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
drawing.
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.
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