Ex parte Lindroos et al.

Board of Patent Appeals and Interferences

Mar 19, 1999

08521358 (B.P.A.I. Mar. 19, 1999)

Application for patent filed August 31, 1995. According1
to the appellants, the application is a continuation of
Application No. 08/228,139, filed April 15, 1994, now U.S.
Patent No. 5,495,626.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUNNAR LINDROOS and PAUL WALLSTROM
____________
Appeal No. 1998-1778
Application No. 08/521,3581
____________
ON BRIEF
____________
Before CALVERT, MEISTER, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
Appeal No. 1998-1778 Page 2
Application No. 08/521,358
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 1 to 9, 11 to 17 and 23-27. Claims 10 and 18-22
have been canceled. In the brief (p. 1), the appellants
withdrew the appeal with regard to claims 1 to 5, 7, 8, 11, 14
to 17 and 24. Accordingly, the appeal is dismissed with
respect to claims 1 to 5, 7, 8, 11, 14 to 17 and 24. Claims
6, 9, 12, 13, 23, 25, 26 and 27 remain on appeal.
We REVERSE.
BACKGROUND
The appellants' invention relates to a vacuum sewer
toilet system. An understanding of the invention can be
derived from a reading of exemplary claims 1 and 9, which
appear in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Steltz 3,474,469 Oct. 28,
1969
Appeal No. 1998-1778 Page 3
Application No. 08/521,358
Badger et al. 4,357,719 Nov. 9,
1982
(Badger)
Raupuk, Jr. et al. 4,520,513 June 4,
1985
(Raupuk)
Kenway 4,678,879 July 7,
1987
Stroby et al. 4,865,631 Sep.
12, 1989
(Stroby)
Ishii 4,892,988 Jan. 9,
1990
Olin et al. 4,928,326 May 29,
1990
(Olin)
Terve 5,214,807 June 1,
1993
Oldfelt et al. 5,245,711 Sep.
21, 1993
(Oldfelt)
Claims 12 and 13 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellants regard as the invention.
Claims 9 and 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Terve in view of Olin and Kenway.
Appeal No. 1998-1778 Page 4
Application No. 08/521,358
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Terve in view of Olin, Kenway, Steltz and
Ishii.
Claim 26 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Terve in view of Olin, Kenway, Stroby and
Badger.
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Terve in view of Olin, Kenway, Stroby,
Badger and Raupuk.
Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Terve in view of Olin, Kenway and Oldfelt.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (mailed
December 12, 1997) for the examiner's complete reasoning in
support of the rejections, and to the appellants' brief (filed
Appeal No. 1998-1778 Page 5
Application No. 08/521,358
October 14, 1997) and reply brief (filed February 17, 1998)
for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We will not sustain the rejection of claims 12 and 13
under 35 U.S.C. § 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Appeal No. 1998-1778 Page 6
Application No. 08/521,358
The examiner did not respond to the appellants' argument2
in the answer.
Newly presented Figure 3A is based upon the disclosure3
set forth on page 8, lines 27-32, of the specification.
The examiner did not respond to this argument of the4
appellants.
The examiner stated (answer, pp. 5-6) that
[c]laims 12 and 13 are non-sequitur. The claims are
directed to the Fig. 3 embodiment which does not include
the "electrically operated device" defined in claim 1.
Since the hybrid embodiment required to describe the
claimed subject matter has been determined to be not
supportable by the original disclosure (see petition
decision mailed August 21, 1997), the claims remain
indefinite.
The appellants argue (brief, p. 20) that claims 12 and 13
comply with the requirements of 35 U.S.C. § 112, second
paragraph. Specifically, the appellants point out how claims
1, 12 and 13 are readable on Figure 3. In addition, the2
appellants argue (reply brief, pp. 1-2) that claims 1, 12 and
13 are readable on newly presented Figure 3A.3,4
In our view, claims 12 and 13 define the metes and bounds
of the claimed invention with a reasonable degree of precision
and particularity. Accordingly, claims 12 and 13 are
Appeal No. 1998-1778 Page 7
Application No. 08/521,358
We can see how such a determination might raise a5
written description issue under the first paragraph of 35
U.S.C. § 112. It is our view that the subject matter of
claims 12 and 13 does have written description support in the
original disclosure.
considered by us to be definite, as required by the second
paragraph of
35 U.S.C. § 112. Moreover, in this case, we fail to see how
the examiner's determination that claims 12 and 13 were not
readable on any original drawing figure, raised an issue of
indefiniteness. In any event, it is our determination that5
claims 1, 12 and 13 are readable on original Figure 3 and
newly presented Figure 3A.
The obviousness issues
We will not sustain the rejection of claims 6, 9, 23, 25,
26 and 27 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
Appeal No. 1998-1778 Page 8
Application No. 08/521,358
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
Claims 9 and 27
We agree with the appellants' arguments that the combined
teachings of the applied prior art (i.e., Terve, Olin and
Kenway) would not have suggested the subject matter of claim 9
to one of ordinary skill in the art. Claim 9 requires an
operational unit containing a solenoid valve and at least one
electrical component to be sealed against humidity and exposed
for operation by a person in the toilet compartment and
otherwise protected against unauthorized human access.
However, these limitations are not suggested by the applied
prior art. In our view, the only possible suggestion for
combining the applied prior art in the manner proposed by the
examiner to meet the above-noted limitations stems from
hindsight knowledge derived from the appellants' own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
Appeal No. 1998-1778 Page 9
Application No. 08/521,358
Claim 27 depends from claim 9.6
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It
follows that we cannot sustain the examiner's rejection of
claim 9.
We have also reviewed the references additionally applied
in the rejection of claim 27 but find nothing therein which6
makes up for the deficiencies discussed above. Accordingly,
we cannot sustain the examiner's rejection of claim 27 under
35 U.S.C.
§ 103.
Appeal No. 1998-1778 Page 10
Application No. 08/521,358
Claims 23 and 26
We agree with the appellants' arguments that the combined
teachings of the applied prior art (i.e., Terve, Olin and
Kenway for claim 23 and Terve, Olin, Kenway, Stroby and Badger
for claim 26) would not have suggested the subject matter of
those claims to one of ordinary skill in the art. Claims 23
and 26 both require an operational unit to contain an
electrically operated device and all electrical components for
controlling supply of operating current to the electrically
operated device to be sealed against humidity and exposed for
operation by a person in the toilet compartment and otherwise
protected against unauthorized human access. However, these
limitations are not suggested by the applied prior art. Once
again, it is our view that the only possible suggestion for
combining the applied prior art in the manner proposed by the
examiner to meet the above-noted limitations stems from
impermissible hindsight knowledge derived from the appellants'
own disclosure. It follows that we cannot sustain the
examiner's rejection of claims 23 and 26.
Appeal No. 1998-1778 Page 11
Application No. 08/521,358
Claim 6
We agree with the appellants' arguments that the combined
teachings of the applied prior art (i.e., Terve, Olin, Kenway,
Steltz and Ishii) would not have suggested the subject matter
of claim 6 to one of ordinary skill in the art. Claim 6
requires an operational unit containing an electrically
operated device and a low voltage membrane switch to be sealed
against humidity and exposed for operation by a person in the
toilet compartment and otherwise protected against
unauthorized human access. However, these limitations are not
suggested by the applied prior art. In our view, the only
possible suggestion for combining the applied prior art in the
manner proposed by the examiner to meet the above-noted
limitations stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. It follows that we cannot
sustain the examiner's rejection of claim 6.
Claim 25
Appeal No. 1998-1778 Page 12
Application No. 08/521,358
We agree with the appellants' arguments that the combined
teachings of the applied prior art (i.e., Terve, Olin, Kenway,
Stroby, Badger and Raupuk) would not have suggested the
subject matter of claim 25 to one of ordinary skill in the
art. Claim 25 requires both (1) an operational unit
containing an electrically operated device and electrical
components for controlling supply of operating current to the
electrically operated device to be sealed against humidity and
exposed for operation by a person in the toilet compartment
and otherwise protected against unauthorized human access; and
(2) a delay device wherein the closing of a rinse water supply
valve is delayed slightly relative to the closing of a sewer
valve. However, these limitations are not suggested by the
applied prior art. Once again, it is our view that the only
possible suggestion for combining the applied prior art in the
manner proposed by the examiner to meet the above-noted
limitations stems from impermissible hindsight knowledge
derived from the appellants' own disclosure. It follows that
we cannot sustain the examiner's rejection of claim 25.
Appeal No. 1998-1778 Page 13
Application No. 08/521,358
CONCLUSION
To summarize, the decision of the examiner to reject
claims 6, 9, 12, 13, 23, 25, 26 and 27 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 1998-1778 Page 14
Application No. 08/521,358
SMITH-HILL AND BEDELL
12670 NW BARNES ROAD
SUITE 104
PORTLAND, OR 97229
APPEAL NO. 1998-1778 - JUDGE NASE
APPLICATION NO. 08/521,358
APJ NASE
APJ CALVERT
APJ MEISTER
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 17 Mar 99
FINAL TYPED: