Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE HENRY W. RODGERS
Appeal No. 92-2213
November 13, 1992
HEARD: July 13, 1992
Request filed November 1, 1989, Control No. 90/001,884, by Superflight, Inc., for the Reexamination of Patent No. 4,104,822, issued to Henry W. Rodgers on August 8, 1978. Rotating Circular Airfoil.
Gregg I. Anderson for appellant
Primary Examiner--Mickey Yu
Before Serota
Chairman
Vice Chairman
Stahl, McCandlish, Pendegrass, Stoner and Staab
Examiners-in-Chief [FN1]
Stoner
Examiner-in-Chief
This appeal involves claims 2, 4, 6, 7, 9, 11 and 14 through 24, all of which have been finally rejected in the examiner's communication mailed January 24, 1991. The examiner has stated that he considers claims 8 and 10 patentable. Claims 1, 3, 5, 12 and 13 have been canceled as a result of an earlier reexamination proceeding.
BACKGROUND
U.S. Patent No. 4,104,822 to Henry Wendell Rodgers, the appellant herein, issued on August 8, 1978, and included 14 claims, claim 1 being the only independent claim. This is the third reexamination involving the Rodgers' patent. The first two proceedings were requested by Alan J. Adler, one of the defendants in a related civil action filed on July 12, 1982, in the United States District Court for the District of Colorado, styled Henry Wendell Rodgers, Plaintiff, v. CPG Products Corp., Alan J. Adler and Dave Cook Sporting Goods Co., Inc., Defendants, Civil Action No. 82-M-1170. The appellant informs us that this litigation has been settled (main brief filed April 8, 1991, page 2). The present proceeding was requested by Superflight, Inc., which, we are told, is a California corporation wholly-owned by the same Alan J. Adler. Superflight and Adler are defendants in a civil action filed on December 20, 1990, in the United States Court for the District of Colorado, styled Henry Wendell Rodgers, Plaintiff, v. Easton Sports, Inc., Superflight, Inc. and Alan J. Adler, Defendants, Civil Action No. 90-F-2252. The appellant informs us that this litigation is "administratively closed" pending the outcome of the present reexamination (main brief, page 3).
During the course of the first reexamination proceeding, Reexamination No. 90/000,352, filed March 31, 1983, the examiner finally rejected patent claims 1, 3, 5 and 12 under 35 USC 102(b) as anticipated by a patent to Wetherill, [FN2] rejected patent claim 13 under 35 USC 103 as unpatentable over Wetherill in view of a further patent, and rejected added claims 15 through 24 under 35 USC 305 as broader in scope than the original patent claims. Claims 15 through 24 were additionally rejected under 35 USC 112, first paragraph, as being based on an insufficient disclosure. The examiner found claims 2, 4, 6 through 11 and 14 to be patentable. A panel of this board, on appeal, reversed the examiner's rejection of claims 15 through 24 under 35 USC 112, first paragraph, but affirmed all other rejections. A majority of that panel additionally recommended, under the provisions of 37 CFR 1.196(c), changes to claims 15, 23 and 24 which would obviate the § 305 rejection and make claims 15 through 24 allowable. The appellant chose to amend claims 15 through 24 in accordance with the board's recommendation and additionally appealed the board's decision concerning claims 1, 3, 5, 12 and 13.
*2 In an unpublished decision dated April 16, 1986, the Court of Appeals for the Federal Circuit affirmed the board's decision sustaining the examiner's rejection of claims 1, 3, 5 and 13 and reversed the board's decision sustaining the examiner's rejection of claim 12. Subsequently, the appellant canceled claim 12 and reexamination certificate B1 4,104,822 issued, confirming the patentability of claims 2, 4, 6 through 11 and 14, indicating that claims 1, 3, 5, 12 and 13 have been canceled, [FN3] and stating that new claims 15 through 24 added during the reexamination proceeding have been determined to be patentable.
During the course of the second reexamination proceeding, Reexamination No. 90/001,118, filed October 23, 1986, the examiner finally rejected claims 15 through 24 under 35 USC 112, second paragraph, for indefiniteness, and claims 2, 4, 7, 9, 10, 11, 14, 15, 17 and 19 through 24 under 35 USC 103 for obviousness over a multitude of prior art references, primary among which was Wetherill. The examiner found claims 6 and 8 to be patentable. A panel of this board, on appeal, reversed all of the examiner's rejections. [FN4] Subsequently, reexamination certificate B2 4,104,822 issued, confirming the patentability of claims 2, 4, 6 through 11 and 14 through 24 and indicating that claims 1, 3, 5, 12 and 13 have been canceled.
On November 1, 1989, the present reexamination proceeding was requested, with reexamination being ordered in the communication mailed January 18, 1990.
Column 1, line 24 et seq. of the original Rodgers' patent summarizes the subject matter of the present invention as follows:
The present invention is directed toward a light-weight, inexpensive, long-range rotating aerial device for use primarily as a toy, a game, or a recreational device.
The rotating aerial device of the present invention incorporates and utilizes airfoil characteristics of the device in accomplishing desired flight patters [sic, patterns] of the device, ease of operation, and distance of flight.
For the purposes of this disclosure, an airfoil is defined as a device designed for travel through a body of air or other gaseous fluid having a curved upper surface and a curved lower surface for interaction with the body of air or other gaseous fluid to create lift.[ [FN5] ]
While previous devices have utilized concepts of drag to prevent the sinking of the trailing edge of such rotating devices, thereby requiring the inclusion on the device of a downwardly protruding skirt or flange, the circular device of the present invention relies primarily on airfoil lift characteristics and rotational gyroscopic effects to create a long range, easily operated aerial device.
THE CLAIMS
Claims 2, 4 and 15 are representative of the subject matter on appeal and are reproduced as follows, along with canceled independent claim 1 from which claims 2 and 4 depend:
*3 1. A rotating aerial device for use as a toy comprising a circular ring having an outer circumferential edge and an inner circumferential edge and a ring body defined by said outer circumferential edge and said inner circumferential edge wherein said ring body comprises:
a. a circular airfoil having an upper camber surface and a bottom camber surface and a uniform cross-section throughout and;
b. at any cross-section of said airfoil said bottom camber surface is below a reference chord line extending across said cross-section from said outer circumferential edge to said inner circumferential edge; and
c. said upper camber surface is above said chord line having a maximum height from said chord line approximately equal distance between said outer circumferential edge and said inner circumferential edge; and
d. a first curvature of said upper camber from said maximum height to said outer circumferential edge substantially identical to a second curvature of said upper camber from said maximum height to said inner circumferential edge.
2. A rotating aerial device as claimed in claim 1, wherein:
a. said bottom camber surface has a positive camber in the same direction as said upper camber surface; and
b. a maximum height of said bottom camber surface remains below said chord line.
4. A rotating aerial device as claimed in claim 1, wherein said bottom camber surface is generally parallel with said chord line.
15. A rotating circular ring airfoil body for use as a flying toy, which airfoil body is defined by an outer circumferential edge and an inner circumferential edge and an upper camber surface and a bottom camber surface, said edges and surfaces defining an airfoil profile in cross-section radially through said airfoil body, said airfoil profile being of uniform cross-sectional configuration circumferentially around said airfoil body, said airfoil profile being further defined with respect to a reference chord line extending across said profile from said outer circumferential edge to said inner circumferential edge, said upper camber surface is located above said chord line and has a maximum height above said chord line at approximately equal distance between said outer circumferential edge and said inner circumferential edge, said bottom camber surface is located below and extends generally parallel with respect to said chord line, said upper camber surface has a first curvature from said maximum height to said outer circumferential edge and a second curvature from said maximum height to said inner circumferential edge, and said first and second curvatures are substantially identical to one another and symmetrical about a reference line perpendicular to said chord line and passing through a midpoint of said chord line.
THE REFERENCES
The references relied upon by the examiner are:
Smith 158,991 Jan. 19, 1875
Stevens 482,852 Sep. 20, 1892
Faxon 532,233 Jan. 8, 1895
Ericson 943,343 Dec. 14, 1909 [FN6]
Herrick 1,792,015 Feb. 10, 1931
Knox 3,082,572 Mar. 26, 1963
Headrick 3,359,678 Dec. 26, 1967
Morcom 3,489,374 Jan. 13, 1970
Liston 3,565,434 Feb. 23, 1971
LeBaron 3,590,518 July 6, 1971
Linenfelser 3,710,505 Jan. 16, 1973
English 3,765,122 Oct. 16, 1973
Senior (Gt. Britain) 416,687 Sep. 9, 1934
*4 Cowley, W. et al. (Cowley), "Aerofoils for Airscrew Design," Reports and Memoranda No. 362, pages 277-279 and two attached sheets of drawings, November 1917.
Briggs, L. et al. (Briggs), "Aerodynamic Characteristics of Circular-Arc Airfoils at High Speeds," NACA Report No. 365, pages 67-71, July 1930.
Jordanoff, A., Jordanoff's Illustrated Aviation Dictionary, pages 4, 9, 12, 35, 39, 83, 93, 96, 188, 214, 273, 353, 383, 385 and 386, Harper and Brothers Publishers, New York, 1942.
Williams D. et al. (Williams), "Tests on Four Circular-back Aerofoils in the Compressed Air Tunnel," Reports and Memoranda No. 2301, National Physical Library, pages 1-35, June 1946.
Johnson, S., Frisbee: A Practitioner's Manual and Definitive Treatise, pages 40, 41, 64, 170-173, and 198-201, Workman Publishing Co., New York, 1975.
THE REJECTIONS
Claims 15 through 22 stand rejected under 35 USC 112, first and second paragraphs,
as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and/or for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention [answer, page 17].
Because there appears to be some uncertainty on the examiner's part as to the applicability of the first and second paragraphs of § 112, we quote the rejection in its entirety as follows:
Claim 15 is vague and indefinite with respect to the claim requirement of the "bottom camber surface is located below and extends generally parallel with respect to said chord line". The only support and definition in the Rodgers' specification for the bottom camber surface to be parallel to the chord line is a "surface having no curvature" (column 3, lines 59-61). It is not known how the bottom camber surface is constructed "below" the chord line and "having no curvature". The specification does not teach making such a structure. Therefore the metes and bounds of claim 15 also cannot be determined.
Claim 21 fails to particularly pointing [sic] out and distinctly claiming [sic] the invention. The recitation of the inner and outer edges "having equal radii from said midpoint on said chord line" (emphasis added) is inconsistent with the specification. Radii 36 and 38 are not measured from the midpoint on the chord line as disclosed in the drawing, Figure 3, and the specification [answer, pages 17-18; emphasis in the original].
Claims 4, 11, 15 and 21 stand rejected under 35 USC 102(b) as anticipated by either of Smith or Ericson (answer, pages 5-6).
Claims 2, 4, 6, 7, 9, 11, 14 through 17, 19 and 21 through 24 stand rejected under 35 USC 103 as unpatentable over various prior art references, as indicated below:
(i) claims 2, 4, 6, 7, 9, 11, 15, 16, 17, 19, 21, 23 and 24, rejected as unpatentable over Senior in view of Herrick (answer, pages 6-9);
*5 (ii) claims 2, 4, 6, 7, 9, 15, 16, 17, 19, 23 and 24, rejected as unpatentable over Senior in view of either Jordanoff or Morcom (answer, pages 9-11);
(iii) claims 4, 6, 7, 9, 11, 15, 16, 17, 19 and 21, rejected as unpatentable over Senior in view of any one of Briggs, Cowley or Williams (answer, pages 11-12);
(iv) claims 4, 6, 7, 9, 15, 16, 17 and 19, rejected as unpatentable over Senior in view of any one of Knox, Faxon, Stevens or Liston (answer, page 12);
(v) claims 4, 11, 15 and 21, rejected as unpatentable over Senior in view of any one of English, Liston, Smith, Ericson or Headrick (answer, pages 13- 14);
(vi) claims 7, 15 and 17, rejected as unpatentable over Senior in view of any one of Herrick, Jordanoff, Morcom, Briggs, Knox, Faxon, Stevens, Liston, Smith, Ericson or Headrick, in further view of Johnson (answer, pages 14-16); and,
(vii) claims 14 and 22, rejected as unpatentable over Senior in view of any one of Herrick, Jordanoff, Morcom, Briggs, Knox, Faxon, Stevens, Liston, Smith, Ericson or Headrick, in further view of Linenfelser or LeBaron (answer, page 16).
OPINION
The Rejections Under 35 USC 112, First and Second Paragraphs.
1. In General
The appellant believes that claims 15 through 22 are not subject to rejection under 35 USC 112, first or second paragraphs, due to the provisions of 37 CFR 1.552(b) and (c), inasmuch as these claims were added during the prosecution of the first reexamination and determined to be patentable in that proceeding. [FN7] In the second reexamination, we had no occasion to rule on this contention, but observed that we saw nothing on the face of 37 CFR 1.552 which would indicate that claims added by a first reexamination enjoy the status of original claims in a second or subsequent reexamination. Because of our decision regarding claim 21, infra, we are now compelled to decide that issue. Finding in the law and applicable rules relating to reexamination nothing which precludes our interpretation, we hold that claims added during a reexamination proceeding and determined to be patentable therein nevertheless remain "[a]mended or new claims presented during a reexamination proceeding ... [which] will be examined ... for compliance with the requirements of 35 USC 112," as required by 37 CFR 1.552(b), in any later reexamination proceeding. [FN8]
The section of the statute providing for reexamination certificates, 35 USC 307(a), provides that upon conclusion of a reexamination proceeding,
the Commissioner will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any proposed amended or new claim determined to be patentable.
*6 The "incorporating" language of § 307(a) does not change the fundamental character of claims amended or added by a reexamination, such as claims 15 through 22 here. Although claims 15 through 22 were incorporated in the patent by the earlier reexamination certificate, that incorporation does not alter the fact that these claims were not part of the patent originally issued. Instead, they are and remain claims which were added by "a reexamination proceeding" (37 CFR 1.552(b); emphasis added). As such, they remain open to examination in the manner expressly provided by 37 CFR 1.552(b). [FN9]
The appellant has not directed our attention to any decision supporting his position, and we know of none. No rejection under 35 USC 112 was before the court in In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed.Cir.1985), much less one involving claims added in an earlier reexamination proceeding. Nor does anything in the Manual of Patent Examining Procedure, Fifth Edition, § 2258 (Revision 12, July 1989) address the precise issue here. The fact remains that claims added by reexamination, like claim 21 whose rejection under 35 USC 112, first paragraph, we shall here sustain, are not original patent claims.
To the extent that the examiner's rejection of claim 21 under 35 USC 112 may be considered to be based on a lack of written description for the subject matter claimed therein, in violation of the first paragraph of § 112, we shall sustain the rejection. All other rejections of claims 15 through 22 under 35 USC 112, first and second paragraphs, are reversed.
2. Claim 15
The language of claim 15 which requires that the bottom camber surface is "located below and extends generally parallel with respect to said chord line" is neither vague nor indefinite, in our view. It is clear from this language precisely what the appellant intends his claim language to cover: an airfoil body having a bottom surface below and parallel to the chord line, and possessing all of the other characteristics recited in claim 15. Like the appellant (main brief, page 32), we think that this claim language adequately provides notice as to the metes and bounds of claimed protection. See In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
We do not share the examiner's view that the quoted recitation lacks sufficient "support and definition" in the Rodgers' specification, irrespective of whether this is intended to mean that the examiner considers the specification to be (a) non-enabling [FN10] or (b) deficient in providing a written description of the claimed invention. [FN11]
Rodgers' aerial device is disclosed as a circular ring body 14 having an upper camber surface 24, an outer circumferential edge 16, an inner circumferential edge 18 and a lower camber surface. The lower camber surface may be either a positively cambered surface 26 or a negatively cambered surface 28, as illustrated in figure 3. Rodgers further states:
*7 The present invention contemplates, in addition to a positive camber and a negative camber, as described above, a lower camber surface having no curvature, that is, a bottom camber surface parallel with the chord line 22.
While the positive lower camber surface 26[,] the negative lower camber surface 28 and a camber surface having no curvature are contemplated and within the scope of the present invention, different flight characteristics result depending upon which camber surface is used. The positive lower camber surface 26 is the preferred embodiment of the present invention for the reason that a negative lower camber surface produces less lift than a positive lower camber surface. A camber surface with no curvature reacts more like a positive camber than a negative camber [column 3, lines 57 through column 4, line 4; emphasis added].
It is clear that the language of the specification and claim 15 are consistent with one another and that there is no lack of written description as required by 35 USC 112, first paragraph, for the language of which the examiner complains.
Nor do we believe that there is basis for questioning the enablement provided by the specification. As illustrated in figure 3, the inner and outer circumferential edges are disclosed as being:
smoothly rounded to continue the convex curvature of the upper camber surface 24 and join the curvature of the lower camber surface 26 or 28. The outer circumferential edge 16 and the inner circumferential edge 18 include a radius of curvature 36 and 38 appropriately chosen to continue the curvatures above described [column 4, lines 14-22].
As figure 3 shows, it is in the vicinity of segments 10 and 90, corresponding to the end of the smoothly rounded edges, that the surfaces 26 and 28 diverge from one another. We believe it would have been evident to the skilled worker that a bottom camber surface which is located below and extends generally parallel with respect to the chord line would diverge from 26 and 28 in the same vicinity. For example, the unillustrated bottom camber surface located below and extending parallel to the chord line could simply be a surface defined in side view by a line segment lying parallel to the chord line 22 between the surfaces 26 and 28 of figure 3.
3. Claim 21
On the other hand, it appears to us that the subject matter recited in claim 21 lacks support in the written description, that is, it constitutes new matter which was not part of the original specification of the patent under reexamination.
Claim 15, from which claim 21 depends, makes reference to a midpoint of the chord line about which the first curvature and the second curvature of the upper camber surface, which are substantially identical to one another, are symmetrical. This point can only be one, like that shown on segment 50 in figure 3, located at the very midpoint of the line segment connecting the outer and inner edges and lying along the chord line 22. Claim 21 adds that the inner and outer edges of the body are rounded and have equal radii "from said midpoint on said chord line." The meaning of this language appears clear enough and does not seem to be indefinite.
*8 By contrast to what is recited in claim 21, the original disclosure concerning the radii of these edges, quoted above, indicates that, "The outer circumferential edge 16 and the inner circumferential edge 18 include a radius of curvature 36 and 38 appropriately chosen to continue the curvatures above described," with figure 3 illustrating these radii as being drawn from centers located at the intersections of segments 10 and 90 with the chord line 22. Even claim 11, on which claim 21 appears to be loosely based, does not use this language concerning a midpoint of the chord line, instead making reference to "a center point on said chord line."
There is simply nothing in the specification of the patent under reexamination, apart from the language of claim 21 itself, presented during the first reexamination proceeding, which provides the requisite original disclosure which conveys to those skilled in the art that the appellant had invented the subject matter later claimed. Accordingly, the examiner's rejection of claim 21 under 35 USC 112, first paragraph, is sustained.
Recognizing that our basis for sustaining the rejection of claim 21 is different in thrust than that stated by the examiner, we shall denominate the same a new ground of rejection pursuant to the provisions of 37 CFR 1.196(b).
The Rejections Under 35 USC 102(b).
We shall sustain the examiner's rejections of claims 4, 11, 15 and 21 under 35 USC 102(b) as anticipated by Smith or Ericson.
The examiner has found that:
Both Smith and Ericson disclose throwing rings each having an airfoil cross-section which has a bottom surface below and parallel to the chord line, and upper surface with a maximum height at approximately equal distance between the outer and inner edges [answer, page 5].
As is evident from the respective drawing figures, the ring of each possesses flat upper and lower surfaces joined by smoothly rounded inner and outer circumferential edges.
With respect to these rejections, the appellant has principally argued that Smith and Ericson each fail to disclose "an upper surface camber, i.e., curved" (main brief, page 29). In other words, the appellant argues that Smith and Ericson each fail to disclose a part of the claimed device which is defined in the terms of canceled claim 1. The appellant does not address the additional subject matter which makes the devices of claims 4, 11, 15 and 21 different from that recited in claim 1. We shall focus our attention accordingly.
Claim 1, of course, does not make mention of "an upper surface camber" but instead recites, inter alia, an upper camber surface and a lower camber surface. Claim 1, likewise, does not state that the camber surfaces are in any way curved. (Like observations pertain to claims 4, 11, 15 and 21.) The appellant seemingly fails to appreciate the manner in which he has defined the phrase "camber surface" used throughout the specification and claims. We again direct attention to the passage of the Rodgers' patent specification which states:
*9 The present invention contemplates, in addition to a positive camber and a negative camber, as described above, a lower camber surface having no curvature, that is, a bottom camber surface parallel with the chord line 22.
While the positive lower camber surface 26[,] the negative lower camber surface 28 and a camber surface having no curvature are contemplated and within the scope of the present invention, different flight characteristics result depending upon which camber surface is used. The positive lower camber surface 26 is the preferred embodiment of the present invention for the reason that a negative lower camber surface produces less lift than a positive lower camber surface. A camber surface with no curvature reacts more like a positive camber than a negative camber [column 3, lines 57 through column 4, line 4; emphasis added].
The phrase "camber surface" as used by the appellant thus does not require or even imply any particular curvature; indeed, in the appellant's own words, it is possible to have "a camber surface having no curvature."
It may be that the appellant would have us limit this understanding of the breadth of the phrase "camber surface" to its use in connection with the lower surface, which the appellant explicitly discloses to be, in one embodiment, uncurved, while understanding other uses to require curvature. Claims subject to reexamination are to be given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not to be read into the claims. See In re Etter, supra; In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed.Cir.1984). To read the different uses of the phrase "camber surface" to have different meanings would require us to read limitations from the specifications into the claim language, contrary to the explicit direction of our court of review. This we are not willing to do.
The appellant also comments at page 29 of the main brief that, "Wetherill was before the Patent Office in the first and second reexamination proceedings ... and was not found to support an anticipation rejection of the claims being reexamined for the second or third time. Smith and Ericson are no more anticipatory of claims being reexamined than is Wetherill." Wetherill, of course, is not relied on in the present reexamination in support of any rejection; the claims which it anticipates have been canceled as a result of the decision of the Federal Circuit mentioned in the BACKGROUND section of this decision. That Wetherill is not anticipatory of claims 4, 11, 15 and 21 is, moreover, beside the point. The appellant would seemingly have us believe that Smith and Ericson simply duplicate that which is taught by Wetherill, pointing to a conclusion that if Wetherill does not anticipate 4, 11, 15 and 21, then neither does Smith or Ericson. The argument is obviously flawed: neither Smith nor Ericson is a duplicate of Wetherill. Each discloses a ring having an uncurved bottom surface, an element required by claims 4, 11, 15 and 21 but lacking in Wetherill.
*10 The appellant also asserts that the Smith device and the Ericson device do not rely on aerodynamic lift and cannot, therefore, be said to anticipate an airfoil (main brief, pages 30-31). According to the appellant:
Airfoil is not so broad a term as to include rings, at least to a person of ordinary skill. As understood by those of ordinary skill in the art it is used in conjunction with beam type airfoils, i.e., wings. (See affidavit of Donald Kennedy, attachment G, Appellant's Brief, paragraph 7.) ... [It was o]nly after Appellant's use of a recognized airfoil structure in connection with an annular ring that the term "airfoil" was associated with an annular ring [reply brief, pages 4-5].
Reliance on paragraph 7 of the Kennedy affidavit (attachment G to the main brief) appears misplaced. Nothing therein indicates that the term "airfoil" was limited in applicability to so-called beam type airfoils.
In rejecting a similar argument as to why the Wetherill reference assertedly did not constitute an airfoil within the definition provided in the Rodgers' specification (quoted in the BACKGROUND section above), the board panel which decided the appeal in the first reexamination proceeding stated:
Wetherill's quoit is a device designed for travel through the air; it is provided with a curved upper surface and a curved lower surface for interaction with the body of air; and will create some degree of lift depending on the angle of attack with which it is thrown. Appellant's own definition does not specify any particular degree of lift nor does it mention flight capability [decision mailed January 29, 1985, pages 6-7; footnote omitted].
In affirming the Board's decision on anticipation with respect to claims 1, 3 and 5, the Court pointed out that the board had rejected the appellant's arguments that language in the specification limited the scope of the claim language and stated: "The board made no error in rejecting those contentions. Rodgers cannot point out any limitations on the relationships among weight, lift, drag, or other properties of the claimed device that must be read into the claims" (decision mailed April 16, 1986).
While the rings of Smith and Ericson include flat portions on their upper and lower surfaces, we do not think that makes them any less capable of being considered airfoils, or of generating lift, particularly since the appellant himself has disclosed a ring having a flat surface which he nevertheless considers to be an airfoil. Moreover, were the term "airfoil" as used in the specification to be read into the claim language, claims 4 and 15 through 22 would be internally inconsistent since they would simultaneously require that the bottom surface of the aerial device or airfoil body be both curved and flat. We simply will not read such a limitation into the claims.
The rejections under 35 USC 103
We shall also sustain the examiner's rejections of claims 2, 4, 6, 7, 9, 14 through 17, 19 and 21 through 24 under 35 USC 103 as unpatentable over the prior art, specifically:
*11 (i) claims 2, 4, 6, 7, 9, 11, 15, 16, 17, 19, 21, 23 and 24 over Senior in view of Herrick;
(ii) claims 2, 4, 6, 7, 9, 15, 16, 17, 19, 23 and 24 over Senior in view of either Jordanoff or Morcom;
(iii) claims 4, 6, 7, 9, 11, 15, 16, 17, 19 and 21 over Senior in view of any one of Briggs, Cowley or Williams;
(iv) claims 4, 6, 7, 9, 15, 16, 17 and 19 over Senior in view of any one of Knox, Faxon, Stevens or Liston;
(v) claims 4, 11, 15 and 21 over Senior in view of any one of English, Liston, Smith, Ericson or Headrick;
(vi) claims 7, 15 and 17 over Senior in view of any one of Herrick, Jordanoff, Morcom, Briggs, Knox, Faxon, Stevens, Liston, Smith, Ericson or Headrick, in further view of Johnson; and,
(vii) claims 14 and 22 over Senior in view of any one of Herrick, Jordanoff, Morcom, Briggs, Knox, Faxon, Stevens, Liston, Smith, Ericson or Headrick, in further view of Linenfelser or LeBaron.
Because the appellant's contentions with respect to each of these rejections is basically the same, we shall direct our attention to the rejection based on the teachings of Senior and Herrick and the arguments raised in connection with that rejection, with the understanding that similar observations are applicable to all of the other rejections as well. Although providing a series of brief paragraphs denominating the claims involved in each of the § 103 rejections advanced by the examiner and tersely criticizing those rejections, the appellant does not address the specific subject matter which makes the devices of claims 2, 4, 6, 7, 9, 14 through 17, 19 and 21 through 24 different from one another (or, for that matter, from the aerial device defined in canceled claim 1, in much the same manner as is true for the rejections under § 102). Instead, the appellant simply contends that the references are not combinable with one another. We shall focus our attention accordingly.
We find that Senior discloses a variety of different forms of ring projectiles 4 [FN12], principally illustrated in figures 1, 3, 4 and 5, each of which is capable of being thrown by a throwing stick. The throwing stick takes the form of a rod 1 having a handle 2 and a projectile support 3 (figures 1 and 2). The ring projectiles, which have "an outside diameter of, say, rather less than a foot and an inside diameter of, say six to eight inches" and are "about an eighth of an inch" in thickness, may be made of a variety of materials, including rubber, 3-ply wood, papier mache, linoleum, sponge rubber and woven wire (page 2, left column, lines 47-54 and right column, lines 101-105).
The manner of receiving the ring projectiles on the throwing stick and hurling the projectiles is described by Senior as follows:
In operation, the throwing stick is held by the handle 2 in the right hand more or less horizontally with the projectile support 3 to the right, and the ring projectile 4 is threaded onto the rod 1, drawn to the right and arranged with the part nearest the handle passing under the rod and over the projectile support as shown in Fig. 1. From this position the ring projectile 4 may be projected with great skill and accuracy in a variety of ways. For example, by an ordinary right handed round arm swing of the stick the ring projectile may be projected a great distance in the direction to which the stick points at the termination of the swing.
*12 It will be seen that the projectile support 3 acts as a support and guide, for the ring projectile 4 during the initial part of the movement, and does not constitute a means for restraining said projectile until the swing of the rod has attained its full effectiveness [page 2, left column, line 54 et seq.].
We understand this to mean that the user will hold the stick and ring, assembled as in figure 1, such that both are substantially horizontal and swing his arm in a horizontal plane ("round arm swing") to a stopping position, during the course of which swing or at its termination the ring will leave the stick.
Two of Senior's projectiles are provided with holes (figures 1 and 3), while another has a slot (figure 4) and another is unapertured except for the central hole which gives it its annular ring form (figure 5). The projectiles are curved on one side and flat on the other (figures 6 and 7).
A comparison of the ring projectile illustrated in figure 5 of Senior with that recited in the appellant's canceled claim 1 (from which the other rejected claims have been left undifferentiated by the appellant) leads us to conclude that the Senior projectile lacks only the location of its lower camber surface "below a reference chord line extending across ... [the] cross-section [of the airfoil] from ... [the] outer circumferential edge to ... [the] inner circumferential edge." As the examiner has found, this ring of Senior in all other ways corresponds to that which is recited in the appellant's claim 1. Certainly, its curved upper surface and flat lower surface joined with one another at inner and outer edges produces an airfoil having "a uniform cross-section throughout" which, in our view, necessarily rotates when thrown in the manner taught by Senior and which is, in any event, capable of rotating.
Herrick discloses:
an aerofoil profile of form symmetrical about the line perpendicular to the middle of the chord and having, notwithstanding its symmetrical form, a high aerodynamic efficiency, the profile being thereby adapted to use in certain types of aerofoils and planes and as a rotating profile for either lift, traction or windmill purposes [column 1, lines 16 et seq.].
As an example, Herrick illustrates in figure 2 an airfoil profile having a curved upper camber surface and a curved lower surface having a very slight positive camber located entirely below a chord line APB.
In our view, the worker having ordinary skill in the art would have found in that part of Herrick's disclosure quoted above ample motivation, if not express suggestion, to construct the cross section of the ring projectile of Senior in the manner taught by Herrick to take advantage of the benefits of Herrick's highly efficient airfoil. In reaching this determination, we have taken into account not only the teachings of the references but also the appellant's arguments and the supporting affidavits upon which the appellant has relied. For the reasons discussed infra, we nevertheless conclude that the claimed subject matter would have been obvious to one having ordinary skill in the art.
*13 According to the appellant, Senior's ring projectile is "thrown" and does not fly in any aerodynamic sense (main brief, page 10). Throwing of the projectile imparted by the stick does not impart spin to the ring projectile, in the appellant's view (main brief, page 11). In this regard, it appears to us that the appellant is reading the disclosure at page 2, right column, lines 76- 92 to mean that only those projectiles provided with holes will spin. That disclosure of Senior states in most pertinent part:
The ring projectile 4 preferably has a number of holes 4a bored through it over a part of its circumference as shown in Figs. 1 and 3 so that it is caused to spin about its axis as it passes through the air.
The portions of the affidavit of Donald A. Kennedy (main brief, exhibit G, paragraphs 5 and 6) to which the appellant has directed our attention echo the appellant's contention that, "The throwing of the projectile imparted by the rod does not impart spin to the ring projectile" (main brief, page 11). [FN13] This statement, however, appears to be wholly based upon opinion rather than upon any tests performed by the affiant, despite the relative ease with which tests could be performed given Senior's relatively detailed instructions concerning the size and materials useable for the ring projectile. We note that the disclosure of Senior does not state that rings lacking the holes 4a will not spin. We think that one having ordinary skill in the art would expect that all forms of Senior's ring projectiles, in leaving the support provided by the throwing stick, would necessarily be caused to spin by virtue of the simultaneous angular and longitudinal movement of the ring during swing of the stick to its stopping position.
The portion of the affidavit of Joseph V. Colaianni (main brief, exhibit H) dealing with matters of obviousness of the appellant's claimed subject matter and what a person of ordinary skill in the art would understand from Senior is an expression of the affiant's opinion. Although Mr. Colaianni's credentials as a patent expert are not open to question, there is nothing in his affidavit which establishes any expertise in the relevant art so as to render competent his opinions as to what one of ordinary skill in the art would know or do. The affidavit is, therefore, of no probative value on the question of obviousness. Moreover, for the reasons previously expressed, we disagree with the implications contained in Mr. Colaianni's affidavit that a ring such as that shown in figure 5 of Senior would neither spin when hurled as instructed by Senior nor be operable as disclosed.
According to the appellant, the examiner is "trying to substitute the Senior patent for Wetherill, both of which are structurally the same" (main brief, page 14). We reiterate that Wetherill is not relied upon in the rejection of the claims before us and whether or not Wetherill and Senior resemble one another is beside the point. On its face, it is not accurate to state that they are the same, given the evident differences in cross-sectional profiles and the materials from which the quoits of Wetherill and the rings of Senior are to be made.
*14 In his arguments, the appellant moves to a discussion of the secondary references under a heading (main brief, page 15) which questions:
Are the secondary references used in combination with the Senior patent to reject the appealed claims, which were cited for certain propositions by the Requestor in the first and second reexaminations and utilized in rejecting certain claims in the first and second reexaminations, cited for any new and different proposition not previously recognized?
Herrick, according to the appellant, simply discloses a beam-type airfoil (main brief, pages 15-16). Although the Herrick patent upon which the examiner relies in his rejection was cited for the first time during the course of the present reexamination proceeding, the appellant is of the view that, "The Herrick reference was cited in the second reexamination (Exhibit E, item 41)" (main brief, page 15). In fact, what was cited in the second proceeding was an article by Herrick having at least one figure resembling a figure of the Herrick patent.
We know of nothing which requires that references relied upon in a second or further reexamination proceeding must be "cited for any new and different proposition not previously recognized." Moreover, the teachings of Senior and Herrick upon which the examiner now relies are not the same as the teachings provided by, for example, Wetherill and any of the other references relied upon in the earlier reexamination proceedings, as should be evident from a simple comparison.
With particular regard to the rejection based upon the combined teachings of Senior and Herrick, the appellant has argued that:
The combination of Senior and Herrick is indistinguishable from the combination of Wetherill and Herrick proposed by the requestor in the second reexamination. The combination would not result for reasons discussed in detail for the Kerr[ [FN14]] and other references in the decision of the Board of Appeals in the second reexamination (Exhibit F, p. 13). Herrick is a beam type airfoil and it would not be obvious to continue [sic, combine?] with a ring-like aerial device. (III.B. below)[ [FN15] ] [main brief, page 27].
As indicated previously, the teachings of Wetherill are not at issue here but even if they were, the combination of Senior and the Herrick patent upon which the examiner is now relying is readily distinguishable from the combination of Wetherill and the Herrick publication. Again we direct attention to the differences in airfoil cross-section, materials and size of Wetherill's quoit vis-a-vis those of Senior's ring. The appellant's reliance upon our decision in the preceding case, which involved the obviousness of modifying Wetherill's weighted rubber quoit approximating in weight an iron quoit of the same size with the teachings of an airfoil, is misplaced where, as here, the primary reference Senior discloses a ring of lightweight material having an airfoil profile. For the reasons noted previously, we think there is ample motivation in Herrick to modify Senior.
*15 We recognize that not each of the secondary references provides the identical motivation for modifying Senior which we find present in Herrick. Nevertheless, we believe that ample motivation is present in the disclosures of these references relating to the express or implied merits of the airfoil sections shown therein to justify modifying the airfoil section of Senior following the teachings of the secondary references. We have given careful consideration, as well, to the appellant's contention that the rejection relying upon Jordanoff as the secondary reference is one based upon hindsight. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. So long as that reconstruction takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from the appellant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
SUMMARY
In summary:
The examiner's rejection of claim 21 under 35 USC 112, first paragraph, as based on a lack of written description for the subject matter claimed therein, is affirmed. The examiner's rejections of claims 15 through 22 under 35 USC 112, first and second paragraphs, are otherwise reversed. Because of the changed thrust, our affirmance is denominated a new ground of rejection.
The examiner's rejections of claims 4, 11, 15 and 21 under 35 USC 102(b) as anticipated are affirmed.
The examiner's rejections of claims 2, 4, 6, 7, 9, 11, 14 through 17, 19 and 21 through 24 under 35 USC 103 as unpatentable are affirmed.
A rejection of each claim before us in this reexamination proceeding having been affirmed, the decision of the examiner is affirmed.
Further proceedings in this case may be taken in accordance with 35 USC 141 to 145 and 306, and 37 CFR 1.301 to 1.304. Note also 37 CFR 1.197(b). If the patent owner fails to continue prosecution, the reexamination proceeding will be terminated, and a certificate under 35 USC 307 and 37 CFR 1.570 will be issued canceling the patent claims whose rejection we have affirmed.
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 CFR 1.197). Should appellant elect to have further prosecution before the examiner in response to the new rejection under 37 CFR 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 two months from the date of this decision.
*16 No time period for taking any subsequent action in connection 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).
AFFIRMED; 37 CFR 1.196(b)
Saul I. Serota
Chairman
Robert F. Stahl
Harrison E. McCandlish
Examiner-in-Chief
Bruce H. Stoner, Jr
Examiner-in-Chief
FN1. The three member panel which heard the oral argument consisted of Examiners-in-Chief McCandlish, Pendegrass and Stoner. Chairman Serota, Vice-Chairman Calvert, and Examiners-in-Chief Stahl and Staab were added to this panel for purposes of rendering the decision concerning the rejection of claims 15 through 22, added in an earlier reexamination proceeding, under 35 USC 112. Legal support for adding additional members to the original panel, without necessity for reargument, can be found in In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985).
FN2. U.S. Patent No. 248,901, November 1, 1881.
FN3. But for the fact that this is a reexamination proceeding, all those claims which depend, directly or indirectly, from claim 1 would have been subject to a rejection under the second paragraph of 35 USC 112 as depending from a canceled parent claim.
FN4. The appellant contended, inter alia, that claims 15 through 24 were not subject to rejection under 35 USC 112, second paragraph, due to the provisions of 37 CFR 1.552(b) and (c), as a result of having been added during the prosecution of the first reexamination and determined to be patentable in that proceeding. Because that panel did not consider claims 15 through 24 indefinite, it did not reach the appellant's contention.
FN5. Although defining the airfoil in terms of a device having curved upper and lower surfaces, other disclosure in the Rodgers' patent indicates that the inventor contemplated the possibility that at least the bottom surface may be flat (column 3, lines 57-67).
FN6. The answer mistakenly lists this reference as patent number 943,991, a patent entitled "Apparatus for molding hollow concrete walls" granted to one William E. Nelson on Dec. 21, 1909.
FN7. We omit reference to added claims 23 and 24 simply because no rejection under 35 USC 112 has been advanced thereagainst in the present proceeding.
FN8. Indeed, there appears to be nothing in the statutory scheme which would prevent reexamination of even original patent claims for compliance with 35 USC 112. See Bowles Fluidics Corp. v. Mossinghoff, 620 F.Supp. 1297, 228 USPQ 512 (D.D.C.1985). 35 USC 305 provides that "reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133 of this title."
FN9. We do not consider this decision to be inconsistent with the result reached in Ex parte Alpha Industries Inc., 22 USPQ2d 1851 (PTO Bd.Pat.App. & Intf.1992). In that case, an expanded panel of this board held that a reissue application filed more than two years after the grant of a patent cannot enlarge the scope of claims incorporated in the patent by a reexamination certificate. We do not think that the language therein indicating that the claims of the reexamination certificate "replace the claims of the original patent" means that the claims of the reexamination certificate somehow become transformed into claims which were part of the patent as granted.
FN10. The test for compliance with the enablement requirement in the first paragraph of 35 USC 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Moore, 439 F.2d 1232; 169 USPQ 236 (CCPA1971). See also In re Scarborough, 500 F.2d 560, 182 USPQ 298 (CCPA1974).
FN11. As stated in In re Bowen, 492 F.2d 859, 181 USPQ 48 (CCPA1974), the description requirement of 35 USC 112, first paragraph, "is that the invention claimed be described in the specification as filed." It is not necessary that the claimed subject matter be described identically, but the disclosure originally filed must convey to those skilled in the art that the applicant had invented the subject matter later claimed. See In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed.Cir.1984).
FN12. Although a reference numeral 5 appears in figure 5, no mention is made of that numeral in the text of Senior, which invariably refers to the various forms of ring projectiles by the numeral 4; see particularly page 2, left column, lines 47-48.
FN13. The Kennedy affidavit supports the statements that there are "no aerodynamic claims in the Senior patent that the bottom surface is below the chord line" and that, "As shown in Fig. 6, the chord line is on and not below the reference chord line, as required by the Rogers' [sic, Rodgers'] patent and as the Examiner found" (main brief, page 11). Neither, however, has any bearing upon the obviousness issue here.
FN14. U.S. Patent No. 3,312,472, issued April 4, 1967.
FN15. This cryptic reference to "III.B. below" appears to direct attention to the immediately following paragraph in the main brief wherein the rejection based on Senior and Jordanoff is argued in a manner virtually identical with that for Senior and Herrick. Adding nothing, it requires no further discussion.
CONCURRING-IN-PART AND DISSENTING-IN-PART OPINION
Ian A. Calvert
Vice-Chairman
V.R. Pendegrass and L.J. Staab
Examiners-in Chief
*17 While we fully concur in the majority's affirmance of the rejections of claims 4, 11, 15 and 21 under 35 USC § 102(b) and the rejections of claims 2, 4, 6, 7, 9, 11, 14 through 17, 19 and 21 through 24 under 35 USC § 103, we concur only in the result as to the reversal of claims 15 through 20 and 22 under 35 USC § 112, first and second paragraphs and the reversal of the rejection of claim 21 under 35 USC § 112, second paragraph. We dissent with respect to the affirmance of the rejection of claim 21 under 35 USC § 112, first paragraph.
In our opinion, the rejections of claims 15 through 22 under 35 USC § 112, first and second paragraphs, are not within the scope of a reexamination proceeding and we would reverse such rejections solely on the basis that the rejections are not within the scope of this reexamination proceeding.
Our disagreement with the majority is in their holding that allowed claims of a reexamination certificate do not enjoy the status of original patent claims with respect to proceedings in a subsequent reexamination proceeding.
When a reexamination certificate issues, the allowed claims of that certificate become the patent claims. 37 CFR § 1.552(a) sets forth:
(a) Patent claims will be examined on the basis of patents or printed publications.
The majority relies on the language of 37 CFR § 1.552(b) which sets forth:
(b) Amended or new claims presented during a reexamination proceeding must not enlarge the scope of the claims of a patent and will be examined on the basis of patents or printed publications and also for compliance with the requirements of 35 U.S.C. § 112 and the new matter prohibition of 35 U.S.C. § 132.
Since new or amended claims allowed in a reexamination certificate were claims presented in a reexamination proceeding, the majority holds that such claims may be subject to rejections under 35 USC § 112 in subsequent reexamination proceedings despite the fact that those claims are patent claims in such subsequent reexamination proceedings. That is, the majority does not accord allowed claims of a reexamination certificate the status of patent claims as set forth in 37 CFR § 1.552(a).
It seems clear to us that the Congressional intent in passing the reexamination statutes was to limit the scope of examination of reexamination applications. The possibility of multiple sequential reexamination applications of the type presented by the patent owner of the instant patent under reexamination does not appear to have been contemplated by Congress or the Commissioner in formulating rules consistent with the reexamination statutes. However, consistent with the Congressional intent to limit the scope of examination of reexamination applications, we are of the opinion that 37 CFR § 1.552(b) should be interpreted in such manner as to treat only new or amended claims of the current reexamination application as being subject to consideration under 35 USC § 112 and that claims allowed in a previous reexamination certificate should be accorded the status of patent claims in a later filed reexamination application.
*18 Accordingly, we would reverse the rejection of claims 15 through 22 under 35 USC § 112, first and second paragraphs, solely on the basis that the rejection is not within the scope of this reexamination proceeding.
<< Return to Board of Patent Appeals and Interferences Index