Ex Parte Faries et al

Board of Patent Appeals and Interferences

Jan 18, 2012

10759218 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DURWARD I. FARIES, JR., BRUCE R. HEYMANN, and
CALVIN BLANKENSHIP
____________________

Appeal 2009-012264
Application 10/759,218
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and ERIC
B. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/759,218

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STATEMENT OF CASE
Introduction
Claims 47-72 are pending. Appellants appeal under 35 U.S.C. § 134
from a final rejection of claims 47-49, 52, 54, 55, 58-61, 64, 66, 67, and
69-72. Claims 1-46 have been cancelled and claims 6, 11 and 28-31 have
been withdrawn from consideration. Claims 50, 51, 53, 56, 57, 62, 63, 65,
and 68 do not stand rejected by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).

Exemplary Claims
Exemplary claims 47, 71, and 72 under appeal read as follows:

47. A medical device for visually indicating a temperature of a
medical item placed therein comprising:
a base and at least first and second panels attached to said base;
a receptacle defined between said first and second panels for
receiving said medical item within said receptacle, wherein said
medical item has a particular temperature range for utilization; and
a temperature sensor assembly to directly measure medical item
temperature and visually indicate said measured medical item
temperature;
wherein said medical device is configured such that any thermal
treatment of said medical item received within said receptacle occurs
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only via heat transfer between said medical item and an external
environment surrounding said medical device.

71. A medical device for visually indicating a temperature of a
medical item placed therein comprising:
a base and at least first and second panels attached to said base;
a receptacle defined between said first and second panels for
receiving said medical item within said receptacle, wherein said
medical item has a particular temperature range for utilization; and
a temperature sensor assembly to directly measure medical item
temperature and visually indicate said measured medical item
temperature, wherein said temperature sensor assembly is affixed to
one of said first panel, said second panel and said base.

72. A method of visually indicating a temperature of a medical
item placed in a medical device, wherein said medical device includes
a base and at least first and second panels attached to said base and a
receptacle defined between said first and second panels, said method
comprising the steps of:
(a) receiving said medical item within said receptacle defined
between said first and second panels of said device, wherein said
medical item has a particular temperature range for utilization; and
(b) directly measuring a medical item temperature and
providing a visual indication of said measured medical item
temperature via a temperature sensor assembly, wherein the
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temperature sensor assembly is affixed to one of the first panel, the
second panel and the base.

Examiner’s Rejections
The Examiner rejected claims 71 and 72 under 35 U.S.C. § 102(a) as
being anticipated by Jordan (US 5,875,282). 1
The Examiner rejected claims 47-49, 52, 54, 55, 58-61, 64, 66, 67, 69,
and 70 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Jordan and Kashyap (US 4,336,435).

Appellant’s Contentions
1. Appellants contend that the Examiner erred in rejecting
claims 71 and 72 under 35 U.S.C. § 102(e), because:
Jordan therefore fails to disclose a temperature sensor assembly
that directly measures a medical item temperature and visually
indicates the measured item temperature and also that is secured
to a single wall or panel (i.e., to one of the first panel, the
second panel or the base) as recited in each of claims 71 and 72.
(App. Br. 11-12).
2. Also, Appellants contend that the Examiner erred in rejecting
claims 47 and 59 under 35 U.S.C. § 103(a), because:
Thus, thermal treatment of medical items placed within the bag
holder 21 of Kashyap cannot occur only via heat transfer
between the items and the environment surrounding the bag
holder, since at least microwaves (which do not involve heat
transfer) are clearly used to heat the items.

1 We decide this § 102 rejection of claims 71 and 72 and do not address the
Examiner’s rejection of claims 71 and 72 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Jordan and Ginsburg (US 5,989,238).
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(App. Br. 15).

Issues on Appeal
Did the Examiner err in rejecting claims 71 and 72 as being
anticipated because Jordan fails to teach the argued limitations?
Did the Examiner err in rejecting claims 47 and 59 as being obvious
because Kashyap fails to teach or suggest the argued limitations?
Do claims 47-70 comply with the written description requirement?

PRINCIPLES OF LAW
The first paragraph of 35 U.S.C. § 112 requires that “the specification
shall contain the written description of the invention.” This requires the
applicant 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). The issue
of compliance with the written description requirement can arise where
claimed subject matter not presented in an original application is
subsequently added by amendment. Id. at 1560. An applicant complies with
the written description requirement ‘by describing the invention, with all its
claimed limitations.’ Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473,
1479 (Fed.Cir.1998). “One does that by such descriptive means as words,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572
(Fed.Cir.1997). In order for a disclosure to be inherent, “the missing
descriptive matter must necessarily be present in the [original] application’s
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specification such that one skilled in the art would recognize such a
disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed.Cir.1998).
Compliance with the written description requirement is a question of
fact. Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed.Cir.1998). Inherency is also
a factual issue. Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268-69 (Fed.Cir.1991).

ANALYSIS
Examiner’s Grounds of Rejection – § 112(1)
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We agree with Appellants’ above contention 2 regarding claims 47
and 59.
We disagree with Appellants’ above contention 1. With regard to
claims 71 and 72, we adopt as our own (1) the findings and reasons for
rejection set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusion reached by the Examiner. Additionally, we do not find the
“single wall or panel” limitation (emphasis added) that Appellants now
argue in either claim 71 or claim 72.
New Grounds of Rejection – § 112(1)
We reject claims 47-70 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement because for
independent claims 47 and 59, there is no support in the originally filed
specification for “said medical device is configured such that any thermal
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treatment of said medical item received within said receptacle occurs only
via heat transfer between said medical item and an external environment
surrounding said medical device.” (Claims 47 and 59). Appellants’ Appeal
Brief at page 7 cites the Specification at “page 4, lines 20-24, page 17, line
10, to page 18, line 15, and Figs. 9 and 10” to support this limitation which
added to these claims by amendment on February 10, 2005. Our own review
of Appellants’ originally filed specification finds no limitation on the
particular thermal treatment system to be used and no mention of either the
“heat transfer” limitation or “external environment” limitation as is now
claimed. Further, we do not find these added claim limitations to be inherent
to the specification as filed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 47-49, 52, 54, 55, 58-61, 64, 66, 67, 69, and 70 as being unpatentable
under 35 U.S.C. § 103(a).
(2) The Examiner did not err in rejecting claims 71 and 72 as being
anticipated under 35 U.S.C. § 102(a).
(3) Claims 47-72 are not patentable.

DECISION
The Examiner’s § 103 rejection of claims 47-49, 52, 54, 55, 58-61, 64,
66, 67, 69, and 70 is reversed.
The Examiner’s § 102 rejection of claims 71 and 72 is affirmed.
We enter a new ground of rejection of claims 47-70 under
35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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