Ex Parte 5,803,101 et alDownload PDFPatent Trial and Appeal BoardApr 9, 201390011332 (P.T.A.B. Apr. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/011,332 11/15/2010 5,803,101 4953/2401-US0 1407 25461 7590 04/09/2013 SMITH, GAMBRELL & RUSSELL SUITE 3100, PROMENADE II 1230 PEACHTREE STREET, N.E. ATLANTA, GA 30309-3592 EXAMINER MCKANE, ELIZABETH L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 04/09/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRAIL AND APPEAL BOARD ____________________ Ex parte CDC PRODUCTS, INC., Patent Owner and Appellant ____________________ Appeal 2013-005046 Reexamination Control 90/011,332 Patent 5,803,101 Technology Center 3900 ____________________ Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and SCOTT E. KAMHOLZ, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE CDC Products, Inc. (hereinafter “Appellant”), the real party in interest 1 of Patent 5,803,101 (hereinafter the “‟101 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner‟s decision to reject claim 4 under 35 U.S.C. 1 See Appellant‟s Appeal Brief filed April 24, 2012 (hereinafter “App. Br.”) at 3. 2 US Patent 5,399,159, issued March 21, 1995 to Chin et al. (hereinafter “Chin”). 3 Claims 1-3, 6-9 and 16-20 were cancelled and claims 4, 5, and 10-15 were confirmed in a prior reexamination proceeding 90/007,346. See Reexamination Appeal 2013-005046 Reexamination Control 90/011,332 2 § 112, first paragraph and under 35 U.S.C. § 102(b) as anticipated by Chin 2 (Final Office Action, mailed September 14, 2011, pages 2-7). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We AFFIRM. This reexamination proceeding arose from a third-party request for ex parte reexamination filed by David Leason from the law firm of Leason Ellis LLP on behalf of ComStar International Inc. (Request for Ex Parte Reexamination, transmittal, filed November 15, 2010). The ‟101 patent relates to a portable drain cleaning apparatus which is particularly useful for condensation drains associated with air conditioning and refrigeration units, and which may also be used in other plumbing applications (‟101 patent, col. 1, ll. 5-10). Claim 4, the only claim on appeal, depends from cancelled independent claim 1 3 and reads as follows (with underlining showing added text relative to the original patent claims and indentations added for clarity): 4. The drain cleaning apparatus according to claim 1, further comprising a regulating unit fluidly interposed between said pressurizing means and said release valve member, 2 US Patent 5,399,159, issued March 21, 1995 to Chin et al. (hereinafter “Chin”). 3 Claims 1-3, 6-9 and 16-20 were cancelled and claims 4, 5, and 10-15 were confirmed in a prior reexamination proceeding 90/007,346. See Reexamination Certificate US 5,803,101 C1 issued March 18, 2008. Claim 4 is interpreted as including all of the limitations of claim 1. Appeal 2013-005046 Reexamination Control 90/011,332 3 wherein the second position of said release valve member results in an opening through the release valve member greater in size than an opening in said regulating unit, said opening in said regulating unit controlling the rate of flow of pressurized fluid from said pressurizing means, said regulating unit further being spaced from said release valve member so as to define, within said passage, a fluid chamber therebetween, wherein shifting of said release valve member from said first position to said second position causes a supply of pressurized fluid, delivered into said fluid chamber from said pressurizing means through said regulating unit to exit through said opening in said release valve member and to exit the second end portion of said tubular member as a momentary burst of pressurized fluid while said opening in said regulating unit retards a flow of additional pressurized fluid from said pressurizing means into said fluid chamber. Claims App‟x, App. Br. 20-21. Cancelled claim 1 reads as follows for reference. 1. (Canceled) A portable drain cleaning apparatus comprising: a control housing adapted to be grasped by and held in a user's hand, said control housing being provided with a fluid passage therein; a release valve member disposed, at least in part, within said passage, said release valve member being movable between at least a first position wherein said release valve member prevents fluid from flowing within said passage and a second position wherein fluid is permitted to flow therein; a flexible, tubular member having first and second end portions, the first end portion of said tubular member being attached to said control housing, downstream of said release valve member, with an interior of said tubular member opening into said fluid passage; Appeal 2013-005046 Reexamination Control 90/011,332 4 a terminal discharge member provided at the second end portion of said tubular member, said terminal discharge member being adapted to be sealingly engaged with an open end of a drain conduit and including an outlet opening in fluid communication with said fluid passage through said tubular member; and means for pressurizing said fluid passage upstream of said release valve member, said pressurizing means including a miniature cartridge, sized to substantially fit in the palm of a hand, that is pre- charged with a gaseous medium, wherein placement of said terminal discharge member at the open end of a drain conduit and shifting of said release valve member from said first position to said second position causes pressurized fluid in said fluid passage to flow through said tubular member and into the drain conduit in order to clean the drain conduit. Claims App‟x, App. Br. 19-20. II. ISSUES ON APPEAL The issues on appeal are as follows: 1. Whether the Specification of the ‟101 patent provides written descriptive support under 35 U.S.C. § 112, first paragraph, for the language added to claim 4 reciting “wherein the second position of said release valve member results in an opening through the release valve member greater in size than an opening in said regulating unit”? 2. Whether Chin describes a device as recited in claim 4 having a “terminal discharge member being adapted to be sealingly engaged with an open end of a drain conduit”? III. ANALYSIS Written Descriptive Support Appellant contends that the Specification of the ‟101 patent provides written descriptive support for the recitation in claim 4 of “the second position of said release valve member results in an opening through the release valve member Appeal 2013-005046 Reexamination Control 90/011,332 5 greater in size than an opening in said regulating unit.” App. Br. 10 (citing ‟101 patent, col. 3, l. 54 to col. 4, l. 5, col. 5, ll. 13-30, and Figure 1). Appellant further contends that the only arrangement that would produce the momentary burst of gas described in the ‟101 patent and recited in claim 4 is an arrangement where the regulating unit 50 has a smaller opening than the release valve member 45 when release valve member 45 is opened. App. Br. 11; Reply Br. 5. In particular, Appellant argues that “release valve member 45 is simply an ON/OFF valve” and that Figure 1 illustrates that “release valve member 45 has a diameter at least as large as the fluid passage 43.” App. Br. 10. Further, Appellant argues that regulating unit 50 includes a regulating element that is “within fluid passage 43” and must necessarily be smaller than the fluid passage 43, and thus has a smaller opening than release valve member 45. App. Br. 11. “The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The claimed subject matter need not be described in haec verba in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, the written description requirement of § 112 requires the specification to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Appeal 2013-005046 Reexamination Control 90/011,332 6 We agree with the Examiner that there is no meaningful disclosure in the ‟101 patent to support the Appellant‟s arguments as to the relative sizes of the openings of the release valve member 45 and the regulating unit 50. The Specification only recites that the release valve member 45 is “preferably constituted by an ON/OFF valve” and is only “preferably” a “rotary valve.” ‟101 patent, col. 3, ll. 55-63. We find the only requirement of the release valve to be that when in a second position “fluid will be permitted to flow within fluid passage 43.” Id., ll. 64-65; see also col. 5, ll. 21-27. Thus, the Specification of the ‟101 patent does not disclose any particular type of valve that must be used as the release valve member 45 and, more importantly, that the valve opening has any particular relative dimension. Nor do we find that Figure 1 provides any disclosure as to the dimensions of the opening formed by the release valve member 45. Figure 1, reproduced below for convenience, provides only an exterior view of the device, and as such, the opening of the release valve member 45 disposed within the device, and not visible in Figure 1, cannot be ascertained. Appeal 2013-005046 Reexamination Control 90/011,332 7 Figure 1 depicts a partial exploded view of a drain cleaning apparatus of the present invention, including the exterior of release valve 45 and regulating unit 50. See id., col. 3, ll. 13-15. Similarly, the ‟101 patent describes that the particular type of regulating valve 50 “can vary” and “can comprise a flow regulating valve, a pressure control valve or a variable restriction.” Id., col. 4, ll. 8-14. Although the ‟101 patent describes a “regulating element (not shown) positioned within fluid passage 43” there is no indication of the opening size of the regulating element either with respect to fluid passage 43 or with respect to release valve 45. Id., col. 4, ll. 1-2. Appeal 2013-005046 Reexamination Control 90/011,332 8 Further, Appellant has provided no meaningful evidence to support the contention that the relative sizes are a requirement to achieve the described “momentary burst,” and we do not find sufficient basis in the disclosure of the ‟101 patent to support such a finding. Moreover, while the ‟101 patent refers to a “momentary burst,” it does not specify any of the physical parameters characteristic of this burst, such as flow rate or duration. See ‟101 patent, col. 5, ll. 6-10 and 22-26. A “momentary burst” would occur anytime there is a change in fluid pressure, however slight, and regardless of the relative sizes of the openings. If there is a pressure difference across a valve and the valve is opened there will be a “burst” of fluid until the pressures on both sides of the valve equalize. Accordingly, we disagree with Appellant that the disclosure of a “momentary burst” is sufficient to provide written descriptive support for the relative sizes of the release valve member opening and the regulating unit opening recited in claim 4. Thus, we affirm the Examiner‟s rejection of claim 4 as lacking sufficient written descriptive support under 35 U.S.C. § 112, first paragraph. Anticipation The Examiner rejects claim 4 as anticipated by Chin. Ans. 7-9. Appellant contends, inter alia, that Chin fails to disclose a “terminal discharge member being adapted to be sealingly engaged with an open end of a drain conduit.” App. Br. 12-15. Chin discloses a gas insufflation device used to inflate a human abdominal cavity “to provide a working space for a surgeon to examine the contents of the cavity or operate within the cavity.” Chin, col. 1, ll. 6-14. The distal end of the Appeal 2013-005046 Reexamination Control 90/011,332 9 device terminates in “a pneumoneedle or Veress needle 40 for insertion into the abdomen as shown in FIG. 1.” Id., col. 4, ll. 9-13. Figure 1 is reproduced below. Figure 1 depicts an exploded view of the hand-held insufflator and anesthesia assembly of Chin with an outlet line shown schematically inserted into a human abdomen via a Veress needle 40. Id., col. 3, ll. 15-16 and col. 4, ll. 9-13. The Examiner finds that, as with Chin, where the opening in the abdomen seals around the Veress needle 40, the “[p]lacement of the Veress needle in a suitably-sized, gasketed or otherwise sealable drain opening would still be „adapted to be sealingly engaged‟” as recited in the claim. Ans. 10. “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). “A single reference must describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002); In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). Appeal 2013-005046 Reexamination Control 90/011,332 10 We agree with the Examiner that the phrase “adapted to be sealingly engaged with an open end of a drain conduit” does not require that the reference actually teach a sealing engagement with an open end of a drain conduit, but only that the terminal discharge member, i.e. the Veress needle 40 in Chin, be capable of the recited engagement. Ans. 11. However, we agree with Appellant that the Examiner has not provided sufficient evidence that Chin‟s Veress needle 40 would have been capable of being sealingly engaged with an open drain conduit of any size, even a very small drain conduit. Regarding the Examiner‟s reasoning with respect to a “gasketed or otherwise sealable drain opening,” the Examiner has not explained how such a gasketed or sealed drain opening constitutes an “open drain conduit” with which the claim requires that the terminal discharge member be capable of being sealingly engaged. While the Examiner is correct that no particular structure has been claimed for the terminal discharge member, we find no evidence of record to support a finding that a Veress needle 40 would be a structure that is adapted to be sealingly engaged to an open drain conduit. Accordingly, we reverse the Examiner‟s rejection of claim 4 as being anticipated by Chin under 35 U.S.C. § 102(b). IV. CONCLUSION We affirm the rejection of claim 4 under 35 U.S.C. § 112, first paragraph and reverse the rejection of claim 4 under 35 U.S.C. § 102(b) as anticipated by Chin. V. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2013-005046 Reexamination Control 90/011,332 11 AFFIRMED FOR PATENT OWNER: SMITH, GAMBRELL & RUSSELL SUITE 3100, PROMENADE II 1230 PEACHTREE STREET, N.E. ATLANTA, GA 30309-3592 FOR THIRD-PARTY REQUESTER: LEASON ELLIS LLP 81 MAIN STREET SUITE 503 WHITE PLAINS, NY 10601 Copy with citationCopy as parenthetical citation