Ex parte Butcher

Board of Patent Appeals and Interferences

Sep 14, 2000

08515269 (B.P.A.I. Sep. 14, 2000)

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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACQUELINE L. BUTCHER
__________
Appeal No. 1998-2424
Application 08/515,269
___________
ON BRIEF
___________
Before PATE, NASE, and JENNIFER D. BAHR, Administrative Patent
Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 20
through 22. These are the only claims remaining in the
application.
Appeal No. 1998-2424
Application 08/515,269
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The claimed invention is directed to a method for
maintaining a chain of sterility when sterilizing a
bacteriologically compromised appliance, a system for
sterilizing such an appliance, and an article, namely, a
bacteriologically impermeable, flexible sheath. These
inventions find utility in the sterilization of dental
appliances using liquid sterilant and an ultrasonic
sterilizer. The invention may be further understood by
reference to the appealed claims, a copy of which is appended
to appellant’s brief.
The references relied upon by the examiner as evidence of
obviousness are:
Boston 3,161,311 Dec. 15, 1964
Frew et al. (Frew) 3,933,263 Jan. 20, 1976
Fortin 5,198,176 Mar. 30, 1993
Additionally, the examiner is relying on the admitted prior
art found on page 1, lines 9 - 18 of the specification.
THE REJECTIONS
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over appellant’s admission of prior art in view
of either Frew or Boston.
Appeal No. 1998-2424
Application 08/515,269
3
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over appellant’s admission of prior art in view
of Fortin.
Claims 20 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over appellant’s admission of prior art in view
of Frew or Boston and Fortin.
Claim 22 stands rejected under 35 U.S.C. § 103 as
unpatentable over Fortin or Boston.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have come to the determination
that the applied prior art establishes the prima facie
obviousness of claims 20 and 22. This prima facie case of
obviousness has not been rebutted by additional evidence from
the appellant. Therefore, we will sustain the rejections of
claims 20 and 22. Likewise, we have reached the
determination that claim 21 is not prima facie obvious in view
of the cited prior art. Therefore, the rejection of this
claim is not affirmed. Our reason follows.
Appeal No. 1998-2424
Application 08/515,269
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Turning first to a consideration of claim 20, we are in
agreement with the examiner’s finding that the admitted prior
art establishes the obviousness of a method, including the
steps of providing a container with an open top and closed
bottom, placing an appliance into the container, filling the
container with a sterilant, and cleaning the appliance by
placing the container in an ultrasonic sterilizer. The
admitted prior art does not include the step of lining the
container with a bacteriologically impermeable sheath, nor
does it address the step of disposing of the sheath after the
appliance has been cleaned. With respect to Boston and Frew,
while these patents disclose liners for containers, we noted
that no processing, cleaning, or any reaction is undergone in
the container while lined by these disposable liners. The
teachings of Boston and Frew are merely for lining a
container; there is no disclosure of lining a reaction chamber
where some process is to take place.
On the other hand, Fortin teaches a thermoplastic
cylindrical container which can be either a rigid,
freestanding container for use as a substitute for a beaker,
Appeal No. 1998-2424
Application 08/515,269
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or it could be used as a disposable liner for a glass
laboratory beaker. The thermoplastic beaker disclosed can be
made with extremely thin walls and has excellent physical,
optical, and thermal characteristics which ideally suits it
for use in medical, biological, or chemical laboratories as an
inexpensive, disposable, generally chemically inert and high
temperature stable beaker. See column 4, lines 58 - 61. Such
containers are made so that they will fit snugly within
standard laboratory glassware such as beakers. See column 5,
lines 13 - 15. The beakers so made can be freestanding
laboratory beakers. In some embodiments, those to be used as
beaker liners, the sidewall 74 and bottom 76 are less than
0.010 inches thick. The thin bottom of such a beaker liner is
nonetheless quite strong because it has the highest polymer
orientation in the container. See column 12, lines 5 - 12.
The above noted disclosure of Fortin evidences a
recognition in the art that disposable beaker liners which are
autoclaveable and suited for biological tasks are made
inexpensive and disposable for the self-evident advantage of
eliminating the need to wash laboratory glassware. In view of
Appeal No. 1998-2424
Application 08/515,269
For autoclaveablity note column 27, lines 61 and 62.1
6
this self-evident advantage, possessed by the Fortin
inexpensive, disposable beaker liner, it would have been
obvious to modify the process of the admitted prior art to
utilize an inexpensive and disposable beaker liner for the
advantage of eliminating cleaning of laboratory glassware. As
to appellant’s argument that the beaker of Fortin is not
bacteriologically impermeable, we certainly disagree. The
beakers therein disclosed have excellent biological property
and are disclosed as autoclaveable. In our
view, such a beaker must be considered bacteriologically
impermeable. We further note that claim 20 does not require
flexibility of the lining of step b.1
With respect to claim 21 as noted above, neither Frew nor
Boston discloses processing occurring in the lining of the
Appeal No. 1998-2424
Application 08/515,269
7
container. For this reason, the admitted prior art in view of
Frew or Boston does not establish the prima facie obviousness
of claim 21. With respect to Fortin, we note that Fortin’s
liner is not of sufficient flexibility to permit folding into
a compact form for storage and dispensing. Therefore, the
disclosure of Fortin and the admitted prior art does not
establish the prima facie obviousness of claim 21.
Turning to a consideration of claim 22, the claim is
directed to a liner or sheath for a container. While we note
that the preamble states that such a sheath is for
sterilization of a contaminated appliance in a ultrasonic
cleaning machine, we regard this as only an intended use
limitation that does not give life and meaning to the recited
structure in the body of the claim. The structure of the
sheath in the claim is merely a flexible material that can be
folded and unfolded to be placed in
a container while having bacteriologically impermeability. In
our view, Boston would have rendered such a sheath prima facie
Appeal No. 1998-2424
Application 08/515,269
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obvious. Boston shows an impermeable sheath that can be
folded or unrolled to be dispensed and placed in a container,
the open end of the sheath coinciding with the open end of the
container. Appellant argues that the sheath is not
bacteriologically impermeable. However, Boston is clearly
intended to keep the interior of the sheath sanitary and
sterile. Therefore, we regard bacteriological impermeability
as an inherently property of the sheath of Boston. For this
reason, we will affirm the 35 U.S.C. § 103 rejection of claim
22 based on the Boston reference.
Appeal No. 1998-2424
Application 08/515,269
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SUMMARY
The rejection of claim 20 and the rejection of claim 22
under 35 U.S.C. § 103 have been affirmed.
AFFIRMED-IN-PART
WILLIAM F. PATE III )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-2424
Application 08/515,269
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