Ex parte Morris

Board of Patent Appeals and Interferences

Feb 18, 1999

08500315 (B.P.A.I. Feb. 18, 1999)

Application for patent filed July 10, 1995. 1
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journal and (2) is not binding precedent of the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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HERVY A. MORRIS
____________
Appeal No. 98-2109
Application No. 08/500,3151
____________
ON BRIEF
____________
Before CALVERT, NASE, and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
3, 5 and 9 to 11, the examiner having indicated in the answer
Appeal No. 98-2109
Application No. 08/500,315
2
that, as to the other claims remaining in the application,
claims 21 to 24 are allowed, and claims 4, 20 and 25 would be
allowable if rewritten in independent form.
The subject matter in issue is exemplified by claim 1,
the only independent claim on appeal, which reads (emphasis
added):
A liquid-jet cutting device comprising:
a cutting element for emitting a
liquid-jet stream to cut a product located
upon a product support surface;
an assembly for moving the cutting
element between a cutting position located
a cutting distance, within a cutting range,
from the product and an idle position
located an idle distance from the product
support surface; and
a deflector disk, located proximate
the idle position of the cutting element,
to deflect the liquid-jet stream when the
cutting element is moved to the idle
position.
The reference applied in the final rejection is:
Driver 5,318,395 Jun. 7,
1994
Claims 1 to 3, 5 and 9 to 11 stand finally rejected as
being anticipated by Driver, under 35 U.S.C. § 102(b).
Appeal No. 98-2109
Application No. 08/500,315
3
We note initially that on page 11 of the brief, appellant
argues that Driver is nonanalogous art. This argument will be
given no consideration, because it is well settled that "the
question whether a reference is analogous art is irrelevant to
whether that reference anticipates." In re Schreiber, 128
F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
The basis of the rejection is set forth on pages 3 and 4
of the final rejection (Paper No. 11).
Appellant argues that Driver does not anticipate claim 1
because there is no disclosure of the two limitations
underlined in the copy of the claim, supra. With regard to
the first of these limitations, i.e., the recitation "to cut a
product located upon a product support surface," the examiner
argued in the final rejection (page 7) that Driver meets this
limitation because the pipeline 30 supports the product
(liner) 35 to be cut. Appellant, on the other hand, asserts
that this limitation must be interpreted "to be a surface
which supports the product around where it is being cut,"
otherwise the limitation is superfluous (brief, page 7).
It is fundamental that during the examination of an
application, the pending claims must be interpreted as broadly
Appeal No. 98-2109
Application No. 08/500,315
4
as their terms reasonably allow, and that limitations
appearing in the specification may not be read into the
claims. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ
541, 550 (CCPA 1969). Here, all that claim 1 specifies is
that the product is "located upon a product support surface,"
and does not require that the product be supported at the
point where it is being cut. Driver’s liner 35, the product
being cut, is located upon the surface of pipe 30 which
supports it; therefore, interpretating the limitation in
question as broadly as reasonable, it is met by Driver, even
though Driver’s liner 35 is not supported (i.e., backed up) by
pipe 30 at the point where it is being cut by the liquid from
nozzle 604. If this limitation is superfluous, as argued by
appellant, that is simply an indication of its breadth.
Turning to the second limitation in dispute, the examiner
argues (answer, pages 5 and 6):
[t]he phrase "to deflect the liquid-jet
stream . . . . ." should not be construed as
defining structure. It does not describe any
structure; it merely expresses what the disk is
desired to do. However, it has well been
established that, a recitation of the intended
use of the claimed invention must result in a
Appeal No. 98-2109
Application No. 08/500,315
5
structural difference between the claimed
invention and the prior art in order to
patentably distinguish the claimed invention
from the prior art. If the prior art structure
is capable of performing the intended use, then
it meets the claim. In re Casey, [370 F.2d 576,
580,] 152 USPQ 235[, 238] (CCPA 1967); In re
Otto, [312 F.2d 937, 940,] 136 USPQ 458, 459
(CCPA 1963). Therefore, it is irrelevant
whether Driver’s disk deflects fluid when the
cutting element is moved to the idle position.
However under certain conditions such as when
Driver’s device is inserted in a pipe section
that already has been ported, Driver’s disk will
certainly deflect fluid when the cutter is moved
to the idle position as there is no liner
material between the cutting element and the
disk to hinder the stream of fluid from hitting
the disk.
Although we appreciate the examiner’s position, we do not
agree with his argument, because in our view the disk 620 of
Driver is not capable of performing the intended use recited,
i.e., of "deflect[ing] the liquid-jet stream when the cutting
element is moved to the idle position." While the disk 620 is
Appeal No. 98-2109
Application No. 08/500,315
See also In re Schreiber, 128 F.3d at 1477, 44 USPQ2d at2
1431 ("the recitation of a new intended use for an old product
does not make a claim to that old product patentable").
6
located "proximate the idle position" of cutting element
(nozzle) 604, as claimed, it cannot perform the function of
deflecting the jet from the nozzle 604 when the nozzle is in
the idle position (Fig. 7), because, since nozzle 604 does not
emit a jet when it is in that position there is no jet to be
deflected; as disclosed by Driver at col. 5, lines 27 to 36
(see also claim 5), supplying fluid to cutter 600 will cause
the nozzle 604 to move outward (from the Fig. 7 idle position)
and contact the inside wall of the liner (Fig. 8). The
examiner’s statement in the last sentence of the above-quoted
argument is not understood, since a stream of fluid is not
emitted from Driver’s nozzle 604 when it is in the idle
position.
Our conclusion that claim 1 is not readable on the Driver
apparatus is not contrary to the Otto or Casey decisions cited
by the examiner. Unlike those cases, the present limitation2
does not constitute "a method concept" which may not be relied
on to distinguish a structural claim over the prior art (Otto,
Appeal No. 98-2109
Application No. 08/500,315
7
id. ), or a manner or method of using the claimed machine
"which is not germane to the issue of patentability of the
machine itself" (Casey, id.). Rather, the limitation is in
the nature of a structural limitation, in that it effectively
requires a cutting element which is capable of emitting a
liquid-jet stream when in the idle position; otherwise, there
would be no stream for the disk to deflect. Driver does not
disclose a cutting element which can operate in such a manner,
and therefore does not anticipate
claim 1. We note in this regard that "[t]here is nothing
intrinsically wrong in defining something by what is does
rather than by what it is." In re Echerd, 471, F.2d 632, 635,
176 USPQ 321, 322 (CCPA 1973).
Accordingly, the rejection of claim 1, and therefore of
claims 2, 3, 5 and 9 to 11 dependent thereon, will not be
sustained.
Conclusion
The examiner’s decision to reject claims 1 to 3, 5 and 9
to 11 is reversed.
Appeal No. 98-2109
Application No. 08/500,315
8
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
SLD
Appeal No. 98-2109
Application No. 08/500,315
9
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