Ex parte Peter F. Bemis et al.

Board of Patent Appeals and Interferences

Dec 10, 1997

08073108 (B.P.A.I. Dec. 10, 1997)

Application for patent filed June 8, 1993.1
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(2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER F. BEMIS and AMELIA H. NEWAR and
STEVEN J. KOLSTE and WILLIAM J. GENETT
__________
Appeal No. 96-2270
Application 08/073,1081
__________
ON BRIEF
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 14-17,
Appeal No. 96-2270
Application 08/073,108
Claims 25 and 31 have been amended subsequent to final2
rejection by an amendment filed on March 20, 1995 (Paper No. 13).
Although the examiner has stated on page 1 of the answer that
this amendment has been entered, we observe that no clerical
entry thereof has in fact been made.
2
22-25 and 31-40. Claims 18-21 and 26, the only other claims2
present in the application,
have been indicated as being allowable subject to the
requirement that they be rewritten to include all the subject
matter of the claims from which they depend. We reverse.
The appellants’ invention pertains to a medical suction
system and to a method for handling medical waste. Independent
claims 14 and 35 are further illustrative of the appealed subject
matter and read as follows:
14. A medical suction system comprising:
a suction canister for holding fluid drained from a
patient, said suction canister including a suction port
for communication with a vacuum source and a patient
port for communication with a patient, and
a cleaning station for removably supporting said
suction canister and for automatically draining and
cleaning said suction canister after said suction port
is disconnected from the vacuum source and said patient
port is disconnected from the patient.
35. A method for handling medical waste, said method
comprising the steps:
(a) collecting fluid from a patient in a stand-alone
suction canister having an interior, a suction port for
communication with a vacuum source, and a patient port
Appeal No. 96-2270
Application 08/073,108
Page 3 of the answer makes reference to both Paper Nos. 73
and 11 for an explanation of these rejections. Such a procedure
by the examiner is totally improper and inappropriate. Manual of
Pat. Examining Procedure (MPEP) § 1208 (6th ed., Rev. 3 Jul.
1997) expressly provides that incorporation by reference may be
made only to a single other action.
3
for communication with a patient;
(b) providing a cleaning station for removably
supporting said suction canister and for automatically
draining and cleaning said suction canister;
(c) placing said suction canister in communication with
said cleaning station; and
(d) activating said cleaning station so that said
cleaning station drains the fluid from the interior of
said suction canister and cleans the interior of said
suction canister.
The references relied on by the examiner are:
Baxter 2,004,027 Jun. 04, 1935
Keller 2,073,746 Mar. 16, 1937
Mertens et al. (Mertens) 5,033,492 Jul. 23, 1991
The claims on appeal stand rejected under 35 U.S.C. § 103 in
the following manner:3
(1) Claims 14, 22, 31, 32, 35 and 37-40 as being unpatent-
able over Keller;
(2) Claims 15-17 as being unpatentable over Keller in view
of Mertens;
(3) Claims 23-25 and 34 as being unpatentable over Mertens
in view of Baxter; and
Appeal No. 96-2270
Application 08/073,108
4
(4) Claim 36 as being unpatentable over Keller in view of
Baxter.
Rejections (1), (2) and (4)
It is the examiner’s position that:
Keller discloses the method and apparatus
substantially as claimed, however, Keller is silent as
to the intended use of cleaning medical containers with
suction ports therein.
As concerns this deficiency in intended use, it is the
Examiner’s position that it would have been obvious to one
of ordinary skill in the art that if it was desired to clean
and reuse suction canisters that such a device as that
taught by Keller would have been utilized, as the device of
Keller is non-discriminatory as to what type of canister or
bottle it cleans. [Final rejection, page 3.]
From the above, it is readily apparent that the examiner is
simply dismissing the specific limitations as to the type of
container being cleaned as being a matter of “intended use”
since, in the examiner’s view, the device of Keller is “non-
discriminatory” as to the type of canister that it cleans. We
will not support the examiner’s position. All limitations in a
claim must be considered and it is error to ignore specific
limitations that distinguish over the references. See In re Boe,
505 F.2d 1297, 1299, 184 USPQ 38, 40 (CCPA 1974) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Appeal No. 96-2270
Application 08/073,108
While there is nothing in the prior art relied on by the4
examiner for establishing that a suction canister having a
suction port and a patient port is old or well known in the art,
we observe that the appellants on page 1 of the specification
have indicated that such canisters have been previously been
employed to drain bodily fluid from a patient.
5
Here, independent claims 14 and 40 are directed to a medical
system which includes a suction canister having a suction port
and a patient port while independent claim 35 is directed to a
method for handling medical waste which includes the step of
collecting fluid from a patient in a stand-alone canister having
a suction port and a patient port and, accordingly, the specif-
ically claimed canister forms a part of the claimed medical
system and method. The examiner, however, has not provided a
factual basis for establishing that it would have been obvious to
employ the cleaning device of Keller to clean this specifically
claimed suction canister. “A rejection based on section 1034
must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior
art. . . . [The examiner] may not . . . resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in . . . [the] . . . factual basis.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968)). In short, it does not follow that just
Appeal No. 96-2270
Application 08/073,108
6
because the device Keller is employed to clean bottles (which are
to be used for containing food products - see page 1, column
1, second paragraph) that it would have been obvious to utilize
Keller’s device to clean a suction canister having both a suction
port and a patient port as the examiner apparently believes.
Moreover, it is not even readily apparent that the device of
Keller has the inherent capability of cleaning such a canister.
In this regard, it should be noted that while it is well settled
that a claimed functional limitation directed to a new intended
use of an old apparatus does not in and of itself make a claim
drawn to an apparatus patentable over the old apparatus, it is
nevertheless necessary that the old apparatus (e.g., the
apparatus of Keller) be inherently capable of performing the
recited intended use in order to satisfy the functional
limitation in question. See, e.g., In re Schreiber, F.3d ,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
With respect to method claims 35 and 37-39, we additionally
observe that 35 U.S.C. § 100(b) specifically recognizes a new use
of a known machine as proper subject matter for a patent. See
also Ex parte Markowitz, 143 USPQ 303, 305 (Bd. App. 1964).
As to claims 15-17 and claim 36 we have carefully reviewed
the teachings of Mertens and Baxter but find nothing therein
Appeal No. 96-2270
Application 08/073,108
7
which would overcome the deficiencies already noted with respect
to Keller.
In view of the foregoing, we will not sustain the rejections
under 35 U.S.C. § 103 of (1) claims 14, 22, 31, 32, 35 and 37-40
based on the teachings of Keller alone, (2) claims 15-17 based on
the combined teachings of Keller and Mertens and (3) claim 36
based on the combined teachings of Keller and Baxter.
Rejection (3)
According to the examiner:
Mertens does not disclose the container (2) to
provide indica that the container has been cleaned
comprising a punched tab in the container.

Baxter shows it is old and well known within the
art to the ordinarily skilled artisan (lines 35-45 of
the second column of page 3) to provide indicia of the
container status with a punched tab portion.

It would have been obvious to said artisan to
modify the container of Martens per the above cited
teaching of Baxter for the same reason. [See the Office
action dated March 28, 1994 (Paper No. 7), pages 4 and
5.]
Independent claim 23 expressly requires a medical suction
system comprising a suction canister having a suction port and a
patient port. There is, however, absolutely nothing in the
combined teachings of Mertens and Baxter which would suggest such
an arrangement. Mertens has a single opening 2a in the top of a
Appeal No. 96-2270
Application 08/073,108
8
drum 2 through which concentric pipes are inserted for the
purpose of providing a rinsing fluid 7 under pressure via outer
pipe 20 and thereafter removing the fluid via inner pipe 10 which
is connected to a pump 6. We find nothing, nor does the examiner
even allege there is anything, in Baxter which would suggest
modifying the drum or canister 2 of Mertens to include a suction
port and patient port as claimed.
Moreover, we cannot agree with the examiner that there is
anything in the combined teachings of Mertens and Baxter to
suggest modifying the device of Mertens to include the limitation
expressly set forth in independent claim 23 of:
an indicator for altering said suction canister in
response to cleaning thereof so as to provide a visible
indication that said suction canister has been cleaned.
While Baxter broadly teaches an indicator, Baxter’s canister or
container is for holding sterile fluids such as intravenous
solutions and is not altered in response to cleaning as claimed.
Baxter merely provides a flexible sealing disk 13 which loosely
overlies air inlet 11 and fluid discharge opening 12 and, when a
vacuum is properly maintained in the container, the sealing disk
is visibly cupped or depressed around the air inlet and fluid
discharge openings. If, however, the seal in Baxter should
somehow be broken, then the sealing disk is no longer cupped or
Appeal No. 96-2270
Application 08/073,108
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indented.
Since we find nothing in the combined teachings of Mertens
and Baxter, which would fairly suggest modifying the canister or
drum of Mertens by (1) proving suction and patient ports and (2)
altering the canister to provide a visible indication that the
canister has been cleaned, we will not sustain the rejection of
claims 23-25 and 34 based on these two references.
The examiner’s rejections under 35 U.S.C. § 103 are all
reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2270
Application 08/073,108
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David R. Price
Michael, Best & Friedrich
100 East Wisconsin Avenue
Milwaukee, WI 53202-4108