Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE DONAL A. RAIBLE
Appeal No. 86-0904
June 29, 1988
Application for Patent filed August 29, 1984, Serial No. 646,026. This application is a continuation of Serial No. 425,295, filed September 28, 1982, abandoned, which is a continuation of Serial No. 257,885, filed April 27, 1981, Patent No. 4,372,914, issued February 8,1983; which is a continuation of Serial No. 689,971, filed May 26, 1976, Patent No. 4,268,476, issued May 19, 1981; which is a continuation of Serial No. 584,464, filed June 6, 1975, abandoned. Blood Oxygentor.
Sandra S. Schultz et al. for appellant
Primary Examiner--L. Kummert
This is a decision on appeal from the final rejection of claims 1 and 4-5, which are all the claims remaining in the subject application. Subsequent to the final rejection, appellant amended claim 1. [FN1]
Claim 1, which is the only independent claim in issue, is reproduced here to indicate the subject matter involved in this appeal:
[Claim 1 omitted from publication.]
The following patent is cited by appellant as evidence of compliance with 35 USC 112:
Bentley et al (Bentley) 4,058,369 November 15, 1977
All of the appealed claims stand rejected as being based on a specification which fails to comply with the provisions in the first paragraph of 35 USC 112. [FN2] We shall affirm this rejection.
According to the examiner, appellant's claims are directed to the embodiment depicted in Figure 1 of the present application. Appellant does not disagree with this interpretation. Also, as regards the Figure 1 embodiment, there is no serious dispute that appellant's disclosure is silent as to the specific nature of the heat exchange surface of elements associated with heat exchange chamber 12 of the depicted apparatus. Therefore, concludes the examiner, the reference in the present claims to 'a heat exchange conduit helically disposed' clearly constitutes 'new matter'.
On the other hand, appellant argues that his specification fully supports the appealed claims by virtue of the incorporation by reference of several patents, particularly U.S. Patent No 4,058,369 (Bentley), on page 2, lines 11-22, of the specification. In this regard, appellant points out that the Bentley patent contains a drawing (Figure 1) showing a heat exchange surface within the lower portion of a blood oxygenator, and describes (col. 2, 1. 62-68; col. 9, 1. 24- 38) the heat exchange surface as 'a continuous helical passageway through which the heat exchange medium flows' or as being 'defined by a continuous helical rib 98 of the core which seals with the interior surface of the jacket'. However, appellant's specification does not specifically refer to the aforementioned portions of the Bentley disclosure.
The examiner is of the opinion that the general incorporation by reference of the Bentley disclosure in appellant's specification is insufficient to support the specific disputed limitations of the present claims in the manner required by section 112 of the statute. We agree.
*2 The examiner's Answer is not explicit as to whether the rejection at issue is based upon the 'enablement' requirement of 35 USC 112, or the 'description' requirement, or both. To the extent that the examiner may be relying on the enablement requirement of the statute, the rejection is not sustainable since we are of the opinion that the general incorporation of a U.S. patent by reference in appellant's specification is sufficient to indicate what is likely to be known by persons of ordinary skill in the art. Cf. In re Howarth, 654 F.2d 103, 210 USPQ 689 (CCPA 1981). In the persent case, the Bentley patent indicates, inter alia, that a heat exchange unit of a blood oxygenator may include a helically disposed heat exchange conduit. Of course, the alternate use of any other known type of heat exchange element or conduit configuration is no doubt possible. Therefore, there is an adequate suggestion in the art as to how to construct a heat exchange unit in an oxygenator.
The issue of compliance with the description requirement, however, is another matter entirely. In this connection, attention is directed to In re Blaser, 556 F.2d 534, 194 USPQ 122, 125 (CCPA 1977). The function of the description requirement is to ensure that the applicant had possession, as of the filing date of his application, of the specific subject matter later claimed by him. It is required that the specification describe the invention sufficiently for those of ordinary skill in the art to recognize that the applicant invented the subject matter he now claims. In re Smythe, 480 F.2d 1376, 178 USPQ 279, 284 (CCPA 1973). That a person skilled in the art, given the Bentley disclosure, might decide to employ a helically disposed heat exchange conduit in a separate heating unit of a blood oxygenator is not a sufficient indication to that person that such is described as a particular feature of appellant's invention. We believe that the doctrine of incorporation by reference is of no avail to appellant in this regard since there is no specific indication in the instant specification of the particular features disclosed by Bentley which correspond to those intended for use in the her-claimed device; nor does the specification identify the specific portions of the patent which appellant may have intended to rely upon to supplement his disclosure. The purpose of incorporation by reference in an application of matter elsewhere written down is for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found. In re de Seversky, 474 F.21 671, 177 USPQ 144, (CCPA 1973). Moreover, the Bentley disclosure itself does not appear to include sufficlent descriptive language to specifically support the combination recited in the appealed claims, i.e., 'a heat exchange conduit helically disposed in effective heat exchange relationship with, but not in, the bubble column of said oxygenator'. Appellant has not shown otherwise.
*3 For the sake of completeness, we take notice of the decision in In re Voss, 557 F.2d 812, 194 USPQ 267 (CCPA 1977). We recognize that Voss, like the present case, involved an attempt to rely upon the incorporation by reference of a U.S. patent for descriptive support of a particular limitation in the claims. However, the decision in Voss is not dispositive of the issue before us, and is distinguishable on its facts for the following reasons:
(1) In Voss, the incorporating statement particularly referred to the aspect of the patent which was being relied upon, i.e., 'for a general discussion of glass-ceramic materials and their production'. Here, as previously indicated, there is no reference in the incorporating statement to any specific portion or aspect of the Bentley disclosure. Actually, the incorporating statement involved here more broadly refers to several patents with no specific indication of the relevance of each to the claimed invention.
(2) In Voss, the disputed claim limitation was found in all the claims of the incorporated patent and was apparently the central focus of the patent disclosure; whereas, the disputed claim language here is not found in any claims of the Bentley patent and, at best, may be incidentally derived only after studying both the Bentley specification and drawings.
(3) In Voss, the incorporated patent was merely being relied upon to clarify the definition attributed in the art to certain terminology, namely 'glass-ceramic material'. Here, even the incorporated document itself does not clearly disclose the claimed combination in language which essentially corresponds to that employed in the appealed claims.
For the foregoing reasons, the decision of the examiner is affirmed.
37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
Irving R. Pellman
Marc L. Caroff
Mary F. Downey
FN1. The amendment of claim 1 was included in appellant's Reply Brief (Paper No. 26); and the examiner has indicated in tis Supplemental Answer (Paper No. 27) that the amendment has been entered. Accordingly, the amended version of claim 1 is before us for consideration.
FN2. As indicated in the Supplemental Answer, the examiner no longer adheres to a previous rejection based upon the second paragraph of 35 USC 112 which rejection, therefore, is not before us for adjudication.