Ex parte Ollar

Board of Patent Appeals and Interferences

Jan 29, 1998

07899707 (B.P.A.I. Jan. 29, 1998)

Application for patent filed June 17, 1992. According1
to applicant, this application is a divisional of Application
07/426,573, filed October 24, 1989, now U.S. Patent 5,153,119.
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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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT-A. OLLAR
____________
Appeal No. 94-3182
Application 07/899,7071
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and GRON, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
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This is an appeal from an examiner’s rejection of Claims
29, 30 and 31. Claims 1-35 are pending in this case. In
response to a restriction requirement under 37 CFR § 1.142(a),
applicant elected to prosecute the invention of Claims 29-31.
Nonelected Claims 1-28 and 32-35 have been withdrawn from
consideration by the examiner in accordance with 37 CFR §
1.142(b).
Claims 29-31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ollar, Robert-A. (Ollar), “A Paraffin Baiting
Technique that Enables a Direct Microscopic View of ‘in situ’
Morphology of Nocardia Asteroids with the Acid-Fast or
Fluorescence Staining Procedures,” Zbl. Bakt. Hyg., I. Abt.
Orig. A 234, pp. 81-90 (1976). The examiner entered the
rejection under 35 U.S.C. § 102(b) as a new ground in the
Examiner’s Answer (Paper No. 8, mailed February 16, 1994),
simultaneously withdrew all the appealed final rejections of
Claims 29-31 under 35 U.S.C. § 103 in view of the combined
teachings of Ollar and other prior art, and repeated the new
ground of rejection in the Supplemental Examiner’s Answer
(Paper No. 12). Claims 29-31 read as follows:
29. An apparatus for determining the sensitivity of
MAI to different antibiotics and dosages thereof
comprising:
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a plurality of test tubes each adapted to contain a
sterile aqueous broth, an amount of antibiotic to be
tested and MAI to be assayed; and
means for determining the concentration of said
antibiotic necessary to resist said MAI growth, said
means comprising a plurality of paraffin coated slides,
each of which is adapted to being placed in one of said test
tubes, whereby observation of the growth of said MAI on
each of said slides can be used to determine the
concentration of said antibiotic necessary to resist growth
of said MAI.
30. The apparatus of Claim 29, wherein one of said
test tubes is adapted to be a control test tube
containing no antibiotic.
31. The apparatus of Claim 30, wherein the other
said test tubes are adapted to contain different
concentrations of said antibiotic.
The examiner newly rejected appellant’s claims under
35 U.S.C. § 102(b) over Ollar alone because the examiner found
(Supplemental Examiner’s Answer, page 2, first full
paragraph):
Ollar teaches the apparatus of the instant
invention viz. a plurality of glass test tubes and
a plurality of paraffin-coated slides adapted to be
inserted into the glass test tubes.
The examiner notes that (Supplemental Examiner’s Answer, page
2, second paragraph, to page 3, first paragraph):
. . . it has been held by the courts that the recitation
that an element is “adapted to” perform a function is
not a positive limitation but only requires the ability
to so perform and does not constitute a limitation in
any patentable sense. In re Hutchinson, 69 USPQ 138 . .
Appeal No. 94-3182
Application 07/899,707
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.
. . . a recitation with respect to the manner in
which a claimed apparatus is intended to be employed
does not differentiate the claimed apparatus from a
prior art apparatus satisfying the claimed structural
limitations (Ex parte Masham, 2 USPQ2d 1647 [1987]).
It has further been held that the functional “whereby”
statement does not define any structure and accordingly
can not serve to distinguish (In re Mason, 114 USPQ 127,
44 CCPA 937 (1957)).
On the other hand, we are aware of support for a holding that
“adapted to” and “whereby” clauses in claims further limit the
claimed subject matter and should not be disregarded. For
example, see In re Venezia, 530 F.2d 956, 958-59, 189 USPQ
149, 151-52 (CCPA 1976). Pac-Tec Inc. v. Amerace Corp., 903
F.2d 796, 801, 14 USPQ2d 1871, 1876 (Fed Cir. 1990) recognizes
(emphasis added) that:
. . . by deleting the preamble and all limitations
that include “adapted to”, ”whereby”, and “thereby”
. . . the claims are reduced to mere collections
of parts.
Before determining whether appellant’s claims are
unpatentable under 35 U.S.C. § 102(b), examiners must first
ascertain exactly what subject matter is being claimed. See
In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970)(“Once having ascertained exactly what subject matter is
being claimed, the next inquiry must be into whether such
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subject matter is novel.”) See also In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971):
[T]he claims must be analyzed first in order to
determine exactly what subject matter they
encompass. . . .
This first inquiry therefore is merely to
determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here
where the definiteness of the language employed must
be analyzed--not in a vacuum, but always in light of
the teachings of the prior art and of the particular
application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the
pertinent art.
The examiner appears here to have interpreted the claim
language in a vacuum. It is certainly true that terms which
merely set forth the intended use for, or a property inherent
in, subject matter that is in fact old, do not differentiate
the claimed subject matter from the subject matter the prior
art describes. In re Pearson, 494 F.2d 1399, 1403, 181 USPQ
641, 644 (CCPA 1974). However, Pearson cautions at 1403, 181
USPQ at 644:
We do not mean to imply that terms which recite
the intended use or a property . . . can never be used
to distinguish a new from an old composition. However,
assuming their compliance with the definiteness
requirement
of the second paragraph of 35 U.S.C. 112, such terms must
define, indirectly at least, some characteristic not
found
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in the old composition.
The problem with this appeal is that the examiner appears
to have held that terms such as “adapted to contain” and
“whereby” in patent claims per se do not further limit the
subject matter claimed and so disregards them. However, claim
interpretation independent of the teaching of the supporting
specification is improper. Claims are to be given their
broadest reasonable interpretation, but the interpretation
must be consistent with the description of the invention in
the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). The purpose of broad claim
interpretation during examination is to completely explore the
invention applicant claims and its relation to the prior art,
to bring ambiguities to light, and to induce and allow
applicant to clarify and delineate the claimed invention by
amendment. Id. Prosecution which starts with the Examiner’s
Answer defeats the primary purpose of examination.
In this case, the rejection under 35 U.S.C. § 102(b) was
entered for the first time in the Examiner’s Answer. As a
result, the exploration of the invention applicant claims and
its relation to the prior art was incomplete, claim
ambiguities were inadequately considered, and appellant’s
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efforts to clarify and delineate the claimed subject matter by
amendment appear to have been indeliberate.
Alas, when considered in light of the specification, the
phrases “a plurality of test tubes each adapted to contain a
sterile aqueous broth, an amount of antibiotic to be tested
and MAI to be assayed” and “whereby observation of the growth
of said MAI on each of said slides can be used to determine
the concentration of said antibiotic necessary to resist
growth of said MAI” in Claim 29 are subject to many different
interpretations. We find significant, however, that no single
interpretation appears to be entirely consistent with the
teaching in the specification and satisfactorily reflects the
subject matter which applicant appears to regard as his
invention.
For example, applicant’s specification cites Ollar and
indicates that the subject matter described therein is not his
invention. See the paragraph bridging pages 3 and 4 of the
specification. The specification indicates that applicant’s
test tubes differ from Ollar’s test tubes by the sterile
aqueous broth and optionally the antibiotic and/or MAI they
contain. See
page 4, line 19 to page 5, line 14; and page 11, line 10, to
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page 12, line 2. Note that dependent Claims 30 and 31, if
they are not read to further limit the amount of antibiotic
contained in the test tubes of Claim 29, do not further limit
Claim 29 at all and are improper dependent claims. See 35
U.S.C. § 112, fourth paragraph.
On the other hand, in holding that appellant’s claims are
directed to no more than test tubes containing paraffin coated
slides and finding that appellant’s claims are anticipated by
the test tubes containing the paraffin coated slides described
by Ollar, the examiner gave appellant notice that his claims
are ambiguous and the phrase “adapted to contain a sterile
aqueous broth, an amount of antibiotic to be tested and MAI to
be assayed” in Claim 29 is held meaningless, i.e., the phrase
does not further limit the claimed invention. Rather than
amend the claim so to alleviate the ambiguity and clarify that
the test tubes of the claimed apparatus do indeed contain a
sterile aqueous broth and optionally an antibiotic and/or MAI,
appellant incomprehensively added means plus function
limitations, apparently to distinguish the paraffin coated
slides of the claimed apparatus from the paraffin coated
slides Ollar describes which inherently are adapted to being
placed in test tubes which are capable of being used to
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determine the concentration of an antibiotic necessary to
resist MAI growth on the slides.
We hereby vacate the examiner’s rejection in this case.
We cannot here assume ab initio, as the court did in In re
Pearson, 494 F.2d at 1403, 181 USPQ at 644 (CCPA 1974), that
appellant’s claims comply with the definiteness requirement of
the second paragraph of 35 U.S.C. § 112. The phrase “adapted
to contain” does not clearly define, directly or indirectly,
some characteristic not found in the old composition.
Thus, the examiner’s rejection under 35 U.S.C. § 102(b)
is vacated.
New Ground of Rejection Under 37 CFR § 1.196(b)
For the reasons stated above, we hereby newly reject
Claims 29, 30 and 31 under 35 U.S.C. § 112, second paragraph.
It is not clear from the teaching of the specification that
the test tubes which comprise the apparatus of Claims 29, 30
and 31 “contain [(1)] a sterile aqueous broth, [(2)] an amount
of antibiotic to be tested and [(3)] MAI to be assayed” (Claim
29). Clarification of this ambiguity is readily accomplished
by amendment. If the tubes contain broth, contain antibiotic
and/or contain MAI, applicant should so state explicitly to
delineate the claimed subject matter from the apparatus
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Application 07/899,707
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described by Ollar. On the other hand, if appellant declines
to explicitly state that the test tubes contain at least one
of broth, antibiotic and MAI, the examiner is justified and
hereby authorized to finally reject Claims 29-31 anew under 35
U.S.C. § 102(b) as anticipated by the test tubes Ollar
describes which are adapted to contain paraffin coated slides.
The patentability of the subject matter appellant claims
stands or falls with the clarity with which he defines the
subject matter that he regards as his invention.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new ground of
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Application 07/899,707
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rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts
relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in
which event the application will be remanded to
the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED; 37 CFR § 1.196(b)
Sherman D. Winters )
Administrative Patent Judge )
)
)
)
William F. Smith ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Teddy S. Gron )
Administrative Patent Judge )

Appeal No. 94-3182
Application 07/899,707
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