Ex parte Albrecht
Appeal 2009011896; Appl. No. 10/885,980; Tech. Center 3600
Decided January 28, 2011
The claim at issue read:
27. Apparatus for providing a controlled flow of fluid from a first fluid component to a second fluid component, comprising:
a one-piece orifice plate ... the orifice has a general1y circular shape and a substantially constant diameter ...
The Examiner rejected the emphasized limitation under written description, enablement, and indefiniteness. In the Appeal Brief, the Applicant argued that the written description rejection was flawed because the specification had been amended to provided explicit support for the limitation. The Applicant argued against the enablement requirement by pointing to the drawings, and argued the indefiniteness rejection by explaining that the terms were meant to allow for minor deviations from a perfect shape.
In the Answer, the Examiner asserted that the written description rejection was proper because the amendment to the specification wasn't entered. In regard to the enablement requirement, the Examiner indicated that
While the Figures may show a circular opening, for example, the disclosure does not define "generally" or a "substantially constant diameter." These limitations imply a range. But the specification is silent as to what that range might comprise, especially since the Figures are not stated as being to scale.
The Examiner provided a similar explanation for the indefiniteness rejection:
As noted above, the Figures are not disclosed as being to scale. Thus it is unclear what ranges would include the "minor deviations" Appellant is accounting for.
The Board essentially found that the Examiner had confused written description and enablement with indefiniteness.
The Examiner states that “the terms ‘generally’ and ‘substantially’ are not defined.” Ans. 7 (discussing new matter objection). While we agree that Figures 7A and 7B fail to provide any indication of any specific range or scope for these terms of degree, the Examiner’s concern is an issue of claim definiteness, and is not a matter of written description, new matter, or enablement.
The Board found that the specification and figures showed the Applicant had possession of the limitation "the orifice has generally circular shape and a substantially constant diameter" and therefore reversed the written description rejection. The Board also found that the Examiner had not explained why a POSITA could not make and use this feature, and so reversed the enablement rejection.
The Board reversed the indefiniteness rejection too, with the following explanation:
As to the claim limitations calling for the orifice to have “generally circular shape” and a “substantially constant diameter”, we find the terms “generally” and “substantially” as used in the context of Appellants’ Specification and Figures to take on their ordinary and customary meanings which denote approximation. See Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1366 (Fed. Cir. 2001). As such, the orifice has to have for the most part a circular shape and a largely or approximately constant diameter. See App. Br. 10 (Appellant stating that “generally” is used to encompass “minor deviations from a pure circular shape” and arguing that “substantially” is used to encompass “insignificant deviations from a pure circular shape”).
As such, we find that the use of the term “generally” to modify the phrase “circular shape” and the use of the term “substantially” to modify the phrase “constant diameter” do not render these phrases so unclear such that there is no means by which to ascertain the claim scope.
My two cents: I'm glad the Board untangled the confusion in the written description and enablement rejections. In a lot of the file histories I read, Examiners and Applicants alike are guilty of mixing up new matter, written description, enablement and indefiniteness.