Ex parte UFFENHEIMER et al.

Board of Patent Appeals and Interferences

Mar 19, 1998

07988074 (B.P.A.I. Mar. 19, 1998)

Application for patent filed December 09, 1992. According to1
appellant, this application is a divisional of application no. 07/671,713,
filed April 4, 1991, now U.S. Patent No. 5,201,232, issued April 13, 1993.
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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KENNETH F. UFFENHEIMER
__________
Appeal No. 95-1860
Application 07/988,0741
__________
ON BRIEF
__________
Before THOMAS, HAIRSTON and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 2, 7, 9, 11, 19, 27, 30, 35 and 43. However, the Examiner
Appeal No. 95-1860
Application 07/988,074
2
only maintains the rejection of claims 2, 7, 9, 11 and 19 in the
Examiner's answer.
The invention relates to an apparatus and method for
integrated sampling from both closed and open sample liquid
containers through use of the same sample liquid analysis system
sampling probe.
The independent claim 2 is reproduced as follows:
2. In sample liquid container support apparatus for use
in a sampler, the improvements comprising, said support
apparatus comrising, a plurality of sample liquid
container mounting means each of which is operable to
mount either a closed sample liquid container or an
open sample liquid container, and means on said support
apparatus for operatively connecting said support
apparatus to a sampler for use in said sampler.
The Examiner relies on the following references:
Jones 3,897,216 Jul. 29, 1975
Bradley et al. 4,478,095 Oct. 23, 1984

Claims 2, 7, 9 and 11 stand rejected under 35 U.S.C. § 102
as being anticipated by Jones or in the alternative under 35
U.S.C. § 103 as being unpatentable over Jones. Claims 2, 7, 9
and 19 stand rejected under 35 U.S.C. § 102 as being anticipated
by Bradley or in the alternative under 35 U.S.C. § 103 as being
unpatentable over Bradley.
Appeal No. 95-1860
Application 07/988,074
3
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejections of claims 2, 7, 9, 11 and
19 under 35 U.S.C. §§ 102 or 103.
It is axiomatic that anticipation of a claim under §102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
Appellant argues in the brief that neither Jones nor Bradley
teaches "a plurality of sample liquid container mounting means
each of which is operable to mount either a closed sample liquid
container or an open sample liquid container" as recited in
Appellant's claim 2. On page 7 of the brief, Appellant argues
that Jones teaches a sample liquid container mounting means
operable to mount an open sample liquid container but not a
closed sample liquid container. On the same page of the brief,
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Application 07/988,074
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Appellant argues that Bradley teaches a sample liquid container
mounting means operable to mount a closed sample liquid container
but not an open sample liquid container. Appellant argues that
neither reference teaches a sample liquid container mounting
means operable to mount either an open sample liquid container or
a closed sample liquid container.
The Examiner does not dispute the fact that neither Jones
nor Bradley teaches a sample liquid container mounting structure
that mounts either an open sample liquid container or a closed
sample liquid container. However, the Examiner argues on pages
3-5 of the answer that the phrase "each of which is operable"
fails to set forth structure or a means plus function limitation.
The Appellant on pages 11 and 16 of the brief argues that
the Examiner's position is incorrect and without legal merit in
that the sample liquid means is to be construed to cover the
corresponding structure as clearly defined in Appellant's
specification, namely the universal sample liquid containers
mounting apertures 72, 74, 76, 78, 80 and 82 which mount either a
closed sample liquid container or an open sample liquid container
therein.
Appeal No. 95-1860
Application 07/988,074
5
Our reviewing court has stated in In re Donaldson Co. Inc.,
16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir. 1994) that
the "plain and unambiguous meaning of paragraph six is that one
construing means-plus-function language in a claim must look to
the specification and interpret that language in light of the
corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification
provides such disclosure." We find that the claimed sample
liquid container mounting means, corresponds to the mounting
structure shown in figure 1 that is capable of mounting both
containers. Hence, we find that the Examiner has failed to show
that neither Jones nor Bradley teaches this feature as "a plural-
ity of sample liquid container mounting means each of which is
operable to mount either a closed sample liquid container or an
open sample liquid container" as recited in Appellant's claims.
Therefore, we will not sustain the Examiner's rejection of the
claims under 35 U.S.C. § 102.
In regard to the 35 U.S.C. § 103 rejections, the Examiner
has failed to set forth a prima facie case. It is the burden of
the Examiner to establish why one having ordinary skill in the
Appeal No. 95-1860
Application 07/988,074
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art would have been led to the claimed invention by the express
teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). The Examiner has not
addressed these issues in any way in the answer. Furthermore,
the Federal Circuit states that "[t]he mere fact that the prior
art may be modified in the manner suggested by the Examiner does
not make the modification obvious unless the prior art suggested
the desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). "Obviousness may not be established using hindsight
or in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
Appeal No. 95-1860
Application 07/988,074
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USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
We have not sustained the rejection of claims 2, 7, 9, 11
and 19 under 35 U.S.C. §§ 102 or 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-1860
Application 07/988,074
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Appeal No. 95-1860
Application 07/988,074
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