Ex Parte 5,803,101 et al

Patent Trial and Appeal Board

Apr 9, 2013

90011332 (P.T.A.B. Apr. 9, 2013)

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.
90/011,332 11/15/2010 5,803,101 4953/2401-US0 1407
25461 7590 04/09/2013
SMITH, GAMBRELL & RUSSELL
SUITE 3100, PROMENADE II
1230 PEACHTREE STREET, N.E.
ATLANTA, GA 30309-3592
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
04/09/2013 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 PATENT TRAIL AND APPEAL BOARD
____________________

Ex parte CDC PRODUCTS, INC.,
Patent Owner and Appellant
____________________

Appeal 2013-005046
Reexamination Control 90/011,332
Patent 5,803,101
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
CDC Products, Inc. (hereinafter “Appellant”), the real party in interest
1
of
Patent 5,803,101 (hereinafter the “‟101 patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from the Examiner‟s decision to reject claim 4 under 35 U.S.C.

1
See Appellant‟s Appeal Brief filed April 24, 2012 (hereinafter “App. Br.”) at 3.

2
US Patent 5,399,159, issued March 21, 1995 to Chin et al. (hereinafter “Chin”).

3
Claims 1-3, 6-9 and 16-20 were cancelled and claims 4, 5, and 10-15 were
confirmed in a prior reexamination proceeding 90/007,346. See Reexamination
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2
§ 112, first paragraph and under 35 U.S.C. § 102(b) as anticipated by Chin
2
(Final
Office Action, mailed September 14, 2011, pages 2-7). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by David Leason from the law firm of Leason Ellis LLP on
behalf of ComStar International Inc. (Request for Ex Parte Reexamination,
transmittal, filed November 15, 2010).
The ‟101 patent relates to a portable drain cleaning apparatus which is
particularly useful for condensation drains associated with air conditioning and
refrigeration units, and which may also be used in other plumbing applications
(‟101 patent, col. 1, ll. 5-10).
Claim 4, the only claim on appeal, depends from cancelled independent
claim 1
3
and reads as follows (with underlining showing added text relative to the
original patent claims and indentations added for clarity):
4. The drain cleaning apparatus according to claim 1, further
comprising
a regulating unit fluidly interposed between said pressurizing
means and said release valve member,

2
US Patent 5,399,159, issued March 21, 1995 to Chin et al. (hereinafter “Chin”).

3
Claims 1-3, 6-9 and 16-20 were cancelled and claims 4, 5, and 10-15 were
confirmed in a prior reexamination proceeding 90/007,346. See Reexamination
Certificate US 5,803,101 C1 issued March 18, 2008. Claim 4 is interpreted as
including all of the limitations of claim 1.
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wherein the second position of said release valve member
results in an opening through the release valve member greater in size
than an opening in said regulating unit,
said opening in said regulating unit controlling the rate of flow
of pressurized fluid from said pressurizing means,
said regulating unit further being spaced from said release valve
member so as to define, within said passage, a fluid chamber
therebetween,
wherein shifting of said release valve member from said first
position to said second position causes a supply of pressurized fluid,
delivered into said fluid chamber from said pressurizing means
through said regulating unit to exit through said opening in said
release valve member and to exit the second end portion of said
tubular member as a momentary burst of pressurized fluid while said
opening in said regulating unit retards a flow of additional pressurized
fluid from said pressurizing means into said fluid chamber.
Claims App‟x, App. Br. 20-21.
Cancelled claim 1 reads as follows for reference.
1. (Canceled) A portable drain cleaning apparatus comprising:
a control housing adapted to be grasped by and held in a user's
hand, said control housing being provided with a fluid passage
therein;
a release valve member disposed, at least in part, within said
passage, said release valve member being movable between at least a
first position wherein said release valve member prevents fluid from
flowing within said passage and a second position wherein fluid is
permitted to flow therein;
a flexible, tubular member having first and second end portions,
the first end portion of said tubular member being attached to said
control housing, downstream of said release valve member, with an
interior of said tubular member opening into said fluid passage;
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a terminal discharge member provided at the second end
portion of said tubular member, said terminal discharge member being
adapted to be sealingly engaged with an open end of a drain conduit
and including an outlet opening in fluid communication with said
fluid passage through said tubular member; and
means for pressurizing said fluid passage upstream of said
release valve member, said pressurizing means including a miniature
cartridge, sized to substantially fit in the palm of a hand, that is pre-
charged with a gaseous medium, wherein placement of said terminal
discharge member at the open end of a drain conduit and shifting of
said release valve member from said first position to said second
position causes pressurized fluid in said fluid passage to flow through
said tubular member and into the drain conduit in order to clean the
drain conduit.
Claims App‟x, App. Br. 19-20.
II. ISSUES ON APPEAL
The issues on appeal are as follows:
1. Whether the Specification of the ‟101 patent provides written descriptive
support under 35 U.S.C. § 112, first paragraph, for the language added to
claim 4 reciting “wherein the second position of said release valve
member results in an opening through the release valve member greater
in size than an opening in said regulating unit”?
2. Whether Chin describes a device as recited in claim 4 having a “terminal
discharge member being adapted to be sealingly engaged with an open
end of a drain conduit”?
III. ANALYSIS
Written Descriptive Support
Appellant contends that the Specification of the ‟101 patent provides written
descriptive support for the recitation in claim 4 of “the second position of said
release valve member results in an opening through the release valve member
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greater in size than an opening in said regulating unit.” App. Br. 10 (citing ‟101
patent, col. 3, l. 54 to col. 4, l. 5, col. 5, ll. 13-30, and Figure 1). Appellant further
contends that the only arrangement that would produce the momentary burst of gas
described in the ‟101 patent and recited in claim 4 is an arrangement where the
regulating unit 50 has a smaller opening than the release valve member 45 when
release valve member 45 is opened. App. Br. 11; Reply Br. 5.
In particular, Appellant argues that “release valve member 45 is simply an
ON/OFF valve” and that Figure 1 illustrates that “release valve member 45 has a
diameter at least as large as the fluid passage 43.” App. Br. 10. Further, Appellant
argues that regulating unit 50 includes a regulating element that is “within fluid
passage 43” and must necessarily be smaller than the fluid passage 43, and thus has
a smaller opening than release valve member 45. App. Br. 11.
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that time of
the later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language.” In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983). The claimed subject matter need not be described in haec
verba in the original specification in order to satisfy the written description
requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, the written
description requirement of § 112 requires the specification to “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought, he or
she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
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We agree with the Examiner that there is no meaningful disclosure in the
‟101 patent to support the Appellant‟s arguments as to the relative sizes of the
openings of the release valve member 45 and the regulating unit 50.
The Specification only recites that the release valve member 45 is
“preferably constituted by an ON/OFF valve” and is only “preferably” a “rotary
valve.” ‟101 patent, col. 3, ll. 55-63. We find the only requirement of the release
valve to be that when in a second position “fluid will be permitted to flow within
fluid passage 43.” Id., ll. 64-65; see also col. 5, ll. 21-27. Thus, the Specification
of the ‟101 patent does not disclose any particular type of valve that must be used
as the release valve member 45 and, more importantly, that the valve opening has
any particular relative dimension. Nor do we find that Figure 1 provides any
disclosure as to the dimensions of the opening formed by the release valve member
45. Figure 1, reproduced below for convenience, provides only an exterior view of
the device, and as such, the opening of the release valve member 45 disposed
within the device, and not visible in Figure 1, cannot be ascertained.
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Figure 1 depicts a partial exploded view of a drain cleaning apparatus of the
present invention, including the exterior of release valve 45 and regulating unit 50.
See id., col. 3, ll. 13-15.
Similarly, the ‟101 patent describes that the particular type of regulating
valve 50 “can vary” and “can comprise a flow regulating valve, a pressure control
valve or a variable restriction.” Id., col. 4, ll. 8-14. Although the ‟101 patent
describes a “regulating element (not shown) positioned within fluid passage 43”
there is no indication of the opening size of the regulating element either with
respect to fluid passage 43 or with respect to release valve 45. Id., col. 4, ll. 1-2.
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Further, Appellant has provided no meaningful evidence to support the
contention that the relative sizes are a requirement to achieve the described
“momentary burst,” and we do not find sufficient basis in the disclosure of the ‟101
patent to support such a finding.
Moreover, while the ‟101 patent refers to a “momentary burst,” it does not
specify any of the physical parameters characteristic of this burst, such as flow rate
or duration. See ‟101 patent, col. 5, ll. 6-10 and 22-26. A “momentary burst”
would occur anytime there is a change in fluid pressure, however slight, and
regardless of the relative sizes of the openings. If there is a pressure difference
across a valve and the valve is opened there will be a “burst” of fluid until the
pressures on both sides of the valve equalize.
Accordingly, we disagree with Appellant that the disclosure of a
“momentary burst” is sufficient to provide written descriptive support for the
relative sizes of the release valve member opening and the regulating unit opening
recited in claim 4.
Thus, we affirm the Examiner‟s rejection of claim 4 as lacking sufficient
written descriptive support under 35 U.S.C. § 112, first paragraph.
Anticipation
The Examiner rejects claim 4 as anticipated by Chin. Ans. 7-9.
Appellant contends, inter alia, that Chin fails to disclose a “terminal
discharge member being adapted to be sealingly engaged with an open end of a
drain conduit.” App. Br. 12-15.
Chin discloses a gas insufflation device used to inflate a human abdominal
cavity “to provide a working space for a surgeon to examine the contents of the
cavity or operate within the cavity.” Chin, col. 1, ll. 6-14. The distal end of the
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device terminates in “a pneumoneedle or Veress needle 40 for insertion into the
abdomen as shown in FIG. 1.” Id., col. 4, ll. 9-13. Figure 1 is reproduced below.

Figure 1 depicts an exploded view of the hand-held insufflator and
anesthesia assembly of Chin with an outlet line shown schematically inserted into a
human abdomen via a Veress needle 40. Id., col. 3, ll. 15-16 and col. 4, ll. 9-13.
The Examiner finds that, as with Chin, where the opening in the abdomen
seals around the Veress needle 40, the “[p]lacement of the Veress needle in a
suitably-sized, gasketed or otherwise sealable drain opening would still be „adapted
to be sealingly engaged‟” as recited in the claim. Ans. 10.
“To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). “A single reference must
describe the claimed invention with sufficient precision and detail to establish that
the subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311
F.3d 1116, 1120 (Fed. Cir. 2002); In re Schaumann, 572 F.2d 312, 317 (CCPA
1978).
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We agree with the Examiner that the phrase “adapted to be sealingly
engaged with an open end of a drain conduit” does not require that the reference
actually teach a sealing engagement with an open end of a drain conduit, but only
that the terminal discharge member, i.e. the Veress needle 40 in Chin, be capable
of the recited engagement. Ans. 11.
However, we agree with Appellant that the Examiner has not provided
sufficient evidence that Chin‟s Veress needle 40 would have been capable of being
sealingly engaged with an open drain conduit of any size, even a very small drain
conduit. Regarding the Examiner‟s reasoning with respect to a “gasketed or
otherwise sealable drain opening,” the Examiner has not explained how such a
gasketed or sealed drain opening constitutes an “open drain conduit” with which
the claim requires that the terminal discharge member be capable of being
sealingly engaged. While the Examiner is correct that no particular structure has
been claimed for the terminal discharge member, we find no evidence of record to
support a finding that a Veress needle 40 would be a structure that is adapted to be
sealingly engaged to an open drain conduit.
Accordingly, we reverse the Examiner‟s rejection of claim 4 as being
anticipated by Chin under 35 U.S.C. § 102(b).
IV. CONCLUSION
We affirm the rejection of claim 4 under 35 U.S.C. § 112, first paragraph
and reverse the rejection of claim 4 under 35 U.S.C. § 102(b) as anticipated by
Chin.
V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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AFFIRMED

FOR PATENT OWNER:

SMITH, GAMBRELL & RUSSELL
SUITE 3100, PROMENADE II
1230 PEACHTREE STREET, N.E.
ATLANTA, GA 30309-3592

FOR THIRD-PARTY REQUESTER:

LEASON ELLIS LLP
81 MAIN STREET
SUITE 503
WHITE PLAINS, NY 10601