Ex parte VAN DER AA et al.

Board of Patent Appeals and Interferences

Jun 19, 1998

08142276 (B.P.A.I. Jun. 19, 1998)

Application for patent filed October 26, 1993.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BARTHOLOMEUS W.J. VAN DER AA
and FRANCISCUS H.C. BENNING
_____________
Appeal No. 96-4139
Application 08/142,2761
______________
ON BRIEF
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 5,
all of the claims remaining in the application.
The subject matter in issue is a hypodermic needle. A copy
of the appealed claims appears in Appendix A of appellants'
brief.
Appeal No. 96-4139
Application 08/142,276
2
The reference applied in the final rejection is:
Chevalier 4,863,428 Sep. 05, 1989
Claims 1 to 5 stand finally rejected on the following
grounds:
(1) Failure to comply with 35 USC § 112, second paragraph;
(2) Anticipated by Chevalier, under 35 USC § 102(b).
Rejection (1)
With regard to claim 1, the examiner states (answer,
page 3):
Claim 1 is indefinite because various elements of the
hypodermic needle have not been positively recited in
the claim. For example, the base portion, the hollow
shaft portion, and the tip or extremity portion have
all been recited in the preamble of the claim. Such a
recitation provides antecedent basis for these
elements; however, further limitations are then claimed
in the body of the claim which are improper.
The test for compliance with the second paragraph of 35
USC § 112 is whether the claim language, when read by a person
of ordinary skill in the art in light of the specification,
describes the subject matter with sufficient precision that the
bounds of the claimed subject matter are distinct. In re Merat,
519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975). In the
present case, claim 1 recites a hypodermic needle "having at
Appeal No. 96-4139
Application 08/142,276
3
least a base portion, a hollow shaft portion and a tip or
extremity portion all formed of the same material . . ., com-
prising:", and then recites "the base portion", "the hollow shaft
portion", "the tip or extremity portion" and "a protrusion",
together with additional limitations for each of these elements.
While this format is somewhat unusual, we do not consider claim 1
to be indefinite. From his remarks on page 4 of the answer, the
examiner seems to consider the language "having . . . comprising"
in lines 1 to 3 of claim 1 to be the preamble of the claim, but
since line 1 recites a hypodermic needle "having at least a base
portion", etc., we regard the elements recited in lines 1 to 3 as
constituting a part of the claimed combination, with the recita-
tions following "comprising" merely further limiting those
elements. Moreover, even if lines 1 to 3 of claim 1 are
considered to be the preamble, the elements recited therein are
incorporated into the claim by the references to those elements
in the part of the claim following "comprising". See Bell
Communications Research v. Vitalink Communications Corp., 55 F.3d
615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995).
Appeal No. 96-4139
Application 08/142,276
In reviewing the claims, it does not appear that "substantially non-2
deformable" (claims 1 and 2) has antecedent basis in the specification, as
required by 37 CFR 1.175(d)(1).
4
Turning to claim 2, the examiner finds claim 2 to be
indefinite because (answer page 3):
[I]t is unclear how or where the apparatus is attached.
Furthermore, the "substantially non-deformable article"
has been inferentially included in the claim. There-
fore, further limitations on this element are improper.
The rejection is further discussed on pages 5 and 6 of the
answer.
With regard to the question of where the recited apparatus
for injection is attached, we think it is evident that since
claim 1 recites a "base portion for attaching said hypodermic
needle to injection apparatus", the apparatus is attached to the
base portion. Secondly, the examiner seems to believe that it
is improper to claim "a needle pusher means . . . to move said
substantially non-deformable article" unless the "substantially
non-deformable article" is recited as part of the claimed
combination. However, under 35 USC § 112, sixth paragraph,2
appellants are entitled to claim the "needle pusher means" as a
means-plus-function, which is what they have done. Appellants'
non-inclusion of the "substantially non-deformable article"
Appeal No. 96-4139
Application 08/142,276
5
itself in the claimed combination would appear to be a question
of breadth, not indefiniteness.
Accordingly, we conclude that when the claims are read in
light of the disclosure, one of ordinary skill would find the
bounds of the claimed subject matter to be distinct, and we will
therefore not sustain the rejection under 35 USC § 112, second
paragraph.
Rejection (2)
"To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently". In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997).
Appellants argue, inter alia, that Chevalier does not
anticipate the claims because the protrusion 24 is not such that
"the transition from the protrusion to the shaft of said needle
is smooth in all directions including the portion of the
protrusion closest to said base portion [of the needle]", as
recited in claim 1. The examiner, on the other hand, states on
page 6 of the answer that the transition between Chevalier's
protrusion 24, "and in particular the area (47)", and the
Appeal No. 96-4139
Application 08/142,276
Webster's Third New International Dictionary (1971). "Even" is defined3
as being "without break, indentation, roughness, or other irregularity", with
"smooth" being listed as a synonym.
6
shaft 11 "appears to be smooth in Figure 5", and on page 7 that
"Chevalier shows that the protrusion (24), of which lip (47) is a
part, has a smooth transition to the shaft (11)".
In construing the terms in a claim:
[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one
of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or other-
wise that may be afforded by the written description
contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997). With respect to the term "smooth" as used in claim
1, the broadest reasonable meaning of the term in ordinary usage
is defined in the dictionary as "having a continuously even
surface: being without roughness, points, bumps or ridges, esp.
to the touch". This is consistent with the "enlightenment"3
provided in appellants' specification, which states at page 2,
second paragraph that "A substantially smooth transition face
between the protrusion and the needle of this invention is
obtained since the transition between the various parts of the
protrusion is circular".
Appeal No. 96-4139
Application 08/142,276
7
In light of this definition, the transition between
Chevalier's protrusion 24 and the needle shaft 11 is not "smooth
in all directions", as required in claim 1. In particular, as
shown in Figure 5, the transition between the protrusion 24 and
the shaft 11 at the right-hand side 47 of the protrusion is a 90E
corner, which is not a continuously even surface and therefore
would not meet the definition of "smooth".
The examiner also seems to indicate that the apparatus shown
in Figure 1 of Chevalier may constitute an anticipation. In this
apparatus, indicated as prior art, the protrusion 44 is disclosed
as being "a drop of silver solder on the barrel of the needle"
(col. 3, lines 29 and 30). This disclosure does not anticipate
the claims, however, because claim 1 requires that the protrusion
be formed as part of the hollow shaft portion of the needle,
whereas Chevalier's drop of solder is separately applied to the
shaft. Also, it does not appear, or is at best speculative, that
the transition from the drop of solder to the shaft of the needle
would be "smooth in all directions", given the definition of
"smooth" discussed above. Since Chevalier does not disclose,
Appeal No. 96-4139
Application 08/142,276
8
expressly or inherently, all of the limitations recited in claim
1, and claims 2 to 5 are dependent on claim 1, the rejection
under 35 USC § 102(b) of claims 1 to 5 will not be sustained.
Conclusion
The examiner's decision to reject claims 1 to 5 is reversed.
Reversed
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 96-4139
Application 08/142,276
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James C. Kesterson
Texas Instruments Incorporated
P.O. Box 655474 M/S 219
Dallas, TX 75265