Ex parte OLSON

Board of Patent Appeals and Interferences

Feb 4, 1998

08112151 (B.P.A.I. Feb. 4, 1998)

Application for patent filed August 26, 1993. According to1
Appellant, this application is a continuation of application SN
07/896,078, filed Jun. 03, 1992, now US Patent no. 5,275,585,
issued Jan. 04, 1994.
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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DANIEL H. OLSON
__________
Appeal No. 96-1819
Application 08/112,1511
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 8-10,
the only claims remaining in the application.
Appeal No. 96-1819
Application 08/112,151
2
The appellant’s invention pertains to a system for
collecting blood and other liquids from the wound of a patient
and for reinfusing collected blood back into the patient.
Independent claim 10 is further illustrative of the appealed
subject matter and a copy thereof may be found in the appendix to
the appellant’s brief.
The references relied on by the examiner are:
Marx 4,573,992 Mar. 04, 1986
Choksi et al. (Choksi) 5,074,839 Dec. 24, 1991
Claims 8-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Marx in view of Choski.
The examiner’s rejection is explained on pages 2 and 3 of
the answer. The arguments of the appellant and the examiner in
support of their respective positions may be found on pages 2-5
of the brief and page 4 of the answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and by the examiner in the answer.
As a consequence of this review we will (1) reverse the rejection
of claims 8-10 under 35 U.S.C. § 103, (2) enter a new rejection
Appeal No. 96-1819
Application 08/112,151
3
of claims 8 and 10 under 35 U.S.C. § 112, first paragraph, and
(3) enter new rejections of claims 8-10 under 35 U.S.C. § 112,
second paragraph.
Considering first the rejection of claims 8-10 under 35
U.S.C. § 103 based on the combined teachings of Marx and Choski,
we have carefully considered the subject matter defined by these
claims. However, for reasons stated infra in our new rejections
entered under the provisions of 37 CFR § 1.196(b) no reasonably
definite meaning can be ascribed to certain language appearing in
the claims. In comparing the claimed subject matter with the
applied prior art, it is apparent to us that considerable
speculations and assumptions are necessary in order to determine
what in fact is being claimed. Since a rejection on prior art
cannot be based on speculations and assumptions (see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962)
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970)), we are constrained to reverse the examiner's rejection of
claims 8-10 under 35 U.S.C. § 103. We hasten to add that this is
a procedural reversal rather than one based upon the merits of
the § 103 rejection.
Appeal No. 96-1819
Application 08/112,151
4
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 8 and 10 are rejected under 35 U.S.C. § 112, second
paragraph. In order to satisfy the second paragraph of § 112, a
claim must accurately define the invention in the technical
sense. See In re Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486,
492-93 (CCPA 1973). Moreover, while the claim language of claims
8-10 may appear, for the most part, to be understandable when
read in abstract, no claim may be read apart from and independent
of the supporting disclosure on which it is based. See In re
Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971). Applying
these principles to the present case, we fail to understand how
(as claim 8 expressly requires) the system can be considered as
being connectable in a second mode wherein said
manually operable vacuum source is disconnected and
disassociated from the collecting means, the
interstitial space being in flow communication with
ambient atmosphere and said outlet port adapted for
connection to transfusion tubing, in the second mode
the manually operable vacuum source is adapted for
direct connection to said drainage tubing and is
activated to draw fluid from said wound into the
manually operable vacuum source. [Emphasis ours.]
Thus, in the same “second mode” the appellant has set forth that,
on the one hand, the vacuum source is “disconnected and disasso-
Appeal No. 96-1819
Application 08/112,151
5
ciated” with the collecting means and the outlet port is adapted
for connection to the transfusion tubing but, on the other hand,
this same vacuum source is adapted for direct connection to the
drainage tubing and “is activated” to draw fluid from the wound.
How can a vacuum source that is “disconnected and disassociated”
be “activated” to draw fluid from the wound? This is simply
inaccurate on its face. That is, the vacuum source 14 is neither
“adapted for” direct connection to drainage tubing 68 nor
“activated” to draw blood when it (1) is “disconnected and
disassociated” from the collecting means and (2) the outlet port
is “adapted for connection to transfusion tubing.”
Similarly, we fail to understand how (as claim 10 expressly
requires) the system can be considered as
being connectable in a second mode wherein the interior
of the collecting means is in flow communication with
abient [sic, ambient] atmosphere and said outlet port
adapted for connection to transfusion tubing, the
manually operable portable vacuum source is adapted for
direct connection to said drainage tubing and is
activated to draw fluid from said wound into the
manually operable vacuum source. [Emphasis ours.]
Thus, in the same “second mode” the appellant has set forth that,
on the one hand, the outlet port is adapted for connection to the
transfusion tubing but, on the other hand, the vacuum source is
Appeal No. 96-1819
Application 08/112,151
6
adapted for direct connection to the drainage tubing and “is
activated” to draw fluid from the wound. This is simply
inaccurate on its face. That is, the vacuum source 14 is neither
“adapted for” direct connection to drainage tube 68 nor
“activated” to draw blood when the outlet port is “adapted for
connection to transfusion tubing.”
In contradistinction to what is being claimed, the appellant
has actually disclosed three separate and distinct modes of
operation. A first mode, depicted in Figs. 1 and 4-6, wherein
the vacuum source 14 is in flow communication with the interior
of the collecting means so as to draw blood from the wound of a
patient. A second mode, depicted in Fig. 3, wherein (1) the
vacuum source 14 is completely disconnected and disassociated
from the collecting means, (2) the interior of the collection
means is in fluid communication with ambient atmosphere via
airway 24 and (3) the outlet port is connected to transfusion
tubing 74. A third mode, depicted in Fig. 2 wherein the vacuum
source 14 is (1) adapted for direct connection to drainage tube
68 via male connector 50 and (2) activated to draw fluid from the
wound of a patient.
In view of the foregoing, it is readily apparent that the
language in claims 8 and 10, when read in light of the
Appeal No. 96-1819
Application 08/112,151
7
specification, results in an inexplicable inconsistency that
renders them indefinite.
Claim 9 is rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the
subject matter which the appellant regards as the invention.
This claim depends on canceled claim 1 (i.e., a non-existent
claim) and it is thus unclear what subject matter the appellant
intended to cover.
Claims 8 and 10 are rejected under 35 U.S.C. § 112, first
paragraph, as being directed to an nonenabling disclosure. There
is no disclosure of an embodiment having a “second mode” wherein,
on the one hand, the vacuum source is “disconnected and
disassociated” with the collecting means and the outlet port is
adapted for connection to the transfusion tubing but, on the
other hand, this same vacuum source is adapted for direct
connection to the drainage tubing and “is activated” to draw
fluid from the wound. Similarly, there is no disclosure of an
embodiment having a “second mode” wherein, on the one hand, the
outlet port is adapted for connection to the transfusion tubing
but, on the other hand, the vacuum source is adapted for direct
connection to the drainage tubing and “is activated” to draw
fluid from the wound as claim 10 sets forth.
Appeal No. 96-1819
Application 08/112,151
8
In summary:
The examiner’s rejection of claims 8-10 under 35 U.S.C.
§ 103 is reversed.
New rejections of claims 8-10 have been made under 35 U.S.C.
§ 112, second paragraph.
A new rejection of claims 8 and 10 has been made under 35
U.S.C. § 112, first paragraph.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 96-1819
Application 08/112,151
-9-
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-1819
Application 08/112,151
-10-
Todd A. Dawson
Zimmer, Inc.
P.O. Box 708
Warsaw, IN 46581-0708