Ex parte D'SILVA

Board of Patent Appeals and Interferences

Sep 22, 1998

08359664 (B.P.A.I. Sep. 22, 1998)

Application for patent filed December 20, 1994.1
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EDMUND D. D'SILVA
_____________
Appeal No. 97-0615
Application 08/359,6641
______________
ON BRIEF
_______________
Before FRANKFORT, STAAB and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8 and 18 through 20. Claims 9
through 17, the only other claims remaining in the
application,
Appeal No. 97-0615
Application 08/359,664
Claim 1 was amended subsequent to the final rejection in a paper filed2
May 15, 1996 (Paper No. 9). According to the advisory action (Paper No. 10,
mailed May 23, 1996), this amendment corrected the § 112 problem noted in the
final rejection and was to be entered upon the filing of the appeal. We note,
however, that this amendment has not as of yet been clerically entered.
2
have been withdrawn from further consideration under 37 CFR
§ 1.142(b) as being directed to a non-elected invention.2
Appellant's invention as represented in the claims before
us on appeal relates to a system for marking a container
subjected to a process to indicate the status of the
container. More specifically, as explained on page 1 of the
specification, the system involves
marking and/or identifying a disposable plastic bag
or container having an interior for holding a
mixture of methylene blue and a blood component,
such as plasma. The system marks the bag to
indicate whether the bag has been subjected to a
process, such as an illumination process, used to
treat the mixture, such as for sterilization.
Independent claim 1 is representative of the subject
matter on appeal and a copy of that claim appears in the
Appendix to appellant's brief.
The prior art references of record relied upon by the
Appeal No. 97-0615
Application 08/359,664
3
examiner in rejecting the appealed claims are:
Alfandari 2,547,242 Apr.
03, 1951
Hymmen 4,656,907 Apr. 14,
1987
Clark 4,936,175 Jun. 26,
1990
Claims 1 through 7, 18 and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over Clark in view of
Alfandari.
Claims 8 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Clark and Alfandari as applied to
claims 1 and 18 above, and further in view of Hymmen.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 13, mailed September 5, 1996) for the examiner's reasoning
Appeal No. 97-0615
Application 08/359,664
4
in support of the rejections, and to appellant's brief (Paper
No. 12, filed August 14, 1996) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to
the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Turning first to the examiner's rejection of claims 1
through 7, 18 and 19 under 35 U.S.C. § 103, we note that the
examiner urges (answer, page 3) that Clark shows a punching
system having all the recited limitations, except for a
workpiece holder (means for holding) that is inside a housing
for the cutting/punching process, but outside the housing for
workpiece loading. To address this difference the examiner
looks to Alfandari, taking the position (answer pages 3-4)that
Alfandari shows that it is well known to have a tray
(39) having a tool passageway (47), said tray (39)
Appeal No. 97-0615
Application 08/359,664
5
being slidable into a housing (defined by walls 52,
52, 53, 54, 10) for cutting in order to protect the
operator (see lines 22-43 of column 1). It would
have been obvious to one of ordinary skill in the
art to have modified Clark by making the workpiece
holder (tray 23 with apertures) movable from a
position outside a housing to a position inside the
housing, as taught by Alfandari, in order to shield
the operator from possible contact with the cutting
elements, while maintaining the easy workpiece
loading. Clark's punches could extend thru the
housing from above, since Alfandari teaches a tool
(23) that extend through the housing.
Like appellant (brief, pages 5-8), we are of the opinion
that the examiner’s above position is based on impermissible
hindsight gleaned from appellant’s own disclosure and not from
any fair teaching or suggestion found in the applied prior art
references themselves. In this regard, we consider that the
examiner has used appellant’s own disclosure and the claimed
invention itself as a blueprint for piecing together unrelated
elements from disparate references in the prior art so as to
defeat patentability of the system defined in appellant’s
independent claims 1 and 18 on appeal.
Absent the disclosure of the present application, it is
our opinion that one of ordinary skill in the art would not
have been motivated to modify the printing plate registering
Appeal No. 97-0615
Application 08/359,664
6
device of Clark in light of the shoulder pad cutting machine
of Alfandari so as to arrive at the subject matter set forth
in appellant’s claims 1 and 18 on appeal. Given the critical
nature of the alignment between the masking flat (97) carrying
the image to be printed and the printing plate (99) in Clark
(see column 1 therein) and the importance of having the
operator confirm such
alignment, we see no way that one of ordinary skill in the art
would have been motivated to make a combination like that
suggested by the examiner. Moreover, we see no problem in
Clark
of the operator being exposed to a cutting operation as
mentioned in Alfandari, and thus no reason to employ the
receptor (36) of Alfandari in Clark, where the operator is
already shielded from the punches (44, 46). Thus, the
examiner's rejection of
appellant's claims 1 through 7, 18 and 19 under 35 U.S.C. §
103 based on Clark and Alfandari will not be sustained.
We have also reviewed the patent to Hymmen applied by the
examiner in the § 103 rejection of dependent claims 8 and 20.
Appeal No. 97-0615
Application 08/359,664
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However, we find nothing in this reference which would supply
that which we have noted above to be lacking in the basic
combination of Clark and Alfandari. Accordingly, the
examiner's rejection of claims 8 and 20 on appeal under 35
U.S.C. § 103 will likewise not be sustained.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 through 7 and 18 through 20 of
the present application is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0615
Application 08/359,664
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Bradford R.L. Price (RLP-30)
Baxter International, Inc.
Route 120 and Wilson Road
Round Lake, IL 60073