Ex parte Rugless

Board of Patent Appeals and Interferences

Nov 20, 2001

08989056 (B.P.A.I. Nov. 20, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FLORENCE RUGLESS
____________
Appeal No. 2001-1074
Application No. 08/989,056
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 11, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/989,056
The appellant's invention relates to oxygen masks that
can serve the purpose of a regular oxygen mask, an aerosol
oxygen mask, and a non-rebreather oxygen mask (specification,
p. 1). A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Engelder 2,625,155 Jan. 13,
1953
Schnoor 4,832,017 May 23,
1989
Niemeyer 4,951,664 Aug. 28,
1990
Nutter 5,025,805 June 25,
1991
Galleher, Jr. 618,808 Apr. 25,
1961
(Galleher) (Canada)
Claims 1 to 11 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
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Application No. 08/989,056
Claims 1 to 3, 7, 10 and 11 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Galleher in view of Engelder.
Claims 4 to 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Galleher in view of Engelder and
Niemeyer.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Galleher in view of Engelder and Schnoor.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Galleher in view of Engelder and Nutter.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 17,
mailed July 19, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 16,
filed July 6, 2000) for the appellant's arguments
thereagainst.
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Application No. 08/989,056
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
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Application No. 08/989,056
The indefiniteness rejection
We will not sustain the rejection of claims 1 to 11 under
35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims 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. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
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Application No. 08/989,056
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented can be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is inappropriate.
Thus, the failure to provide explicit antecedent basis
for terms does not always render a claim indefinite. As
stated above, if the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is
not indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1146
(Bd. Pat. App. & Int. 1992).
With this as background, we have reviewed the specific
objections under 35 U.S.C. § 112, second paragraph, raised by
the examiner (answer, pp. 3-4) but fail to see how the scope
of the invention sought to be patented cannot be determined
from the language of the claims with a reasonable degree of
certainty especially since the mere breadth of a claim does
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Application No. 08/989,056
Breadth of a claim is not to be equated with1
indefiniteness. See In re Miller, 441 F.2d 689, 693, 169 USPQ
597, 600 (CCPA 1971).
not in and of itself make a claim indefinite. Thus, we find1
ourselves in agreement with the position of the appellant
(brief, p. 4) that the claims under appeal are definite, as
required by the second paragraph of 35 U.S.C. § 112, since
they define the metes and bounds of a claimed invention with a
reasonable degree of precision and particularity.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 11 under 35 U.S.C. § 112,
second paragraph, is reversed.
The obviousness rejections
We will not sustain the rejection of claims 1 to 11 under
35 U.S.C. § 103.
Claim 1, the only independent claim on appeal reads as
follows:
A multi-purpose oxygen face mask comprising:
a mask body;
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Application No. 08/989,056
a head strap connected to said mask body at a right
head strap attachment point extending from said mask body
around the rear of a patient's head and connects with
said mask body at a left head strap attachment point, and
wherein said right head strap attachment point and said
left head strap attachment point allow for rotation
around the connection point [sic, the right and left head
strap attachment points] of the mask body and said head
strap;
a lower neck strap connected at a right lower neck
strap attachment point and extending around the rear of a
patient's neck with the opposite end of said lower neck
strap, opposite said right lower neck strap attachment
point, connecting to a left lower neck strap attachment
point, located on said mask body, opposite said right
lower neck strap attachment point;
a right lower port, said right lower port located on
the lower right portion of said mask body near the
patient's nose and mouth area;
a right lower port cap; said right lower port cap
covering said right lower port via a friction fit;
a right upper port; said right upper port located
directly above said right lower port;
a right upper port cap; said right upper port cap
covering said right upper port via a friction fit;
a left lower port, said left lower port located on
the lower, left portion of said mask body near the
patient's nose and mouth area;
a left lower port cap, said left lower port cap
covering said left lower port via a friction fit;
a left upper port; said left upper port located
directly above said left lower port; and
a left upper port cap, said left upper port cap [,
said left upper port cap] covering said left upper port
via a friction fit.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
Appeal No. 2001-1074 Page 9
Application No. 08/989,056
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Appeal No. 2001-1074 Page 10
Application No. 08/989,056
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence." See
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
In the rejection of claim 1 before us in this appeal, the
examiner concluded (answer, pp. 4-5) that it would have been
obvious at the time the invention was made to a person of
ordinary skill in the art to (1) use the four port system of
Engelder with the mask of Galleher, and (2) supply four
friction engaging port caps instead of the two friction
engaging port caps taught by Engelder since such is a
duplication of parts.
We agree with the examiner that it would have been
obvious at the time the invention was made to a person of
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Application No. 08/989,056
ordinary skill in the art to use the four port system of
Engelder with the mask of Galleher. However, in the rejection
before us in this appeal, the examiner has not presented any
evidence establishing that it would have been obvious at the
time the invention was made to a person of ordinary skill in
the art to supply four friction engaging port caps instead of
the two friction engaging port caps taught by Engelder. In
that regard, there is no evidence that it would have been
obvious to close each of Engelder's ports provided by nipples
33 and 34 with a friction engaging port cap especially since
the ports provided by Engelder's nipples 33 and 34 are open
when the mask is in use.
For the reasons set forth above, the combined teachings
of Galleher and Engelder are insufficient to establish the
obviousness of the subject matter of claim 1. We have also
reviewed the references additionally applied in the rejections
of claims 4 to 6, 8 and 9 (i.e., Niemeyer, Schnoor and Nutter)
but find nothing therein which makes up for the deficiencies
of Galleher and Engelder discussed above. Accordingly, the
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Application No. 08/989,056
decision of the examiner to reject claim 1, and claims 2 to 11
dependent thereon, under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 11 under 35 U.S.C. § 112, second paragraph, is
reversed and
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Application No. 08/989,056
the decision of the examiner to reject claims 1 to 11 under
35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/989,056
JOHN D. GUGLIOTTA
SUITE 202
137 SOUTH MAIN STREET
AKRON, OH 44308
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Application No. 08/989,056
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