Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE OLAV A. KRISTENSEN
Appeal No. 87-0697
January 17, 1989
Application for Patent filed November 21, 1984, Serial No. 673,856. Ejection Nozzle for High-Pressure Cleaning Units.
Charles A. Blank et al. for appellant
Supervisory Primary Examiner
This appeal is from the examiner's rejection of claims 6 and 8 through 10 under 35 U.S.C. 103. No other claims remain in the application.
Appellant's invention is directed to a dual nozzle arrangement operable between two positions for selectively providing either a high pressure ejection of liquid or a low pressure ejection of liquid. [FN1]
A copy of claim 6 (which is the only independent claim on appeal), as it appears in appellant's brief, is appended hereto.
The following references are relied upon by the examiner as evidence of obviousness in support of his rejection under § 103:
Askins 583,969 June 8, 1897
Gall 3,102,691 Sept. 3, 1963
Ziebarth (German Patent) 590,616 Dec. 14, 1933
(PTO Translation No. 88-2727 dated September 1988 attached)
Claim 6 stands rejected under 35 U.S.C. 103 as being unpatentable over Ziebarth in view of Gall, and claims 8 through 10 stand rejected under 35 U.S.C. 103 as being unpatentable over the references applied in the rejection of claim 6 above, and further in view of Askins.
In support of his rejection, the examiner has taken the position that "Ziebarth teaches an ejection nozzle similar to that claimed by appellant, differing only in that the jacket portion 6 is axially movable using a screw-thread control" (answer, page 2). The examiner, however, considers that it would have been obvious to one of ordinary skill in the art to "have provided the nozzle of Ziebarth with a fluid pressure secured jacket portion as suggested and taught in Gall in place of the arrangement using screw threads" (answer, page 2).
We cannot sustain this rejection. Claim 6 requires, inter alia, that the cylindrical jacket portion lying outside the claimed annular area not only has the terminating end wall defining the low pressure nozzle opening in front of the high pressure nozzle portion, but also has the shoulder face of sufficient area to maintain the operating means in position to close the low pressure discharge through the side ducts. Recognizing that Ziebarth has no such structure, the examiner relies upon Gall.
Gall, however, does not teach or in any way suggest such a cylinder jacket portion having both the claimed shoulder face and the claimed end wall with the low pressure nozzle opening. Lacking a suggestion of this feature, we cannot agree that the applied references establish a prima facie case of obviousness with respect to the subject matter of the appealed claims. The examiner's decision rejecting the appealed claims is therefore reversed.
*2 Under 37 C.F.R. 1.196(b), the following new ground of rejection is entered against claims 6 and 8 through 10:
Claims 6 and 8 through 10 are rejected under 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. Claim 6 explicitly calls for the cylinder jacket portion having both the claimed shoulder face (which is described in the specification to be on a first part that appears to be indicated by the reference numeral 40) and the terminating end wall 26 (which is shown to form a portion of a second part that is apparently indicated by the reference numeral 58). Both of these jacket parts (40, 58) appear to be fixed together to thus be slidable as a unit relative to the bushing part 4. Claim 6 also recites an operating means for opening and closing the low pressure discharge through the claimed annular area (60), as well as reciting that such operating means comprises "a slidable cylindrical portion" which causes the opening and closing of the discharge through the aforesaid annular area (60). Our difficulty with these claim limitations is that claim 6 recites the operating means, together with its slidable cylindrical portion, as if it were separate from the claimed cylindrical jacket portion with its terminating end wall. Yet, it is the terminating end wall 26 that performs the function of opening and closing the discharge through the annular area 60 by movement of the cylinder jacket portion (which necessarily includes both the part 58 and the part 40) axially back and forth relative to the bushing part 4.
Thus, it is not clear to us how the cylinder jacket portion, which is recited to have the terminating end wall, and the operating means, which is recited to open and close the discharge through the annular area 60, can be read on the disclosed embodiment without reading the operating means and the cylinder jacket portion on the same element or part. Since the specification states that it is the terminating end wall that opens and closes the discharge through the annular area 60, it appears that appellant has claimed the same element or elements twice. Thus, claim 6 is rendered indefinite by the double inclusion of the same element or elements.
With further regard to claim 6, the term "similar" in the preamble phrase "for high-pressure cleaning units or similar apparatus" is vague and uncertain in that it is not clear from the specification what appellant intended to cover by the recitation of "similar" apparatus. The question presented by this preamble expression is whether indefinite language is sufficient to support a rejection based on indefiniteness where the objectionable language is found in the preamble of the claim. This question was considered in two pre-1952 board decisions, namely Ex parte Lean, 72 USPQ 453 (Bd.App.1947) and Ex parte Abbott, 83 USPQ 71 (Bd.App.1949).
*3 In Ex parte Lean, supra, the board concluded, in effect, that because the preamble was not entitled to patentable weight (and thus did not have a bearing on the patentability of the claimed subject matter), the presence of indefinite language in the preamble did not support the examiner's rejection of indefiniteness. The board in Lean therefore reversed the examiner's rejection on the ground of indefiniteness. A similar ruling is found in Ex parte Abbott, supra. However, as evidenced from the more recent decisions by our prior reviewing court in In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971) and In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970), patentability is not the only consideration requiring the claim language to be definite under 35 U.S.C. 112, second paragraph.
In Moore, the court held that with respect to the second paragraph of § 112, the inquiry is "to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity." In Hammack, at page 208, the court specifically related to the matter of infringement to the issue of indefiniteness, stating as follows:
All provisions of the statute must be complied with in order to obtain a patent. The requirement stated in the second paragraph of section 112 existed long before the present statute came into force. Its purpose is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance. Compare United Carbon Co. v. Binney Co., 317 U.S. 228, 55 USPQ 381 (1942), Kaiser Industries Corp. v. McLouth Steel Corp., 400 F.2d 36, 158 USPQ 565 (6th Cir.1968).
It therefore is evident that the definiteness of a claim is not only important for a consideration of patentability, but also for a consideration of infringement. Since the preamble of a claim may be a consideration in determining infringement, as well as the issue of patentability where the preamble gives life and meaning to the claim, [FN2] the preamble language may not be ignored in determining the question of whether the claim is definite under the second paragraph of § 112. Thus, in light of In re Moore, supra, and In re Hammack, supra, we herewith overrule Ex parte Lean, supra, and Ex parte Abbott, supra, as well as any other prior board decisions to the extent that such decisions are inconsistent with our holding herein.
In the present case, it is clear that the preamble recitation of "similar apparatus" introduces an uncertainty into claim 6 to preclude one skilled in the art from determining the metes and bounds of the claimed subject matter. Accordingly, we must conclude that claim 6 does not define the invention with the precision and particularity required by In re Moore, supra, and In re Hammack, supra.
*4 Being in the chain of dependency from claim 6, claims 8 through 10 are subject to the same criticism as claim 6.
For the foregoing reasons, claims 6 and 8 through 10 are considered to be indefinite and thus fail to satisfy the requirements in the second paragraph of § 112.
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 of the decision (37 C.F.R. 1.197). Should appellant elect to have further prosecution before the examiner in response to the new rejection under 37 C.F.R. 1.196(b) 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 one month from the date of this decision.
37 C.F.R. 1.136(a) does not apply.
BOARD OF PATENT APPEALS and INTERFERENCES
Saul I. Serota
Ian A. Calvert
Robert F. Stahl
Harrison E. McCandlish
James M. Meister
FN1. Contrary to the examiner's representation (see page 2 of the answer) that the invention is adequately described in appellant's brief, we find that such description falls far short of being adequate because, inter alia, there is no description of the main distinguishing feature over the primary reference, namely, the provision of the shoulder face (indicated at 36 in the application drawings) on the cylinder jacket portion of the nozzle for maintaining the operating means in position to close the low pressure discharge through the side ducts (indicated at 12 in the application drawings); nor is there any description in the brief to indicate how the claimed operating means and the claimed cylinder jacket portion are to be read together upon the disclosed embodiment. This matter is discussed infra in our new rejection under 35 U.S.C. 112, second paragraph.
FN2. See, e.g., Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 221 USPQ 669 (Fed.Cir.1984).
6. An ejection nozzle for high-pressure cleaning units or similar apparatus, comprising an inlet duct having a terminating narrow opening of a nozzle portion for high-pressure ejection, one or more side ducts branching out from said inlet duct, said one or more side ducts terminating in an annular space around said high-pressure nozzle portion, said space being forwardly open or openable in an annular area through such a large opening area that low-pressure discharge of a spraying liquid can occur, operating means for opening and closing this discharge through said one or more side ducts and said annular space, a protruding cylinder jacket portion being outside the said annular area and having a shoulder face of sufficient area that during high-pressure ejection liquid pressure against said shoulder face is effective to maintain said operating means in position to close said low-pressure discharge through said one or more side ducts to maintain high pressure ejection in the nozzle, said cylinder jacket portion having a terminating end wall at a distance in front of said high-pressure nozzle portion, said end wall having a central, comparatively wide low-pressure nozzle opening, essentially coaxial with said high-pressure nozzle portion, said operating means comprising a slidable cylindrical portion, which--by axial sliding--can cause opening and closing of the discharge through said annular area, said cylindrical jacket portion being securely connected with said slidable cylindrical portion in such a way that discharge through said annular area is possible when said low-pressure nozzle opening is located at a maximum distance in front of said high-pressure nozzle portion.