Ex parte HALL et al.

Board of Patent Appeals and Interferences

Aug 25, 1998

08068498 (B.P.A.I. Aug. 25, 1998)

Application for patent filed May 27, 1993.1
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not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD A. HALL, EDWARD T. SHEERAN, JR. and
MICHAEL S. SULLIVAN
_____________
Appeal No. 96-2608
Application 08/068,4981
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge and
FRANKFORT and McQUADE, 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, 4, 5, 8 and 11, and from the examiner's
refusal to allow claims 2 and 7 as amended subsequent to the
Appeal No. 96-2608
Application 08/068,498
Our understanding of this German language document is based upon a2
translation prepared by the U.S. Patent and Trademark Office. A copy of that
translation accompanies this decision.
2
final rejection in a paper filed April 12, 1995 (Paper No.
10). Claims 3, 6, 9, 12 and 15 through 18 stand allowed.
Claims 10 and 13, the only other claims pending in the
application, have been objected to, but are indicated to be
allowable if rewritten in independent form. Claim 14 has been
canceled.
Appellants' invention relates to an adapter for use in a
fixed angle centrifuge rotor for holding a centrifuge tube
containing a substance to be subjected to centrifugation.
Claim 1 is representative of the subject matter on appeal and
a copy of that claim, as it appears in the Appendix to
appellants' brief, is attached to this decision.
The sole prior art reference of record relied upon by the
examiner is:
Stallmann DE 3,343,846 Jun. 13, 1985
(German Offenlegungschrift)2
Appeal No. 96-2608
Application 08/068,498
3
Claims 1, 4, 5, 8 and 11 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim that which
appellants regard as their invention.
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Stallmann.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Stallmann.
Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced
by the examiner and appellants regarding those rejections, we
make reference to the examiner's answer (Paper No. 22, mailed
November 27, 1995) for the examiner's reasoning in support of
the rejections, and to appellants' brief (Paper No. 21, filed
October 19, 1995) for appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
Appeal No. 96-2608
Application 08/068,498
4
careful consideration to appellants' specification and claims,
to the applied prior art reference, and to the respective
positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
We turn first to the examiner's rejection of appealed
claims 1, 4, 5, 8 and 11 under 35 U.S.C. § 112, second
paragraph. After reviewing appellants' specification and
claims, and appellants' arguments on page 4 of their brief, it
is our opinion that the scope and content of the subject matter
embraced by appellants' independent claims 1 and 4 on appeal are
clear and definite, and fulfill the requirement of 35 U.S.C. §
112, second paragraph, that they provide those who would
endeavor, in future enterprise, to approach the area
circumscribed by the claims, with the adequate notice demanded
by due process of law, so that they may more readily and
accurately determine the boundaries of protection involved and
Appeal No. 96-2608
Application 08/068,498
5
evaluate the possibility of infringement and dominance. See, In
re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). Like
appellants, we have no doubt that the term “itself” in claims 1
and 4 on appeal refers back to the inboard portion of the
adapter, and therefore that independent claims 1 and 4, and
dependent claims 5, 8 and 11, do particularly point out and
distinctly claim that which appellants regard as their invention
and are definite within the meaning of the Statute.
Accordingly, we will not sustain the examiner's rejection of
appellants' claims 1, 4, 5, 8 and 11 under 35 U.S.C. § 112,
second paragraph.
We next look to the examiner's rejection of claims 1 and 2
under 35 U.S.C. § 102(b) as being anticipated by Stallmann.
Like the examiner, we view the removable and replaceable plastic
insert (4) of Stallmann’s centrifuge rotor as being an “adapter”
for use in the centrifuge rotor. As seen in Figures 1-3 of
Stallmann, the rotor itself is formed of the hub (1), lower part
(2) and upper part (3) which are configured and arranged to
Appeal No. 96-2608
Application 08/068,498
6
receive the removable and replaceable insert (4) which carries
the sample containers (6) in recesses defined therein. The
insert/adapter (4), while being spun, will have a “portion” that
lies radially inboard and a portion that lies radially outboard
with respect to the axis of rotation of the rotor. We view the
“portion” that lies radially inboard as being the entire inner
surface of the insert/adapter (4) and we note that this surface
has openings therein defined by the spaces between the ribs(5)
of Stallmann’s insert. In view of this understanding of the
rotor and insert/adapter of Stallmann, we find
appellants’ arguments as set forth on page 5 of their brief to
be unpersuasive and we will therefore sustain the examiner’s
rejection of claims 1 and 2 under 35 U.S.C. § 102(b).
As for the examiner’s rejection of claim 7 under 35
U.S.C. § 103 based on Stallmann, we will also sustain this
rejection. In light of our discussions above regarding the
insert/adapter (4) of Stallmann, we find appellants’
Appeal No. 96-2608
Application 08/068,498
7
assertions of hindsight reconstruction to be unpersuasive.
Moreover, we note that appellants have not in any way
specifically addressed the examiner’s stated position
concerning the obviousness of making the insert (4) of
Stallmann from a light transmissive plastic material so as to
allow visual observation of the sample containers (6) while in
the adapter (4).
To summarize our decision, we note that the examiner's
rejection of claims 1, 4, 5, 8 and 11 under 35 U.S.C. § 112,
second paragraph, has not been sustained; but that the
examiner's rejection of appealed claims 1 and 2 under 35
U.S.C. § 102(b) relying on Stallmann has been sustained, as
has the examiner’s rejection of claim 7 under 35 U.S.C. § 103.
The decision of the examiner is, accordingly, affirmed-
in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
Appeal No. 96-2608
Application 08/068,498
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§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-2608
Application 08/068,498
9
Paul D. Greeleey, Esq.
Ohlandt, Greeley,
Ruggiero & Perle
One Landmark Square
Suite 903
Stamford CT 06901