Ex parte FAIGLE et al.

Board of Patent Appeals and Interferences

Apr 22, 1998

08024851 (B.P.A.I. Apr. 22, 1998)

Application for patent filed February 26, 1993. According1
to appellants, the application is a continuation of Application
07/719,322, filed June 21, 1991, abandoned.
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(2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ERNST M. FAIGLE,
JOHN H. SEMCHENA
and
RICHARD J. THOMPSON
_____________
Appeal No. 95-2803
Application 08/024,8511
______________
ON BRIEF
_______________
Before CALVERT, COHEN and FRANKFORT, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2803
Application 08/024,851
A final rejection of claims 31 through 33 under 35 U.S.C.2
§ 103 was not repeated in the answer. We note that claims 31
and 32 were canceled pursuant to the entered amendment after
final dated September 12, 1994 (Paper No 22), and that on page 4
of the answer (Paper No. 27) the examiner indicated that, upon
reconsideration, claim 33 was considered to be allowable over
applied art.
2
This is an appeal from the final rejection of
claims 29, 30, and 33. Claim 19, the only other claim remaining
in the application, stands allowed.
Appellants’ invention pertains to a cylindrical
inflator for inflating a vehicle occupant restraint. An
understand-ing of the invention can be derived from a reading of
exemplary claim 29, a copy of which appears in the “Appendix” to
appellants’ brief (Paper No. 26).
The following rejection is the sole rejection before us
for review on appeal.2
Claims 29, 30, and 33 stand rejected under 35 U.S.C.
§ 101 (double patenting) as claiming the same invention as that
of claims 1 through 3 and 5 through 10 of commonly-assigned prior
U.S. Patent No. 5,248,162 to Levosinski et al. (Levosinski).
Appeal No. 95-2803
Application 08/024,851
The final rejection and examiner’s answer only specify a3
“same invention” double patenting rejection. Appellants have
interpreted language in the Advisory Action of September 23,
1994 (Paper No. 23) as reflecting that the examiner has with-
drawn the “same invention” double patenting rejection and sub-
stituted therefor a rejection for obviousness type double
patenting. With this understanding, appellants present argu-
ments addressed to both “same invention” and “obviousness type”
double patenting. We disagree with appellants’ above perception.
As the examiner’s answer reveals (page 3) only a “same invention”
double patenting rejection is specified by the examiner. An
“obviousness type” double patenting rejection is not set forth
in the final rejection or answer. While the examiner may have
commented upon the pending claims as being broader than the
patented claims in the aforementioned Advisory Action, this
viewpoint, when considered with the examiner’s listing of only a
“same invention” double patenting rejection in the answer, makes
it clear to us that the examiner did not intend and has not added
an “obviousness type” double patenting rejection to the record.
For this reason, we need not address appellants’ arguments
directed towards an obviousness type double patenting issue
(brief, pages 5 through 9). As a concluding point, we simply
note In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986)
as a case addressing the circumstance of broad claims of one
patent dominating another patent’s narrower claims.
3
The full text of the examiner's rejection and response
to the argument presented by appellants appears in the final
rejection and answer (Paper Nos. 21 and 27), while the complete
statement of appellants’ argument can be found in the brief
(Paper No. 26).3
OPINION
Appeal No. 95-2803
Application 08/024,851
The term “Apparatus” in claim 30, line 1, should more4
appropriately be --A cylindrical inflator--, for consistency with
parent claim 29.
Each of appellants’ specification (pages 1 through 3) and5
the Levosinski specification (column 1, lines 10 through 46)
refers to the earlier U.S. Patent No. 4,846,368 to Goetz, of
record in the present application, as background for the
respective inventions. However, the inventions differ from one
another. The Levosinski patent seeks to retain the cylindrical
housing and pressure controlling layer of foil of Goetz, but
includes a plenum member in the form of a strand wound in a
helix, in place of the plenum mesh screen of Goetz. On the other
hand, in the pending application, the cylindrical housing
structure (with plenum mesh screen and pressure controlling layer
of foil) of Goetz is eliminated and replaced with a pair of end
caps having an outer filter layer and ends of a helically wound
strand extending thereover, characterized by appellants
(specification, page 2) as a “simplified structure.”
4
In reaching our conclusion on the “same invention”
double patenting issue raised in this appeal, this panel of the
board has carefully considered appellants’ specification and
claims 29, 30 and 33, the rejection under 35 U.S.C. § 101, the4
claimed subject matter of U.S. Patent No. 5,248,162, and the
respective viewpoints of appellants and the examiner. As a5
consequence of our review, we make the determination which
follows.
Appeal No. 95-2803
Application 08/024,851
5
We reverse the rejection of appellants’ claims under
35 U.S.C. § 101.
In a statutory double patenting rejection under 35
U.S.C. § 101, the issue is whether the same invention is being
claimed twice. Same invention means IDENTICAL subject matter.
As expressed by the court in In re Vogel, 422 F.2d 438, 441,
164 USPQ 619, 622 (CCPA 1970):
A good test, and probably the only objective
test, for “same invention,” is whether one of
the claims could be literally infringed
without literally infringing the other.
In the present case, we find that the test can be
responded to in the affirmative, reflecting that the pending
claims and the patented claims to Levosinski do not address the
same invention.
The examiner’s view is that claims 29 through 33 in
the present application are drawn to the same invention as
that of claims 1 through 3 and 5 through 10 of the U.S. Patent
No. 5,248,162.
Appeal No. 95-2803
Application 08/024,851
Consistent with appellants’ underlying disclosure, we6
understand the recited tubular means (35 U.S.C. § 112, sixth
paragraph) as corresponding to the structure described in the
specification (central tube 50 and filter layers 60) and
equivalents thereof.
6
Independent claims 29 and 33 are drawn to a cylindrical
inflator per se. Claim 29 requires, inter alia, an ignitable
gas generating material, and a cylindrical tube extending axially
between a pair of circular side walls. Claim 33 requires, inter
alia, an ignitable gas generating material and tubular means for6
containing the gas generating material comprising filter means
for filtering gas.
Patent claims 1 through 3 are drawn to an apparatus
which comprises, inter alia, a source of gas, a filter, a
pressure controlling member, and a single continuous piece of
wire of thickness substantially equal to the distance between the
filter and pressure controlling member, while patent claims 5
through 10 set forth an apparatus comprising, inter alia, an
inflatable vehicle occupant restraint, a source of gas, a
cylindrical wall member, a pressure controlling member, filter
means and a strand with a thickness substantially equal to the
Appeal No. 95-2803
Application 08/024,851
7
distance between the filter means and the pressure controlling
member.
Comparing the pending independent claims 29 and 33 with
the aforementioned patent claims, it is clear that the former
pending claims do not require the pressure controlling member
(and a strand with a thickness substantially equal to the
distance between a filter or filter means and the pressure
controlling member) of the latter patent claims. Accordingly,
and
consistent with the argument advanced by appellants (brief,
pages 4 and 5), a cylindrical inflator with the features of
claims 29 and 33, and without a pressure controlling member,
would infringe claims 29 and 33 but would clearly not infringe
independent patented claims 1, 5, and 8. For the above reasons,
the pending claims are not seen to be for the same invention
claimed in U.S. Patent No. 5,248,162.
In summary, this panel of the board has reversed the
rejection of appellants’ claims 29, 30, and 33 under 35 U.S.C.
§ 101.
Appeal No. 95-2803
Application 08/024,851
8
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-2803
Application 08/024,851
9
Stephen D. Scanlon
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