Ex parte Boussignac et al.

Board of Patent Appeals and Interferences

Jan 27, 1999

08156679 (B.P.A.I. Jan. 27, 1999)

Application for patent filed November 22, 1993. 1
According to appellants, this application is a continuation of
Application 07/963,002, filed October 19, 1992, abandoned;
which is a continuation of Application 07/750,232, filed
August 20, 1991, abandoned; which is a continuation of
Application 07/419,690, filed October 11, 1989, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GEORGES BOUSSIGNAC
and JEAN-CLAUDE LABRUNE
__________
Appeal No. 96-1902
Application 08/156,6791
__________
HEARD: Jan. 12, 1999
__________
Before MEISTER, FRANKFORT, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1902
Application No. 08/156,679
2
Georges Boussignac and Jean-Claude Labrune (the
appellants) appeal from the final rejection of claims 11-13,
15 and 16, the only claims remaining in the application.
We AFFIRM.
The appellants' invention pertains to a respiratory
assistance device. Independent claim 11 is further
illustrative of the appealed subject matter and a copy thereof
may be found in EXHIBIT A of the brief.
The references relied on by the examiner are:
Baum et al. (Baum '530) 4,270,530 Jun. 02,
1981
McGrail 4,584,998 Apr. 29,
1986
Weerda et al. (Weerda) 4,630,606 Dec. 23,
1986
Brown 4,813,431 Mar. 21,
1989
Baum (Baum '896) 2 114 896 Sep. 01,
1983
(Great Britain)
Claims 11-13, 15 and 16 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon an original
disclosure which fails to provide descriptive support for the
subject matter now being claimed.
Appeal No. 96-1902
Application No. 08/156,679
It would appear that the examiner also intended to2
include McGrail.
3
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Weerda in view of Baum '896 and
McGrail.
Claims 13, 15 and 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Weerda in view of Baum '896, Brown
and Baum '530.2
The rejections are explained on pages 2-4 of the final
rejection (Paper No. 33). The arguments of the appellants and
examiner in support of their respective positions may be found
on pages 2-11 of the brief, pages 1-3 of the reply brief,
pages 5 and 6 of the answer, and page 2 of the supplemental
answer.
OPINION
At the outset, we note that on page 3 of the brief the
appellants state that the rejected claims stand or fall
together. Accordingly, dependent claims 12, 13, 15 and 16
will stand or fall with independent claim 11. 37 CFR §
1.192(c)(7).
Appeal No. 96-1902
Application No. 08/156,679
4
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellants in the brief and reply brief, and
by the examiner in the answer and supplemental answer. As a
consequence of this review, we will sustain the rejections of
claims 11-13,
15 and 16 under 35 U.S.C. § 103. We will not, however,
sustain the rejection of claims 11-13, 15 and 16 under 35
U.S.C. § 112, first paragraph.
Considering first the rejection of claims 11-13, 15 and
16 under 35 U.S.C. § 112, first paragraph, we initially
observe that the description requirement found in the first
paragraph of 35 U.S.C. § 112 is separate from the enablement
requirement of that provision. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17
(Fed. Cir. 1991) and In re Barker, 559 F.2d 588, 591, 194 USPQ
470, 472 (CCPA 1977), cert. denied, 434 U.S. 1238 (1978).
With respect to the description requirement, the court in Vas-
Cath, Inc. v. Mahurkar at 935 F.2d 1563-64, 19 USPQ2d 1117
stated:
Appeal No. 96-1902
Application No. 08/156,679
5
35 U.S.C. § 112, first paragraph, requires a
"written description of the invention" which is
separate and distinct from the enablement
requirement. The purpose of the "written
description" requirement is broader than to merely
explain how to "make and use"; the applicant must
also 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. The
invention is, for purposes of the "written
description" inquiry, whatever is now claimed.

. . . drawings alone may be sufficient to
provide the "written description of the invention"
required by § 112, first paragraph.
Here, the examiner believes that there is no adequate
descriptive support in the original disclosure for the
recitation of "controlling a cyclic flow of respiratory gas
supplied to a patient" as set forth in independent claim 11,
apparently because "not all ventilation techniques are cyclic"
(see answer, page 3). In our view, however, adequate
descriptive support for the limitation in question may be
found on page 5, line 28, through page 6, line 21, of the
specification. Note in particular the reference to "a
complete respiratory cycle," "period of inspiration and the
period of expiration whilst observing the idle times" and "the
end of the expiration cycle" on page 6 of the specification.
The answer also states that:
Appeal No. 96-1902
Application No. 08/156,679
6
"Where does applicants' original disclosure state
that both sensors are used to control normal
ventilation?" Nowhere does appellants' original
disclosure discuss or define "normal ventilation"
and what they mean by these terms. [Page 3.]
We are at a complete loss to understand the examiner's
position. The claims on appeal do not require that both
sensors be used to control "normal ventilation" or, for that
matter, make any reference whatsoever to "normal ventilation."
In view of the above, we will not sustain the rejection
of claims 11-13, 15 and 16 under 35 U.S.C. § 112, first
paragraph.
Turning to the rejections of claims 11-13, 15 and 16
under 35 U.S.C. § 103, the appellants do not argue that it
would have been unobvious to combine the teachings of the
references in the manner proposed by the examiner. Instead,
the appellants focus on the teachings of Weerda, stating that:
It is evident that in Weerda's system,
respiratory ventilation is controlled by the
measurement of the intratracheal pressure by
pressure probe 5 which, of course, measures the
pressure within the trachea rather than within the
ballonet. Only in the case of "disturbances" in the
operating conditions of the device (column 4, lines
18-25) is any corrective or remedial action taken,
and this action consists only of deflating the
balloon sleeve 3 and switching the operation of the
respirator 44 until the disturbance has been
eliminated (column 4, lines 45-48).
Appeal No. 96-1902
Application No. 08/156,679
7
By contrast, in the present invention,
measurement of the pressure within the ballonet is
used to control the flow of respiratory gas under
normal operating conditions. [Brief, pages 8 and
9.]
With respect to this argument, we must point out that
independent claim 11 broadly recites:
electronic control means controlled by said signals
for controlling a cyclic flow of respiratory gas
supplied to a patient.
As the appellants recognize, electronic control signals from
pressure receivers 10 (which provide voltage signals in
response to the pressure in balloon sleeve 3 via probe 6) and
45 (which provide voltage signals in response to the pressure
in the intratracheal space 2 via probe 5) are used to control
the flow of respiratory gas in the respirator 44 of Weerda.
The appellants have correctly noted that the control signals
from the pressure receiver 10 only function to "switch" the
operation of Weerda's respirator 44 in the case of
"disturbances." What the appellants overlook, however, is
that when the control signals from the pressure receiver 10
"switches" the operation of Weerda's respirator, it causes the
respirator to switch from one type of cyclic flow to another
type of cyclic flow. That is, it switches the respirator from
Appeal No. 96-1902
Application No. 08/156,679
It is well settled that the terminology in a pending3
application's claims is to be given its broadest reasonable
interpretation (In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d
1023, 1028 (Fed. Cir. 1997) and In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)) and limitations
from a pending application's specification will not be read
into the claims (Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6
USPQ2d 2020, 2027 (Fed. Cir. 1988)).
8
"closed" ventilation wherein the tracheal pressure is taken
into account in determining the amount of gas supplied during
ventilation to "open" ventilation wherein the tracheal
pressure is not taken into account in determining the amount
of gas supplied during ventilation (see, e.g., column 2, lines
1-7). In either case, the ventilation (and, hence, flow) is
"cyclic." Accordingly, giving the above-noted recitation in
claim 11 its broadest reasonable interpretation, we are of3
the opinion that the control signals of Weerda can be
considered to control "a cyclic flow" of the respiratory gas
as broadly claimed. While we appreciate the fact that there
are differences in operation between the appellants' device
and that of Weerda, these differences simply have not been set
forth in claim 11.
In view of the foregoing, we will sustain the rejections
under 35 U.S.C. § 103 of claims 11 and 12 based on the
Appeal No. 96-1902
Application No. 08/156,679
9
combined teachings of Weerda, Baum '896 and McGrail and of
claims 13, 15 and 16 based on the combined teachings of
Weerda, Baum '896, Brown and Baum '530.
In summary:
The rejection of claims 11-13, 15 and 16 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The rejections of claims 11-13, 15 and 16 under 35 U.S.C.
§ 103 are affirmed.
Appeal No. 96-1902
Application No. 08/156,679
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
James M. Meister )
Administrative Patent Judge )
)
)
)
Charles E. Frankfort ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
tdc
Appeal No. 96-1902
Application No. 08/156,679
11
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Murray & Borun
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