Ex parte Martin

Board of Patent Appeals and Interferences

Feb 20, 1998

08216543 (B.P.A.I. Feb. 20, 1998)

Application for patent filed March 23, 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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD A. MARTIN
__________
Appeal No. 95-1744
Application 08/216,5431
__________
ON BRIEF
__________
Before McCANDLISH Senior Administrative Patent Judge and
MEISTER and CRAWFORD, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Richard Martin (the appellant) appeals from the final
rejection of claims 8-14 and 16. Claim 15 has been indicated as
being allowable subject to the requirement that it be rewritten
to include all the subject matter of the claims from which it
Appeal No. 95-1744
Application 08/216,543
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depends. Claims 1-7 and 17-20, the only other claims present in
the application, stand allowed.
We REVERSE.
The appellant’s invention pertains to a nasal
aspirator/irrigation device. Independent claim 8 is further
illustrative of the appealed subject matter and reads as follows:
8. A nasal aspirator/irrigation device comprising:
a hollow body having a top portion and a bottom
portion opposite said top portion;
a hollow capture chamber connected to said body
bottom portion;
a nasal conduit connected to said body top
portion, having a free end portion dimensioned to
fit into a human nostril;
a vacuum-connection conduit connected to said body
top portion remote from said nasal conduit;
a vacuum-control opening operatively defined in
said body top portion, remote from said nasal
conduit;
said device being dimensioned to fit in an adult
human hand; and
wherein said nasal conduit free end has the
general configuration of a hollow triangular prism
and provides a comfortable, sealed, fit of said
nasal conduit in a human nostril.
The references of record relied on by the examiner are:
Halstead 790,051 May 16, 1905
Lunas et al. (Lunas) 3,738,363 Jun. 12, 1973
McNeil et al. (McNeil) 4,828,546 May 09, 1989
Appeal No. 95-1744
Application 08/216,543
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Exhibit A, an attachment to a declaration by Martin which was
included with the prior art statement filed on March 23, 1994
(Paper No. 2),
Claims 8-14 and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined disclosures of Exhibit A,
Halstead, McNeil and Lunas. It is the examiner’s position that
Exhibit A is the primary reference showing basically
Applicant’s structures recited by the claim with McNeil
and Lunas (teaching threaded) showing a releasable
capture chamber as recited by the claim [sic, claims 13
and 14]. The only distinction is the shape of the
nasal inserted end which is considered a matter of
obvious subjective design as stated in the previous
Final Rejection. Again it is stated that what
constitutes a comfortable fit is obviously a matter of
design as to what constitutes a comfortable fit for a
desired purpose and would accordingly be [sic, have
been] obvious to a person of ordinary skill in the art.
[Answer, page 4.]
We do not support the examiner’s position. The examiner
recognizes that in Exhibit A the nasal conduit free end does not
have “the general configuration of a hollow triangular prism” as
set forth in independent claim 8 but, nevertheless, seeks to
dismiss the claimed configuration as a “matter of obvious
subjective design.” We must point out, however, that page 6 of
the specification states that
the free end 16 of the nasal conduit 15 is constructed
in a way such that it fits more appropriately into the
vestibule of the human nose, providing a comfortable,
sealed fit of the nasal conduit in a human nostril.
The particular nasal conduit free end 16 construction
illustrated in FIGURES 1 and 2 allows a greater area of
Appeal No. 95-1744
Application 08/216,543
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negative pressure to be generated in the area of the
valve region of the nose, and allows a better and more
comfortable fit into the nose that the H.S. Martin
structure [i.e., the structure of Exhibit A]. As seen
in FIGURES 1 and 2, the free end 16 preferably has a
configuration of a hollow triangular prism . . . .
In view of these expressly stated advantages, i.e., that a free
end in the configuration of a hollow triangular allows a greater
area of negative pressure to be generated and provides a sealed
fit which is more comfortable than the free end of Exhibit A, the
claimed provision of a hollow triangular prism cannot simply be
dismissed as a “matter of subjective design” as the examiner
proposes.
As to the examiner’s assertion that “what constitutes a
comfortable fit for a desired purpose” would have been obvious,
obviousness under § 103 is a legal conclusion based on factual
evidence (In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988)). Accordingly, this bald assertion by the
examiner, without evidence in support thereof, does not provide a
sufficient factual basis for establishing the obviousness of the
of the claimed configuration of the free end within the meaning
of 35 U.S.C. § 103 (see In re GPAC Inc, 57 F.3d 1573, 1582, 35
USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
Appeal No. 95-1744
Application 08/216,543
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1057 (1968)).
None of the other references relied on by the examiner
(i.e., Halstead, McNeil and Lunas) even have a “nasal conduit
free end,” much less one being in “the general configuration of a
hollow triangular prism” as set forth in independent claim 8.
In view of the foregoing, the decision of the examiner to
reject claims 8-14 and 16 under 35 U.S.C. § 103 based on the
combined teachings of Exhibit A, Halstead, McNeil and Lunas is
reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 95-1744
Application 08/216,543
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Appeal No. 95-1744
Application 08/216,543
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