Ex Parte Bloom

Board of Patent Appeals and Interferences

Jul 15, 2003

09750088 (B.P.A.I. Jul. 15, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte BARRY IRVING BLOOM

Appeal No. 2003-0697
Application 08/750,088

ON BRIEF

Before GARRIS, DELMENDO, and POTEATE, Administrative Patent
Judges.
PER CURIAM
DECISION ON APPEAL
This is a decision on an appeal from the final
rejection of claims 1-8, which are all of the claims in the
application.
Appeal No. 2003-0697
Application 09/750,088
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The subject matter on appeal relates to air or a
combination of air, liquids and solids which have been passed
through a microwave active space. This appealed subject matter
is adequately illustrated by independent claim 1, which reads as
follows:
1. Air propelled through a microwave active space,
said space encased in a microwave compatible material in the
machine described willdisinfect [sic] the air.
The reference set forth below is relied upon by the
examiner in the § 102 and § 103 rejections before us:
Condit et al. (Condit) 5,938,823 Aug. 17, 1999
All of the appealed claims stand rejected under the
second paragraph of 35 U.S.C. § 112 for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as his invention.
All of the appealed claims also stand rejected under
35 U.S.C. § 102(b) as being anticipated by, or alternatively
under, 35 U.S.C. § 103(a) as being obvious over Condit.
Rather than reiterate the respective positions
advocated by the appellant and by the examiner concerning the
Appeal No. 2003-0697
Application 09/750,088
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above-noted rejections, we refer to the Brief and to the Answer
for a complete exposition thereof.
OPINION
For the reasons which follow, we will not sustain the
examiner’s § 112, second paragraph, rejection of claims 1-8, but
we will sustain the examiner’s § 102 and § 103 rejections of
claims 1-8.
On page 4 of the Answer, the examiner describes his
position regarding the § 112, second paragraph, rejection with
the following language:
Claims 1-8 are narrative in form and replete
with indefinite and functional or operational
language. It is not even clear whether
appellant is reciting a method or apparatus.
The claims appear to merely recite air or any
combination of air, liquid, and solids
passing through a microwave active space
enclosed in a microwave compatible material.
The structure which goes to make up the
device must be clearly and positively
specified. All the appealed claims recite
“the machine described” and therefore appear
to be omnibus claims. Such claims are
indefinte [sic] because they fail to point
out what is included or excluded by the claim
language.
Appeal No. 2003-0697
Application 09/750,088
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The inquiry under the second paragraph of § 112 is
to determine whether the claims set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of the language
employed must be analyzed, not in a vacuum but, always in light
of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
In so analyzing the language of the appealed claims, we
find that the area or subject matter defined by these claims has
been set out and circumscribed with a reasonable degree of
precision and particularity. Specifically, we agree with the
examiner’s aforequoted acknowledgment that “[t]he claims appear
to merely recite air or any combination of air, liquid, and
solids passing through a microwave active space enclosed in a
microwave compatible material.”
This analysis or interpretation of the appealed claims
is consistent with the literal wording or language of these
claims. Further, this claim interpretation is reasonable and
Appeal No. 2003-0697
Application 09/750,088
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consistent with the appellant’s specification disclosure. See In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Finally, it is significant that the appellant has not
disagreed with this claim interpretation on the record before us.
In light of the foregoing, it is our determination that
the claims on appeal comply with the second paragraph of § 112 by
particularly pointing out and distinctly claiming the subject
matter which appellant regards as his invention. This subject
matter includes air or a combination of air, liquids and solids
propelled or passed through a microwave active space as recited
in these claims. It follows that we cannot sustain the
examiner’s § 112, second paragraph, rejection of claims 1-8.
We reach a different conclusion with respect to the
§ 102 and § 103 rejections of claims 1-8 over Condit. As
correctly explained by the examiner in the Answer, a microwave
active space is included in the apparatus and process of Condit.
As a consequence, the air as well as airborne liquids and solids
which are passed through this apparatus are treated in such a
manner as to sterilize and/or disinfect microorganisms contained
in the air, liquids and/or solids. In this way, the air as well
Appeal No. 2003-0697
Application 09/750,088
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as airborne liquids and solids carried thereby are caused to be
disinfected, filtered, purified and/or sterilized. In these
respects, see Condit’s teachings at, for example, lines 13-33 in
column 1, the paragraph bridging columns 1 and 2, the paragraph
bridging columns 2 and 3, as well as lines 37-48 in column 4.
Under the circumstances recounted above, the here-
claimed products of air or a combination of air, liquids and
solids appear to be indistinguishable from the corresponding
products yielded by the process and apparatus of Condit. It is
appropriate to here emphasize that, even though the appealed
claims are product-by-process claims (i.e., the claims define the
aforementioned products via the process by which they are made),
the determination of patentability is based on the product
itself. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985). That is, if the product in a product-by-process
claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made
by a different process. Id. Here, the process by which the
appellant’s claimed products are made appears to be the same as
the process by which Condit’s air and other products are made.
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Application 09/750,088
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Nevertheless, even if these processes were different, the
appealed claims would remain unpatentable since the products
defined thereby are indistinguishable from those of Condit. Id.
It is the appellant’s fundamental argument that the
prior art rejections based on Condit are improper because it is
the appellant rather than Condit who is the true inventor of the
subject matter defined by the appealed claims and disclosed in
the Condit patent. However, the record of this appeal does not
contain adequate probative evidence in support of this argument.
We are constrained, therefore, to regard the appellant’s argument
as unpersuasive.
For the reasons set forth above and in the Answer, we
hereby sustain the examiner’s § 102 and § 103 rejections of
claims 1-8 based on Condit.
The decision of the examiner is affirmed.
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Application 09/750,088
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No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
BRG:psb
Appeal No. 2003-0697
Application 09/750,088
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Dr. Barry I. Bloom
Columbus Circle Station
P.O. Box 20796
New York, NY 10023