Ex parte Peterson

Board of Patent Appeals and Interferences

Aug 30, 1999

08347900 (B.P.A.I. Aug. 30, 1999)

The application was filed December 1, 1994.1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROGER PETERSON
____________
Appeal No. 96-3395
Application No. 08/347,9001
____________
ON BRIEF
____________
Before BARRETT, FLEMING, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1-22. We affirm-in-part.
Appeal No. 96-3395 Page 2
Application No. 08/347,900
BACKGROUND
The invention at issue in this appeal obtains bottled
samples from a flow stream. It employs a three-way main valve
having two positions. One position connects flow from a
process plant to a collection bottle. The other position
blocks the process flow while connecting the flow of purge gas
to the system. A purge control valve switches the flow of
purge gas off and on.
The invention operates in four steps. The first step
sets the main valve and opens the purge valve to enable purge
gas to purge the bottle and the pathways through the main
valve. The second step sets the main valve to interrupt the
flow of purge gas while permitting flow from the plant to fill
the bottle with sample material. Any surplus overflows
through a filter. The third step restores the main valve to
its initial position, which blocks flow from the plant while
permitting flow of the purge gas. This purges the bottle and
the pathways through the main valve. The fourth step closes
the purge valve to switch-off the flow of purge gas.
Appeal No. 96-3395 Page 3
Application No. 08/347,900
Claim 1, which is representative for our purposes,
follows:
1. A sample taking apparatus which comprises:
(a) a sample collection apparatus having a
valve having an element movable between two
positions wherein the valve has three ports, and two
of the three ports provide a completed passage
through said valve and valve element so that a
sample from a sample source introduced to said
apparatus is delivered through said apparatus for
delivery to a sample receiving container;
(b) a passage through said valve element having
an inlet port and a discharge port wherein the
passage is deployed so that said valve element, when
operated, moves to a position enabling purge fluid
flow through said valve element from a remote source
of a purge fluid and the purge fluid flows to the
valve element and its passage through a source
blocking valve; and
(c) a flow line extending from said purge fluid
source blocking valve to said valve element so that
purge fluid flows through said valve element
clearing said valve element of any remaining sample.
The references relied on by the patent examiner in
rejecting the claims follow:
Sanford et al. 3,372,573 Mar. 12, 1968
(Sanford)
Morabito et al. 4,962,042 Oct. 9, 1990
(Morabito)
Appeal No. 96-3395 Page 4
Application No. 08/347,900
Spencer 4,986,138 Jan. 22, 1991
Seiden et al. 5,220,513 Jun. 15, 1993.
(filed Feb. 19, 1991)
Claims 1-21 stand rejected under 35 U.S.C. § 103 as
obvious over Spencer in view of Sanford, Morabito, and Seiden.
Rather than repeat the arguments of the appellant or examiner
in toto, we refer the reader to the appeal and reply briefs
and the examiner’s answers for the respective details thereof.
OPINION
In reaching our decision in this appeal, we considered
the subject matter on appeal and the rejection and evidence
advanced by the examiner. We also considered the arguments of
the appellant and examiner. After considering the record
before us, it is our view that the evidence and level of skill
in the art would have suggested to one of ordinary skill in
the art the invention of claims 1-7 and 12-17. We cannot say,
however, that the evidence and level of skill in the art would
have suggested the invention of claims 8-11 and 18-22.
Accordingly, we affirm-in-part. Our opinion discusses the
grouping and obviousness of the claims.
Appeal No. 96-3395 Page 5
Application No. 08/347,900
Grouping of the Claims
37 C.F.R. § 1.192(c)(7), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(c)(7) stated as follows.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
the group and shall decide the appeal as to the
ground of rejection on the basis of that claim alone
unless a statement is included that the claims of
the group do not stand or fall together and, in the
argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.
In addition, claims that are not separately argued all stand
or fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ
1089, 1096 (Fed. Cir. 1983). When the patentability of
dependent claims in particular is not argued separately, the
claims stand or fall with the claims from which they depend.
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
Appeal No. 96-3395 Page 6
Application No. 08/347,900
The appellant states that claims 8-11 stand or fall
together, claims 12-17 stand or fall together, and claims 18-
22 stand or fall together. (Reply Br. at 1-2.) He also
opines that claims 1-7 are separately patentable. (Id. at 1.)
The appellant fails to explain, however, why dependent claims
4-6 are believed to be separately patentable. His merely
pointing out the differences in what the claims cover,
(Appeal Br. at 13), is not an argument that the claims are
separately patentable. Therefore, we find that claims 1 and
4-6 stand or fall together, with independent claim 1 as
representative of the group. With this in mind, we turn to
the obviousness of the claims.

Obviousness of the Claims
We begin our consideration of the obviousness of the
claims by finding that the references represent the level of
ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573,
1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (finding that the
Board of Patent Appeals and Interference did not err in
concluding that the level of ordinary skill in the art was
best determined by the references of record); In re Oelrich,
Appeal No. 96-3395 Page 7
Application No. 08/347,900
579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978) ("[T]he PTO
usually must evaluate ... the level of ordinary skill solely
on the cold words of the literature."). Of course, every
patent application and reference relies to some extent upon
knowledge of persons skilled in the art to complement that
which is disclosed therein. In re Bode, 550 F.2d 656, 660,
193 USPQ 12, 16 (CCPA 1977). Persons skilled in the art,
moreover, must be presumed to know something about the art
apart from what the references teach. In re Jacoby, 309 F.2d
513, 516, 135 USPQ 317, 319 (CCPA 1962). With this in mind,
we address the obviousness of claims 1-7 and 12-17 and the
obviousness of claims 8-11 and 18-22 seriatim.
Obviousness of Claims 1-7 and 12-17
Regarding claims 1-7 and 12-17, the appellant “concede[s]
that Sanford and Morabito combine ....” (Appeal Br. at 10.)
He argues, however, that the references “do not combine with
Spencer.” (Id.) The argument is based on the “difference in
scale” of the references. (Id.) In response, the examiner
notes that he “relies on the secondary references to show
Appeal No. 96-3395 Page 8
Application No. 08/347,900
certain concepts ....” (Examiner’s Answer at 6.) He
concludes, “the concepts used in those secondary references
would have been obvious to use in combination with the ideas
represented by the primary reference because it is desirable
to clean a sampler like that of Spencer, and the secondary
references show and use a known way of cleaning flow lines.”
(Id.)
We find the appellant’s argument to be unpersuasive. It
is unnecessary that inventions of references be physically
combinable to render obvious an invention under review. In re
Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir.
1983). See also In re Nievelt, 482 F.2d 965, 968, 179 USPQ
224, 226 (CCPA 1972) ("Combining the teachings of references
does not involve an ability to combine their specific
structures.").
The test for obviousness is not whether the features of a
reference may be bodily incorporated into the structure of
another reference but what the combined teachings of those
references would have suggested to those of ordinary skill in
Appeal No. 96-3395 Page 9
Application No. 08/347,900
the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981).
Here, the examiner has not asserted that the features of
Sanford and Morabito may be bodily incorporated into the
structure of Spencer -- such an assertion would be irrelevant.
Instead, he has asserted that the combined teachings of the
references would have suggested to one of ordinary skill in
the art the appellant’s invention. Therefore, the appellant’s
argument "ignores the relevant combined teachings of the
references." In re Andersen, 55 CCPA 1014, 391 F.2d 953, 958,
157 USPQ 277, 281 (CCPA 1968) (dismissing the argument that a
combination would result in inoperative structure because it
is not necessary that the structure of one substituted bodily
in that of the reference with which it is combined).
Regarding claim 1, the appellant argues that the claim
“is not shown by the alleged combination of Spencer with
Morabito and Sanford, either singly or in combination.”
(Appeal Br. at 12.) “There is no connection,” (Id.), he
Appeal No. 96-3395 Page 10
Application No. 08/347,900
explains, ”of the sort recited in claim 1 to transfer the
sample, connect with a purge fluid flow source, deliver the
purge fluid in the requested sequence of flow, and then
provide the fluid flow line.” (Id.) In response, the examiner
offers the following explanation.
[T]he valve element of Spencer does have three
ports, when element 5 is considered to form part of
the valve. Moreover, col. 5, line 3 suggests a
three-way valve. Alternatively, the Sanford and
Morabito references show that purging is
accomplished by using multi-way valves having at
least three ports; given that it would have been
obvious to purge a sampler like that of Spencer, it
would have been readily apparent that a valve
capable of allowing the purging operation should be
incorporated into the sampler. (Examiner’s Answer
at 6.)
During patent examination, pending claims must be given
their broadest reasonable interpretation. Limitations from
the specification are not to be read into the claims. In re
Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541,
550 (CCPA 1969).
Giving claim 1 its broadest reasonable interpretation, we
find that claimed invention does not define over the
Appeal No. 96-3395 Page 11
Application No. 08/347,900
references. The claim specifies “a sample taking apparatus”
comprising three elements. We address the first element
separately and the second and third elements collectively.
The first element is “a sample collection apparatus
having a valve having an element movable between two positions
wherein the valve has three ports, and two of the three ports
provide a completed passage through said valve and valve
element so that a sample from a sample source introduced to
said apparatus is delivered through said apparatus for
delivery to a sample receiving container ....” In short, it
recites a two-position, three-port valve, one position of
which connects flow from a sample source to a receiving
container.
Spencer discloses sample collection apparatuses that
receive samples from a flowing fluid line, such as a process
line. Col. 1, ll. 19-21. One of the apparatuses employs a
three-way valve 57. Col 5, ll. 38-39. Figure 6 depicts three
ports of the valve. The first port is connected to a
discharge line 47; the second port, to a return line 49; and
Appeal No. 96-3395 Page 12
Application No. 08/347,900
the third port, to a sample bottle 9. One position of the
valve connects sample flow to the sample bottle 9. Col. 5,
ll. 38-43.
The second and third elements of claim 1 are “a passage
through said valve element having an inlet port and a
discharge port wherein the passage is deployed so that said
valve element, when operated, moves to a position enabling
purge fluid flow through said valve element from a remote
source of a purge fluid and the purge fluid flows to the valve
element and its passage through a source blocking valve; ...”
and “a flow line extending from said purge fluid source
blocking valve to said valve element so that purge fluid flows
through said valve element clearing said valve element of any
remaining sample.” In short, they require that a position of
the valve connects flow from a remote source, through a second
valve and a flow line, through the three-way valve to purge
it of any remaining sample.
Sanford discloses an apparatus for obtaining a sample
from a liquid. Col. 1, ll. 13-14, 64-66. The apparatus
Appeal No. 96-3395 Page 13
Application No. 08/347,900
includes multi-port valves 10, 11, and 12, each of which
contains multiple passages. Col. 2, ll. 15-18. The valves
are first positioned to collect a sample and deliver it to a
receiving column. Col. 2, ll. 33-39; col. 3, ll. 15-19. They
are then positioned to connect flows of a wash fluid and a
drying gas through valves 11 and 12 and many flow lines (e.g.,
conduits 20, 22, 32, 33, 27, 41, and 44) to valve 10 in order
to purge it of any remaining sample. Col. 3, l. 74 - col. 4,
l. 3.
Seiden discloses a method for measuring an amount of a
gas in a sealed container of fluid. Col. 4, ll. 12-13. The
reference teaches connecting flow from a remote source of
purge gas 17, through a valve 16 and a flow line, to a system
with valves in order to purge the system. Col. 2, ll. 63-65.
The appellant admits that the valve “appears to be an off/on
valve.” (Appeal Br. at 7.) When the teachings of the
references are combined, the result in a three-way valve with
a position that connects flow from a remote source, through a
second valve and a flow line, through the three-way valve to
Appeal No. 96-3395 Page 14
Application No. 08/347,900
purge it of any remaining sample. Therefore, we find that the
references would have suggested the elements of claim 1.
As aforementioned regarding the grouping of the claims,
claims 4-6 stand or fall with claim 1. Therefore, we find
that the references would have suggested the elements of claim
4-6.
Regarding claim 2, the appellant alleges, “the Spencer
construction does not set out the filter connection
specifically described in claim 2.” (Appeal Br. at 12.) In
response, the examiner observes, “filter 56 appears capable of
precluding escape of overflow from the sample container.
Please see col. 5, line 44; col. 2, line 67; and Fig. 4.”
(Examiner’s Answer at 7.)
Giving claim 2 its broadest reasonable interpretation, we
find that claimed invention does not define over the
references. The claim specifies “a flow line from said
sample receiving container into a filter to enable overflow
from said sample container precluding discharge to the
Appeal No. 96-3395 Page 15
Application No. 08/347,900
atmosphere of overflow sample.” In short, it recites an
overflow line connecting the receiving container to a filter.
Spencer teaches a vent passageway 14 that vents excess
sample fluids from the sample bottle 9 to a vent line opening
16 attached to a vent line 11. Vent line 11 leads to a
closed waste container. Col. 3, ll. 45-50. More
specifically, the container can be a filter. Col. 5, l. 44.
Therefore, we find that the references would have suggested
the elements of claim 2.
Regarding claim 3, the appellant states that the claim
“describes an apparatus in which the first syringe delivers a
purge gas flow through a purge gas control valve cooperating
with a purge gas flow line.” (Appeal Br. at 13.) He alleges,
“[t]hat simply is not shown in Spencer and is not really shown
in the secondary references ....” (Id.)
Giving claim 3 its broadest reasonable interpretation, we
find that claimed invention does not define over the
references. As aforementioned regarding claim 1, Sanford and
Appeal No. 96-3395 Page 16
Application No. 08/347,900
Seiden teach or would have suggested delivering a flow of
purge gas through a control valve and a flow line. Spencer,
furthermore, teaches a vented needle 5. Col. 1, ll. 33-36.
Sampling fluid flows through the needle into the sample bottle
9. Col. 4, ll. 30-41. When the teachings of the references
are combined, the needle would deliver the purge gas flow to
the sample bottle. Therefore, we find that the references
would have suggested the elements of claim 3.
Regarding claim 7, the appellant argues, “the apparatus
of claim 7 calls for a valve with valve element having four
ports. The ports are connected (1) with a purge gas flow
line, (2) a sample source, (3) a sample container, (4) a
filter for excess sample.” (Appeal Br. at 13.) He asserts,
“[t]hat structure is not shown by any of the cited references,
or by any combination of the cited references.” (Id.)
Claims are not interpreted in a vacuum but are part of
and are read in light of the specification. Slimfold Mfg. Co.
v. Kinkead Indus., Inc., 810 F.2d 1113, 1116, 1 USPQ2d 1563,
1566 (Fed. Cir. 1987). Apart from claim 7, the specification
Appeal No. 96-3395 Page 17
Application No. 08/347,900
discloses that the appellant’s valve element “is provided with
three ports.” (Spec. at 6.) It adds that the three-port
construction is used in a specific fashion. (Id.) The
figures depict valve element 16 as having only three ports, a
port being a hole in the valve element. Accordingly, we
interpret the valve element as having three ports. We further
interpret the four “ports” argued by the appellant as four
connections. Giving claim 7 this interpretation, we find that
claimed invention does not define over the references.
As aforementioned regarding claim 1, Sanford and Seiden
disclose a connection to a purge gas flow line. As also
aforementioned, Spencer discloses a valve 57 having three
ports. The three ports correspond to three connections. One
port connects to the discharge line 47, which is a connection
to a sample source. Another port connects to the sample
bottle 9. As aformentioned regarding claim 2, the reference
also teaches a connection to the vent line 11, which leads to
a filter for excess sample. Therefore, we find that the
references would have suggested the elements of claim 7.
Appeal No. 96-3395 Page 18
Application No. 08/347,900
Regarding claim 12, the appellant notes that the claim
“calls for a valve body with a valve element having three
ports. The ports in the element rotate and make specific
connections as recited and then sample is input through an
inlet passage and the purge fluid is delivered through a
source blocking valve (i.e., a second valve).” (Appeal Br. at
14.) He alleges, “Spencer does not show this.” (Id.) “The
assumed combination of Sanford into Spencer,” further alleges
the appellant, “does not help because the six-way valve 10,
the six-way valve 11, or the six-way valve 12 do not cooperate
in the fashion necessary to make such a rejection.” (Id.) In
response, the examiner asserts, “it would have involved only
routine skill to make the necessary plumbing connections among
the valve and other components, in order to combine a purging
function with a Spencer-like sampler.” (Examiner’s Answer at
7.)
Giving claim 12 its broadest reasonable interpretation,
we find that claimed invention does not define over the
references. The claim specifies “a sample collection
Appeal No. 96-3395 Page 19
Application No. 08/347,900
apparatus” comprising four elements. We address the elements
seriatim.
The first element is “a valve body housing a valve
element, said valve body having first and second inlets and an
outlet ....” The second elements adds that the valve element
has three ports. As noted by the appellant, these limitations
“call[] for a valve body with a valve element having three
ports.” (Appeal Br. at 14.) As aforementioned regarding
claim 1, Spencer discloses a valve body 57 having three ports.
The second element also recites that the valve element is
“rotatable between two positions for alternately delivering
(1) a sample to be tested and (2) a purge fluid to said outlet
....” As aforementioned regarding claim 1, Sanford discloses
rotating valves between two positions for alternately
obtaining and delivering (1) a sample liquid and (2) a wash
fluid and drying gas. The sample liquid is analyzed in a
detector 29. Col. 2, ll. 50-55.
Appeal No. 96-3395 Page 20
Application No. 08/347,900
The third element recites that the “sample is delivered
to said valve through an inlet passage ....” As
aforementioned regarding claim 7, Spencer discloses that one
port of the three-way valve 57 connects to the discharge line
47, which is a connection to a sample source. Accordingly, a
sample is delivered to the valve through an inlet passage
connected to the discharge line.
The fourth element recites that “said purge fluid [is]
delivered to said valve through a purge gas flow line serially
through a source blocking valve.” As aformentioned regarding
claim 1, Sanford discloses delivering flows of a wash fluid
and drying gas through many flow lines (e.g., conduits 20,
22, 32, 33, 27, 41, and 44) and valves 11 and 12 to valve 10.
As also aforementioned, Seiden teaches delivering a flow of
purge gas 17, through a valve 16 and a flow line, to a system
with valves in order to purge the system. Therefore, we find
that the references would have suggested the elements of claim
12.
Appeal No. 96-3395 Page 21
Application No. 08/347,900
As aformentioned regarding the grouping of the claims,
claims 13-17 stand or fall with claim 12. Therefore, we find
that the references would have suggested the elements of claim
13-17. Accordingly, we affirm the rejection of claims 1-7 and
12-17 under 35 U.S.C. § 103. Next, we consider the
obviousness of claims 8-11 and 18-22.
Obviousness of Claims 8-11 and 18-22
We begin our consideration of the obviousness of claims
8-11 and 18-22 by recalling that in rejecting claims under 35
U.S.C. § 103, the patent examiner bears the initial burden of
establishing a prima facie case of obviousness. A prima facie
case is established when the teachings from the prior art
itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art. If the
examiner fails to establish a prima facie case, an obviousness
rejection is improper and will be overturned. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). With this in mind, we analyze the appellant’s
arguments.
Appeal No. 96-3395 Page 22
Application No. 08/347,900
Regarding claims 8-11 and 18-22, the appellant argues
that the claims “are patentably distinct because the cited
references, either individually or in combination, do not
recite methodology for partially filling a sample container
with sample liquid and filling the remaining dead space with
inert purge gas.” (Appeal Br. at 18.) In response, the
examiner asserts, “[w]hen a purging function is added to a
sampler, as described above, this means that the purge gas
will follow the sample through the conduits and into any space
remaining above the sample in the sample container ....”
(Examiner’s Answer at 8.)
We cannot find that Spencer, Sanford, Morabito, and
Seiden teach or would have suggested steps c and e of claim 8
or steps b and d of claim 18. Step c of claim 8 recites
“operating said valve to an alternate position so that a
sample of specified size is delivered through said valve and
is admitted into said sample container ....” Similarly, step
b of claim 18 recites “delivering a first predetermined volume
of a purge gas through a purge gas source blocking valve to
said outlet ....”
Appeal No. 96-3395 Page 23
Application No. 08/347,900
Step e of claim 8 recites “after filling the container
with sample, then (3) flowing purge fluid into said
container.” Similarly, step d of claim 18 recites “after
filling a container to a specified volume of the sample, then
delivering a second predetermined volume of a purge gas to
said outlet to purge sample from the outlet so that any
following tests are free of remnants of sample.” Interpreting
the claims in light of the specification, (Spec. at 8), they
specify partially filling the container with a sample to leave
a dead space above the sample and filling the remaining dead
space with purge gas.
We appreciate the examiner’s conclusion that, in the
references, purge gas will follow the sample through the
conduits and into any space remaining above the sample in the
sample container. He neglected, however, to identify any
teaching or suggestion of only partially filling a container
with a sample to leave a dead space above the sample.
For the foregoing reasons, the examiner failed to show
that Spencer, Sanford, Morabito, and Seiden teach or would
Appeal No. 96-3395 Page 24
Application No. 08/347,900
have suggested steps c and e of claim 8 and its dependent
claims 9-11
or steps b and d of claim 18 and its dependent claims 19-22.
Therefore, we find the examiner’s rejection does not amount to
a prima facie case of obviousness. Because the examiner has
not established a prima facie case, the rejection of claims 8-
11 and 18-22 over Spencer in view of Sanford, Morabito, and
Seiden is improper. Therefore, we reverse the rejection of
the claims under 35 U.S.C. § 103.
We end our consideration of the obviousness of the claims
by concluding we are not required to raise or consider any
issues not argued by the appellant. Our reviewing court
stated, “[i]t is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.” In re Baxter
Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991).
Appeal No. 96-3395 Page 25
Application No. 08/347,900
37 C.F.R. § 1.192(a), as amended at 60 Fed. Reg. 14518
(Mar. 17, 1995), was controlling when the appeal brief was
filed. Section 1.192(a) stated as follows.
The brief . . . must set forth the authorities and
arguments on which the appellant will rely to
maintain the appeal. Any arguments or authorities
not included in the brief will be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Also at the time of the brief, 37 C.F.R. § 1.192(c)(8)(iv)
stated as follows.
For each rejection under 35 U.S.C. 103, the argument
shall specify the errors in the rejection and, if
appropriate, the specific limitations in the
rejected claims which are not described in the prior
art relied on in the rejection, and shall explain
how such limitations render the claimed subject
matter unobvious over the prior art. If the
rejection is based upon a combination of references,
the argument shall explain why the references, taken
as a whole, do not suggest the claimed subject
matter, and shall include, as may be appropriate, an
explanation of why features disclosed in one
reference may not properly be combined with features
disclosed in another reference. A general argument
that all the limitations are not described in a
single reference does not satisfy the requirements
of this paragraph.
In summary, section 1.192 provides that just as the court is
not under any burden to raise or consider issues not argued by
Appeal No. 96-3395 Page 26
Application No. 08/347,900
the appellant, the Board of Patent Appeals and Interferences
is also not under any such burden.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-7 and 12-17 under 35 U.S.C. § 103 is affirmed. His
rejection of claims 8-11 and 18-22 under § 103 is reversed.
Accordingly, we affirm-in-part.
Appeal No. 96-3395 Page 27
Application No. 08/347,900
No period for taking subsequent action concerning this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 96-3395 Page 28
Application No. 08/347,900
LLB/kis
Donald Gunn
GUNN & KUFFNER
5 Greenway Plaza
Suite 2900
Houston, TX 77046