Ex Parte Zaromb

Board of Patent Appeals and Interferences

Nov 20, 2001

08377966 (B.P.A.I. Nov. 20, 2001)

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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SOLOMON ZAROMB
____________
Appeal No. 1997-3056
Application No. 08/377,966
____________
HEARD: October 16, 2001
____________
Before GARRIS, KRATZ and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-8.
The only other claims in the application, which are claims 9-20,
have been allowed by the Examiner.
The subject matter on appeal relates to an apparatus for
monitoring the concentration of an airborne analyte. This
appealed subject matter is adequately illustrated by independent
claim 1 which reads as follows:
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Application No. 08/377,966
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1. In apparatus for monitoring the concentration of
an airborne analyte appertaining to the family of substances
comprising lead, cadmium, zinc, chromium, uranium, or compounds
of these metals, miscellaneous carcinogens, and other toxic
contaminants, the improvement comprising;
a substantially gas- and liquid-impermeable container means;
means for introducing a substantially analyte-free liquid
extractant into said container means;
means for rapidly sampling ambient air at a rate of at least
100 liters/minute and collecting particulates therefrom into said
liquid extractant, said sampling means comprising an air intake
means and an air venting means;
means for solubilizing the analyte contained in said
particulates into a volume of not more than about 40 milliliters of
liquid extractant, wherein said sampling means and said
solubilizing means are both within the same enclosure and combined
in a single device;
means for removing from said container means an analyte-
enriched liquid extractant; and
means for estimating the concentration of the analyte in said
analyte enriched liquid extractant.
The following references have been applied by the Examiner in
the rejection before us on this appeal:
Zaromb et al. (Zaromb) 5,173,264 Dec. 22, 1992
DeAngelis et al. (DeAngelis) Anal. Chem., Vol. 48, No. 14:
pp. 2262-2263 Dec. (1976)
Heijne et al. (Heijne), Anal. Chem. Acta., 100 pp. 193-205 (1978)
Gunasingham et al. (Gunasingham), J. Electroanal. Chem,
186 pp. 51-61 (1985)
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Application No. 08/377,966
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“MiniKap 225/500 Microfiltration Modules,” Microgon, Inc.
Laguna Hills, CA USA, T88 8-0433 2.5M” (pub. date 7/90)
Oakton Electrascan ECF1-Pb (EC-1 series) product literature with
a price list effective 3/1/91
Claims 1-4 are rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over
claims 1-16 of U.S. Patent No. 5,173,264 to Zaromb in view of the
“MiniKap” brochure. According to the Examiner, “[t]he instant
claims differ from the patent [sic, the patent claims] in the rate
of sampling a throughput of at least 100 liters/minute [as recited
in appealed independent claim 1], an effective filtration area of
at least 500 square centimeters [as recited in dependent claim 2]
and a hold up volume of not more than 40 milliters [as recited in
appealed independent claim 1]” (supplemental Examiner’s answer,
mailed Oct. 11, 2000 as Paper No. 26, page 4). In the last full
paragraph on page 4 and the paragraph bridging pages 4 and 5 of the
supplemental Examiner’s answer (mailed October 11, 2000 as Paper
No. 26), the Examiner presents the following rationale in support
of his position that a person of ordinary skill in the art would
conclude that the invention defined by the rejected claims is an
obvious variation the invention defined in the patent claims:
The MiniKap 500 filtration module is well known in
the art for application to filtration of gases. The
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MiniKap module has the advantages of a filter with
"greater surface area in less space, higher flow rates,
and minimal hold up volume... and the multiple end
fitting configurations allow the MiniKap filter to be
plumed into virtually any system" (see the disclosure
statement received 7/10/95, Appendix 8, page B-6 or the
newly cited MiniKap 225/500 Microfiltration Modules). It
would have been within the skill of the art to modify USP
5,173,264 to use a well known commercially available
filtration unit, such as the MiniKap 500 module, to gain
the advantages taught above.
The "MiniKap 500 module" is notoriously well
known in the art to have the physical properties/
specifications of an effective filtration area of 500
square centimeters, a 37 ml hold up volume and up to a
300 1/min flow rate at about 23 psi(see Applicant
disclose on page 5 lines 3+ of the specification). It
would have been obvious the modified USP 5,173,264
incorporating the MiniKap module would have met the
claimed physical properties of a throughput of at least
100 liters/minute, an effective filtration area of at
least 500 square centimeters and a hold up volume of not
more than 40 milliliters.
The Examiner’s obviousness-type double patenting rejections
of the other appealed claims are based upon the references and
rationale set forth above and further in view of the Electrascan,
DeAngelis, Gunasingham, or Heijne references listed earlier in this
decision.
We refer to the various briefs and answers of record for a
complete exposition of the opposing viewpoints expressed by the
Appellant and by the Examiner concerning the obviousness-type
double patenting rejections before us on this appeal.
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OPINION
We perceive a number of flaws in the rationale used by the
Examiner in constructing the obviousness-type double patenting
rejections before us. One of the most fundamental errors made by
the Examiner relates to his aforequoted conclusion that “[i]t would
have been within the skill of the art to modify USP 5,173, 264
[sic, to modify the claimed apparatus of USP 5,173,264] to use
a well known commercially available filtration unit, such as the
MiniKap 500 module, to gain the advantages taught above.” As
properly indicated by the Appellant, the apparatus defined by the
claims of the Zaromb patent and the filtration unit described in
the MiniKap brochure are incompatible in terms of being combined,
in the absence of hindsight, in such a manner as to result in an
apparatus of the type defined by the rejected claims on appeal.
In this regard, it is appropriate to emphasize that the
Examiner has offered little if any specific insight on how these
two apparatus structures would have been combined by one with
ordinary skill in the art. Moreover, we perceive no suggestion or
motivation, in the absence of hindsight, which would have led an
artisan with ordinary skill to combine these structures in such a
manner as to yield an apparatus of the type here claimed.
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Indeed, while it may be possible to combine these structures in
certain ways, the resulting apparatus would not only fail to
correspond to the here claimed apparatus but might even be
incapable of performing the functions desired for the apparatus
defined by the patent claims or for that matter the functions
desired for the apparatus defined by the appealed claims.
In light of the foregoing, the Examiner erroneously concluded
that it would have been obvious “to modify [the claimed apparatus
of] USP 5,173,264 to use a well known commercial available
filtration unit, such as the MiniKap 500 module”, in such a manner
as to result in the here claimed apparatus. Clearly, the only
way in which such a modification would have yielded the apparatus
defined by the appealed independent claim is via the application
of impermissible hindsight wherein that which only the inventor
has taught is used against its teacher. See W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313, (Fed.
Cir. 1983), cert denied, 469 U.S. 851 (1984).
For this reason alone, we cannot sustain the Examiner’s
obviousness-type double patenting rejection of claims 1-4 as being
unpatentable over claims 1-16 of U.S. Patent No. 5,173, 264 in view
of the MiniKap brochure. Further, because the fatal error made by
the Examiner in this rejection also applies to the other rejections
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before us, we also cannot sustain these other obviousness-type
double patenting rejections of claims 5-8. In short, we cannot
sustain any of the obviousness-type double patenting rejections
constructed and advanced on this appeal by the Examiner because
they are all tainted with fatal error, as least in the form of
impermissible hindsight, in relation to the Examiner’s conclusion
that it would have been obvious “to modify” the patent claim
apparatus “to use” a filtration unit of the type disclosed in the
MiniKap brochure.
OTHER ISSUES
Although the double patenting rejections formulated by the
Examiner cannot be sustained, it is our determination that the
record before us presents other issues involving obviousness-type
double patenting which should be addressed and resolved by the
Appellant and the Examiner. These other issues become apparent
upon a proper evaluation of the apparatus defined by the appealed
claims in comparison with the apparatus defined by the claims of
Patent No. 5,173,264 to Zaromb. Specifically, it is our perception
that the apparatus structure defined by the patent claims
corresponds to the structure (i.e., satisfies the structural
requirements) defined by certain of the appealed claims.
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Concerning this matter, we are mindful of the Appellant’s view
that the here claimed apparatus distinguishes over the apparatus
claimed in the patent because the former is used for collecting
particulates and solubilizing the analyte contained in these
particulates. From our perspective, however, a proper evaluation
of the aforementioned issues requires application of the well
established legal principal that the manner or method in which an
apparatus or machine is to be utilized is not germane to the issue
of patentability of the apparatus or machine itself. See In re
Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967). Thus, for
example, a claimed apparatus does not patentably distinguish over a
prior art apparatus if the latter is structurally indistinguishable
from and is capable of performing the functions of the former. See
In re Yanush, 477 F.2d 858, 959, 177 USPQ 705, 706 and In re Glass,
474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973).
With these considerations in mind, we observe that appealed
claims 1 and 3 define an apparatus embodiment of the type shown in
Figure 3 of the Appellant’s drawing. Similarly, patent claims 1
and 2, inter alia, define an apparatus embodiment of the type shown
in Figure 2 of patentee’s drawing, and this embodiment structurally
corresponds to the Figure 3 embodiment defined by appealed claims
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1 and 3. Particularly when viewed from this perspective, the
apparatus defined by appealed claims 1 and 3 appears to be
structurally indistinguishable from the apparatus defined by
patent claims 1 and 2. Stated otherwise, each of the structural
requirements of appealed claims 1 and 3 appears to be fully
satisfied by the apparatus structure of patent claims 1 and 2.
As we have previously indicated the structure defined by
these patent claims must be capable of performing the functions of
appealed claims 1 and 3. Concerning this point, we here reiterate
the previously quoted factual finding by the Examiner that “[t]he
instant claims differ from the patent [claims] in the rate of
sampling a throughput of at least 100 liters/minute [as recited in
appealed independent claim 1] ... and a hold up volume of not more
than 40 milliliters [as recited in appealed independent claim 1]”.
This finding suggests that the structure defined by the patent
claims is not capable of performing the appealed independent
claim 1 functions of “rapidly sampling ambient air at a rate of at
least 100 liters/minute” and of “solubilizing the analyte contained
in said particulates into a volume of not more than about 40
milliliters of liquid extractant”. However, this factual finding
by the Examiner is clearly erroneous. In light of the disclosure
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in lines 34-38 in column 6 and in lines 54-60 in column 5 of the
Zaromb patent, it is appropriate to regard the apparatus defined
by the patent claims as being capable of sampling air at a rate of
at least 100 liters/minute (i.e., the rate of 0.7 cubic meters per
minute disclosed in column 6 of the patent is equal to a rate of
700 liters per minute) and of solubilizing analyte into a volume of
not more than about 40 milliliters of liquid extractant (i.e.,
column 5 of the patent discloses a volume of liquid equal to 1-4
milliliters).
Under the circumstances recounted above, it appears that the
apparatus defined by appealed claims 1 and 3 fails to distinguish
in terms of functional capability as well as structure over the
apparatus defined by the patent claims. It is appropriate,
therefore, that the Examiner and the Appellant consider whether at
least pending claims 1 and 3 are subject to a rejection under the
judicially created doctrine of obviousness-type double patenting as
being unpatentable over claims 1-16 of U.S. Patent 5,173,264 to
Zaromb.
Particularly in light of the prior prosecution of this
application, it is appropriate to emphasize that the aforementioned
consideration of obviousness-type double patenting must conform
with the guidelines concerning obviousness and double patenting
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Application No. 08/377,966
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in the Manual of Patent Examining Procedure (MPEP) especially the
guidelines set forth in MPEP section 804. It is similarly
appropriate to emphasize that the record of this appeal reveals
no support for an obviousness-type double patenting rejection
of pending dependent claim 2. This claim is directed to the
Appellant’s filter module embodiment which is shown in Figure 2 of
the application drawing and which includes a filter module of the
type shown in the MiniKap brochure (according to the disclosure on
pages 4 and 5 of the subject specification). As previously
indicated, no proper basis exists for the Examiner’s above
discussed conclusion that it would have been obvious to somehow
combine the apparatus of the patent claims with the filter module
of the MiniKap brochure to thereby obtain an apparatus of the type
defined by appealed claim 2.
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Appeal No. 1997-3056
Application No. 08/377,966
SUMMARY
The decision of the Examiner is reversed.

REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG/jrg
Appeal No. 1997-3056
Application No. 08/377,966
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SOLOMON ZAROMB
95 706 WILLIAM DRIVE
HINSDALE, IL 60521