Ex parte Maskell

Board of Patent Appeals and Interferences

Sep 4, 1998

08596553 (B.P.A.I. Sep. 4, 1998)

Application for patent filed February 5, 1996. According1
to appellant, this application is a continuation-in-part of
Application 08/223,724, filed April 6, 1994, now Patent No.
5,491,957, issued February 20, 1996.
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD MASKELL
__________
Appeal No. 97-4165
Application 08/596,5531
__________
ON BRIEF
__________
Before CALVERT, ABRAMS, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1-5, which constitute all of the claims of
record in the application.
Appeal No. 97-4165
Application No. 08/596,553
It would appear that “an” should be inserted after “with.”2
2
The appellant's invention is directed to a method for
evacuating gas from a gas tight envelope. The subject matter
before us on appeal is illustrated by reference to claim 1, which
reads as follows:
1. A method for evacuating gas from a gas
tight envelope containing solid or particulate material
disposed in a tray having sidewalls with overhanging
lip, comprising inserting through an opening in said2
envelope to a position under said lip, an elongated
vacuum probe extending from a vacuum source, applying a
vacuum to said probe to withdraw gas from said envelope
and collapsing said envelope around said tray
containing said solid material.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Suga 5,109,654 May 5, 1992
Maskell 5,491,957 Feb. 20, 1996
(filed Apr. 6, 1994)
THE REJECTIONS
Claims 1 and 2 stand rejected under the judicially created
doctrine of double patenting over claims 1-4 of Maskell.
Appeal No. 97-4165
Application No. 08/596,553
3
Claims 1-5 also stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Suga.
The rejections are explained in Paper No. 4 (the final
rejection).
The opposing viewpoints of the appellant are set forth in
the Appeal Brief.
OPINION
The Double Patenting Rejection
The appellant has not contested this rejection, but has
merely offered to file an appropriate terminal disclaimer once
allowable subject matter is indicated (Brief, page 3). However,
in the absence of a terminal disclaimer at this time, we are
constrained to sustain the rejection.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of the claimed invention. See
RCA Corp. v. Applied Digital Data Sys., I1nc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed sub nom.,
Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 (1984). It is our
Appeal No. 97-4165
Application No. 08/596,553
4
conclusion that Suga fails to meet this requirement, and
therefore the Section 102(b) rejection cannot be sustained.
Claim 1 is directed to a method for evacuating gas from a
gas-tight envelope containing solid or particulate material
“disposed in a tray having sidewalls with [an] overhanging lip.”
It recites the step of inserting an elongated vacuum probe
through an opening in the envelope “to a position under said lip”
(emphasis added). The examiner has interpreted “under” to mean
simply that the probe must be at a lower level height-wise than
the lip, and therefore finds that probes 23 of Suga meet this
step of the claim. The appellant argues that this interpretation
is not in keeping with the meaning that is established in his
specification, a conclusion with which we agree.
In proceedings before the PTO, claims in an application are
to be given their broadest reasonable interpretation consistent
with the specification, and should be read in the light of the
specification as it would be interpreted by one of ordinary skill
in the art. See In re Sneed and Young, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983). In our opinion, one of ordinary
skill in the art would have recognized from a review of the
appellant’s disclosure that “under” in claim 1 references the
overhanging lip of the tray, and should be interpreted to mean
Appeal No. 97-4165
Application No. 08/596,553
On page 7 of the specification, reference is made on line3
19 to Figure 9, whereas it would appear that it should read “7.”
5
that the probe not only is lower in height than the lip, but also
is directly beneath its perimeter. See pages 7 and 8 and Figure
7. It is clear to us from our study of Suga that the probes are3
spaced laterally from the lips of the trays and are not within
their perimeters (see Figure 3). It therefore is our view that
the “inserting” step recited in claim 1 is not disclosed or
taught by Suga, and thus the subject matter of the claim is not
anticipated by this reference. It follows, of course, that the
dependent claims also are not anticipated by Suga.
SUMMARY
The rejection of claims 1 and 2 stand under the judicially
created doctrine of double patenting is sustained.
The rejection of claims 1-5 as being anticipated by Suga is
not sustained.
A rejection of claims 1 and 2 having been sustained, the
decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
Appeal No. 97-4165
Application No. 08/596,553
6
AFFIRMED-IN-PART
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
tdc
Appeal No. 97-4165
Application No. 08/596,553
7
Gipple & Hale
P.O. Box 40513
Washington, DC 20016