Application of Smythe
| Decision Date | 28 June 1973 |
| Docket Number | Patent Appeal No. 8855. |
| Citation | 178 USPQ 279,480 F.2d 1376 |
| Parties | Application of William J. SMYTHE and Morris H. Shamos. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Eric P. Schellin, Schellin & Hoffman, Arlington, Va., attorney of record, for appellants.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 34, 37-40, 42-44, and 47-50 of appellants' application serial No. 369,695, filed May 25, 1964, entitled "Automatic Analysis Apparatus and Method." We reverse.
The invention relates to a continuous, automatic analysis system wherein discrete liquid samples, perhaps containing blood or other body fluids, are successively introduced into an apparatus as a continuous stream, the individual samples being separated by a segmentizing medium which, as originally claimed and as taught by the specification, is "air or other gas which is inert to the liquid" sample transmitted. The appealed claims are directed to both method and apparatus.
In the analysis apparatus a chemical reagent is automatically added to each discrete liquid sample to produce a color reaction indicative of the particular constituent in the sample to be tested, and the samples with the intervening portions of segmentizing medium are passed through the sight passageway of a flow cell as a continuous stream. The sight passageway forms part of a colorimetric analysis apparatus. Leading segments of the liquid samples, which are arranged in duplicate one following another, perform, along with the segmentizing medium, a cleansing function and each following segment has a volume at least equal to that of the sight passageway. When the sight passageway of the flow cell is fully occupied by the liquid sample to be analyzed, a recorder for the analysis, which receives its input from the colorimeter, is made operational.
Representative claims, for the purpose of dealing with the rejections, are as follows (emphasis ours):
The following three patents were relied on as prior art:
Skeggs 2,797,149 June 25, 1957
Skeggs 2,879,141 Mar. 24, 1959
Baruch 3,193,358 July 6, 1965
(filed July 2, 1962)
Claims 34, 37-40, 42, 43, and 48-50 have been rejected for obviousness under 35 U.S.C. § 103 on Skeggs '141 in view of Skeggs '149 and further in view of Baruch. As will be discussed in greater detail shortly, the examiner and the board rely particularly upon the language of claims 9 and 10 of Skeggs '149 for a teaching of what appears to be a critical limitation of these claims.
Claims 34, 37-40, 43, and 44 were rejected under 35 U.S.C. § 112, paragraph one, for alleged failure to describe the invention insofar as the term "inert fluid" encompasses liquids, since the specification and original claims refer only to "air or other gas which is inert to the liquids transmitted" as the analysis samples.
Claims 47-50 were rejected under 35 U.S.C. § 112, paragraph one, it being alleged that the specification does not enable one skilled in the art to use an "inert gas" as a segmentizing medium in the invention.
OPINIONThe rejections and the positions of the parties will now be dealt with.
This is the type of case where the invention resides in the discovery that an element or step which allegedly has always been included in prior art apparatus or method can be omitted, not merely with omission of its function but with improved results. Appellants admit, and the prior art of record establishes, that the general apparatus for performing appellants' method invention is known. Appellants contend, however, that the prior art apparatus and method always provided for what is called "venting" of the segmentizing medium, or "debubbling," just prior to passing the successive liquid samples through the sight passageway in the flow cell.
Although there is some dispute about the teachings of the Skeggs '149 patent, the general nature of the invention and the prior art practice of venting or debubbling is illustrated by reference to a portion of Fig. 3 of that patent:
Skeggs '149 discloses automatic apparatus adaptable to blood analysis having sample-feeding apparatus similar to appellants'.1 Liquid samples flowing through a tube in a continuous stream, the samples being separated in the tube by air as a segmentizing medium, are supplied to a colorimeter, which, with a recorder, translates color changes into a record of the amount of a given ingredient in each sample. On the way to the colorimeter a reagent is mixed with each sample to produce a color reaction which can be measured by the colorimeter. The reagent-treated samples with the segmentizing medium, air, interspersed therebetween, together flow as a segmented liquid stream "into a fluid line 70 leading to a transparent plastic flow cell 71 provided with an open chamber." (Emphasis ours.) "A communicating duct 73 leads from the lower end of open chamber 72 to a horizontal cylindrical passage 74" (emphasis ours) wherein the photometric analysis is performed by recording the variations in light received by the phototube from the light source 32. Venting of the segmentizing air medium from the stream is claimed in claim 10 of Skeggs '149. The open chamber 72 in the above figure is the point at which this venting takes place. Presumably the dots shown in the open chamber are the draftsman's way of representing rising bubbles of the segmentizing medium, which is a gas entrained in a liquid.
Relating this to the invention here, appellants' discovery is that it is desirable to omit the prior art step of venting the air or other gas, i. e., "debubbling" the segmented stream of fluid samples. Appellants argue that they were the first to discover the advantages of omitting the debubbling step. They contend that the prior art cited by the Patent Office nowhere suggests that venting or debubbling can be dispensed with.
Appellants' brief explains the advantages of not debubbling as follows:
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