11564889 (P.T.A.B. May. 30, 2013)

Ex Parte Sowder

Patent Trial and Appeal BoardMay 30, 2013

11564889 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM E. SOWDER ____________ Appeal 2011-004623 Application 11/564,889 Technology Center 3700 ____________ Before LINDA E. HORNER, BARRY L. GROSSMAN, and NEIL A. SMITH, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William E. Sowder (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-004623 Application 11/564,889 2 THE INVENTION Appellant’s claimed invention relates to “a cooling device that utilizes removable dry ice canisters for cooling an auxiliary device.” Spec. 1, ll. 6-7. Claims 1, 10, and 18 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A system for cooling an auxiliary device comprising: a main housing having a wall with a canister port disposed within the wall and a fluid line containing fluid adapted to be connected to the auxiliary device; a removable canister containing dry ice inserted into the housing through the canister port to cool the fluid and create pressure as the ice melts to drive fluid through the line; and the removable canister having a port wherein when the removable canister is inserted into the housing the port of the canister is placed in communication with the fluid line. Independent claim 10 is similarly directed to a system for cooling an auxiliary device comprising, inter alia, “a main housing having a canister port” and “a canister containing dry ice, that is removable during operation.” Independent claim 18 is also directed to a system for cooling an auxiliary device comprising, inter alia, “a main housing having a wall with a canister port disposed within the wall” and “a removable canister containing dry ice inserted through the wall.” THE EVIDENCE The Examiner relies upon the following evidence: Du Bois US 2,074,256 Mar. 16, 1937 Burton US 3,475,918 Nov. 4, 1969 Engstrom US 4,231,425 Nov. 4, 1980 Appeal 2011-004623 Application 11/564,889 3 Pasternack US 4,405,348 Sep. 20, 1983 Kyees US 2004/0069005 A1 Apr. 15, 2004 THE REJECTIONS Appellant seeks review of the following rejections: 1. Claims 1, 6-8, 10, and 15-17 under 35 U.S.C. § 103(a) as unpatentable over Burton and Du Bois; 2. Claims 2 and 11 under 35 U.S.C. § 103(a) as unpatentable over Burton, Du Bois, and Pasternack; 3. Claims 3-5, 9, 12-14, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Burton, Du Bois, and Engstrom; and 4. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Burton, Du Bois, Engstrom, and Kyees. PRINCIPLES OF LAW During prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim language, however, “should not [be] treated as meaningless.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir. 2006). ANALYSIS The Examiner’s rejections of independent claims 1 and 10 based on Burton and Du Bois and of independent claim 18 based on Burton, Du Bois, and Engstrom fail to adequately show how the combined teachings of the Appeal 2011-004623 Application 11/564,889 4 prior art would result in a system including a removable canister containing dry ice. First, the Examiner incorrectly found that Burton discloses removable canisters 13 and 14 containing dry ice inserted into a housing. Ans. 4, 8, 12- 13. This finding is based on an unreasonably broad interpretation of “removable” in which the Examiner determined that “[t]he canisters 13 and 14 are considered removable because with the proper amount of force and required tooling, they are capable of being removed.” Id. at 4; see also id. at 8, 13. This interpretation improperly renders the term “removable” meaningless. An ordinary meaning of “removable” is “[t]hat can be removed.”1 “Remove” may be defined as “[t]o move from a place or position occupied” or “[t]o take away; withdraw.”2 The Specification describes a removable canister 68 having threads 78 on the outer surface of the side wall 74 adjacent the bottom 72, which threads 78 are matingly received within threads 80 on the inner surface of fluid manifold 36. Spec. 4, ll. 4-7. The Specification describes that the system may use multiple manifolds 36 for receiving multiple canisters 68, so that “while one canister 68 is being replaced, the other canisters 68 continue to provide pressure and cooling.” 1 The American Heritage® Dictionary of the English Language (2007), www.credoreference.com/entry/hmdictenglang/removable, last visited May 23, 2013. 2 The American Heritage® Dictionary of the English Language (2007), www.credoreference.com/entry/hmdictenglang/remove, last visited May 23, 2013 Appeal 2011-004623 Application 11/564,889 5 Spec. 5, ll. 9-12. As such, in the example provided in the Specification, the canister threadingly engages the manifold so that it is able to be removed by unscrewing the canister from the manifold without compromising the integrity of the canister or the manifold.3 Therefore, in view of the definition of “remove” and “removable,” as well as how the removable canisters are described in the Specification, we interpret the term “removable” to require that the “removable canister” be able to be removed from the claimed housing without compromising the integrity of the canister or the housing. That is, the removable canister could be removed from and reattached to the housing by the practitioner such that the canister and housing are still usable. We agree with Appellant that the Examiner’s interpretation of “removable” is unreasonably broad in that it reads the term out of the claim entirely. App. Br. 5. The Examiner has not established that one could remove the pressure vessels 13 and 14 of Burton so as not to compromise the integrity of the apparatus. We agree with Appellant that “Burton provides no teaching of Burton’s pressure vessels 13 and 14 being removable, how they are placed in base 11 or how the vessels are connected to connections 28 and 29 (as well as connections 19, 20 and 27).” App. Br. 4-5. 3 The Specification further describes that “[a]lternatively, the canister 68 is connected to the manifold 36 in any conventional manner.” Id. at 4, ll. 7-8. We understand this sentence, when read in the context of the entire Specification, to describe that the removable canister is connected to the manifold in any conventional manner such that it is removable from the manifold. Appeal 2011-004623 Application 11/564,889 6 Second, the Examiner incorrectly found that Du Bois discloses a main housing 10 having a wall 11 with a canister port disposed within the wall 11 and a removable canister C containing dry ice inserted through the wall 11. Ans. 5, 8, 13. A careful reading of Du Bois shows that canister C is disclosed as being filled with the material to be refrigerated such as ice cream. Du Bois, col. 4, ll. 19-21. Du Bois discloses that blocks of solid carbon dioxide 50 used for cooling are placed with containers 23. Id. at col. 3, ll. 27-38.4 Because the Examiner’s rejections of independent claims 1, 10, and 18 are based on erroneous findings of fact as to the scope and content of Burton and Du Bois, we reverse the rejections. We likewise reverse the rejections of the dependent claims 2-9, 11-17, 19, and 20 which also suffer from the same shortcomings. DECISION We REVERSE the decision of the Examiner to reject claims 1-20. REVERSED hh 4 The Examiner does not rely on Engstrom in the rejection of claim 18 for the “removable canister” as called for in the claim. Ans. 14.