Ex parte Faries, Jr., et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08529477 (B.P.A.I. Jun. 29, 1998)

Application for patent filed September 18, 1995. 1
According to appellants, this application is a continuation-in-
part of Application 08/399,976, filed March 7, 1995, which is a
continuation-in-part of Application 08/274,869, filed July 14,
1994, now Patent No. 5,400,616, issued March 28, 1995; which is
a division of Application 08/125,279, filed September 23, 1993,
now Patent No. 5,331,820, issued July 26, 1994.
1
Paper No. 9
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte DURWARD I. FARIES, JR.,
BRUCE R. HEYMANN and
MARK LICATA
______________
Appeal No. 97-3002
Application 08/529,4771
_______________
ON BRIEF
_______________
Before MEISTER, MCQUADE, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims
2-11, the only claims remaining in the application.
Appeal No. 97-3002
Application 08/529,477
2
We REVERSE.
The appellants’ invention pertains to a method and apparatus
for maintaining replenishable supplies of surgical sterile fluids
at a preselected temperature. As set forth in the appellants’
ABSTRACT:
Sterile surgical fluid is maintained in one or
more temperature controlled basins provided at the top
of a cabinet. One or more insulated temperature
controlled compartments are formed in the cabinet for
storing supplemental supplies of the surgical fluid at
the temperatures close to the temperatures of the
basins to facilitate replenishing and/or replacing the
fluid in the basins. The storage compartments can be
used for long-term temperature controlled fluid storage
when basin temperature is not being controlled (i.e.,
between surgical procedures.
The references relied on by the examiner are:
Menzel 4,522,041 June 11, 1985
Templeton 4,934,152 June 19, 1990
Gordon 5,363,746 Nov. 15, 1994
Claims 2, 3, 5-9 and 11 stand rejected under 35 U.S.C. § 103
as being unpatentable over Templeton in view of Menzel.
Claims 4 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Templeton in view of Menzel and Gordon.
We initially note that in rejecting claims under 35 U.S.C.
§ 103 the examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d
Appeal No. 97-3002
Application 08/529,477
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1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence or
argument shift to the applicant. Id. If the examiner fails to
establish a prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
Here, each of the above-noted rejections is bottomed on the
examiner’s view that “[i]t would be obvious to provide Templeton
with a storage compartment for storing containers of sterile
fluid, in view of Menzel, for the purpose of precooling the
sterile fluid prior to use” (final rejection, page 2). We do not
agree. Templeton is directed to a method and apparatus for
maintaining sterile surgical fluid at a desired temperature in a
temperature controlled basin provided at the top of a cabinet.
As the examiner recognizes, Templeton has no storage compartments
whatsoever.
In an attempt to overcome this deficiency the examiner turns
to the teachings of Menzel. Menzel, however, is directed to a
completely disparate method and apparatus from that of Templeton.
That is, Menzel is directed a method and apparatus for making ice
cream. To this end, Menzel provides a heating and cooling
chamber 2 for accommodating one or more transportable storage
Appeal No. 97-3002
Application 08/529,477
4
containers 4 containing ice cream mix. Each storage container is
provided with an outlet 6 having a shut-off valve 7 that in turn
may be connected to a pump 36 for the purpose of pumping the ice
cream mix to a freezing tank 24. Also connected to the top of
each storage container 4, is a compressed air line 12 and a
return-flow line 14. Thus, while the storage containers 4 of
Menzel are removable from the cabinet 1, there are apparently
three separate fluid connections on each storage container which
must be disconnected prior to removal. From the above, it is
readily apparent that while Menzel, at the broadest level, does
teach maintaining a storage compartment for fluid containers at a
controllable temperature prior to use, it is done so in a
completely disparate type of apparatus and environment. Absent
the appellants’ own disclosure we are at a complete loss to
understand why one of ordinary skill in this art would have been
motivated to single out the storage compartment having a
controllable temperature from Menzel’s ice cream making machine
and incorporate it into the surgical apparatus of Templeton.
Moreover, even if the teachings of Templeton and Menzel were
combined in the manner proposed by the examiner, the claimed
invention would not result. More specifically, there is
absolutely nothing in the combined teachings of Templeton and
Appeal No. 97-3002
Application 08/529,477
5
Menzel which would fairly suggest (1) selectively manually
removing the storage containers from a temperature controlled
storage compartment and thereafter pouring the fluid contents
into a basin (independent claims 5 and 11), (2) two storage
compartments (independent claim 5), and (3) first and second
temperature control means (independent claim 7).
With respect to claims 2 and 10, we have carefully reviewed
the teachings of Gordon, but find nothing therein which would
overcome the deficiencies of Templeton and Menzel that we have
noted above.
The decision of the examiner to reject claims 2-11 under
35 U.S.C. § 103 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 97-3002
Application 08/529,477
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