Ex parte Patterson

Board of Patent Appeals and Interferences

Jul 18, 2000

08408688 (B.P.A.I. Jul. 18, 2000)

An amendment to claim 48 was entered after the final1
rejection, as a result of which the examiner withdrew
rejections of claims 48 and 49 under 35 U.S.C. § 112, second
paragraph, and 35 U.S.C. § 102(b).
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journal and (2) is not binding precedent of the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 A. STEVEN PATTERSON
____________
Appeal No. 1998-2001
Application No. 08/408,688
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 31-49, which constitute all of the1
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Application No. 08/408,688
2
claims remaining of record in the application, claims 1-30
having been canceled.
Appeal No. 1998-2001
Application No. 08/408,688
In the Answer, the examiner states that claims 31-49 are2
rejected under 35 U.S.C. § 103, and that "[t]his rejection" is
set forth in Paper No. 18. This is in error. In fact, there
are several rejections that apply to various groupings of the
claims, and these are set forth in the final rejection, which
is Paper No. 15.
3
The appellant’s invention is directed to a magnetic fluid
treatment apparatus (claims 31-47) and to a method for
treating a fluid with magnetism (claims 48 and 49). The
claims on appeal have been reproduced in an appendix to the
Brief.
THE REFERENCE
The references relied upon by the examiner to support the
final rejection are:
Zimmerman 4,265,755 May
5, 1981
Ambrose 5,030,344 Jul. 9,
1991
Ito 5,055,189 Oct. 8,
1991
Curtis 5,238,558 Aug. 24,
1993
THE REJECTIONS2
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 31-35, 41 and 45-49 on the basis of Curtis.
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Application No. 08/408,688
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(2) Claims 36, 37 and 40 on the basis of Curtis in view of
Zimmerman.
(3) Claim 42 on the basis of Curtis in view of Zimmerman.
(4) Claims 38 and 39 on the basis of Curtis in view of
Ambrose.
(5) Claims 43 and 44 on the basis of Curtis in view of Ito.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding them, we make reference to the Examiner’s
Answer (Paper No. 25) and the final rejection (Paper No. 15),
and to the Appellants’ Briefs (Papers No. 24 and 26).
OPINION
All of the rejections before us are under 35 U.S.C. §
103. The test for obviousness under Section 103 is what the
combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
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Application No. 08/408,688
5
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art
and not from the appellant's disclosure. See, for example,
Uniroyal, Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052,
5 USPQ2d 1434, 1052 (Fed. Cir. 1988), cert. denied, 488 U.S.
825 (1988).
The appellant’s invention relates to fluid treatment by
means of magnetic devices, for the purpose of suppressing
undesirable effects of scale and hard water. All of the
independent claims recite first, second and third magnets of
particular configurations and having specific relationships to
one another, to a base member upon which they are mounted and
to a spacer positioned on the base member. It is the
examiner’s position that the subject matter recited in these
claims would have been obvious to one of ordinary skill in the
art in view of the patent to Curtis.
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Curtis also is directed to treating water by magnetic
means. Like the appellant, Curtis uses a plurality of magnets
arranged in a particular relationship with one another, with a
spacer, and with a mounting platform. Of critical importance
to the issue of the patentability of the appellant’s claims,
however, is the requirement in the Curtis system that the
magnet unit "comprises at least four magnets" (Abstract;
column 2, line 63). Although it may contain more than four
magnets (column 6, lines 49-50), it is clear that it cannot
contain fewer than four.
In the statement of the invention in the appellant’s
apparatus claims 31 and 35 and method claim 48 the magnetic
treatment apparatus is recited as "consisting of" an
arrangement of three magnets in turn "consisting of" first,
second and third
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magnets, and in the final three lines of method claim 48 that
the method "does not include any further step of providing
additional magnets to said magnetic fluid treatment
apparatus." It is axiomatic that whereas the transitional
term "comprising" is open-ended and does not exclude
additional subject matter, the transitional term "consisting
of" does exclude any element, step, or ingredient not
specified in the claim, and thus closes the claim to the
inclusion of additional subject matter. See Manual of Patent
Examining Procedure § 2111.03. This being the case, Curtis,
on its face, does not meet the terms of the appellant’s
claims, a factor which the examiner apparently recognizes.
It is the examiner’s view, however, that it would have
been obvious to one of ordinary skill in the art to omit one
of the Curtis magnets "in order to reduce the cost and
complexity of the device in cases where a magnetic field
having a smaller area of coverage was required" (Paper No. 15,
page 3). We do not agree. From our perspective, one of
ordinary skill in the art would have been taught by Curtis
that omission of a magnet is not an option because the patent
states unequivocally that the invention must
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Application No. 08/408,688
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have at least four magnets, and to omit one magnet gives rise
to the presumption that the Curtis system then would be
inoperative for the purpose intended, absent evidence that
such would not be the case. This, in our opinion, would have
been a disincentive to the artisan of such magnitude as to
negate motivation to make the modification offered by the
examiner.
It therefore is our conclusion that the teachings of
Curtis fail to establish a prima facie case of obviousness
with regard to the subject matter recited in independent
claims 31, 35
and 48. The rejection of these claims thus is not sustained,
along with the rejection of claims 32-34, 41, 45-47 and 49.
Zimmerman, which was added to Curtis in the rejection of
dependent claims 36, 37, 40 and 42, Ambrose, added with regard
to dependent claims 38 and 39, and Ito, added with regard to
claims 43 and 44, fail to provide teachings that would
overcome the shortcoming of Curtis. Thus, the rejections of
the these claims also are not sustained.
In view of our agreement with the appellant that the
teachings of the references do not support a prima facie case
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of obviousness, it is unnecessary to consider the evidence
regarding unexpected results.
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SUMMARY
None of the five rejections is sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
NEA/sld
Appeal No. 1998-2001
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RALPH H. DOUGHERTY
DOUGHERTY & ASSOCIATES
TWO FAIRVIEW CENTER
6230 FAIRVIEW ROAD, SUITE 400
CHARLOTTE, NC 28210
Shereece
Appeal No. 1998-2001
Application No. 08/408,688
APJ ABRAMS
APJ
APJ KEYBOARD()
REVERSED
Prepared: March 2, 2001