Ex parte Kenney

Board of Patent Appeals and Interferences

Sep 17, 1997

07937522 (B.P.A.I. Sep. 17, 1997)

Application for patent filed August 27, 1992. According1
to appellant, this application is a division of Application
07/382,547, filed July 19, 1989, now Patent No. 5,173,266,
issued December 22, 1992.
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(2) is not binding precedent of the Board.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 JAMES W. KENNEY
__________
Appeal No. 95-3317
Application 07/937,5221
__________
ON BRIEF
__________
Before LYDDANE, MEISTER and ABRAMS, Administrative Patent
Judges.
LYDDANE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 12 through 27, which are all of the claims pending
Appeal No. 95-3317
Application No. 07/937,522
2
in the application.
The subject matter on appeal is directed to a process for
making a safety pipet tube. Claim 12 is exemplary of the
invention and reads as follows:
12. A process for making a safety pipet tube comprising
the steps of
taking an elongated glass tube having an outer surface,
an axial bore with an inner surface, and upper and lower ends
which are open,
taking a resilient sheet having an inner layer of
adhesive,
heating the sheet until the adhesive layer becomes tacky,
rolling the tube over the adhesive layer to wrap the
sheet around the tube to form a protective wrapping for the
tube with an inner layer of the sheet wrapped around the outer
surface of the tube and an outer layer of the sheet wrapped
around the inner layer of the sheet,
adhering the resilient sheet to the outer surface of the
tube and to the inner layer of the sheet, and
allowing the wrapped tube to cool to room temperature,
whereby to provide a safety glass tube pipet which
protects a user from injury and infection should the glass
tube break and form jagged edges which could cut the user were
it not for the protection provided by the resilient sheet.
The references of record relied upon by the examiner in
rejections of the claims under 35 U.S.C. § 103 are:
Nitzsche et al. (Nitzsche) 3,230,121 Jan. 18,
Appeal No. 95-3317
Application No. 07/937,522
The appellant's supplement reply brief (Paper No. 13)2
was not approved for entry by the examiner and consequently has
not been considered by this panel of the Board of Patent Appeals
3
1966
Cavanagh et al. (Cavanagh) 3,955,020 May 4,
1976
Vohrer 4,495,018 Jan. 22,
1985
Claims 12, 13, 19, 20, 26 and 27 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nitzsche in view of
Vohrer.
Claims 14 through 18 and 21 through 25 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Nitzsche in
view of Vohrer and Cavanagh.
Rather than reiterate the examiner's statement of the
above rejections and the conflicting viewpoints advanced by
the examiner and the appellant, we refer to pages 2 through 9
of the examiner's answer (Paper No. 10), to the supplemental
answer (Paper No. 12), to pages 4 through 25 of the
appellant's brief (Paper No. 9) and to the reply brief (Paper
No. 11) for the full exposition thereof.2
Appeal No. 95-3317
Application No. 07/937,522
and Interferences.
4
OPINION
In arriving at our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art, and to the respective positions
advanced by the appellant and by the examiner. Upon
evaluation of all the evidence before us, it is our conclusion
that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness with respect to
all claims on appeal. Our reasoning for this determination
follows.
Considering first the examiner's rejection of claims 12,
13, 19, 20, 26 and 27 under 35 U.S.C. § 103 as being
unpatentable over Nitzsche in view of Vohrer, we are in
substantial agreement with the examiner's position with
respect to the patent to Nitzsche that a protective and heat
insulating covering for a frangible, impact-sensitive article
such as glass tubing is disclosed thereby, with the covering
formed by wrapping the glass tubing with self-adhering
elastomeric materials such as silicone rubbers. Other
Appeal No. 95-3317
Application No. 07/937,522
5
materials with similar characteristics may be employed (column
2, lines 14-52), and the silicone rubbers may be prepared as
either "transparent tapes or sheets" (column 2, line 62).
Moreover, Nitzsche clearly discloses that the wrapping of the
glass tubing has the advantage that "glass splinters and other
glass pieces tend to be held in place even if the glass breaks
during operation" (column 3, lines 42-44).
However, all of the independent claims on appeal require,
inter alia, the steps of "taking a resilient sheet having an
inner layer of adhesive, heating the sheet until the adhesive
layer becomes tacky, rolling the tube over the adhesive layer
to wrap the sheet around the tube," none of which are
disclosed or suggested by Nitzsche. The examiner has applied
the teachings of the patent to Vohrer as evidence of the
obviousness of modifying the process of Nitzsche to include
the missing steps noted above, and admittedly, Vohrer
discloses utilizing a textile reinforced strip 10 with a hot
melt adhesive, the strip being wound around an inner tube.
However, the inner tube is not "glass" as asserted by the
examiner on page 3 of the answer, but is made of
"thermoplastic or elastomeric material" (column 2, lines 46-47
Appeal No. 95-3317
Application No. 07/937,522
6
and paragraph (a) of claim 1) or PVC (column 5, line 27) that
is extruded from a nozzle 1 (Figure 1) to form the tube (note
Figure 1; column 5, lines 26-27; and paragraph (a) of claim
1). Furthermore, Vohrer discloses wrapping the strip 10
around the tube, then heating the wrapped tube by passing the
wrapped tube through a first heating zone 11 to adhere the
strips 10 to underlying longitudinal reinforcing strips 6
(note column 6, lines 5-8 and Figure 1).
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A prima
facie case of obviousness is established by presenting
evidence indicating that the reference teachings would appear
to be sufficient for one of ordinary skill in the relevant art
having the references before him to make the proposed
combination or other modification. See In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore,
the conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
Appeal No. 95-3317
Application No. 07/937,522
7
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988), In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258
(Fed. Cir. 1984); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986) and ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984).
Additionally, rejections based on § 103 must rest on a
factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art.
The examiner has the initial duty of supplying the factual
basis for the rejection. The examiner may not, because of
doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d
1011, 1017,
154 USPQ 173, 178 (CCPA 1967). Our reviewing court has
Appeal No. 95-3317
Application No. 07/937,522
8
repeatedly cautioned against employing hindsight by using the
applicant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings in the prior
art. See, e.g., Grain Processing Corp. v. American Maize-
Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
It is our opinion that the examiner has not provided a
sufficient factual basis from which to conclude that
appellant’s claimed invention as a whole including the
differences noted above between the independent claims on
appeal and the process of Nitzsche would have been obvious to
one having ordinary skill in the art in view of the teachings
of Vohrer. In particular, Vohrer fails to even teach the
steps of (1) "taking a resilient sheet having an inner layer
of adhesive", (2) "heating the sheet until the adhesive layer
becomes tacky", or
(3) "rolling the tube over the adhesive layer to wrap the
sheet around the tube" (emphasis added), all required by the
independent claims on appeal.
Furthermore, as stated in W.L. Gore & Assocs. Inc. v.
Appeal No. 95-3317
Application No. 07/937,522
9
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313
(Fed. Cir. 1983),
[t]o imbue one of ordinary skill in the art with
knowledge of the invention in suit, when no prior
art reference or references of record convey or
suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein
that which only the inventor taught is used against
its teacher.
It is our further opinion that the only reason to combine the
teachings of the patents to Nitzsche and Vohrer in the manner
proposed by the examiner results from a review of appellant's
disclosure and the application of impermissible hindsight.
We find nothing in the disclosure of the reinforced extruded
plastic tubing of Vohrer that would have suggested utilizing
the textile reinforced strip with hot melt adhesive as a
substitute for the self-adhering silicone rubber wrap of
Nitzsche. Moreover, even assuming that one having ordinary
skill in the art would have found it obvious to modify the
process of Nitzsche with the textile reinforced strips having
hot melt adhesive taught by Vohrer, the process ensuing from
such modification would not result in appellant's claimed
invention because it would not include steps (1) through (3)
Appeal No. 95-3317
Application No. 07/937,522
10
noted above.
Thus, we cannot sustain the examiner's rejections of
appealed claims 12, 13, 19, 20, 26 and 27 under 35 U.S.C. §
103 as being unpatentable over Nitzsche in view of Vohrer.
Furthermore, we have considered the additional teachings of
Cavanagh as applied in the rejection of appealed claims 14
through 18 and 21 through 25, but we find nothing therein to
overcome the deficiencies of the combined teachings of
Nitzsche and Vohrer. Therefore, we also cannot sustain the
examiner's rejection of these claims under 35 U.S.C. § 103.
Since we have concluded that the examiner has not established
a prima facie case of obviousness with respect to the claims
on appeal, we have not found it necessary to consider the
evidence of non-obviousness presented in the declaration of
James W. Kenney, appellant.
We make the following new rejection pursuant to the
provisions of 37 CFR § 1.196(b).
Claims 26 and 27 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention.
Appeal No. 95-3317
Application No. 07/937,522
11
Claim 26 is directed to a "process for making a disposable
one-time use, inexpensive, safety pipet tube." The second
through eighth paragraphs of this claim recite steps involved
in making the tube, but the remainder of the claim, beginning
with "drawing a liquid sample into the tube," as well as all
of claim 27 dependent therefrom, is directed to a method of
using the pipet tube. Thus, the remainder of claim 26 noted
above, along with claim 27, is inconsistent with the "process
for making" recited in the preamble of claim 26 thereby
rendering claims 26 and 27 confusing. We recognize the
inconsistency implicit in our holding that claims 26 and 27
are rejectable under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out
and distinctly claim the invention with the holding on the
other hand that the prior art fails to render the claimed
invention obvious. Normally when substantial confusion exists
as to the interpretation of the claims and no reasonably
definite meaning can be ascribed to terms in the claim, a
determination with respect to the issue of obviousness is not
made. See In re Steele, 305 F.2d 859, 863 134 USPQ 292, 295
(CCPA 1962) and
Appeal No. 95-3317
Application No. 07/937,522
12
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). However, in this instance, we consider it to be
desirable to avoid the inefficiency of piecemeal appellate
review. See
Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
Therefore, we have made the determination as to the
nonobviousness of the claims on appeal in the interest of
judicial economy based on our conclusion that the combined
teachings of the prior art would not have rendered the process
for making the pipet tube recited in claims 26 and 27 prima
facie obvious for the reasons stated above.
Accordingly, the decision of the examiner rejecting
claims 12 through 27 under 35 U.S.C. § 103 is reversed, and we
have made a new rejection of claims 26 and 27 pursuant to the
provisions of 37 CFR § 196(b).
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences
based upon the same record must be filed within one month from
the date of the decision. 37 CFR § 1.197. Should appellant
elect to have further prosecution before the examiner in
response to the new rejection under 37 CFR § 1.196(b) by way
Appeal No. 95-3317
Application No. 07/937,522
13
of amendment or showing of facts, or both, not previously of
record, a shortened statutory period for making such response
is hereby set to expire two months from the date of this
decision.
No time period for taking any subsequent action
in connection with this appeal may be extended under
37 CFR § 1.136(a).
REVERSED, 37 CFR § 1.196(b)
William E. Lyddane )
Administrative Patent Judge )
)
)
)
Appeal No. 95-3317
Application No. 07/937,522
14
James M. Meister ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Neal E. Abrams )
Administrative Patent Judge )

Appeal No. 95-3317
Application No. 07/937,522
15
John F. A. Earley
P.O. Box 750
Valley Forge, PA 19482-0750