis added). Certainly, appellant has offered no evidence to indicate that one of ordinary skill in the art would understand what is claimed to distinguish radii that are relatively small from radii that are not relatively small.
With regard to the language "generally pan-shaped, relatively flat configuration" in claim 1, appellant now seeks to have us equate the phrase "relatively flat" with the phrase "relatively shallow" (see page 13 of the request for reconsideration). This argument is not persuasive.
The terms "flat" and "shallow" have distinctly diff erent meanings. Accordingly, to substitute the term "shallow" for the term "flat" would introduce a distinctly different limitation into the claim. Simply because the specification may describe the depression as being relatively shallow does not mean that the terms "flat" and "shallow" may be equated with one another.
Furthermore, appellant has offered no evidence to suppo rt his argument that this claim language "should pose no problem" (request for reconsideration, page 13), presumably to one of ordinary skill in the art. It therefore remains to be determined how a configuration can be generally pan-shaped and yet relatively flat.
Turning now to the expression "non-reinforced conditio n" in claim 1 and elsewhere, the problem is not so much that the limitation lacks antecedent basis. Rather, as observed on page 9 of our decision, it is not clear from appellant's specification what is meant by the "non-reinforced condition."
Furthermore, the reference to the bridging portion as b eing in "its non-reinforced condition" (emphasis added) raises the inference that there is only one possible condition that constitutes a non-reinforced condition. Yet, as pointed out in our response to appellant's request for reconsideration in appellant's companion application Serial No. 922,408 (Appeal No. 88-3256), there are a number of different interpretations that may be applied to the phrase.
The difficulty here is that appellant's specification presents no definition or description of what is meant by "its non-reinforced condition." As a result, the expression "its non-reinforced condition" is indefinite because it is open to a number of different interpretations to render the scope of the claims indeterminate.
With regard to the expression "of the order of" in cl aim 4, appellant's only argument (see page 14 of the request for reconsideration) is that this expression usually refers to a quantity plus or minus a small amount. Apart from the fact that no standard or guideline is presented to establish what is a "small amount", it is not just a question of the uncertainty of the expression in the abstract, but in the context used in claim 4. Here, the claim effectively requires that the distance in question be less than the length of the leg portions and hence less than a length of the order of 5 mm, but approaching "the order of 5 mm" (claim 4). Thus, not only is the distance in question required to approach the order of 5 mm, but it is also required to have a value that is less than the order of 5 mm. Nothing herein would reasonably apprise one skilled in the art of the scope of such a limitation.
With regard to the double recitation of the bottom port ion first in claim 3 and again in claim 4, appellant's only explanation as set forth on page 14 of the request for reconsideration is that the separate recitation of "a respective bottom portion" in claim 4 is appropriate "if the clamp includes two ears." We cannot agree that the depression means recited in claim 1 would be regarded as plural depressions when read in light of the specification to warrant the recitation of two separate bottom portions.
With regard to appellant's comments commencing with the last paragraph on page 4 of the request for reconsideration, it is significant to observe that the definiteness of a claim is of substantial importance to allow others who wish to enter the marketplace to ascertain the boundaries of protection that are provided by the claims upon issuance of a patent. See In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). Accordingly, compliance with the second paragraph of § 112 may not be treated lightly inasmuch as the public interest is involved. In the present case, claims 1 through 15 and 17 through 20 do not meet the requirements in the second paragraph of § 112.
Turning now to appellant's remarks on pages 1 and 2 of the request for reconsideration, appellant takes issue with our statement concerning the use or operation of the clamping band as set forth on page 2 of our decision. Although this question on its face is not controlling of the propriety of the affirmed rejections or our new rejection based on the second paragraph of § 112, it nevertheless deserves attention in view of the fact that appellant has devoted nearly two full pages to the matter.
Appellant begins by stating that it is well known in th e art that the so-called "Oetiker" ear "is plastically deformed by the application of a pincer-like tool so that the originally substantially U-shaped ear is plastically deformed into approximately [an] Omega shape" (request for reconsideration, page 1). There is no description in the specification, however, that the ear is deformed into approximately an Omega shape.
In any event, our discussion concerning the operation or application of the clamping band recognized that some form of contraction of the ear was required, the term "contraction" having been used in appellant's own prior Patent No. 4,299,012 to describe the operation or use of the band.
In any case, appellant's arguments to the contrary notwithstanding, it is evident that any discrepancy in our description about the use or operation of the clamping band is not of such a consequence to require a change in our decision. We do, however, modify our decision to correspond to the operation outlined by appellant on page 1 of the request for reconsideration.
With the possible exception of dependent claim 9 (which is no longer subject to any art rejection), the discussion on page 2 of the request for reconsideration concerning the combined guide and support functions of appellant's tab-like hook 33 is not seen to be relevant since neither claim 6 nor claim 16 is limited to the asserted guide and support functions.
Finally, as for appellant's request for rehearing (see page 15 of the request for reconsideration), the governing rules of practice do not provide for such a rehearing. Indeed, entry of a new rejection under the provisions of 37 CFR 1.196(b) is no reason by itself to grant a rehearing, let alone an en banc rehearing as appellant requested. Certainly, there is no special question of law or fact that would justify a rehearing in this instance. Accordingly, appellant's request for rehearing is denied.
In view of the foregoing, appellant's request for reconsideration is denied insofar as it seeks any reversal of our previous decision.
No time period for taking any subsequent action in conn ection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
DENIED
Examiner-in-Chief
William F. Pate III
Examiner-in-Chief
Lawrence J. Staab
Examiner-in-Chief
FN1. It is noted that the depression means is claimed twice when dependent claim 7 is considered with parent claim 1. Although no specific rejection was entered on this ground, correction of this defect would be in order in the event of further prosecution before the examiner.
FN2. See White v. Dunbar, 119 USPQ 47, 50-51 (1886) and Townsend Engineering Co. v. HiTech Co. Ltd., 829 F.2d 1086, 4 USPQ2d 1136, 1139 (Fed.Cir.1987).
FN3. Note Keebler Co. v. Murray Bakery Products, 9 USPQ2d 1736 (Fed.Cir.1989).
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