Ex Parte Bolam

Patent Trial and Appeal Board

Oct 15, 2013

10279042 (P.T.A.B. Oct. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KENNETH BOLAM
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Appeal 2011-012899
Application 10/279,042
Technology Center 3700
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Before GAY ANN SPAHN, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 9, 11, and 14 under 35 U.S.C. § 103(a) as unpatentable over Deaton
(US 6,128,918, iss. Oct. 10, 2000) and Niedospial (US 6,179,822 B1, iss.
Jan. 30, 2001). Ans. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 9 and 14 are the independent claims on appeal. Claim 9 is
illustrative of the appealed subject matter and is reproduced below:
9. A method for preparing an expandable storage container for
receiving a quantity of hyperpolarizable gas, comprising the
steps of:
forming a container cavity between a first and second
container sheet;
forming a perimetrical seal about said container cavity by
joining the overlying perimetrical edges of said first and second
container sheets together so as to define a fill port at a gap in
said perimetrical seal where said edges are not sealed;
providing a quantity of purge gas into the
hyperpolarizable gas container through said fill port;
expanding the hyperpolarized gas container cavity by
directing a quantity of purge gas therein;
collapsing the hyperpolarized gas container cavity by
removing purge gas therefrom;
filling said container cavity with a hyperpolarizable gas
mixture; and
sealing said perimetrical edges together across said fill
port so as to provide a sealed container cavity holding said
hyperpolarizable gas mixture.

1 Appellant identifies the real party in interest as “Amersham plc (now GE
Healthcare Limited, a part of General Electric Company).” Br. 1.
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ANALYSIS
The Examiner’s rejection is predicated on the finding that Niedospial
discloses the recited step of “sealing said perimetrical edges together across
said fill port” (Br., Claims App’x.), because “the edges on the perimeter of
each web of the bag . . . [go from] not touching each other . . . [to] touching
and in contact with the tube, which is in contact and touching the opposing
sidewall, thus making the sidewalls and the tube an integral artifact at that
point.” Ans. 6.
Appellant contends that a “tube through the bottom seam of the
Deaton container will prevent the perimetrical edges from being ‘sealed
together’ across the fill-port/gap as is recited in the pending claims.” Br. 7-
8. In essence, Appellant contends that a “tube . . . holding the edges apart is
in direct contravention of the claim limitation that the edges be joined
‘together.’” Id. at 8.
The Specification does not assign or suggest a particular definition to
the claim phrase “sealing . . . together” and therefore, it is appropriate to
consult a general dictionary definition of the words for guidance in
determining the ordinary and customary meaning of the claim phrase as
viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary and customary
meaning of the claim term “seal” is “to keep shut, enclosed, or confined,”
and the ordinary and customary meaning of the claim term “together” is “in
or into contact (as connection, collision, or union).” WEBSTER’S THIRD NEW
INTERNATIONAL DICTIONARY, UNABRIDGED, Merriam-Webster,
Incorporated, Copyright 1993, accessed at http://lionreference.chadwyck.
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com (last visited Oct. 4, 2013). Thus, one of ordinary skill in the art would
understand the claims to call for keeping the perimetrical edges enclosed by
maintaining contact with each other. We find nothing in the Specification
inconsistent with the ordinary and customary meanings described above. In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be
given their plain meaning unless the plain meaning is inconsistent with the
specification). Appellant’s Specification describes that “the overlying edges
[of sheet 112] are welded together so as to form a partial perimetrical seam
118” (Spec. 6, ll. 11-12) and that “[w]hile maintaining a fluid tight
engagement about inlet port 125, seam 118 is completed across passageway
130 so as to isolate cavity 120 from the outside environment” (Spec. 7, ll. 1-
3).
In light of this claim construction, Appellant’s argument that
Niedospial fails to disclose the recited step of “sealing said perimetrical
edges together across said fill port so as to provide a sealed container cavity”
is persuasive because Niedospial’s edges are never kept enclosed by being in
contact with each other at the fluid exit port or tube 14. Rather, Niedospial’s
fluid exit port or tube 14 extends between the edges of the sidewalls such
that the sidewalls are never in contact with each other at the fluid exit port or
tube 14.
Accordingly, Niedospial fails to disclose “sealing said perimetrical
edges together” across said fill port or gap in the perimetrical seal as
required by independent claims 9 or 14. See Br., Claims App’x. The
Examiner’s conclusion of obviousness is thus based on an erroneous finding
as to the scope and content of Niedospial.
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Moreover, the Examiner’s rejection acknowledged that Deaton fails to
disclose an inlet port positioned at the perimeter seal of the bag. Ans. 5. To
cure the deficiency of Deaton, the Examiner turned to Niedospial’s
disclosure of “an inlet port (16) place[d] at the perimeter seal of the bag
sidewalls.” Id. (citing Niedospial, fig. 1). The Examiner concluded that it
would have been obvious to one of ordinary skill in the art “to form the bag
of D[eaton] . . . with the inlet port at the perimeter seal, as taught by
N[iedospial] . . . in order to provide for increased efficiency of emptying the
bag when hung.” Id.
Appellant argues that a person of ordinary skill in the art would have
no reason to modify Deaton with the inlet port at the perimeter seal as taught
by Niedospial since the Deaton bag with “the connector . . . at the center of
one planar face, [already] allows for the opposing sheets to be brought fully
together,” whereas Niedospial’s bag would not allow the opposed sheets of
the container to be brought together because of “the provision of a relatively
rigid tube at a bottom seam of the container.” Br. 7. Therefore, Appellant
contends that modification of Deaton’s bag with the inlet port at the
perimeter seal as taught by Niedospial would not provide for more efficient
emptying of the bag as asserted by the Examiner. Id. Since Deaton’s device
already appears to accomplish efficient emptying of the bag and, moreover,
it is unclear if Niedospial’s teachings would actually improve emptying of
the gas from the bag, the Examiner’s rejection does not sufficiently explain
what in the prior art would have prompted a person of ordinary skill in the
art to modify Deaton’s bag to include an inlet port at the perimeter seal.
Thus, we are not persuaded that the Examiner’s articulated reasoning has
rational underpinnings (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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(2007) (holding that “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness).
For the foregoing reasons, Appellant has shown the Examiner erred in
concluding that the subject matter of independent claims 9 and 14 would
have been obvious from the combination of Deaton and Niedospial, and we
do not sustain the rejection of independent claims 9 and 14, and claim 11
which depends from claim 9, under 35 U.S.C. § 103(a) as unpatentable over
Deaton and Niedospial.

DECISION
The Examiner’s rejection of claims 9, 11, and 14 under 35 U.S.C.
§ 103(a) is REVERSED.

REVERSED

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