Ex Parte Sorensen

Board of Patent Appeals and Interferences

Jun 27, 2003

08779361 (B.P.A.I. Jun. 27, 2003)

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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFREY SORENSEN
____________
Appeal No. 2002-0334
Application No. 08/779,361
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4, 5
and 8. Claims 2, 3 and 7 have been canceled, claim 6 has been objected to, and
claims 9-13 have been allowed.
We REVERSE.
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Application No. 08/779,361
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BACKGROUND
The appellant's invention relates to a volatile corrosion inhibiting device for
firearms. An understanding of the invention can be derived from a reading of
exemplary claim 1, which has been reproduced below.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Cech 4,100,693 Jul. 18, 1978
Wolford 5,315,778 May 31, 1994
Claims 1, 4 and 8 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Cech.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Cech in view of Wolford.
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. 21) and the Supplemental Answer (Paper No. 25) for the examiner's
complete reasoning in support of the rejections, and to the Brief (Paper No. 9) for the
appellant's arguments thereagainst.
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
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1Anticipation is established only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of the claimed invention. See, for example, RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 1:
A volatile corrosion inhibiting device for firearms comprising:
an inner sleeve;
an exterior sleeve sized to fit over the inner sleeve; and
means for dispensing volatile corrosion inhibiting materials
disposed within the inner sleeve.
The examiner has rejected independent claim 1 and dependent claims 4 and 8
as being anticipated1 by Cech. Among the limitations in claim 1 is “means for
dispensing volatile corrosion inhibiting materials disposed within the inner sleeve,”
which the examiner finds in the Answer (page 3) to be readable on element 14 of Cech.
The appellant disagrees, arguing on pages 10 and 11 of the Brief that
the means employed by Cech does not disclose the means employed in
the applicant’s invention. In Cech, the corrosion resistant insert member
is partially slipped into the jacket which allows a portion of the corrosion
resistant member to remain permanently exposed. Additionally, the jacket
in Cech does not serve any functional purpose relating to the corrosion
resistant material. By contrast, in the applicant’s invention, the core
containing the volatile corrosion inhibitor material is completely inserted
into the inner sleeve which is then covered by the exterior sleeve. Thus,
the means for dispensing volatile corrosion inhibiting materials disposed
within the inner sleeve in the applicant’s invention is not disclosed in
Cech.
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Application No. 08/779,361
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2 As explained in In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994),
the USPTO is not exempt from following the statutory mandate of 35 U.S.C. § 112, paragraph 6, which
reads:
An element in a claim for a combination may be expressed as a means or step for performing
a specified function without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
We interpret this argument to mean that the appellant is urging that this limitation is in
“means plus function format,” as permitted by 35 U.S.C. § 112, ¶ 6, and as such it must
be interpreted to cover the structure disclosed in the specification and the equivalents
thereof.2 In construing a "means plus function" limitation a number of factors must be
considered, including the language of the claim, the specification, and the prosecution
history. Once such factors are weighed, the scope of the "means plus function"
limitation can be determined. See United States v. Telectronics, Inc., 857 F.2d 778,
782, 8 USPQ2d 1217, 1220 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989).
In order to meet a "means-plus-function" limitation, the prior art must (1) perform
the identical function recited in the means limitation and (2) perform that function using
the structure disclosed in the specification or an equivalent structure. Cf. Carroll Touch
Inc. v. Electro Mechanical Sys. Inc., 15 F.3d 1573, 1578, 27 USPQ2d 1836, 1840 (Fed.
Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d
1451, 1454 (Fed. Cir. 1993); Johnston v. IVAC Corp., 885 F.2d 1574, 1580, 12
USPQ2d 1382, 1386 (Fed. Cir. 1989). Accordingly, in ascertaining that a "means-plus-
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3 Structure disclosed in the specification is corresponding structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim. Medtronic,
Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311, 58 USPQ2d 1607, 1614 (Fed. Cir.
2001).
4 The four tests set forth in MPEP § 2183 for determining whether or not a prior art element is an
equivalent to the corresponding element disclosed in the specification are (A) the prior art element
performs the identical function specified in the claim in substantially the same way, and produces
substantially the same results as the corresponding element disclosed in the specification; (B) a person of
ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art
(continued...)
function" limitation is met by the prior art, an examiner must (1) determine that the prior
art performs the identical function recited in the means limitation; (2) identify every
structure described in the patent specification that corresponds to the claimed function;3
(3) identify the structure in the prior art that performs the claimed function; (4) determine
if the structure in the prior art that performs the claimed function is the same as any
structure described in the patent specification that corresponds to the claimed function;
and if not (5) determine if the structure in the prior art that performs the claimed function
is equivalent to any structure described in the patent specification that corresponds to
the claimed function.
The Manual of Patent Examining Procedure (MPEP) § 2183 (Eighth Edition,
Aug. 2001) now provides that if the examiner finds that a prior art element (A) performs
the function specified in the claim, (B) is not excluded by any explicit definition provided
in the specification for an equivalent, and (C) is an equivalent of the means plus
function limitation, the examiner should provide an explanation and rationale in the
Office action as to why the prior art element is an equivalent.4 In the present case, the
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Application No. 08/779,361
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4(...continued)
for the corresponding element disclosed in the specification; (C) there are insubstantial differences
between the prior art element and the corresponding element disclosed in the specification; and (D) the
prior art element is a structural equivalent of the corresponding element disclosed in the specification.
examiner did not perform the required “means-plus-function” analysis in arriving at the
conclusion that claim 1 was anticipated by Cech, and as a result this panel of the Board
remanded the application to the examiner to do so (Paper No. 22). In the response to
the remand (Paper No. 25), the examiner states “while applicant does disclose a core
containing the volatile corrosion inhibitor material that is inserted into the inner sleeve
which is then covered by the exterior . . . it is not readily apparent from the specification
that these structures would have been considered to be the means for dispensing”
(page 3). While not precisely explained, it appears to us from paragraph (3) of page 3
of the response to the remand that the examiner has taken the position that Cech’s
core of volatile material 14, jacket 13 with holes 15, and outer sleeve 16, while not the
same as the structure disclosed by the appellant, is equivalent to the appellant’s
disclosed structure because it performs the same function and therefore meets the
terms of this “means-plus-function” recitation of structure in the claim. We do not agree
with this conclusion.
From our perspective, the specification indicates that the structure disclosed by
the appellant for dispensing volatile corrosion inhibiting material within the inner sleeve
comprises (1) an inner sleeve having a base which approximates the size of the rim of a
shell or cartridge and has a plurality of arms extending upwardly from the rim and
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defining between the arms spaces through which a volatile corrosion inhibitor material
vapor can be expelled, (2) an outer sleeve rotatably mounted around the base of the
inner sleeve and having an open end that fits over the arms of the inner sleeve and
slots which are equal to the size and number of the spaces between the arms in the
inner sleeve, and (3) a volatile corrosion inhibiting material in essentially a columnar
shape positioned in the inner sleeve. By means of this construction, rotating the outer
sleeve with respect to the inner sleeve adjusts the amount of volatile corrosion inhibitor
vapor released into the firearm by varying the relationship of the spaces in the inner
sleeve and the slots in the outer sleeve and thus the size of the openings through which
the vapors can pass. See pages 3, 4, 7 and 8 of the appellant’s specification and
Figures 2 and 3.
It is clear that the structure disclosed in Cech is not the same as that of the
appellant, for the inner sleeve does not have arms defining spaces and the outer sleeve
does not have slots. There is no mention in Cech of adjusting the amount of vapors
allowed to emanate from the core of corrosion inhibiting material and, while it might be
possible to do so, there is no teaching in the reference that the inner sleeve is rotatable
with respect to the outer sleeve once it is installed in place either by contact with the
inwardly extending annular shoulder 16 or by threaded connection (column 3, lines 40-
58). Moreover, even if the inner sleeve were to be rotated with respect to the outer
sleeve, the result would not be to adjust the amount of vapors dispersed to the firearm,
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for the rotation would not alter the total area through which the vapors can escape, that
is, the size or number of the holes.
Claim 1 states that there be a means “for dispensing volatile corrosion inhibiting
materials disposed within the inner sleeve.” Cech performs this function. Cech does
not, however, perform this function by structure identical to that disclosed by the
appellant. Nor, in our view, can the structure disclosed by Cech be considered to be
the equivalent of the structure described by the appellant in the specification, for it does
not have the capability to adjust the amount of corrosion inhibiting vapors that are
communicated from the material to the firearm, which is one of the objects of the
appellant’s invention (specification, sentence bridging pages 2 and 3). In this regard,
the examiner has not made findings in accordance with any one of the four tests set
forth in detail in Section 2183 of the MPEP for determining whether or not a prior art
element is an equivalent of the corresponding element disclosed in the appellant’s
specification (see footnote 4, supra), nor provided evidence that would support an
affirmative response to any of the them.
It therefore is our conclusion that the Cech structure is neither identical to nor the
equivalent of the structure disclosed by the appellant as the “means for dispensing
volatile corrosion inhibiting materials . . . .” This being the case, Cech does not disclose
or teach all of the subject recited in claim 1, and thus is not anticipatory thereof. The
rejection of claims 1, 4 and 8 is not sustained.
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5The test for obviousness 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).
Claim 5 stands rejected as being obvious5 in view of the combined teachings of
Cech and Wolford, the latter being cited for disclosing an O-ring in a cartridge for
dispensing corrosion inhibiting material. Evaluating Cech in the light of 35 U.S.C. § 103
does not cause us to alter our conclusion that it falls short of teaching the means-plus-
function structure recited in claim 1, from which claim 5 depends. Wolford does not
alleviate the shortcomings explained above with regard to Cech, and we therefore are
of the view that the combined teachings of Cech and Wolford fail to establish a prima
facie case of obviousness with regard to the subject matter recited in claim 5, and we
will not sustain this rejection.
CONCLUSION
Neither rejection is sustained.
The decision of the examiner is reversed.
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-0334
Application No. 08/779,361
Page 11
BASIL E. DEMEUR
KNECHTEL, DEMEUR & SAMLAN
130 S. OAK PARK AVE.
OAK PARK, IL 60302