REVERSED

1700 Chemical & Materials Engineering
Ex Parte Cheney et al KIMLIN 103(a) BARNES & THORNBURG LLP

2100 Computer Architecture and Software
Ex Parte Hoang COURTENAY 102(e)/103(a) ADELI & TOLLEN, LLP

Conception has been defined as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice . . . . ” Townsend v. Smith, 36 F.2d 292, 295 (CCPA 1930).

Townsend v. Smith, 36 F.2d 292, 4 USPQ 269 (CCPA 1929) . . . . . . . . . . . . . . . . . . . .2138.04

Ex Parte Kimelman et al BARRETT 103(a) NIXON & VANDERHYE, PC

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Maeda LORIN 103(a) FOLEY AND LARDNER LLP

3700 Mechanical Engineering, Manufacturing, and Products & Design
Ex Parte Kondo et al STAICOVICI 103(a) FOLEY AND LARDNER LLP

Ex parte CATERPILLAR, INC. LEE 103(a) CATERPILLAR c/o LIELL, MCNEIL & HARPER

AFFIRMED-IN-PART

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Guler et al LORIN 102(b)/103(a) 101 37 C.F.R. § 41.50(b) HEWLETT-PACKARD COMPANY

Ex Parte Kaneko et al LORIN 103(a)/101 112(2) 37 C.F.R. § 41.50(b) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP

Ex Parte Terry et al STAICOVICI 102(b)/103(a) NOVAK DRUCE DELUCA + QUIGG LLP

Moreover, there is no per se rule that "double inclusion" is improper in a claim. In re Kelly, 305 F.2d 909, 916 (CCPA 1962) ("Automatic reliance upon a 'rule against double inclusion' will lead to as many unreasonable interpretations as will automatic reliance upon a 'rule allowing double inclusion'. The governing consideration is not double inclusion, but rather is what is a reasonable construction of the language of the claims.") Emphasis added.

Kelly, In re, 305 F.2d 909, 134 USPQ 397 (CCPA 1962). . . . . . . . . . . . . . . . . . . . . .2173.05(o)

Ex Parte Walker et al MEDLEY 102(b)/103(a) MARY M. LEE, P.C.

3700 Mechanical Engineering, Manufacturing, and Products & Design
Ex Parte Grischenko et al O’NEILL 103(a) GEORGIA-PACIFIC CORPORATION

As we survey the claimed subject matter we are mindful of the full import of the expression “being capable of.” The verbal phrase “being capable of” indicates in English that the preceding noun is so modified as to have the ability to perform the gerund function; but there is no requirement to perform that function. Note the following holding from In re Collier, 397 F.2d 1003, 1006 (CCPA 1968), a decision of the predecessor to our reviewing court:

The main fault we observe in claim 17 is indefiniteness in the sense that things which may be done are not required to be done.1 For example, the ferrule or connector member is crimpable but not required, structurally, to be crimped; the ground wire “means,” which we take to be a piece of wire, is for disposition under the ferrule but is not required to be disposed anywhere; it becomes displaced when the ferrule is crimped but that may never be, so far as the language of claim 17 is concerned. These cannot be regarded as structural limitations and therefore not as positive limitations in a claim directed to structure. They cannot therefore be relied on to distinguish from the prior art.

As such, the requirement for the prior art to satisfy the claimed gerund function at issue is that the prior art have a structure that has the ability to perform the function; that structure, however, is not required to perform that function. In other words, what is required is evidence that the prior art has the ability to perform the function.

1 There is no issue of indefiniteness before us. We cite Collier solely for the guidance which it provides in interpreting the claims on appeal.

Collier, In re, 397 F.2d 1003, 158 USPQ266 (CCPA 1968) . . . . . . . 2163, 2163.05, 2172.01, 2173.05(k)