Ex parte Woodson

Board of Patent Appeals and Interferences

Dec 29, 1998

07816157 (B.P.A.I. Dec. 29, 1998)

Application for patent filed December 31, 1991.1
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not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LEWIS P. WOODSON
__________
Appeal No. 95-1827
Application 07/816,1571
___________
HEARD: December 11, 1998
___________
Before WINTERS, JOHN D. SMITH, and WALTZ, Administrative
Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 23, 24 and 29 through 34,
which are all of the claims pending in this application.
Appeal No. 95-1827
Application 07/816,157
This concentration is less than the biofilm biocidal2
concentration (BBC), defined on page 7, lines 28-34, of the
specification.
2
According to appellant, the invention is directed to a
sterilizer which employs an electrically conductive liquid
medium, including a biocide present in a concentration less
than that required to eradicate biofilms and a neutralizer2
capable of neutralizing any in situ electrically generated
biocides, and a means to apply an electric field (brief, page
4). Claim 23 is illustrative of the subject matter on appeal
and is reproduced below:
23. A sterilizer comprising:
a) an inner cavity containing an electrically
conductive liquid medium comprising an effective amount of a
biocide, which amount is less than the biofilm biocidal
concentration, and an effective amount of neutralizer capable
of neutralizing any in situ electrically generated biocide;
and
b) means for applying an electric field through said
medium, the strength of said electric field being equivalent
to that generated by an electric current of between 1 and 200
milliamps.
The examiner has relied upon the following reference to
support the rejection under §§ 102/103:
Stillman 4,790,923 Dec. 13,
1988
Appeal No. 95-1827
Application 07/816,157
3
Claims 23 and 24 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 appellant
Appeal No. 95-1827
Application 07/816,157
4
regards as his invention (answer, page 3). Claims 29-31 and
34 stand rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit
the subject matter of a previous claim (id.). Claims 23, 24,
32 and 33 stand rejected under 35 U.S.C. §§ 102(a) and (b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103
as unpatentable over Stillman. We reverse all of the
examiner’s rejections for reasons which follow.
OPINION
A. The Rejections Under 35 U.S.C. § 112
The claims must be analyzed first in order to determine
exactly what subject matter they encompass. In re Angstadt,
537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976), quoting from
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).
The examiner has rejected appealed claims 23 and 24 under
the second paragraph of § 112 because “[t]he claims improperly
recite the material contained within the apparatus as an
element of structure.” (answer, page 3, referring to Paper No.
13, page 3, dated Feb. 8, 1994). The examiner concludes that
Appeal No. 95-1827
Application 07/816,157
197 F.2d 342, 345, 94 USPQ 71, 73 (CCPA 1952).3
5
“[t]he material is of an impositive [sic] nature, and is not
considered a permanent element of the apparatus structure.”,
citing In re Rishoi (id.).3
However, the legal standard for definiteness under the
second paragraph of § 112 is not whether the claims recite a
material within an apparatus or whether the material is of an
“impositive” or transient nature. “The legal standard for
definiteness is whether a claim reasonably apprises those of
skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
The examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). There has been no
showing on this record by the examiner that one skilled in the
art would have any particular difficulty in determining
whether a sterilizer apparatus with an electrically conductive
medium containing a certain amount of biocide and neutralizer
is or is not within the scope of appealed claim 23. The
Appeal No. 95-1827
Application 07/816,157
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examiner’s point, that the claimed recitation of an
electrically conductive medium as an element of an apparatus
“is material being worked upon by the apparatus” (answer, page
4), has no bearing on the issue of definiteness. In re
Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 1760.
For the foregoing reason, we conclude that the examiner
has failed to show that one of ordinary skill in the art would
not be reasonably apprised of the scope of appealed claim 23.
Accordingly, the rejection of claims 23 and 24 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The examiner has rejected claims 29-31 and 34 under 35
U.S.C. § 112, fourth paragraph, because of the same line of
reasoning, i.e., these claims only recite limitations of the
electrically conductive medium and thus do not further limit
the apparatus (answer, paragraph bridging pages 4-5).
However, the fourth paragraph of § 112 requires that a
dependent claim shall “specify a further limitation of the
subject matter claimed.” See 35 U.S.C. § 112, fourth
paragraph (1975). Whether or not the examiner believes the
electrically conductive medium is a limitation that affects
Appeal No. 95-1827
Application 07/816,157
7
the patentability of the apparatus is not the issue. If the
dependent claims specify a further limitation of any subject
matter claimed in the independent claim, these claims would
meet the requirement of the fourth paragraph of
§ 112. The examiner has failed to show why dependent claims
29-31 and 34 fail to further limit the subject matter of the
claims they depend upon.
For the foregoing reason, the rejection of claims 29-31
and 34 under the fourth paragraph of § 112 is reversed.
B. The Rejection over Stillman
Claims 23, 24, 32 and 33 stand rejected under §§ 102(a)
and (b) as anticipated by or, in the alternative, under 35
U.S.C.
§ 103 as unpatentable over Stillman (answer, pages 3-4,
referring to Paper No. 13 dated Feb. 8, 1994). The examiner
states that Stillman discloses an “inner cavity” and “a means
for applying an electric field” as required by appealed claim
23 (answer, page 5, and Paper No. 13, page 2). The examiner
concludes that the recitation of an electrically conductive
medium in appealed claim 23 is “an impositive [sic] element”
Appeal No. 95-1827
Application 07/816,157
8
of the apparatus and therefore “claims 23-24 recite structure
which is either readable on the reference or an obvious
modification thereover” (answer, page 5). The examiner cites
In re Rishoi, supra, for the holding that “there is no
patentable combination between a device and the material upon
which it works” (Paper No. 13, page 2). The examiner has
determined that the “material being claimed as a necessary
element of the apparatus combination [the electrically
conductive medium] is considered to be the material being
worked upon by the structural elements of the claimed
apparatus.” (Paper No. 13, sentence bridging pages 2-3).
Appellant does not contest that the recitations of “inner
cavity” and “means for applying an electric field” are shown
by Stillman but argues that the claims are distinguished over
the applied prior art by the chemical composition features
(brief, pages 7 and 11).
Accordingly, the dispositive issue here is one of claim
interpretation, i.e., we must review the examiner’s rejection
analysis to determine if the claim has been correctly
construed as to the scope and meaning of each contested
Appeal No. 95-1827
Application 07/816,157
2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). See4
also In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA
1963); In re Young, 75 F.2d 996, 998, 25 USPQ 69, 71 (CCPA
1935); and In re Hughes, 49 F.2d 478, 479, 9 USPQ 223, 224
(CCPA 1931).
9
limitation. See Gechter v. Davidson, 116 F.3d 1454, 1457, 43
USPQ2d 1030, 1032 (Fed. Cir. 1997). Every limitation
positively recited in a claim must be given effect in order to
determine what subject matter that claim defines. In re
Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970).
Appellant asserts that the electrically conductive medium
is positively recited as a necessary element of the sterilizer
(brief, page 12). Appellant further submits that the
electrically conductive medium must be present in the inner
cavity before the sterilizer is complete and operational
(brief, page 15). The examiner does not refute these
assertions (answer, page 5). The examiner relies upon the
asserted holdings of In re Rishoi and Ex parte Masham for the4
determination that there is no patentable combination between
a device and the material upon which it works (Paper No. 13,
page 2).
There are no per se rules for obviousness. See In re
Appeal No. 95-1827
Application 07/816,157
See In re Rishoi, 197 F.2d at 345, 94 USPQ at 73.5
10
Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1132 (Fed. Cir.
1995). The electrically conductive medium is positively
recited in appealed claim 23. As noted above in In re Wilder,
all positively recited limitations must be given effect. The
Rishoi and Masham cases cited by the examiner are
distinguishable by the fact situation in this appeal. These
cases dealt with the claimed limitation of a material to be
worked upon in combination with an apparatus. Here the5
“electrically conductive medium” is an essential part of the
operating apparatus and is not the material to be worked upon.
The material that is being worked upon is the object to be
sterilized, e.g., the catheter including a biofilm that
requires sterilization. Therefore the examiner’s finding that
the “electrically conductive medium” of appealed claim 23 is
the “material being worked upon” (Paper No. 13, sentence
bridging pages 2-3) is in error.
The electrically conductive medium required in the
apparatus of appealed claim 23 allows the electric field to
have an effect upon the biofilm without the biofilm contacting
Appeal No. 95-1827
Application 07/816,157
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the electrodes (specification, page 4, lines 22-31, page 8,
lines 31-36, and Figure 4). We see no difference between the
type of subject matter here claimed and claims presented to a
battery containing an electrolyte (for example, see Class
429/subclass 188 in the PTO Manual of Classification).
For the foregoing reasons, we conclude that the examiner
has failed to show that all of the limitations of appealed
claim 23 are disclosed or suggested by Stillman. Accordingly,
the rejection of claims 23, 24, 32, and 33 under 35 U.S.C. §§
102(a) and (b) as anticipated by or, in the alternative, under
35 U.S.C. § 103 as unpatentable over Stillman is reversed.
REVERSED
Appeal No. 95-1827
Application 07/816,157
12
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW/caw
Appeal No. 95-1827
Application 07/816,157
13
Jennie G. Boeder
3M Office of Intellectual Prop. Counsel
P. O. Box 33427
St. Paul, MN 55133-3427