Ex parte Corn

Board of Patent Appeals and Interferences

Mar 30, 1999

08264704 (B.P.A.I. Mar. 30, 1999)

Application for patent filed June 23, 1994. According1
to appellant, the application is a continuation of Application
07/938,366, August 31, 1992, now 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not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEPHEN B. CORN
__________
Appeal No. 96-4041
Application 08/264,7041
___________
ON BRIEF
___________
Before McCANDLISH, Senior Administrative Patent Judge.
STAAB and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judges.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 and 3-12, all the claims then pending in
Appeal No. 96-4041
Application 08/264,704
This is a new ground of rejection made for the first2
time in the answer.
2
the application. Subsequent to the final rejection, appellant
submitted an amendment canceling claim 12. Accordingly, only
claims 1 and 3-11 remain in the application.
Appellant’s invention pertains to a scavenging device
that prevents the release of anesthetic gas into the
environment of an operating room. An understanding of the
invention can be derived from reading independent claim 1, a
copy of which is appended to appellant’s brief.
The references of record relied upon by the examiner in
support of the rejections are:
Trammell et al (Trammell) 4,407,280 Oct. 4,
1983
Poppendiek et al (Poppendiek) 4,832,042 May
23, 1989
Corn 5,370,110 Dec.
6, 1994
Claims 1 and 3-11 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-8 of the Corn patent.2
Claims 1 and 3-11 stand further rejected under 35 U.S.C.
Appeal No. 96-4041
Application 08/264,704
3

§ 103 as being unpatentable over Trammell in view of
Poppendiek.
The rejections are explained in the examiner’s answer
(Paper No. 17, mailed April 11, 1996) and the supplemental
examiner’s answer (Paper No. 21, mailed September 3, 1996).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 16, filed January 11, 1996) and the reply
brief (Paper No. 19, filed June 17, 1996).
The obviousness-type double patenting rejection
Considering first the rejection of the appealed claims
under the judicially created doctrine of obviousness-type
double patenting, the reply brief states on page 2 that
"Applicant hereby offers to submit a suitable Terminal
Disclaimer in order to overcome the new ground of rejection.
Such a Terminal Disclaimer will be filed at such time as the
obviousness-type double patenting rejection stands as the only
obstacle to allowance."
In light of the circumstance that appellant has failed to
point out any error in the examiner’s obviousness-type double
Appeal No. 96-4041
Application 08/264,704
4
patenting rejection, offering instead to submit a suitable
terminal disclaimer "at such time as the obviousness-type
double patenting rejection stands as the only obstacle to
allowance," we are constrained to affirm this rejection.
The 35 U.S.C. § 103 rejection
Claim 1 calls for a vapor scavenging device comprising:
(1) an enclosure means for placement over a patient’s head,
(2) closure means for closing an open bottom of the enclosure
means to form a seal about the patient’s neck, (3) a first
opening means disposed in the enclosure means for
accommodating an
anesthesia circuit fitting directly communicating with a
patient’s airway, (4) a second opening in the enclosure means,
and (5) a conduit means sealingly engaging with the second
opening for directly communicating a vacuum force to the
interior of the enclosure means for removing waste gas
therefrom.
Turning to Trammell, the examiner’s primary reference,
appellant does not dispute the examiner’s finding that
Appeal No. 96-4041
Application 08/264,704
5
disposable hood 12 comprises an enclosure means as called for
in claim 1. Further, we do not consider the claim 1
requirement for a closure means for closing an open bottom of
the enclosure means to form a seal about the patient’s neck to
be an argued distinction over Trammell. In this regard,
appellant does not specifically dispute the examiner’s finding
that Trammell’s "means (24) close[s] said open bottom [of the
enclosure] about the patient’s neck" (answer, page 4).
Further, the general 35 U.S.C. § 112, sixth paragraph,
discussion found on page 10 of appellant’s brief is not seen
as a specific argument that Trammell does not have the claim 1
"closure means." In any event, Trammell’s opening 23
constitutes "closure means" as called for in claim 1, as that
term would be understood by one of ordinary skill in the art
when read in light of the specification, in that appellant’s
specification indicates that the "seal" about the patient’s
neck
is "loose" (page 6, line 9), "not necessarily . . . airtight"
(page 7, line 17), and merely creates "an effective degree of
Appeal No. 96-4041
Application 08/264,704
Trammell uses reference numeral 34 twice, once for a3
hose and once for an opening in the top of the enclosure.
6
sealing . . . . about the patient’s neck" (sentence bridging
pages 7 and 8) such that any leakage of gas in the enclosure
from the area adjacent the patient’s neck can be prevented by
applying a suction force to the interior of the enclosure.
As to the claim 1 requirements for a first opening means
in the enclosure for accommodating an anesthesia circuit
fitting, and a second opening in the enclosure, we are aware
that the examiner reads these claim limitations on Trammell’s
opening at fitting 27 and Trammell’s opening 34 ,3
respectively. However, we believe the better approach is to
consider Trammell’s opening 34 as corresponding to the claimed
first opening means and Trammell’s opening at fitting 27 as
corresponding to the claimed second opening. First,
Trammell’s opening 34 satisfies the claimed "first opening
means" limitation in that opening 34 of Trammell constitutes
an opening in the enclosure that is fully capable of
accommodating an anesthesia circuit fitting directly
communicating with a patient’s airway. Second, when the
claimed "second opening" is read on Trammell’s opening at
Appeal No. 96-4041
Application 08/264,704
7
fitting member 27, Trammell’s fitting 27 and conduit 34
collectively may then be read on the final claim limitation
calling for a "conduit means"
sealingly engaged in the second opening since Trammell’s
fitting 27 and hose 34 are sealingly engaged in the opening
via flange 26 and fitting member 29, and since fitting 27 and
hose 34 are fully capable of directly communicating a vacuum
force to the interior of the enclosure means for removing
waste gases therefrom. Accordingly, when Trammell is viewed
in this light, there is no need to resort to Poppendiek for a
teaching of providing a conduit means in the second opening of
Trammell.
To the extent appellant argues that the sixth paragraph
of 35 U.S.C. § 112 requires interpreting the "first opening
means" and "conduit means" limitations of claim 1 in a manner
that distinguishes over Trammel’s opening 34 and conduit means
27, 34, respectively, the argument is not well taken. It is
debatable whether the "first opening means" and "conduit
means" recitations are linked to the functional language that
follow in a manner that triggers the 35 U.S.C. § 112, sixth
Appeal No. 96-4041
Application 08/264,704
See York Products, Inc. v. Central Tractor Farm &4
Family Center, 99 F.3d 1568, 1574, 40 USPQ2d, 1619, 1623 (Fed.
Cir. 1996)(mere incantation of word "means" does not
necessarily evoke § 112, sixth paragraph); Cole v.
Kimberly-Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006
(Fed. Cir. 1996)(merely because named element of claim is
followed by word "means" does not automatically make element
"means-plus-function" element under
§ 112, sixth paragraph).
8
paragraph, procedures
for construing means-plus-function claim terminology. 4
However,
even if the "first opening means . . ." and "conduit means . .
." recitations of claim 1 are considered to be means-plus-
function limitations within the meaning of 35 U.S.C. § 112,
sixth paragraph, they do not distinguish over Trammell’s
opening 34 and conduit means 27, 34. This is so because
Trammell’s opening 34 and conduit means 27, 34 are fully
capable of functioning in the ways set forth in the claim,
and, in our view, are structurally the same as, or at least
the equivalent of, the structures disclosed in appellant’s
specification that correspond to the claimed "opening means"
and "conduit means" (i.e., opening 24 and tube 16,
Appeal No. 96-4041
Application 08/264,704
9
respectively).
Moreover, even when we read claim 1 on the Trammell
device in the manner proposed by the examiner, Poppendiek’s
teaching that a suction force may be applied to a hood fitted
over the head of a patient to promote the flow of exhalant
gases therefrom would have provided ample suggestion to one of
ordinary skill in the art to provide a tube in the opening 34
of Trammel to provide for positive evacuation of exhaled gases
from the hood. In this regard, there is no requirement in the
test for obviousness under 35 U.S.C. § 103 that the motivation
for combining reference teachings be expressly articulated or
suggested by the prior art. See In re Sernaker, 702 F.2d 989,
995, 217 USPQ 1, 6 (Fed. Cir. 1983) and In re McLaughlin, 443
F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Instead, the
suggestion for combining the reference teachings may be an
implied suggestion. See, for example, Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ
881, 886-87 (Fed. Cir. 1985) and In re Sernaker, supra.
Appellant makes much of the fact that Trammell does not
disclose or suggest accommodating an anesthesia circuit
Appeal No. 96-4041
Application 08/264,704
10
fitting in any of the hood openings. However, in that claim 1
does not positively recite the anesthesia circuit fitting as a
positive element of the claimed subject matter, this line of
argument is not persuasive.
With respect to appellant’s argument on page 8 of the
brief to the effect that Trammell’s device would not work if
modified in the manner proposed by the examiner, we are
appraised of no persuasive evidence of record to support
appellant’s contention. It is well settled that an attorney’s
argument in the brief cannot take the place of evidence and
that arguments of counsel, unsupported by competent factual
evidence of record, are entitled to little weight. See In re
Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979) and In
re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA
1974).
In light of the foregoing, we will sustain the standing
rejection of claim 1 as being unpatentable over the teachings
of Trammell and Poppendiek. In that appellant has not
Appeal No. 96-4041
Application 08/264,704
11
separately argued the rejection of dependent claim 11 apart
from claim 1, we will sustain the rejection of this claim as
well.
We will also sustain the standing § 103 rejection of
claim 4. When Trammell’s opening 34 is viewed as
corresponding to the claimed first opening means and
Trammell’s opening at fitting 27 is viewed as corresponding to
the claimed second opening, Trammell’s conduit means 27, 34
has a portion extending within the interior of the enclosure
(see Figure 5) and a portion protruding from the enclosure.
In addition, Trammell’s conduit means is "affixed" to an inner
surface of the enclosure in the broad sense in that flange 26
is held in tight surface to surface contact with an adjacent
part of the enclosure’s inner surface. In any event, it also
would have been an obvious expedient to one of ordinary skill
in the art to adhere flange 26 to the inner surface of the
enclosure for the self evident purpose of providing a more
secure engagement therebetween.
We will likewise sustain the rejection of claim 5 which
depends from claim 4. Trammell’s diffuser openings 33 define
a construction that is perforated about the periphery of that
Appeal No. 96-4041
Application 08/264,704
We note that the first opening of appellant’s Figure 35
embodiment is not V-shaped as shown wherein the flaps 28 are
flat, but rather only when said flaps are spread apart.
In order to bring the drawings into compliance with 376
CFR § 1.83(a), this feature should be shown in the drawings.
12
portion of the conduit means that extends within the
enclosure.
In that appellant has not separately argued the rejection
of claim 7 apart from claim 5 from which it depends, we will
also sustain the rejection of this claim.
We will not sustain the rejection of claims 6, 8, 9 and
10. The examiner’s position that it would have been obvious
to one of ordinary skill in the art in light of the reference
teachings to dispose the conduit means at a position adjacent
to the patient’s face (claim 6), provide a first opening in
the form of a V-shaped split (claim 8), provide closure means5
in the form of a strip or release tape (claim 9), and/or add a
third port within the enclosure in communication with means
for delivering heated, humidified air to the enclosure (claim6
10) is not well taken. In each instance, the examiner has
failed to indicate any teaching in the applied references or
Appeal No. 96-4041
Application 08/264,704
13
any prior knowledge generally available to one of ordinary
skill in the art that would have led a person of ordinary
skill in the art to modify Trammell in the manner proposed.
For this reason, the rejections of these appealed claims must
fail for lack of a sufficient
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
As to claim 3, for reasons stated infra in our new
rejection entered under the provisions of 37 CFR 1.196(b), we
have encountered substantial difficulty in understanding
precisely what is meant by certain language in that claim.
While we might speculate as to what is meant by the claim
language in question, our uncertainty provides us with no
proper basis for making the comparison between that which is
claimed and the prior art as we are obligated to do.
Rejections under 35 U.S.C. § 103 should not be based upon
"considerable speculation as to the meaning of terms employed
and assumptions as to the scope of the claims." In re Steele,
Appeal No. 96-4041
Application 08/264,704
14
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no
reasonably definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of claim
3 as being unpatentable over the prior art. We hasten to add
that this is a procedural reversal rather than one based upon
the
merits of the rejection. We take no position as to the
pertinence of the prior art as applied by the examiner in his
rejection.
Pursuant to our authority under 37 CFR 1.196(b), we make
the following new rejection.
Claim 3 is rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and
distinctly claim the subject matter which appellant regards as
the invention. Claim 3 depends from claim 1 and further calls
Appeal No. 96-4041
Application 08/264,704
The term "the breathing or anesthesia circuit fitting"7
appearing in claim 3 lacks a clear antecedent. For purposes
of this appeal, we interpret same as "the anesthesia circuit
fitting."
15
for a "fastening means" for selectively closing the first
opening about the anesthesia circuit fitting and the bottom7
portion of the enclosure means about the patient’s neck. It
is not clear if the fastening means of claim 3, which
selectively closes the bottom portion of the enclosure about
the patient’s neck, is separate from the "closure means" of
claim 1 that forms a seal about the patient's neck, or one and
the same as the earlier recited "closure means."
Summary
The obviousness-type double patenting rejection of claims
1 and 3-11 is affirmed.
The § 103 rejection of claims 1, 4, 5, 7 and 11 is
affirmed.
The § 103 rejection of claims 6 and 8-10 is reversed on
the merits.
The § 103 rejection of claim 3 is reversed on procedural
Appeal No. 96-4041
Application 08/264,704
16
grounds.
A new rejection of claim 3 under 35 U.S.C. § 112, second
paragraph, has been made pursuant to our authority under 37
CFR § 1.196(b).
Since at least one of the examiner’s rejections of each
of the appealed claims has been sustained, the decision of the
examiner is affirmed.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides, "A new ground
of rejection shall not be considered final for purposes of
judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
Appeal No. 96-4041
Application 08/264,704
17
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
Appeal No. 96-4041
Application 08/264,704
18
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-4041
Application 08/264,704
19
LJS/pgg
William C. Geary III
Nutter, McClennen & Fish, LLP
One International Place
Boston, Massachusetts 02110-2699