Interference No. 103,830
application or patent in which it appears." The above rule was upheld in Rowe v. Dror, 112 F.3d
473, 479 n.2, 42 USPQ2d 1550, 1554 n.2 (Fed. Cir. 1997).
We are of the opinion that Hutmacher does not support its claim 23 as required by
35 U.S.C. § 112, first paragraph, when read in light of its specification. At page 15, lines 1 and 2
of its brief, Hutmacher admits that the pursued vehicle of its disclosure is not an element of claim
23. We agree with this admission because the pursued vehicle is disclosed by Hutmacher as the
disabled device, not a part of the vehicle disabling device. The only other structure of
Hutmacher’s disclosure that could possibly be the positioning means of the claimed vehicle
disabling device is the ground or driving surface, and/or a support thereon or therein, over which
the pursued vehicle is traveling, and on or in which vehicle disabling apparatus is fixed.
However, none of the above road structure acts to provide the function of “placing the vehicle
disabling device under the pursued vehicle." The ground or driving surface and any support
associated therewith, are completely static or passive, such that they cannot place anything
anywhere. We do not regard it reasonable to construe "a positioning means for
placing . . ." as covering devices which simply hold the vehicle disabling device stationary in the
road. Putting the disabling device in the road and hoping that the pursued vehicle will itself
come over the top of the device is not the same as placing the disabling device under the pursued
vehicle. The vehicle may never be positioned over the device.
The public would not be well-served if Hutmacher were granted claim 23 to an invention
he did not make. Nor would the public be well-served by granting Hutmacher a patent with
claim 23, intended by Hutmache r to define something other than what it truly says in plain
English, and the veiled meaning of which the public could only ascertain by researching the
complex prosecution history of its application.
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