Ex Parte POERSCHMANN - Page 5

             Appeal No. 2000-0510                                                                                   
             Application No. 08/792,966                                                                             

             gear drive housings 71 in relation to the axle 1 is of such a nature that the existence or details     
             of any connection between the gear drive housings and the axle cannot be ascertained from the          
                    In light of the foregoing, we conclude that one of ordinary skill in the art would not be       
             able to determine the meaning of "nonpositively" as used in claim 1 and, thus, would not be            
             able to ascertain the metes and bounds of the claimed invention.  Moreover, we share the               
             examiner's opinion (answer, page 7) that the appellant's arguments on page 3 of the brief fail         
             to provide a clarification of the claim terminology "joined nonpositively" and "mounted                
             nonpositively."  The fact that the priority document uses the German word "Kraftschlussig,"            
             which, according to the appellant, translates as "frictionally interconnected, tensionally force       
             locked, nonpositively," sheds no light on the interpretation of "nonpositively" as used in the         
             appellant's specification and claims.  Specifically, a claim under 35 U.S.C.  119 for priority        
             of an earlier application filed in a foreign country is not alone an express or implied                
             incorporation-by-reference of the priority application3 and does not imply that the application        
             in which the priority claim is made is a true translation of the priority application.4  Moreover,     

                    3 See Ex parte Bondiou, 132 USPQ 356, 358 (Bd. Pat. App. 1961)(a claim to a foreign application under
             35 U.S.C.  119 does not per se permit the introduction of subject matter from the foreign application into the
             application containing such claim).                                                                    
                    4 Section 119 does not require that an application be a true translation of the foreign application for which
             priority is claimed, or that an application include all (or even a substantial portion) of the subject matter of the
             foreign application for which priority is claimed.  Section 119 simply provides, subject to the satisfaction of the
             conditions set forth therein, the benefit of the filing date of such foreign application as to the subject matter
             disclosed, in the manner provided by the first paragraph of section 112, in such foreign application.  

Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007