Ex Parte Wurzinger et al

Board of Patent Appeals and Interferences

Jul 13, 2012

11255031 (B.P.A.I. Jul. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/255,031 10/19/2005 Paul Wurzinger LVIP:121US 5085
7590 07/16/2012
Robert P. Simpson, Esq.
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221-5406
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
07/16/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL WURZINGER, REINHARD LIHL,
and ANTON LANG
____________

Appeal 2010-007756
Application 11/255,031
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paul Wurzinger et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-9, 11 and 12. The Examiner
withdrew claims 10 and 13-20 from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
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Application 11/255,031

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We REVERSE.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for cryosubstitution or low-
temperature substitution, comprising:
a Dewar vessel including:
an outer container forming a first
space and with a first opening in communication
with the first space;
an inner container forming a second
space and with a second opening in
communication with the second space, wherein the
inner container is fully disposed in the first space
and the second space is at least partially filled with
a liquid coolant; and,
a neck forming a third space, the neck
including a first end disposed in the first opening
and a second end connected to the inner container
at the second opening;
a chamber disposed in the third space and
including a heavy base, wherein the chamber is
adapted for receiving at least one specimen; and,
a first thermal conduction rod with a first
end connected to the heavy base and with a second
end facing away from the heavy base and disposed
in the second space, wherein the second end is
connected to a first platform and wherein the first
thermal conduction rod is equipped, above
the first platform, with an insulator.

THE REJECTIONS
Claims 1-3, 9, 11 and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Stone (US 3,456,490, iss. Jul. 22, 1969).
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Application 11/255,031

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Claims 1 and 3-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Loudon (US 3,298,185, iss. Jan. 17, 1967).
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Loudon.

OPINION
Anticipation based on Stone
The Examiner determines that Stone discloses each and every element
to anticipate claim 1. Ans. 3-6. In particular, the Examiner finds that Stone
discloses
an outer container (outer wall of 76, hereinafter
76O) forming a first space (including all of interior
of 76O) and with a first opening (as shown in
figure [1 from outer wall of 76 to outer wall of 76],
hereinafter at top of 76) in communication with the
first space (interior of 76O).

Ans. 3.
Appellants contend that “[t]he alleged outer container does not have
an opening.” App. Br. 4.
We agree with Appellants’ contention. The Examiner’s conclusion
that Stone discloses an opening in the outer container is based on an
unreasonably broad interpretation of what constitutes an opening.
Appellants’ Specification does not assign or suggest a particular definition
of the term “opening” or otherwise indicate that this term is used in a
manner other than its ordinary and customary meaning. Therefore, in
determining the ordinary and customary meaning of the claim term
“opening” as viewed by a person of ordinary skill in the art, it is appropriate
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to consult a general dictionary definition of the word “opening” for
guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010). An ordinary and customary meaning of the word “opening” is “a
void in solid matter; a gap, hole or aperture.”1 Stone’s outer wall 76 does
not include a void in solid matter or a gap, hole or aperture. Thus, Stone
fails to disclose “an outer container forming a first space and with a first
opening in communication with the first space,” as required by claim 1.
Accordingly, we cannot sustain the Examiner’s rejection of claim 1 and
claims 2, 3, 9, 11 and 12 dependent thereon, under 35 U.S.C. § 102(b) as
anticipated by Stone.
Anticipation based on Loudon
The Examiner determines that Loudon discloses each and every
element to anticipate claim 1. Ans. 6-8. In particular, the Examiner finds
that the interior of access conduit or access passage 34 or 34x corresponds to
the third space and that the container 48 or 48x corresponds to the chamber.
Ans. 7. The Examiner further finds that the chamber (container 48 or 48x) is
disposed in the third space (access conduit or access passage 34 or 34x)
when the chamber (container 48 or 48x) is placed inside the Dewar vessel or
when it is removed therefrom. Id.
Appellants contend that Loudon fails to disclose a chamber disposed
in the third space. App. Br. 8.
We agree with Appellants. The Examiner’s finding that Loudon’s
chamber (container 48 or 48x) is disposed in the third space (access conduit
or access passage 34 or 34x) is based on the Examiner’s unreasonably broad

1 Dictionary.com Unabridged, Random House, Inc., © 2012, accessed at
http://dictionary/reference.com/browse/opening (last visited Jun. 21, 2012).
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interpretation of the claim term “disposed” to encompass the position of the
chamber (container 48 or 48x) as it passes through the third space (access
conduit 34 or access passage 34x) on its way to its final placement, rather
than its final placement within inner container 31 while the Dewar vessel is
in use. See Ans. 7. As stated supra, since Appellants’ Specification does
not assign or suggest a particular definition of the term “disposed,” it is
appropriate to consult a general dictionary definition of the word “disposed”
for guidance. Comaper at 1348. The ordinary and customary meaning of
the word “disposed” is “to put in a particular or suitable place: The lamp
was disposed on a table nearby.”2 Thus, one of ordinary skill in the art
would understand the claim language of “a chamber disposed in the third
space” to mean that the chamber is put in a particular or suitable place in the
third space.
The “particular or suitable place” for Loudon’s chamber (container 48
or 48x) is in the inner container 31 or 31x, respectively. See Loudon, Figs. 3
and 4. The Examiner has not directed us to a particular portion of Loudon
which would support the Examiner’s finding that the “particular or suitable
place” for the chamber (container 48 or 48x) is in the third space (access
conduit 34 or access passage 34x). Rather, during the operation of Loudon’s
low temperature storage container, the chamber (container 48 or 48x) only
passes through the third space (access conduit 34 or access passage 34x) as it
is put in its “particular or suitable place” within the inner container 31 or
31x. See Loudon, Figs. 3 and 4 and col. 3, l. 47 through col. 4, l. 19.

2 Dictionary.com Unabridged, Random House, Inc., © 2012, accessed at
http://dictionary/reference.com/browse/disposed (last visited Jun. 21, 2012).
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Therefore, we cannot sustain the Examiner’s rejection of independent
claim 1, and claims 3-8 which depend therefrom, under 35 U.S.C. § 102(b)
as anticipated by Loudon.
Obviousness based on Loudon
The Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Loudon relies upon the erroneous finding that Loudon
discloses a chamber (container 48 or 48x) disposed in the third space (access
conduit 34 or access passage 34x). For the reasons discussed supra, we are
not persuaded that Loudon discloses a chamber (container 48 or 48x)
disposed in the third space (access conduit 34 or access passage 34x). The
Examiner’s proposed modification of Louden does not remedy the
deficiencies of Loudon as discussed above. Accordingly, we do not sustain
the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Loudon.

DECISION
We reverse Examiner’s decision rejecting claims 1-9, 11 and 12.

REVERSED

JRG