Ex Parte Takahashi - Page 4




              Appeal No. 2004-0967                                                                  Page 4                
              Application No. 10/145,031                                                                                  


              § 2163(I)(B)), and it is our view that one of ordinary skill in the art would have                          
              understood the meaning of these terms from the description of the invention found in                        
              the specification.  From the explanation beginning on page 9 it is clear that, with respect                 
              to the embodiment shown in Figures 2-4, spring 12 must be so designed as not to                             
              compress when the board that is pulled by the device has been uncoupled from the                            
              connectors, but to compress if the board that is pulled remains coupled to the                              
              connectors, thus providing an indication of the existence of the coupled condition.  With                   
              regard to the embodiment shown in Figure 7, it is the tensile strength that is oriented to                  
              achieve the same results.  In describing these phenomena, the terms used in the                             
              specification are “force” and “stiffness” (see, for example, page 9, line 22 et seq.), and                  
              we note here that the common applicable definition of “force” is “strength or energy                        
              exerted or brought to bear” and, with regard to mechanisms, “stiffness” is “impeded in                      
              movement.”2                                                                                                 
                     From our perspective, one of ordinary skill in the art would have understood from                    
              the specification that the “compression stiffness” and “tensile stiffness” recited in the                   
              claims describes the level of force that must be applied to the elastic body to overcome                    
              its design strength in compression or tension, that is, its impediment or resistance to                     
              movement.  This being the case, the disputed phrases are supported by the disclosure                        
              as originally filed, and the claims comply with the first paragraph of Section 112.                         

                     2See, for example, Webster’s New Collegiate Dictionary, 1973, pages 449 and 1142.                    







Page:  Previous  1  2  3  4  5  6  Next 

Last modified: November 3, 2007