Ex parte Maudal

Board of Patent Appeals and Interferences

Mar 5, 1998

08238926 (B.P.A.I. Mar. 5, 1998)

Application for patent filed May 6, 1994. According to1
the appellant, the application is a continuation of Application
No. 07/880,901, filed May 8, 1992, now U.S. Patent No. 5,336,018,
which is a continuation of Application No. 07/497,489, filed
March 22, 1990, now abandoned.
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journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte INGE MAUDAL
____________
Appeal No. 97-4056
Application No. 08/238,9261
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection
of claims 13, 14 and 20. Subsequent to the final rejection, the
examiner allowed claims 1 through 12 and 19. Claims 15 through
18 have been canceled.
Appeal No. 97-4056
Application No. 08/238,926
We AFFIRM-IN-PART.
Appeal No. 97-4056 Page 3
Application No. 08/238,926
BACKGROUND
The appellant's invention relates to a system for cleansing
a harbor or bay. An understanding of the invention can be
derived from a reading of exemplary claims 13 and 20 and a copy
of those claims, as they appear in the appendix to the
appellant's brief, is attached to this decision.
The prior art reference of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102(b) is:
Parker 833,544 Oct. 16, 1906
Claims 13, 14 and 20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Parker.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 102(b) rejection,
we make reference to the examiner's answer (Paper No. 23, mailed
May 27, 1997) and the supplemental examiner's answer (Paper No.
25, mailed July 21, 1997) for the examiner's complete reasoning
in support of the rejection, and to the appellant's brief (Paper
No. 20, filed March 13, 1997), reply brief (Paper No. 24, filed
June 3, 1997), citations on appeal (Paper No. 26, filed August
Appeal No. 97-4056 Page 4
Application No. 08/238,926
29, 1997) and supplemental brief (Paper No. 27, filed September
2, 1997) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
Claim 20
The rejection of claim 20 under 35 U.S.C. § 102(b) as being
anticipated by Parker is sustained.
Parker discloses a method and apparatus for cleansing
harbors. By way of example, Parker shows in Figure 1, his
invention applied to the harbor of Havana, Cuba. Specifically,
Figure 1 illustrates a bay or harbor 2 whose entrance is the
strait 3, opening into the sea 4. Additionally, Figure 1 shows a
canal or waterway 7 affording direct communication between the
open sea 4 and an upper end 5 of the bay 2 and a head-producing
Appeal No. 97-4056 Page 5
Application No. 08/238,926
mechanism 8, illustrated in detail in Figures 2-3, located at the
intake end of the canal at any point where it may be directly
exposed to the action of the waves of the sea at all tides. As
shown in Figures 2-3, the head-producing mechanism 8 includes an
apron (comprised of elements numbered 25, 26, 27 and 35) hinged
to cross-pieces 18 by a suitable hinge connection 28. Parker
teaches at page 2, lines 18-35, that the head-producing mechanism
8 is employed
to produce and to preserve a constantly higher level of
water within the canal 7 than the varying mean level of the
sea without. The two levels change with the rise and fall
of the tide; but at all tides there is a differential of
levels or head, which produces continuously a flow through
the canal 7 and discharge therefrom into the end 5 of the
bay 2.
A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently
described, in a single prior art reference. Verdegaal Bros. Inc.
v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to
whether a reference anticipates a claim must focus on what
subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court
in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
Appeal No. 97-4056 Page 6
Application No. 08/238,926
Additionally, Parker specifies (page 1, lines 22-26) that2
harbors of the class specified have a narrow entrance or strait
into which drives at regular intervals the tide from the sea, of
which a portion with equal regularity recedes.
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it
is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference, or 'fully met' by it."
We agree with the examiner that claim 20 "reads on" Parker
and therefore Parker does anticipate claim 20. We read claim 20
on Parker as follows: In a harbor (Parker's bay or harbor 2)
having an entrance (Parker's strait 3) between the harbor and an
open sea area (Parker's sea 4), the entrance being sufficiently
unobstructed to permit free and continuous tidal propagation
therethrough (the appellant admits on page 19, lines 37-39, of
the brief that the tide propagates through Havana Harbor as a
wave), a system for cleansing the harbor (Parker's canal or2
waterway 7 and head-producing mechanism 8) comprising: a conduit
(Parker's canal or waterway 7) having first and second openings;
said first opening placed within said harbor (Parker's canal or
waterway 7 communicates with the upper end 5 of the bay or harbor
2 and thus inherently has an outlet opening at the harbor end of
Appeal No. 97-4056 Page 7
Application No. 08/238,926
the canal or waterway 7); said second opening placed
substantially in said open sea area (see Parker's Figure 2 which
shows that the canal or waterway 7 has an inlet opening placed in
the sea area); and said first and second opening being in fluid
communication to permit flow of water through said conduit
(Parker's canal or waterway 7 permits flow of water from the
inlet opening to the outlet opening at the harbor end of the
canal or waterway 7).
The appellant's argument (supplemental brief, page 18, and
brief, pages 31-32) that appellant's invention resides in the
removal of a critical and massive structure (i.e., Parker's head-
producing mechanism 8) is unpersuasive for the following reason.
Claim 20 is drafted utilizing the transitional phrase
"comprising." Therefore, claim 20 is open-ended and does not
exclude additional, unrecited elements such as Parker's head-
producing mechanism 8.
Since each and every element as set forth in claim 20 is
found, either expressly or inherently described, in Parker, we
sustain the examiner's rejection of claim 20 under 35 U.S.C.
§ 102(b).
Appeal No. 97-4056 Page 8
Application No. 08/238,926

Claims 13 and 14
The rejection of claims 13 and 14 under 35 U.S.C. § 102(b)
as being anticipated by Parker is not sustained.
Independent claim 13 recites, inter alia, a system for
cleansing a polluted bay comprising (1) fluid communication means
across the isthmus for establishing flow of water between the
open ocean area and a back area; and (2) flow control means in
the fluid communication means for regulating flow of water.
The appellant argues in the reply brief and the supplemental
brief that Parker does not teach or disclose the "flow control
means in the fluid communication means for regulating flow of
water" as recited in claim 13. The examiner responded
(supplemental examiner's answer, pages 2-4) by finding that
(1) Parker's head-producing mechanism 8 regulates the flow of
water, (2) Parker's head-producing mechanism 8 is not the same
structure as disclosed by the appellant for performing the
recited function, and (3) Parker's head-producing mechanism 8
does not operate on the same principle as the appellant's flow
control means. Nevertheless, the examiner appears to be of the
Appeal No. 97-4056 Page 9
Application No. 08/238,926
view that, because claim 13 does not set forth specifically how
the claimed means functions to regulate flow, the "flow control
means" language of the claim may be broadly interpreted to read
on Parker's structure.
As recently explained in In re Donaldson, 16 F.3d 1189,
1193, 29 USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the Patent and
Trademark Office (PTO) is not exempt from following the statutory
mandate of 35 U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed as
a means or step for performing a specified function without
the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
Accordingly, the PTO may not disregard the structure disclosed in
the specification corresponding to such means when rendering a
patentability determination. Thus, in order to meet a
"means-plus-function" limitation, the prior art must (1) perform
the identical function recited in the means limitation and
(2) perform that function using the structure disclosed in the
specification or an equivalent structure. Cf. Carroll Touch Inc.
v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d
1836, 1840 (Fed. Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg.
Appeal No. 97-4056 Page 10
Application No. 08/238,926
"[A]n equivalent results from an insubstantial change3
which adds nothing of significance to the structure, material, or
acts disclosed in the patent specification." Valmont, 983 F.2d
at 1043, 25 USPQ2d at 1455.
Co., 983 F.2d 1039, 1042, 25 USPQ2d 1451, 1454 (Fed. Cir. 1993);
Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12 USPQ2d 1382, 1386
(Fed. Cir. 1989).
It is our opinion that the structure of Parker's head-
producing mechanism 8 is not the structure disclosed in the
appellant's specification for performing the function or an
equivalent structure. The appellant's specification sets forth
five specific embodiments, shown in figures 7a-11b, for the
corresponding structure to the recited "flow control means in the
fluid communication means for regulating flow of water."
Clearly, Parker's head-producing mechanism 8 is not the same
structure as disclosed by the appellant. Thus, the issue of
whether Parker's head-producing mechanism 8 is an equivalent
structure to any of the five specific embodiments disclosed by3
the appellant must be resolved. Comparison of Parker's head-
producing mechanism 8 to the five specific embodiments disclosed
by the appellant compels us to the conclusion that the claimed
"flow control means" and Parker's flow control means (i.e., head-
Appeal No. 97-4056 Page 11
Application No. 08/238,926
producing mechanism 8) are not structurally equivalent under
section 112. We reach this conclusion based upon the fact that
they operate in strickenly different manners. Each of the five
embodiments of the appellant's "flow control means" regulates the
flow of water dependent on the direction of the tide so that in
one direction of the tide the flow control means permits flow
through the flow communications means (i.e., the conduit 32,
conduit 132, or channel 232) and in the other direction of the
tide the flow control means restricts/regulates flow through the
flow communications means. Parker's flow control means (i.e.,
head-producing mechanism 8) does not regulate the flow of water
dependent on the direction of the tide, in fact, Parker's flow
control means permits flow through his flow communications means
(i.e., canal or waterway 7) in both directions of the tide.
Thus, we agree with the examiner that Parker's head-producing
mechanism 8 does not operate on the same principle as the
appellant's flow control means. However, for that reason, we
find that Parker's head-producing mechanism 8 is not an
equivalent structure to the structure described in the
appellant's specification expressed in claim 13 as "flow control
means."
Appeal No. 97-4056 Page 12
Application No. 08/238,926
Since each and every element as set forth in independent
claim 13 is not found, either expressly or inherently described,
in Parker, we do not sustain the examiner's rejection of claim
13, or claim 14 which depends therefrom, under 35 U.S.C.
§ 102(b).
Appeal No. 97-4056 Page 13
Application No. 08/238,926
CONCLUSION
To summarize, the decision of the examiner to reject claims
13 and 14 under 35 U.S.C. § 102(b) is reversed and the decision
of the examiner to reject claim 20 under 35 U.S.C. § 102(b) is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4056 Page 14
Application No. 08/238,926
INGE MAUDAL
604 LASSEN LANE
COSTA MESA, CA 92626-3122
Appeal No. 97-4056
Application No. 08/238,926
Page 1
APPENDIX
13. In a polluted bay which is open to an ocean area
through a substantially unobstructed entrance, the bay having
back areas separated from the ocean area by an isthmus, a system
for cleansing the polluted bay comprising:
fluid communication means across the isthmus for
establishing flow of water between the open ocean area and a back
area; and
flow control means in the fluid communication means for
regulating flow of water.
20. In a harbor having an entrance between the harbor and
an open sea area, the entrance being sufficiently unobstructed to
permit free and continuous tidal propagation therethrough, a
system for cleansing the harbor comprising:
a conduit having first and second openings;
said first opening placed within said harbor;
said second opening placed substantially in said open sea
area; and
said first and second opening being in fluid communication
to permit flow of water through said conduit.
APPEAL NO. 97-4056 - JUDGE NASE
APPLICATION NO. 08/238,926
APJ NASE
APJ STAAB
APJ ABRAMS
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 22 Dec 98
FINAL TYPED: