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MOHAMMAD ROUF v. COMMISSIONER OF PATENTS

November 8, 1993

MOHAMMAD A. ROUF, Plaintiff,
v.
COMMISSIONER OF PATENTS, AND TRADEMARKS, Defendant.



The opinion of the court was delivered by: STANLEY SPORKIN

 BACKGROUND

 In 1990, plaintiff applied to the United States Patent and Trademark Office ("PTO") for a patent for his "invention" of a device which facilitates heat exchange between two fluids. The plaintiff's device consists of a tube made out of a heat conducting material with a helical spring-shaped structure attached to its inner walls. A foil structure, twisted into a helix, runs through the center of the tube. In one alternative design, an additional spring-shaped helical structure is attached to the outer walls of the tube. When one fluid is passed through the inside of the tube and another is passed outside the tube, the device creates turbulence in the two fluids thereby augmenting heat exchange between the fluids.

 A properly drafted patent application includes a specification which consists of a narrative section describing the invention and at least one claim. The object of the specification is to put the public on notice of the features of the invention that require a license and those that may be used without penalty. The claims legally define the invention. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 5 L. Ed. 2d 592, 81 S. Ct. 599 (1961). Therefore, they must point out and distinctly claim the subject matter covered by the invention. Limitations found in the narrative section of the specification cannot be read into the claims in order to determine patentability. In re Prater, 56 C.C.P.A. 1381, 415 F.2d 1393, 1404-05 (C.C.P.A. 1969). Because the claims define the boundary of the patent and because the invention's patentability is based on the claims contained in the application, the drafting of an effective claim requires some degree of knowledge and expertise.

 Plaintiff prepared his patent application himself and he filed it with the PTO on January 18, 1990. It contained a total of seven claims. The PTO patent examiner rejected his application on June 1, 1990, noting that claims 1 through 6 failed to define the invention in the manner required by 35 U.S.C. § 112. *fn1" In addition, the PTO stated that the indefiniteness of the claims prevented a meaningful comparison with the prior art. It gave the plaintiff an opportunity to revise his claims and resubmit the application. Plaintiff amended his claims and filed them with the PTO on September 4, 1990. On November 5, 1990, the PTO issued a Final Rejection in which it rejected claims 1 through 7 of the amended application. It furnished the same reasons given in its original rejection but added that some claims were rejected under 35 U.S.C. § 102(b) as being anticipated by the prior art *fn2" and others were rejected as obvious under 35 U.S.C. § 103. *fn3"

 
an examination of this application reveals that applicant is unfamiliar with patent prosecuting procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.

 The PTO also advised plaintiff that it could not aid him in selecting an attorney or an agent, however, it directed him to a publication listing attorneys and agents registered to practice before the PTO.

 By letter dated May 3, 1991, plaintiff requested and obtained yet another reconsideration of the agency's final action. On June 3, 1991, the PTO again rejected all seven of plaintiff's claims for substantially the same reasons given in the previous rejection. Plaintiff notified the PTO that he was withdrawing claims 4, 5, 6 and 7. Plaintiff appealed the June 3, 1991 Final Rejection to the Board requesting an independent evaluation of his claims 1, 2 and 3. He opted to represent himself before the Board and filed his brief on November 1, 1991.

 In September 1992, the Board upheld the decision of the PTO examiner to reject plaintiff's patent application. The Board sustained the examiner's finding that plaintiff's device was unpatentable under 35 U.S.C. § 102(b) based on its factual determination that claims number 1 and 3 in the plaintiff's application were anticipated by a prior art reference. The Board also based its decision on its legal conclusion, under 35 U.S.C. § 103, that claim number 2 in plaintiff's application was obvious.

 DISCUSSION

 Summary judgment is appropriate where there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Accordingly, the issue before the Court is limited to whether a material fact in this case is in dispute. See e.g., Federal Labs, Inc. v. Barringer Research, Ltd., 696 F.2d 271, 274 (3d Cir. 1982). A material fact is one which tends to resolve an issue in the case. See Hahn v. Sargent, 523 F.2d 461 (1st Cir. 1975), cert. den. 425 U.S. 904, 47 L. Ed. 2d 754, 96 S. Ct. 1495 (1976). A material fact is "genuine" if the evidence is such that a reasonable jury could find for the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

 The Board stated in its opinion that plaintiff's claims 1 and 3 were anticipated by a reference in the prior art to Zelnik. *fn4" The Board also upheld the decision of the examiner to reject claim 2 as obvious under 35 U.S.C. § 103 on the basis of its examination of Zelnik and another prior art reference, Owen. *fn5" It found that the claim was not patentable because a person ...


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