Ex parte Gorman

Board of Patent Appeals and Interferences

Nov 22, 1999

08218540 (B.P.A.I. Nov. 22, 1999)

Application for patent filed March 28, 1994. 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written for publication in a law journal and (2) is not binding
precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEE V. GORMAN
____________
Appeal No. 1997-1073
Application No. 08/218,5401
____________
HEARD: November 15, 1999
____________
Before THOMAS, DIXON, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 16, which are all of the claims
pending in this application. In an Advisory Action mailed
October 24, 1995, the examiner withdrew the rejection of
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Application No. 08/218,540
2
claims 7, 8, 15, and 16 and objected to them as being
dependent from
rejected base claims. In a second Advisory Action mailed
August
30, 1996, the examiner entered appellant's amendment to claims
7, 8, 15, and 16, filed July 29, 1996, and indicated that
claims 7, 8, 15, and 16 are now allowable. Accordingly,
claims 1 through 6 and 9 through 14 remain before us on
appeal.
The appellant's invention relates to a system for
obtaining a sample of a fluid that accurately represents the
various strata of the fluid in a container. Claim 1 is
illustrative of the claimed invention, and it reads as
follows:
1. A system for obtaining an accurate sample of a
fluid, comprising:
a container having a longitudinal axis for accommodating
the fluid to be analyzed;
a hollow vessel of predetermined varying internal fluid
receiving volume dimensions from one end of said vessel to an
opposing end of said vessel disposed within said container;
and
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means to permit and stop fluid flow from said container
into said vessel in at least three positions substantially
along the longitudinal axis.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Banu 5,341,693 Aug. 30,
1994
Claims 1 through 4 and 9 through 12 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Banu. Claims 5, 6,
13, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Banu.
Reference is made to the Examiner's Answer (Paper No. 15,
mailed May 24, 1996) and the Supplemental Examiner's Answer
(Paper No. 19, mailed August 30, 1996) for the examiner's
complete reasoning in support of the rejections, and to the
appellant's Brief (Paper No. 14, filed March 1, 1996), First
Reply Brief (Paper No. 17, filed July 29, 1996) and Second
Reply Brief (Paper No. 21, filed November 4, 1996) for the
appellant's arguments thereagainst.
OPINION
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Application No. 08/218,540
4
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by the appellant and the examiner. As a consequence of our
review, we will reverse both the anticipation rejection of
claims 1 through 4 and 9 through 12 and also the obviousness
rejection of claims 5, 6, 13, and 14.
The examiner rejects claims 1 through 4 and 9 through 12
under 35 U.S.C. § 102 as being anticipated by Banu. "It is
axiomatic that anticipation of a claim under §102 can be found
only if the prior art reference discloses every element of the
claim." In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138
(Fed. Cir. 1986); Lindemann Maschinenfabrik v. American Hoist
and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984).
Banu relates to a system for obtaining a sample of a fluid.
Banu can be interpreted as including a container with a hollow
vessel therein. However, claim 1 requires a "means to permit
and stop fluid flow from said container into said vessel in at
least three positions substantially along the longitudinal
axis" (emphasis added). Clearly the openings at the upper and
lower ends of the Banu device could satisfy such means for two
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positions. Therefore, the question for anticipation is
whether or not Banu discloses a third position through which
fluid flows from the container into said vessel.
The examiner relies on valve 3 in Banu for the third
position. Turning to the reference, we find that all
discussion in Banu about receiving water into the container
refers only to the two ends of the container. For example,
Banu discloses in column 2, lines 13-17, "two end portions
with openings for receiving a water sample, two end plugs for
closing the openings, and means for closing the end plugs by
remote action so as to entrap a water sample in the
substantially rigid body." On the other hand, Banu discloses
in column 2, lines 37-39, "valve means disposed in the lower
collar means for selectively purging water sample from the
sealed container." The same language is recited in claim 4 of
Banu. Also, Banu, in column 4, lines 4-5, refers
to valve 3 as being a "sample dispensing valve". In other
words, the valve in Banu's device is for removing the fluid
from the vessel and the container, not for permitting fluid to
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flow into the vessel. Accordingly, as Banu does not include
the third position through which fluid flows from the
container into said vessel, Banu cannot anticipate claim 1 or
the claims which depend therefrom, claims 2 through 4.
Claim 9 parallels the language of claim 1 with a step of
"starting and stopping fluid flow from said container into
said vessel in at least three positions substantially along
the longitudinal axis." (emphasis added). As Banu only
permits fluid to flow into the vessel at the top and bottom,
as discussed above, Banu does not meet the requirement of the
three positions of claim 9. Accordingly, claim 9 and its
dependents, claims 10 through 12, are not anticipated by Banu.
As to the obviousness rejection of claims 5, 6, 13, and
14, Banu does not meet all of the limitations of the
independent claims, and the examiner provides no motivation
for modifying Banu to remedy the deficiencies. Thus, Banu
does not render obvious dependent claims 5, 6, 13, and 14.
Therefore, we will reverse the obviousness rejection.
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CONCLUSION
The decision of the examiner rejecting claims 1 through 4
and 9 through 12 under 35 U.S.C. § 102 and claims 5, 6, 13,
and 14 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1997-1073
Application No. 08/218,540
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WADE JAMES BRADY III
TEXAS INSTRUMENTS INCORPORATED
P.O. BOX 655474, MS 219
DALLAS, TX 75265