Hunter, In re, s. 94-1301
| Decision Date | 19 June 1995 |
| Docket Number | Nos. 94-1301,s. 94-1301 |
| Citation | 59 F.3d 181 |
| Parties | NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. In re Robert M. HUNTER. |
| Court | U.S. Court of Appeals — Federal Circuit |
Before RICH, MAYER, and MICHEL, Circuit Judges.
Robert M. Hunter (Hunter) appeals from the 28 February 1994 decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board), appeal no. 94-0576, affirming the examiner's final rejection of claims 33-40 of application Serial No. 07/828,528 ('528 application), which is for a broadening reissue of U.S. Patent No. 4,896,542 ('542 patent). The claims stand rejected under 35 U.S.C. Sec. 112, first paragraph, 1 for lack of a written description that supports the rejected claims. We affirm.
The '542 patent discloses an apparatus and method for metering the flow of a liquid, such as sewage, flowing under the force of gravity in an elongated pipe.
Figure 2 of the '542 patent, reproduced below, depicts an embodiment of the metering device. The device comprises an elongated cylindrical body having an entrance or upstream section 26 (see dashed lines) internally tapering to a constriction or "throat" 28, which then tapers outwardly to an exit or downstream section 30. As shown in Figure 5, also reproduced below, a person temporarily lowers the device into a sewer manhole and inserts it into the upstream section of a sewer pipe. Using instruments in the apparatus, one then takes flow measurements. For example, using differential pressure measurements, one may calculate the flow rate of liquid through the metering device.
The metering device functions as a modified venturi flume when the pipe is flowing less than full (open-channel condition) and as a venturi tube when the pipe is flowing full (surcharged condition). A venturi flume is a constriction in an open channel. When the flow reaches the constriction, it dips or "necks" down and assumes a depth that one may measure. One may then calculate therefrom the flow rate.
A venturi tube, on the other hand, is a constriction in a closed pipe. When the pipe is flowing full, the device works as a venturi tube because both the upstream section of the pipe and the throat are full. The apparatus is designed to provide accurate measurements under both full and less-than-full flow conditions. As the pipe becomes flooded (i.e., as the depth of flow rises to a point where the liquid fills the upstream section of the metering device), a transition period may occur. During this period, when the upstream section is filled with liquid but the throat is not, or vice versa, one may not obtain accurate flow rate measurements from the metering device. The transition period may last for a considerable length of time. The elimination or reduction of this transition period is an important objective of the claimed invention.
Application Serial No. 286,695 ('695 application), on which the '542 patent issued, is the fourth application that Hunter filed in a family of patent applications. Hunter filed it on 20 December 1988 as a continuation-in-part (CIP) of the '325 application under 37 C.F.R. Sec. 1.53(b). 2
On 29 January 1992, Hunter filed his '528 application, offering to surrender the '542 patent. 3 This application for reissue led to the instant appeal.
The following table summarizes this family of patent applications:
App'n Filing Patent No. Issue Comments
S/N Date Date
364,192 03/31/82 --- --- the original app'n, now abandoned
846,516 03/31/86 --- --- FWC4 of the '192 app'n, now abandoned
051,325 05/19/87 4,799,388 01/24/89 CIP5 of the '516 app'n
286,695 12/20/88 4,896,542 01/30/90 CIP of the '325 app'n
828,528 01/29/92 --- --- i) app'n for reissue of the
'542 patent; ii) the litigated app'n
DISCUSSION
Our only task is to decide whether the PTO's rejection of reissue claims 33-40 under section 112, paragraph one, for lack of written description that supports the rejected claims, was proper. Compliance with section 112's written description requirement is a question of fact, reviewable under the clearly erroneous standard. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991) (citing In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989); Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988)). "A finding is clearly erroneous when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948).
As the '528 reissue application comes to us, claims 1-28 and claims 30-32 stand allowed, Hunter has canceled claim 29, and the board has affirmed the examiner's final rejection of claims 33-40. The allowed claims contain the limitation that the entrance section and the throat section of the apparatus are required to fill substantially simultaneously. This is not the case, however, for the rejected claims.
Claims 33-40 include both apparatus and process claims that cover two basic embodiments. Claims 33-36 recite a process of metering the flow of liquid in an elongated pipe. Claims 37-40 recite an apparatus for metering the flow of the liquid in the pipe. Claims 33, 35, 37, and 39 state that the cross-sectional area of the throat is configured relative to that of the entrance so that the entrance section fills first when the liquid level rises and before the "modular limit" is reached. Hunter defines the "modular limit" as the maximum submergence of the device (i.e., the maximum ratio of downstream depth of flow to the upstream depth of flow). Claims 34, 36, 38, and 40 parallel claims 33, 35, 37, and 39; however, in these claims, the throat section fills first. Claims 33 and 37 typify the subject matter on appeal and read as follows (emphasis ours):
33. A process of metering the flow of liquid which is flowing in an elongated pipe that is open to the atmosphere, wherein a closed conduit venturi metering device is installed in the pipe, which device has an open-ended bore therethrough extending end-to-end thereof, the bore having an entrance section adjacent a first end thereof, an exit section adjacent the second end thereof, and intermediate the entrance and exist sections, a throat having a top and bottom and a smaller cross-sectional area than the entrance and exit sections, comprising the steps of:
arranging the device in the pipe to accept flow into the entrance from the pipe and otherwise to substantially block the pipe;
configuring the cross-sectional area of the throat relative to that of the entrance section so that the entrance section fills first on rising liquid level before the modular limit is reached;
providing means for determining the head of the liquid in said entrance section, in said throat and, [sic] in said exit section, for use at least to determine direction of flow in the device and flow both in less than full and in full flow through the device.
37. An apparatus for metering flow of liquid which is flowing in an elongated pipe which is open to the atmosphere, comprising:
a closed conduit venturi metering device installed in the pipe and having an open-ended bore therethrough extending end-to-end thereof, said bore having an entrance section adjacent a first end thereof, an exit section adjacent the second end thereof, and intermediate the entrance and exit sections, a throat having a top and bottom and a smaller cross-sectional area than the entrance and exit sections;
said device being arranged in said pipe to accept flow into said entrance from the pipe and otherwise to substantially block the pipe;
the cross-sectional area of the throat relative to that of the entrance section being configured so that the entrance will fill first on rising water level before the modular limit is reached;
means for determining the head of the liquid in said entrance section, in said throat, and in said exit section, for use at least to determine direction of flow in the device and flow both in less than full and in full flow through the device.
Before the board, Hunter stated that claims 33, 35, and 37 stand or fall together and that claims 34, 36, and 38 stand or fall together. Hunter also asserted that claims 39 and 40 were each separately patentable. The board disagreed with this latter assertion and found that Hunter's arguments did not distinguish claims 39 and 40 from claims 33-38. Hunter has not alleged any error in this board finding, and he has not argued for the separate patentability of claim 39 or 40 here. Further, each of rejected claims 33-40 contains the nonsimultaneous-fill limitation. Since the other limitations among rejected claims 33-40 do not affect the patentability of the claims as to the section 112, paragraph one, issue before us, all claims stand or fall together. Cf. In re Herbert, 461 F.2d 1390, 1391, 174 USPQ 259, 260 (CCPA 1972) ().
The Reissue Proceeding
The reissue statute provides in pertinent part as follows:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or...
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