Appeal No. 2007-0671 Page 9
Application No. 10/836,174
claimed invention that the housing and electronic circuit are discarded with the
canister when the medication in the canister is depleted. To the contrary, it
serves only to emphasize that Wolf’s device is reusable and not permanently
attached to the canister as opposed to the non-reusable (e.g. permanently
attached and disposable) device set forth in appellant’s claimed invention.
We disagree with the examiner’s construction of appellant’s claims to read
on a device that is “capable of being discarded in its entirety once the contents of
the canister have been depleted.” Answer, page 9, emphasis added. This
reading of appellant’s claim infers that appellant’s device is “capable of” being
reused as in Wolf. This is, however, not what appellant has disclosed or claimed.
The phrase “capable of” does not appear in appellant’s claims. To the contrary,
both appellant’s specification and claims make very clear that the whole device is
discarded when the medication in the canister is depleted. See, e.g., appellant’s
specification, paragraph 15, wherein appellant discloses that “[i]n accordance
with the invention, the disposable canister housing and the canister and counting
electronics which are contained in the housing, are simply discarded when the
contents of the canister are depleted.”
We recognize the examiner’s assertion that appellant’s specification does
not disclose the type of “adhesive, sealing, locking or latching means that would
inhibit or retain the canister ‘permanently’ inside the housing to the point at which
the unit would become dysfunctional and/or the canister would be destroyed, if
removed.” Answer, page 10. However, in our opinion, this assertion has little, if
any, bearing on the appellant’s claimed invention. There is no requirement in
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