Ex parte JONES

Board of Patent Appeals and Interferences

Apr 15, 1998

08101495 (B.P.A.I. Apr. 15, 1998)

Application for patent filed August 2, 1993.1
On line 1 of dependent claims 10 through 14, the phrase,2
“A sterile substrate” lacks strict antecedent basis and should
read -- A sterile rigid sleeve --. This minor informality should
be corrected in any further prosecution that may occur.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS L. JONES
__________
Appeal No. 95-4926
Application No. 08/101,4951
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and PAK, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 8 through 14. The only other claims in the application,2
which are claims 1 through 7 and 15 through 23, stand withdrawn
Appeal No. 95-4926
Application No. 08/101,495
2
from further consideration by the examiner as being directed to a
nonelected invention or species.
The subject matter on appeal relates to a sterile rigid
sleeve produced from a mixture of a plastic and an antimicrobial
agent for avoiding cross-contamination between persons who come
in contact with the sleeve. Further details of this appealed
subject matter are set forth in representative independent claim
9 which reads as follows:
9. A sterile rigid sleeve produced from a mixture of a
plastic and an antimicrobial agent for avoiding cross-
contamination between persons who come in contact with said
sleeve; said plastic being formed from styrenic resins; said
antimicrobial agent is taken from the group consisting of iodines
and povidone-iodines and any combinations of said antimicrobial
agents; said sterile rigid sleeve being elongated for covering
non-sterile surfaces; said mixture being from 1% to 10% by weight
of antimicrobial agent.
The references relied upon by the examiner as evidence of
obviousness are:
Broussard 4,768,531 Sep. 6, 1988
Marhevka 5,017,369 May 21, 1991
Neiner et al. (Neiner) 5,161,971 Nov. 10, 1992
Brink et al. (Brink) 5,173,291 Dec. 22, 1992
Usala 5,236,703 Aug. 17, 1993
(filed Jul. 20, 1989)
Weder 5,242,052 Sep. 7, 1993
(filed Jan. 27, 1992)
Sieveking et al. 5,294,445 Mar. 15, 1994
(Sieveking) (filed Aug. 17, 1992)
Appeal No. 95-4926
Application No. 08/101,495
3
The appealed claims stand rejected under 35 U.S.C. § 103 as
being unpatentable over Weder in view of Neiner and further in
view of Broussard, Sieveking, Marhevka, Brink and Usala.
This rejection cannot be sustained.
Even disregarding the appellant’s argument that certain of
the applied references are from a nonanalogous art, we still
could not sustain the examiner’s rejection. This is because the
applied prior art contains no teaching or suggestion for
combining the reference teachings in such a manner as to result
in the here claimed sterile rigid sleeve. Thus, while individual
features of the appellant’s claimed subject matter may be shown
in the applied references, it is only the appellant’s own
disclosure which provides the necessary guidance for selecting
and combining these features to thereby obtain a sterile rigid
sleeve as defined by the independent claims on appeal. Further,
this last mentioned determination is reinforced by the fact that
none of the applied reference teachings is directed to the cross-
contamination problem addressed by the appellant and the fact
that these reference teachings concern widely diverse subject
matters.
In short, we are convinced that the examiner’s rejection is
based upon impermissible hindsight derived from the appellant’s
Appeal No. 95-4926
Application No. 08/101,495
4
own disclosure rather than some teaching, suggestion or incentive
derived from the applied prior art. It follows that we cannot
sustain the § 103 rejection of claims 8 through 14 as being
unpatentable over Weder in view of Neiner and further in view of
Broussard, Sieveking, Marhevka, Brink and Usala.
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge)
Appeal No. 95-4926
Application No. 08/101,495
5
David M. Carter
Carter & Schnedler
P.O. Box 2985
Asheville, NC 28802