Ex parte Miller et al.

Board of Patent Appeals and Interferences

Apr 13, 1999

08059017 (B.P.A.I. Apr. 13, 1999)

Application for patent filed May 5, 1993. According to1
the appellant, the application is a continuation of
Application 07/760,358, filed September 16, 1991, now
abandoned.
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not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GALE W. MILLER and CHARLES W. GAY
__________
Appeal No. 96-0918
Application 08/059,0171
___________
ON BRIEF
___________
Before CALVERT, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
Appeal No. 96-0918
Application 08/059,017
In each of the independent claims on appeal, the height2
of certain bristles is said to be "of the order of" one-tenth
of an inch. Consistent with the original disclosure (page 8,
line 22), we interpret same to mean "approximately" one-tenth
of an inch.
2
claims 23 to 25, 27 to 31, 33 and 34. Claims 10, 12 and 14 to
17 have been allowed. Claims 18 to 21, the only other
remaining
claims in the application, have been withdrawn from further
consideration under 37 CFR § 1.142(b) as not being readable on
the elected invention.
Appellants’ invention pertains to a device for cleaning
surgical instruments. The subject matter before us on appeal
is illustrated by reference to representative claim 23, a copy
of which is found in an appendix to appellants’ brief.2
The references of record relied upon by the examiner in
support of the rejections are:
Larson 2,250,112 Jul. 22, 1941
Nordgren 3,107,665 Oct. 22, 1963
Racioppi 4,945,598 Aug. 7, 1990
Wechsler 515,233 Jun. 13, 1938
(United Kingdom)
Claims 23 to 25, 27, 29 to 31 and 33 stand rejected under
Appeal No. 96-0918
Application 08/059,017
3
35 U.S.C. § 103 as being unpatentable over Wechsler in view of
Larson and Racioppi.
Claims 28 and 34 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Wechsler in view of Larson and
Racioppi as applied in the rejection of claim 23 et al., and
further in view of Nordgren.
OPINION
According to appellants’ specification, the bristles of
the disclosed cleaning device can act to clean surgical
instruments in several ways. For example, a surgical
instrument can be dragged or pushed across the bristles or
rotated within the bristles to clear the exposed surfaces of
the instrument. Also, the interior of a suction tube can be
cleaned by moving the tube vertically up and down over
bristles which enter the tube to dislodge coagulum or the
like. Emphasis in the specification is placed on forming each
bristle to have a non-circular cross-section and one or more
vertical sharp edges. The sharp edges are said to act to
facilitate the scraping action of the bristles and the non-
Appeal No. 96-0918
Application 08/059,017
4
circular cross-section is said to be advantageous since it
allows air to pass around the bristles while inside a suction
tube, thus enhancing the cleaning action (specification, page
4). This feature of appellants’ invention is reflected in the
language of the independent claims on appeal which calls for
"each of said bristles being of a non-circular cross-section
and having a longitudinal axis, each of said bristles further
having at least one edge extending parallel to said axis."
Appellants’ specification also states that the device
allows for convenient one-hand use because it can be mounted
to a convenient nearby surface such as an operating room
drape, a surgeon’s gown, or even a surgeon’s wrist. This is
reflected in the requirement of the independent claims calling
for "attachment means secured to said base [of the cleaning
device] for releasably attaching said base to a surface."
Wechsler, the examiner’s primary reference in each of the
rejections, pertains to a clothes brush especially suitable
for removing mud splashes (page 1, lines 10 to 15). Wechsler
apparently commended itself to the examiner’s attention
because of its showing of providing the brush with bristles of
different lengths. As explained on page 4, lines 25 to 33,
Appeal No. 96-0918
Application 08/059,017
5
[o]wing to the different lengths of the bristles,
the short bristles are harder than the long bristles
and therefore in brushing, for example, clothes, the
brushing may be started by using the short bristles
to remove mud, and may be finished with the long
bristles to remove the last traces of dust.
Wechsler is silent as to the cross-sectional shape of the
bristles.
Larson pertains to a hair brush. The bristles of
Larson’s hair brush are of diamond or triangular cross-
sectional shape to provide relatively sharp edges along their
length. As explained on page 2, left column, lines 52 to 62,
the hair filaments 15 will pass in a more or less
wavy or zig-zag line between adjacent bristles, and
in somewhat snubbed relation to the latter as
indicated in Figs. 5 and 6, and consequently, the
bristle edges will be drawn along the hair filaments
with a strong frictional contact therewith, whereby
said filaments will not only be thoroughly scraped,
so as to assure efficient removal of dirt particles
and encrustations therefrom, but also so as to be
subjected to a flattening action.
Racioppi pertains to a brush-like device for cleaning
razors, and includes a suction cup 21 for securing the device
to a wall surface.
In rejecting the claims, the examiner contends that it
would have been obvious to one of ordinary skill in the art to
Appeal No. 96-0918
Application 08/059,017
6
modify the bristles of Wechsler to be of triangular cross-
section having at least one edge extending parallel to the
bristle’s longitudinal axis in view of Larson’s teachings, and
to provide means for releasably attaching the brush to a
surface in view of Racioppi’s teachings, "in order to produce
a disposable brush having bristles that may dislodge unwanted
material from a surface" (answer, page 4). The examiner
further explains:
Though [Larson] is used to clean hair, it still
discloses that it is old and known to provide
brushes with non-circular cross sectional bristles
in order to provide a scraping action which is
highly effective to remove adhering dirt particles
from a surface. It would be obvious . . . to modify
the bristles of Wechsler to be non-circular as
suggested by Larson in order to provide a highly
effective scraping action on any surface to remove
dirt particles. As to the means for securing the
base of the brush to a surface, the Racioppi
reference also discloses a brush, this one used to
clean razors including bristles and a base and a
suction means (21) provided on the base for keeping
the brush stationary. . . . It would have been
obvious . . . to provide to the brush of Wechsler a
suction device as suggested by Racioppi or any other
type of securing means in order to selectively
secure the brush at a desired position or location.
[Answer, pages 6-7.]
We will not sustain this rejection.
The mere fact that the prior art structure of Wechsler
Appeal No. 96-0918
Application 08/059,017
7
could be modified as proposed by the examiner does not make
such modifications obvious unless the prior art suggests the
desirability of doing so. In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The brushes of Wechsler
and Larson would be viewed by one of ordinary skill in the art
as differing fundamentally in the way they clean. The
scraping action of Larson’s bristles is predicated on the
ability of the bristles to penetrate into and move along the
sides of the individual hair filaments such that the hair
filaments pass between adjacent bristles (page 1, left column,
lines 12-16; page 2, left column, lines 51-58). In contrast,
one of ordinary skill in the art would view the brush of
Wechsler as being designed to merely remove mud spatters from
the surface of clothing. The artisan would reasonably infer
as much from Wechsler’s disclosure because the brush thereof
is said to be for removing hardened or dried mud splashes
(page 1, lines 22-28) or light dust (page 3, lines 33-34) from
clothing, and because of the lack of any disclosure, teaching,
or suggestion in Wechsler that the bristles should penetrate
to any significant extent into the fibers of the clothing in
Appeal No. 96-0918
Application 08/059,017
We appreciate that it might possibly be argued that3
Wechsler’s brush could be used to remove mud splashes from
clothes having a soft or fuzzy surface such that the bristles
would inherently penetrate into the fibers. In our view, this
would amount to a hindsight analysis of Wechsler’s disclosure
rather than on anything fairly taught by that reference.
8
order to remove dirt. As such, there would appear to be no3
reason from providing bristles in Wechsler that have sharp
edges in order to bring about the sort of scraping action
provided by Larson’s bristles, apart from a hindsight reading
of what these references teach. The examiner’s reliance on
Racioppi for a suggestion that it would have been obvious to
releasably mount Wechsler’s clothes brush to a support surface
also is not well taken. In that Wechsler’s brush is obviously
designed to be held in the hand when in use, there would
appear to be no cogent reason for releasably mounting it to a
support surface in use, as we understand the examiner to be
proposing. In short, when we put aside the appellants’
disclosure and concentrate only on the teachings of Wechsler,
Larson and Racioppi, it is clear to us that the ordinarily
skilled artisan would not have combined these reference
teachings in a manner that would have resulted in the subject
matter of claims 23 and/or 29, the two independent claims on
Appeal No. 96-0918
Application 08/059,017
9
appeal here.
In light of the foregoing, we conclude that the teachings
of Wechsler, Larson and Racioppi do not establish a prima
facie
case of obviousness of the subject matter of claims 23 to 25,
27, 29 to 31 and 33.
The Nordgren reference applied in the rejection of claims
28 and 34 does not render obvious what we have found to be
lacking in Wechsler, Larson and/or Racioppi. Therefore, a
prima facie case of obviousness with respect to the subject
matter of claims 28 and 34 also has not been established.
In view of the above, it is unnecessary for us to
consider appellants’ evidence of nonobviousness, i.e., the
declaration of co-inventor Gale W. Miller, filed March 9,
1994.
The decision of the examiner is reversed.
REVERSED
Appeal No. 96-0918
Application 08/059,017
10
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS/pgg
Herbert C. Brinkman
Wood, Herron & Evans
2700 Carew Tower
Cincinnati, OH 45202