Ex parte Smith et al.

Board of Patent Appeals and Interferences

Jun 24, 1999

08663471 (B.P.A.I. Jun. 24, 1999)

Application for patent filed June 13, 1996. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN W. SMITH and EDGAR S. HAFFNER
____________
Appeal No. 1999-0348
Application No. 08/663,4711
____________
ON BRIEF
____________
Before MEISTER, 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 and 3 through 29, which are all of the
claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1999-0348 Page 2
Application No. 08/663,471
BACKGROUND
The appellants' invention relates to an electrically
heated insecticide delivery system. An understanding of the
invention can be derived from a reading of exemplary claims 1,
12 and 19, which appear in the appendix to the appellants'
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Laibow 2,616,024 Oct. 28,
1952
Melanson et al. 4,687,904 Aug. 18,
1987
(Melanson)
Zeitoun 556,003 Apr. 15, 1957
(Belgium)
Claims 1, 5 to 7, 10, 11, 14 and 27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Laibow.
Claims 3, 4, 8 and 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Laibow in view of Melanson.
Appeal No. 1999-0348 Page 3
Application No. 08/663,471
Claims 12, 13, 19 to 26, 28 and 29 stand rejected under
35 U.S.C. § 103 as being unpatentable over Laibow.
Claims 15 to 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Laibow in view of Zeitoun.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the first Office action
(Paper No. 2, mailed April 2, 1997) and the examiner's answer
(Paper No. 12, mailed August 18, 1998) for the examiner's
complete reasoning in support of the rejections, and to the
appellants' brief (Paper No. 11, filed June 1, 1998) and reply
brief (Paper No. 13, filed October 19, 1998) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
Appeal No. 1999-0348 Page 4
Application No. 08/663,471
examiner. As a consequence of our review, we make the
determinations which follow.
In the brief (p. 4), the appellants stated that
Claims 1, 3-11 and 27-29 stand or fall together; Claims
12-13 stand or fall together; Claims 14-18 stand or fall
together; and Claims 19-26 stand or fall together.
In accordance with the appellants grouping of claims and
arguments provided, we need to review only the rejections of
claims 1, 12, 14 and 19 to decide the appeal on the rejections
set forth above.
Claim 1
The examiner determined that claim 1 was anticipated by
Laibow. The examiner found (first Office action, p. 2) that
Laibow shows
a chemical delivery system with a can, a thermally
activated chemical (not shown) an electrical heater
assembly 19 with a resistance wire heater 22 and a
thermal cut-off device 23.
The appellants argue (brief, pp. 4-7) that while Laibow
does disclose thermostat-unit 23 which cuts off current when a
Appeal No. 1999-0348 Page 5
Application No. 08/663,471
predetermined temperature is reached, Laibow does not disclose
an additional separate secondary thermal cut-off device as
recited in claim 1.
The examiner responded to the appellants argument
(answer, pp. 3-4) by asserting that Laibow's resistance heater
wire inherently will act as a thermal shut-off when it melts.
The appellants responded (reply brief, pp. 1-2) to the
effect that while Laibow's resistance wire of course will melt
at some temperature, this does not make it a thermal cut-off.
In this regard, the appellants cite the definition of "thermal
cut-off" as being a device that "automatically opens the
circuit of an electric motor or other device when the
operating temperature exceeds a safe valve."
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
Appeal No. 1999-0348 Page 6
Application No. 08/663,471
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellants are claiming, but
only that the claims on appeal "read on" something disclosed
in the reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984)).
Claim 1 recites a chemical delivery system comprising,
inter alia, a can, a thermally activated chemical, and an
electrical heater assembly. Claim 1 further recites that the
electrical heater assembly includes a resistance heater wire
connected with a primary thermal cut-off device and that the
resistance heater wire be comprised of a material "having a
melting temperature defining a secondary thermal cut-off."
Appeal No. 1999-0348 Page 7
Application No. 08/663,471
Thus, the sole issue presented by the appellants in this
appeal is whether the claimed limitation that the resistance
heater wire be comprised of a material having a melting
temperature defining a secondary thermal cut-off inherently
"reads on" Laibow's electrical resistance wiring (see column
3, lines 20-37).
It is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their broadest
reasonable interpretation consistent with the specification,
and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary
skill in the art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). Moreover, limitations are not to
be read into the claims from the specification. In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir.
1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Upon review of the appellants' specification, we have
determined the following. First, the temperature at which the
Appeal No. 1999-0348 Page 8
Application No. 08/663,471
primary thermal cut-off device 38 is designed to operate is
dependent upon the activation temperature of the thermally
activated chemical, which as disclosed is approximately 275°C
for permethrin (the only disclosed thermally activated
chemical). Second, the only disclosed material for the
resistance heater wire is nickel-chromium which has a melting
temperature of approximately 1395°C.
It is our determination that the claimed limitation that
the resistance heater wire be comprised of a material having a
melting temperature defining a secondary thermal cut-off
inherently "reads on" Laibow's electrical resistance wiring
for the reasons that follow. Accordingly, we sustain the
examiner's rejection of claim 1. While the exact material and
its melting temperature of Laibow's electrical resistance
wiring has not been specifically disclosed, it is our opinion
that it is inherent that Laibow's electrical resistance wiring
has a melting temperature, and thus, ipso facto, defines a
temperature that will function as a thermal cut-off secondary
to his thermostat-unit 23. While this temperature may be
substantially higher then the activation temperature of the
Appeal No. 1999-0348 Page 9
Application No. 08/663,471
thermostat-unit 23 (i.e., primary cut-off), this is equally
true of the appellants' device wherein the melting temperature
of 1395°C of the resistance heater wire is substantially
higher than the activation temperature of the primary cut-off
(i.e., about 275°C). In addition, it is our view that an
artisan in applying the appellants submitted definition of
"thermal cut-off" to their device would determine the safe
value temperature to be somewhat higher than the activation
temperature of the thermally activated chemical (i.e.,
approximately 275°C for permethrin) and the activation
temperature of the primary thermal cut-off. Therefore, the
melting temperature of 1395°C disclosed by the appellants for
the resistance heater wire functions as a thermal cut-off
since 1395°C exceeds the safe value temperature (i.e.,
somewhat higher than 275°C). In the same fashion, it is
apparent that the melting temperature of Laibow's electrical
resistance wiring would exceed the safe value temperature of
Laibow's electrical heater assembly (i.e., a temperature
slightly higher than the activation temperature of the
Appeal No. 1999-0348 Page 10
Application No. 08/663,471
thermally activated chemical and the activation temperature of
the thermostat-unit 23).
For the reasons stated above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 102(b) is
affirmed.
Claims 3 to 11 and 27 to 29
As set forth previously, the appellants have grouped
claims 1, 3 to 11 and 27 to 29 as standing or falling
together. Thereby, in view of the affirmance of the rejection
of claim 1 above, claims 3 to 11 and 27 to 29 fall with claim
1. Thus, it follows that the decision of the examiner to
reject claims 5 to 7, 10, 11 and 27 under 35 U.S.C. § 102(b)
and claims 3, 4, 8, 9, 28 and 29 under 35 U.S.C. § 103 is also
affirmed.
Claim 14
Claim 14 reads as follows:
The chemical delivery system of claim 1, manufactured by
the process of overmolding said electrical heater
assembly.
Appeal No. 1999-0348 Page 11
Application No. 08/663,471
The appellants argue (brief, pp. 8-9, and reply brief, p.
3) that Laibow does not disclose or suggest an electrical
heater assembly manufactured by the process of overmolding.
The examiner's position (answer, p. 4) is that "Laibow
shows all the structure recited."
In our view, the overmolding of the electrical heater
assembly step recited in claim 14 defines a structural
limitation (i.e., that the electrical heater assembly is
overmolded) not disclosed by Laibow. Since all the
limitations of claim 14 are not disclosed by Laibow, the
decision of the examiner to reject claim 14 under 35 U.S.C. §
102(b) is reversed.
Claims 15 to 18
Claims 15 to 18 depend from claim 14 and were rejected
under 35 U.S.C. § 103 as being unpatentable over Laibow in
view of Zeitoun. We will not sustain this rejection.
Appeal No. 1999-0348 Page 12
Application No. 08/663,471
We have reviewed Zeitoun additionally applied in this
rejection of claims 15 to 18 but find nothing therein which
makes up for the deficiencies of Laibow discussed above
regarding claim 14. Accordingly, the decision of the examiner
to reject claims 15 to 18 under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-0348 Page 13
Application No. 08/663,471
Claim 12
Claim 12 recites a chemical delivery system comprising,
inter alia, a can, a thermally activated chemical, an
electrical heater assembly, and a thermally rupturable seal
closing an open end of the can. Claim 12 further recites that
the electrical heater assembly includes a resistance heater
wire connected with a primary thermal cut-off device.
The examiner determined that claim 12 was obvious over
Laibow. The examiner found (first Office action, p. 3) that
Laibow does not disclose "a thermal seal closing the open end
of the can." The examiner then concluded that "it would have
been obvious to provide a seal to retain the thermally
activated chemical in the can while handling and during
transport."
The appellants argue (brief, pp. 15-17) that the prior
art (i.e., Laibow) fails to disclose or suggest a thermally
rupturable seal closing an open end of a can.
Appeal No. 1999-0348 Page 14
Application No. 08/663,471
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). The conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
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). Rejections based
on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Appeal No. 1999-0348 Page 15
Application No. 08/663,471
An artisan is presumed to know something about the art2
apart from what the references disclose (see In re Jacoby, 309
F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)).
The applied prior art (i.e., Laibow) fails to disclose or
suggest a thermally rupturable seal closing an open end of a
can. While it may have been obvious to one of ordinary skill
in the art at the time the invention was made to have2
provided a lid, closure or seal to retain the thermally
activated chemical in Laibow's cup 29 prior to its use in his
vaporizer, we see no evidence, absent the use of impermissible
hindsight, as to why it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have utilized a thermally rupturable seal to close the open
end of Laibow's cup 29 prior to its use in his vaporizer.
Accordingly, the decision of the examiner to reject claim 12
under 35 U.S.C. § 103 is reversed.
Claim 19
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Application No. 08/663,471
Claim 19 recites a chemical delivery system comprising,
inter alia, a can, a thermally activated chemical, and an
electrical heater assembly. Claim 19 further recites that the
electrical heater assembly includes a resistance heater wire
having a parallel shunt at one end thereof which bypasses a
portion of the heater wire.
The examiner determined that claim 19 was obvious over
Laibow. The examiner found (first Office action, p. 3) that
Laibow does not disclose "a parallel shunt." The examiner
then concluded that "it would have been obvious to employ a
parallel shunt such as, for example, to operate a single light
to display that the heating element is operational."
The appellants argue (brief, pp. 17-18) that the claimed
parallel shunt (i.e., a resistance heater wire having a
parallel shunt at one end thereof which bypasses a portion of
the heater wire) is not taught, disclosed nor suggested by
Laibow, or any of the other cited references.
Appeal No. 1999-0348 Page 17
Application No. 08/663,471
Evidence of a suggestion, teaching, or motivation to3
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. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), 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. Cir. 1998). The range of sources
available, however, does not diminish the requirement for
actual evidence. See, e.g., C.R. Bard, Inc. v. M3 Sys., Inc.,
157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir. 1998). A
broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977).
The applied prior art (i.e., Laibow) fails to disclose or
suggest a resistance heater wire having a parallel shunt at
one end thereof which bypasses a portion of the heater wire.
Once again, the examiner has not applied any evidence , absent3
the use of impermissible hindsight, as to why it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to have utilized a parallel shunt as
recited in claim 19. Accordingly, the decision of the
examiner to reject claim 19 under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-0348 Page 18
Application No. 08/663,471
Claims 13 and 20 to 26
Claim 13 depends from claim 12 and claims 20 to 26 depend
from claim 19. The decision of the examiner to reject claims
13 and 20 to 26 under 35 U.S.C. § 103 is reversed for the
reasons set forth above with respect to claims 12 and 19.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 5 to 7, 10, 11 and 27 under 35 U.S.C. § 102(b) is
affirmed; the decision of the examiner to reject claim 14
under 35 U.S.C.
§ 102(b) is reversed; the decision of the examiner to reject
claims 3, 4, 8, 9, 28 and 29 under 35 U.S.C. § 103 is
affirmed; and the decision of the examiner to reject claims
12, 13, 15 to 26 is reversed.
Appeal No. 1999-0348 Page 19
Application No. 08/663,471
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0348 Page 20
Application No. 08/663,471
TODD T. TAYLOR
TAYLOR & ASSOCIATES
6115 STONEY CREEK DRIVE
FORT WAYNE, IN 46825
APPEAL NO. 1999-0348 - JUDGE NASE
APPLICATION NO. 08/663,471
APJ NASE
APJ McQUADE
APJ MEISTER
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 21 Jun 99
FINAL TYPED: