Ex Parte Dykes

Patent Trial and Appeal Board

Aug 22, 2016

13205952 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/205,952
15579 7590
Tomas Friend
3100 Fresh Way
SteP
FILING DATE
08/09/2011
08/24/2016
Huntsville, AL 35805
FIRST NAMED INVENTOR
H. Waite H. Dykes JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl437USOO 2878
EXAMINER
RAEVIS, ROBERT R
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
08/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
tomas@patentgrove.com
tomfriend7@me.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. WAITE H. DYKES, JR.
Appeal2014-008201
Application 13/205,952
Technology Center 2800
Before JEFFREY A. STEPHENS, CARLL. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-19.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 The real party in interest is identified as Streamline Automation. (App. Br.
2.)
2 Following the withdrawal of certain rejections in the Examiner's Answer
noted below, claims 3, 11, 14, and 16 are not rejected and are, therefore, not
before us on appeal.
Appeal2014-008201
Application 13/205,952
Claimed Subject Matter
The claimed invention generally relates to an adapter used to sample
gas in a container. (Spec. 1:8, Abstract.) Claims 1 and 9, reproduced below,
are illustrative:
1. An adapter for sampling one or more volatile substances
in an airtight storage container, said adapter comprising:
a tubular body having a first open end and a second open
end and enclosing an adapter volume and
a cap covering the first open end, said cap comprising a
septum;
wherein the second open end is configured to be reversibly
attachable to an existing opening in said storage container in a
gas-tight manner by a means of a reversible attachment such that
a concentration of a gas in a headspace inside the storage
container may equilibrate with the adapter volume of the tubular
body outside the headspace and
wherein the storage container contains a volume of at least
5 gallons.
9. A method for sampling volatile contents in a container
comprising the steps of:
attaching the sampling adapter recited in claim 1 to an
opening in the container in an air-tight and reversible manner;
after a predetermined period of time, inserting a probe
through the septum of the sampling adapter and into the volume
of the tubular body but not into the volume of the storage
container to detect or measure an amount or concentration of a
gas or group of gasses in the volume of the tubular body; and
removing the probe from the tubular body of the sampling
adapter.
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Rejections on Appeal
Claims 7 and 15 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. (Final Act. 3;
Ans. 2-3.)
Claims 8, 13, and 17 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. (Final Act. 3---6; Ans. 2--4.)3
Claim 17 stands rejected under 35 U.S.C. § 112, fourth paragraph, as
failing to further limit the claim from which it depends. (Final Act. 6; Ans.
4.)
Claims 1, 2, 4---6, 8-10, 12, 13, 18, and 19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Perras (US 4,359,908, issued Nov. 23,
1982) and Friedrich et al. (US 3,602,629, issued Aug. 31, 1971). (Final Act.
7-8; Ans. 5-6.)4
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner errs (App. Br. 4--21; Reply Br. 4--21). We
address the issues raised by Appellant's arguments in tum.
3 The Examiner withdraws the rejection of claim 1 under§ 112, second
paragraph, in the Answer. (Ans. 2.) We understand the withdrawal of the
rejection of this independent claim to also withdraw the same rejection as to
claims 2-7, 9-12, 14--16, 18, and 19, which depend from claim 1 and are not
separately rejected as indefinite. (See Ans. 3.) The summary of the§ 112,
second paragraph, rejections in the Answer also includes claim 14, but we
understand this to be an inadvertent error in view of the lack of a rejection
specific to claim 14 or a claim from which it depends. (See Ans. 3--4.)
4 The Examiner has withdrawn the rejections of claims 3 and 17 under
§ 103(a). (Ans. 2.)
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Rejections under 35 U.S. C. § 112, first paragraph
Claim 7
Claim 7 depends from claim 1 and provides that the tubular body of
sampling adapter is made of certain materials. The Examiner finds claim 7,
which was amended after filing, lacks written description support because
the Specification broadly states that the sampling adapter, and not
specifically the claimed "tubular body" of the sampling adapter, is made of
the recited materials, including glass and certain plastics. (See Ans. 6 (citing
Spec. 4: 11-13, 5:20-23).)
We agree with Appellant that the Examiner errs in rejecting claim 7 as
lacking written description support. (App. Br. 4--5.) The sampling adapter
has few parts: the tubular body and the cap, which includes a septum. (See
Spec. 5:8-18.) Accordingly, one of ordinary skill in the art would
understand the Specification's statements regarding materials that the
adapter may be made out of to include the tubular body of the adapter, which
is the main part. The Examiner points out that the adapter includes a
septum, which is not made from glass, and concludes that the Specification's
statement as to the materials of the adapter cannot include every part of the
adapter. (Ans. 6-7.) The Specification specifically states, however, that the
septum is made of elastic material (see Ans. 7 (citing Spec. 4:24)), and we
agree with Appellant that, therefore, "it would be apparent to one of skill in
the art that the adapter can be made of glass without the septum being made
of glass" (Reply Br. 5). Indeed, the Specification's statement that the
septum is elastomeric reinforces the understanding of one of ordinary skill in
the art that the Specification contemplates that all other pieces of the adapter,
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including any other piece of the cap or tubular body, could be made of glass
or the listed plastics.
In view of the foregoing, we do not sustain the rejection of claim 7
under 35 U.S.C. § 112, first paragraph.
Claim 15
Claim 15 depends from claim 9 and adds that the method further
comprises:
removing a seal from an opening in a top surface of said
container before attaching said adapter to said opening,
removing the sampling adapter from the opening after
removing the probe from the tubular body, and replacing the
seal on the opening of the container.
Appellant argues claim 15, which was added after filing of the
application, finds support in the Specification's description that the second
open end 7 of the tubular body 5 may be reversibly attached to opening 3 to
form a gas-tight seal. (App. Br. 5 (citing Spec. 6:18-22).) Appellant
contends one of ordinary skill in the art reading the Specification would
understand that a storage container containing a volatile substance would
normally be sealed and that a seal removed from opening 3 would be
replaced after the adapter is removed to prevent vapor from the volatile
contents from escaping into the atmosphere. (App. Br. 6.)
The Examiner finds one of ordinary skill in the art would not
necessarily understand the Specification to describe using the adapter in the
particular way claimed in claim 15 because sampling may be carried out
before a seal is inserted, the adapter may be left in place, or the container
may be emptied after sampling making it unnecessary to replace the seal.
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(Ans. 8.) In view of the number of possible use scenarios, we agree with the
Examiner that the Specification's description of the adapter as reversibly
attachable to the container does not demonstrate possession, at the time of
filing, of the particular method claimed in claim 15.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 15 under
35 U.S.C. § 112, first paragraph. Thus, we sustain the rejection of claim 15.
Rejections under 35 U.S.C. § 112, second paragraph
Claim 8
Dependent claim 8 recites:
The sampling adapter of claim 1, wherein said sampling
adapter consists of:
a straight tubular body having a first open end and
a second open end and enclosing an adapter volume and
a cap covering the first open end, said cap
comprising a septum;
wherein the second open end is configured to be
reversibly attachable to said storage container by a means
of reversible attachment.
Appellant argues the preamble to claim 8 indicates that the device
contains only the components recited in the claim and, therefore, further
limits the device recited in claim 1. (App. Br. 8.) We agree with the
Examiner, however, that claim 8 is unclear. (Ans. 9.)
As noted by the Examiner (Ans. 9), claim 8 recites a straight tubular
body and a cap using indefinite articles rather than referring back to the
tubular body and the cap recited in claim 1. As a result, it is unclear
whether, for example, the straight tubular body in claim 8 should be
interpreted as adding a straightness limitation to the tubular body of claim 1
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or reciting a tubular body in addition to or instead of the one recited in claim
1. (See Ans. 9.) In addition, even if one of skill in the art would not be
confused by the use of indefinite articles to re-state elements having an
antecedent basis in claim 1, the body of claim 8 does not include all
limitations of claim 1 and is, therefore, not consistent with the preamble,
which indicates the claim is intended to further limit the scope of claim 1 to
only those elements recited in claim 8. For example, claim 8 does not
incorporate all limitations of the wherein clauses of claim 1, either by
referring back to the antecedent bases of the structural elements recited in
the wherein clauses or by expressly re-stating all limitations of the wherein
clauses. We note also that claim 8 refers to said storage container, referring
back to its antecedent basis in claim 1, which indicates some elements in
claim 8 have antecedent basis in claim 1 and adds to the confusion of
whether elements of claim 8 introduced with indefinite articles are meant to
be the same or different than those of claim 1. 5
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 8 under 35 U.S.C.
§ 112, second paragraph. Thus, we sustain the rejection of claim 8.
5 Appellant notes the Examiner did not enter an amendment after the Final
Action that would have re-worded the claim to recite "said tubular body"
and "said cap," as suggested by the Examiner. (App. Br. 8-9.) The denial
of entry of the amendment is a petitionable matter not before us on appeal,
and we have considered the claims as presented in the record on appeal.
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Claim 13
Dependent claim 13 recites:
The method of claim 9, wherein the probe comprises a
sensor configured to detect or measure a concentration of gas
inside the sampling adapter.
The Examiner concludes "[t]he phrase 'the probe comprises a sensor'
is problematic as it literally limits the claimed probe to a sensor per se, but it
is questionable whether the sensor is inserted through the septum." (Ans. 9.)
The Examiner questions why Appellant refuses to amend the claim to recite
that the probe "includes a sensor," or "further compris[es] a sensor." (Final
Act. 5-6.)
We agree with Appellant that the term "comprises" is generally
synonymous with "includes." (Reply Br. 10 (citing Mars Inc. v. H.J. Heinz
Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004)).) Because the term "comprises"
is generally open-ended, claim 13 does not preclude the probe from
including additional structure beyond the sensor.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 13 under 35 U.S.C. § 112, second paragraph.
Claim 17
Dependent claim 17 recites:
The sampling adapter of claim 1, wherein the sampling
adapter consists of:
a straight tubular body having a first open end with a
circular cross-section and a second open end with a circular
cross-section and
a screw cap covering the first open end
wherein said screw cap has a central opening containing a
septum and the second open end is embodied as a threaded
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opening configured to be screwed onto a threaded opening on the
storage container.
The Examiner rejects claim 17 under 35 U.S.C. § 112, second
paragraph, for reasons similar to the rejection of claim 8 (Final Act. 5---6;
Ans. 10), and Appellant argues the Examiner errs for the same reasons (App.
Br. 10). For the same reasons as claim 8, we sustain the rejection of claim
17 under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S. C. § 112, fourth paragraph
The Examiner rejects claim 17 under 35 U.S.C. § 112, fourth
paragraph, for failing to further limit independent claim 1, from which it
depends. (Final Act. 6.) Appellant argues the preamble of claim 17 recites
the sampling adapter of claim 1, and, therefore, includes all of the limitations
recited in claim 1, and further limits claim 1 by reciting that the sampling
adapter "consists of' the structural elements recited in the body of the claim.
(App. Br. 10.) As noted by the Examiner (Ans. 10-11), however, claim 17
does not include the enclosing an adapter volume limitation of claim 1. The
body of the claim does not refer back to the tubular body of claim 1 or
expressly re-state the enclosing an adapter volume limitation. Similarly, we
note also that claim 1 7 does not incorporate all limitations of the wherein
clauses of claim 1, either by referring back to the antecedent bases of the
structural elements recited in the wherein clauses or by expressly re-stating
all limitations of the wherein clauses. Accordingly, claim 17 is broader in
some respects than claim 1, from which it purports to depend.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 17 under
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35 U.S.C. § 112, fourth paragraph. Thus, we sustain the rejection of claim
17.
Rejections under 35 U.S.C. § 103(a)
Claims 1, 4---6, and 18
Appellant argues the Examiner fails to identify what structure in
Perras corresponds to an adapter volume as recited in claim 1. (App. Br.
12.) The Examiner finds Perras's plug 19 is an adapter with two open ends
that enclose a volume. (Final Act. 7.) We agree with this finding, which
Appellant has not persuasively rebutted. In the Answer, the Examiner also
provides an annotated figure pointing to a volume within the open ends of
Perras's plug 19. (Ans. 11.) In reply, Appellant asserts that the Examiner's
annotated figure shows the Examiner considers membrane 24 to be the first
open end of the tubular body, and Appellant argues a membrane cannot
reasonably be interpreted as an open end of a tubular body. (Reply Br. 13.)
The Examiner's figure points to internal threads 21 in the open end of
Perras's plug 19, not membrane 24, as argued by Appellant. (See Ans. 11-
12.) We agree with the Examiner that these threads are located at an open
end of plug 19.
Appellant also argues Perras does not teach or suggest a cap covering
the first open end of the tubular body because plug 25 and membrane 24,
which are inserted into one end of plug 19, cover an inside surface of the
tubular body around the opening into passage 22. (App. Br. 13-14.)
Appellant does not provide persuasive evidence or argument as to why the
claim phrase covering the first open end requires completely covering the
edges of the tubular body rather than covering the opening. We agree with
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the Examiner that plug 25 and membrane 24 cover the open end of the
tubular body because, as the Examiner points out, "[ o ]nee one assembles the
elements of [Perras's] Figure 2, one cannot see within into the body 19."
(Ans. 13.)
Appellant next contends Perras' s plug 19 is not configured for
attachment to an existing opening in bushing 10 because membrane 23
provides a gas-tight seal between the bushing and the plug. (App. Br. 14.)
For the same reason, Appellant argues Perras does not teach reversible
attachment such that a concentration of a gas in a headspace inside the
storage container may equilibrate with the adapter volume of the tubular
body outside the headspace. (Id.) Appellant does not, however, identify any
structural difference between the second open end of Perras' s plug 19 and
the second open end of the claimed tubular body. "It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). Because Appellant cannot identify any structural difference between
the second open end of Perras' s plug 19 and the claimed second open end,
we agree with the Examiner (Final Act. 7; Ans. 13-14) that the second open
end of Perras's tubular body is configured to be reversibly attachable to an
existing opening in said storage container in a gas-tight manner by a means
of a reversible attachment such that a concentration of a gas in a headspace
inside the storage container may equilibrate with the adapter volume of the
tubular body outside the headspace, as recited in claim 1.
In addition, the Examiner finds Perras teaches membrane 23 may leak,
which results in a fluid opening to the container that would necessarily result
in equilibration after a period of time. (Final Act. 7; Ans. 13-14.) We agree
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with this finding. Appellant argues the Examiner has not provided evidence
or scientific reasoning to establish that a leak in membrane 23 is an inherent
characteristic of the sampling apparatus, and argues that membrane 24 is
only a backup in case membrane 23 fails. (App. Br. 15.) Appellant's
argument is not persuasive, however, because the Examiner does not rely on
the doctrine of inherency for membrane 23 not remaining gas tight, and
Perras expressly teaches that membrane 23 may leak. (Ans. 14--15.) In
particular, Perras teaches that "[i]f gaseous contaminants are found external
to membrane 23 and internal to the area intermediate membrane 24 and
membrane 23, then membrane 23 should be replaced or a new membrane 24
will then be relied upon for sealing." (Perras col. 2, 11. 54--58; see Ans. 13-
15.) Appellant does not persuasively dispute that when Perras's membrane
23 leaks, as expressly contemplated by Perras, a concentration of a gas in a
headspace inside the storage container may equilibrate with the adapter
volume of the tubular body outside the headspace.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Perras and Friedrich. Thus, we sustain the
rejection of claim 1, and, for the same reasons, the rejection of claims 4--6
and 18, which are not argued separately.
Claim 2
Appellant argues the Examiner's rejection of claim 2 fails to address
the feature recited in dependent claim 2 that the container is selected from
the group consisting of a drum, a carboy, a barrel, a tank, and a canister.
(App. Br. 16.) The Examiner finds bushings have walls and contain oil like
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a tank. (Ans. 15.) The Examiner's finding is supported by the evidence
relied on in rejecting claim 1, where the Examiner finds Friedrich teaches a
bushing can require "13 gallons of coolant to fill the compartment"
(Friedrich col. 4, 11. 9-10). (See Final Act. 7.) Because we discern no
distinction between a bushing with walls to contain 13 gallons of coolant
and the claimed "tank," we agree with the Examiner's findings. Appellant
does not persuasively rebut the Examiner's findings.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 2 under 35 U.S.C.
§ 103(a) as unpatentable over Perras and Friedrich. Thus, we sustain the
rejection of claim 2.
Claim 8
Appellant argues none of the features recited in claim 8 are mentioned
in the rejection. (App. Br. 17.) The Examiner points out that the rejection of
this claim identifies Perras's body 19 and cap comprising a septum 24.
(Ans. 15.) We agree with these findings, which Appellant does not
persuasively rebut.
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 8 under 35 U.S.C.
§ 103(a) as unpatentable over Perras and Friedrich. Thus, we sustain the
rejection of claim 8.
Claims 9-15
Appellant argues Perras does not teach claim 9' s step of attaching the
sampling adapter recited in claim 1 to an opening in the container in an air-
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tight and reversible manner because Perras's plug 19 is attached to a
passage 1 7 that is sealed off from the interior of bushing 10 by membrane
23. (App. Br. 18.) The Examiner responds that "Perras teaches testing of a
bushing that has a defective seal, and therefore has the claimed passage as
claimed." (Ans. 15.) In view of the language of claim 9 as a whole, we
interpret the opening in the container be a fluid opening that allows gas to
move from the container to the sampling adapter through an open end of the
tubular body. Although Perras teaches that at some point after attaching the
adapter to the container there may be a fluid opening between the container
and the adapter, i.e., when membrane 23 leaks, we agree with Appellant that
the Examiner has not shown Perras teaches the step of attaching the adapter
to such an opening. Absent evidence of such a step, or reasoning as to why
it would have been obvious to perform such a step, on this record, we do not
sustain the rejection under 35 U.S.C. § 103(a) of method claim 9. For the
same reasons, we do not sustain the§ 103 rejection of claims 10-15, which
depend from claim 9. 6
Claim 19
Dependent claim 19 recites:
The sampling adapter of claim 1, and further comprising a
baffle configured to prevent liquid from splashing into the
adapter body from the storage container.
Appellant argues:
6 Because the rejection of each of claims 9-15 under§ 103(a) relies upon the
Examiner's finding that Perras teaches the attaching step of claim 9, this
issue is dispositive as to these rejections. Accordingly, we need not reach
additional issues raised by Appellant's arguments as to the rejections of
claims 9-15 under§ 103(a).
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[T]he interpretation of a leaking seal as a baffle is unreasonable
based upon the customary meanings of"baffle" and "membrane"
as well as the disclosure in Perras that the membrane is a seal.
Additionally, the apparatus disclosed by Perras does not
comprise a leaking seal and a leaking seal is not inherent to the
Perras apparatus.
(App. Br. 21; see also Reply Br. 20-21.) Appellant does not present
persuasive evidence or argument as to how the customary meaning of
"baffle" or its usage in the Specification would preclude Perras' s leaking
seal from being encompassed by that term under its broadest reasonable
interpretation. Appellant does not dispute that Perras' s leaking seal
performs the claimed function of the baffle, and does not argue any
particular structural difference between the claimed baffle and Perras' s
partially open seal. We agree with the Examiner that Perras' s leaking seal is
a baffle that prevents liquid from splashing into the adapter body from the
storage container, as claimed. (Final Act. 8; Ans. 15-16.)
Accordingly, for the reasons discussed above and by the Examiner,
we are not persuaded the Examiner errs in rejecting claim 19 under
35 U.S.C. § 103(a) as unpatentable over Perras and Friedrich. Thus, we
sustain the rejection of claim 19.
DECISION
We reverse the Examiner's rejections of:
1) claim 7 under 35 U.S.C. § 112, first paragraph;
2) claim 13 under 35 U.S.C. § 112, second paragraph; and
3) claims 9-15 under 35 U.S.C. § 103(a).
We affirm the Examiner's rejections of:
1) claim 15 under 35 U.S.C. § 112, first paragraph;
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2) claims 8 and 17 under 35 U.S.C. § 112, second paragraph;
3) claim 17 under 35 U.S.C. § 112, fourth paragraph; and.
4) claims 1, 2, 4---6, 8, 18, and 19 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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