3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Apr 2, 2020

15034395 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/034,395 05/04/2016 Andreas J. BOEHM 74500US005 9034
32692 7590 04/02/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
04/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS J. BOEHM

Appeal 2019-003626
Application 15/034,395
Technology Center 3700
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
JAMES A. WORTH, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as 3M
Innovative Properties Company. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a cartridge, a piston and a syringe
comprising such a cartridge and piston. In particular the invention relates to
a new substantial D-shape for the cross-sections of cartridge compartments
and corresponding pistons cooperating with such compartments. Such
substantial D-shape is particularly defined by a plurality of circle segments
only.” Spec. 1, ll. 7–11.
Claims 1, 7, and 13 are independent claims. Claim 1 reads:
1. A cartridge for storing and dispensing a two-
component dental material,
comprising:
two compartments each extending within the
cartridge, each compartment having a compartment cross-section
that defines a generally D-shape perimeter, wherein the D-shape
perimeter is defined by a plurality of circle segments only, each
circle segment of the plurality of circle segments having a
definite radius so the D-shape perimeter does not include any
straight lines or sharp edges, and wherein at least two of the circle
segments are based on different definite radii and positioned at
directly opposite sides of the D-shape perimeter from each other.
Appeal Br. 26 (Claims App.).

REJECTIONS
Claims 1–15 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Claims 1–11 and 13–15 are rejected under 35 U.S.C. § 103 as
unpatentable over Sawhney (US 6,394,314 B1, issued May 28, 2002).
Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Sawhney and Simmen (US 5,333,760, issued Aug. 2, 1994).

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ANALYSIS
Indefiniteness of Claims 1–15
Claims 1 and 7 both recite the limitation “each circle segment of the
plurality of circle segments having a definite radius so the D-shape perimeter
does not include any straight lines or sharp edges.” Appeal Br. 26, 27
(Claims App.) (emphasis added). Claim 13 recites closely similar language.
Id. at 29 (Claims App.). The Examiner determines that the term “sharp” is
indefinite because it is unclear what “sharp” encompasses. Final Act. 2.
Appellant contends that a person of ordinary skill in the art would
understand the meaning of the term “sharp” or the phrase “sharp edges” in
view of its disclosure. Appeal Br. 4. Appellant contends that the
Specification “describes having the joints between adjacent circle segments
smoothly transition so as to exclude the presence of any ‘sharp edges’ at the
intersections.” Id. at 6. In support, Appellant points to the following
passages:
In a further embodiment the circle segments join or are
concatenated such that respective tangents of the two circle
segments through the joint coincide. Thus the perimeter of the
cross-section extends free of any sharp edges.
Id. at 6–7; see Spec. 3, ll. 4–6.
Or in other words the circle segments 19a, 19b, 19c and 19d
smoothly merge into one another and together form a closed
line defining the perimeter of the cross-section.
Id. at 7; see Spec. 8, ll. 6–7, Fig. 3.
Appellant contends that one of ordinary skill in the art would
understand that
the [claimed] phrase “sharp edges” refers to the structural
intersection or joint formed between adjoining circle segments,
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which are arranged such that the perimeter excludes the
presence of any “sharp edges,” such as the tangents of the two
intersecting circle segments meet and do not coincide to form,
for example, a corner or a point.
Id. (emphasis added); see also Reply Br. 4 (“the perimeter excludes
intersecting circle segments that coincide to form a corner or a point”).
“A claim [in an application] is indefinite when it contains words or
phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310,
1314 (Fed. Cir. 2014); see Ex parte McAward, No. 2015-006416, slip op. at
11 (PTAB Aug. 25, 2017) (precedential) (same). Claim 1 recites, “each
circle segment of the plurality of circle segments having a definite radius so
the D-shape perimeter does not include any . . . sharp edges.” Appeal Br.
26 (emphasis added). The use of the term “so” in this limitation implies that
the phrase “the D-shape perimeter does not include any . . . sharp edges”
means “each circle segment . . . ha[s] a definite radius.”
Appellant’s contention that one of ordinary skill in the art would
understand that the phrase “sharp edges” “refers to the structural intersection
or joint formed between adjoining circle segments . . . such as the tangents
of the two intersecting circle segments meet and do not coincide to form, for
example, a corner or a point” implies a special definition of this phrase.
Appeal Br. 7 (emphasis added). “To act as its own lexicographer, a patentee
must ‘clearly set forth a definition of the disputed claim term’ other than its
plain and ordinary meaning.” Thorner v. Sony Computer Entm’t America
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citation omitted). “[T]he
patentee must ‘clearly express an intent’ to redefine the term.” Id. (citation
omitted). The Examiner determines that the description in the Specification
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referenced by Appellant does not provide a special definition of the term
“sharp” or the phrase “sharp edges.” Ans. 8–9.
Appellant contends that “where the circle segments join or are
concatenated such that respective tangents of the two circle segments
through the joint coincide” is a first specific example of where sharp edges
are not present. Reply Br. 4. Appellant further contends that “where the
circle segments smoothly merge into one another and together form a closed
line defining the perimeter of the cross-section” is a second specific example
where sharp edges are not present. Id. However, Appellant then explains,
“[t]hese criteria for selection provide guidance and points of comparison for
a skilled artisan to determine whether a proposed design includes a cross-
sectional shape with ‘sharp edges.’” Id. (emphasis added). It is unclear
whether the “criteria for selection” (i.e., the two “specific examples”) are
merely examples, or instead requirements of a “sharp edge.” We determine
that Appellant does not clearly set forth a definition of the phrase “sharp
edges” other than its plain and ordinary meaning, or clearly express an intent
to redefine this phrase. We thus agree with the Examiner that Appellant has
not acted as its own lexicographer. Thorner, 669 F.3d at 1365. Further,
Appellant has not adequately explained how the plain and ordinary meaning
of not including “sharp edges” would apply in the context of a “D”-shaped
object.
We also note that claim 3, which depends from claim 1, recites the
limitation “the plurality of circle segments join such that respective tangents
of adjacent circle segments through a joint coincide.” Appeal Br. 26
(Claims App.). It is unclear whether the limitation is a requirement of a
“sharp edge,” rather than just an example of a “sharp edge.” If this
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limitation is a requirement of a “sharp edge,” then it is unclear how claim 3
further limits the cartridge of claim 1 and complies with 35 U.S.C. § 112(d).
For the foregoing reasons, we agree with the Examiner that the
meaning of the phrase “sharp edges” in claims 1, 7, and 13 is unclear.
Accordingly, we sustain the rejection of claims 1, 7, and 13 and dependent
claims 2–6, 8–12, 14, and 15 under 35 U.S.C. § 112(b) as being indefinite.

Obviousness of Claims 1–11 and 13–15 over Sawhney
Claims 1–6
As for claim 1, the Examiner finds that Sawhney discloses a cartridge
(double-barrel assembly 12) comprising two compartments (barrels 14L,
14R) each having a circular-shaped cross-section and perimeter, where the
perimeter is defined by a plurality of circle segments only. Final Act. 3
(citing Sawhney Fig. 1). The Examiner concedes that Sawhney does not
teach that the cartridge compartments have a generally D-shape perimeter,
wherein at least two of the circle segments are based on different definite
radii and are positioned at directly opposite sides of the D-shape perimeter
from each other, as claimed. Id. at 4–5.
The Examiner further finds that Sawhney discloses a dispensing
nozzle with a D-shaped perimeter (perimeter of passages 24R, 24L),
comprising a first circle segment (the circle segment defined by partition
26), a second circle segment directly opposite the first circle segment of a
different radius, and third and fourth circle segments “which are adjacent to
and connect the first and second circle segments.” Final Act. 5 (citing
Sawhney Fig. 6A). The Examiner appears to consider the “third and fourth
circle segments” shown in Figure 6A of Sawhney “to be generally curved.”
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Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the “fully circular” perimeters of
compartments l4L/l4R in Sawhney to have the cross-sectional shapes of
passages 24R/24L “for the purpose of using a shape to control the
flow/dispersion of a dispensed composition and cooperating with a suitable
locking closure cap/mixing tip.” Id. at 5–6 (citing Sawhney, col. 4, ll. 13–
22, col. 5, ll. 30–35).
Appellant contends that a person of ordinary skill in the art would not
have had a rational basis for modifying the circular cross-sectional shape of
compartments l4L/l4R to have the cross-sectional shape of outlet passages
24R/24L. Appeal Br. 14. Appellant contends that “the Examiner has not
provided a logical correlation between the cross sectional shapes of the
compartments l4L/l4R and the cross sectional shapes of the outlet passages
24R/24L.” Reply Br. 6. According to Appellant, a person of ordinary skill
would have understood that circular compartments l4L/l4R hold a
composition and communicate with the pistons 30L/30R to dispense that
composition, whereas outlet passages 24R/24L function as an exit orifice for
the composition to be dispensed from compartments 14L/14R. Appeal Br.
14. Appellant contends that the cross-sectional shapes of outlet passages
24R/24L serve no apparent role or purpose regarding the interaction between
compartments 14L/14R and pistons 30L/30R. Id.
Appellant also contends that the Examiner’s stated rationale for
modifying compartments 14L/14R (i.e., “to control the flow/dispersion of a
dispensed composition and cooperating with a suitable locking closure
cap/mixing tip”) is not supported by Sawhney. Appeal Br. 14; Reply Br. 5.
We agree with Appellant that the description in Sawhney cited by the
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Examiner does not disclose or suggest that the cross-sectional shapes of
outlet passages 24R/24L “serve any particular purpose or provide any
particular benefit with regards to the flow/dispersion of the composition
contained by the syringe or with the connection between the closure
cap/mixing tip.” Appeal Br. 14–15 (referencing Sawhney, col. 4, ll. 13–22,
col. 5, ll. 30–35). In fact, Appellant notes that “Sawhney provides no
accompanying description or an alleged purpose regarding the cross-
sectional shape of the outlet passages 24R/24L of FIG. 2.” Id. at 16.
In response, the Examiner states, “[A]ppellant has failed to provide
specific reasons with sufficient evidence as to why one would not be
motivated to modify the shape of the ‘compartments’ or ‘pistons’ for the
reasons provided in the final office action, ‘to control the flow/dispersion of
a dispensed composition and cooperating with a suitable locking closure
cap/mixing tip.’” Ans. 8–9 (emphasis added). As pointed out by Appellant,
however, “the Examiner bears the burden of proof to demonstrate a prima
facie case that an invention is not patentable.” Reply Br. 5 (citing In re
Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). Appellant’s contention that the
Examiner has not met the required burden to explain why a person of
ordinary skill in the art would have been motivated to make the proposed
modification to Sawhney is persuasive. Id.
Furthermore, Appellant contends that the Examiner has not
established that the proposed modification of compartments 14L/14R in
Sawhney would, in fact, result in “[a] D-shape perimeter [] defined by a
plurality of circle segments only,” as claimed. Appeal Br. 16. Appellant
provides an annotated Figure 6A of Sawhney identifying “Segment 1,”
“Segment 2” positioned directly opposite “Segment 1,” and “Intersect A”
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and “Intersect B” corresponding to the “third circle segment” and “fourth
circle segment,” respectively, as found by the Examiner. Id. at 17.
Appellant notes that Sawhney does not describe the shape of Intersects A
and B. Id. We agree with Appellant that Figure 6A does not show clearly
that these intersects are “generally curved” or define a circle. Id.
Regarding the “curvature” of the “third and fourth circle segments” in
Sawhney, the Examiner further submits:
In the event there is any question to the nature of their curvature
Sawhney teaches a completely circular cross-section which has
all four circle segments curved with a definite radius. It would
be obvious to modify the shape of the cross-section to be
completely curved to reduce the possibility of leakage between
the interface of the plunger/piston and cartridge compartments
as shown in FIG. 1 and described above.
Final Act. 5 (emphasis added). However, we agree with Appellant that the
Examiner has not provided sufficient evidence to show that “a ‘completely
curved [perimeter would] reduce the possibility of leakage between the
interface of the plunger/piston and cartridge compartments.’” Appeal Br.
19; Reply Br. 7.
Because the Examiner’s conclusion that it would have been obvious to
modify Sawhney to result in the claimed cartridge is not supported by an
adequate factual basis, the legal conclusion is in error. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). We do not sustain the rejection of claim
1, or dependent claims 2–6, as unpatentable over Sawhney.
Claims 7–11
Claim 7 recites a piston having a piston cross-section that defines a
generally D-shape perimeter. Appeal Br. 27 (Claims App.). Claim 7 recites
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the same limitations for the D-shape perimeter as claim 1. Id. The
Examiner appears to rely on the same findings and reasoning in rejecting
claim 7 as for claim 1. Final Act. 3–6. Accordingly, we do not sustain the
rejection of claim 7, or dependent claims 8–12, as unpatentable over
Sawhney.
Claims 13–15
Claim 13 recites a syringe comprising a cartridge of claim 1 and
additional elements. Appeal Br. 29 (Claims App.). For the same reasons as
for claim 1, we do not sustain the rejection of claim 13, or dependent claims
14 and 15, as unpatentable over Sawhney.

Obviousness of Claim 12 over Sawhney and Simmen
The Examiner’s reliance on Simmen fails to cure the deficiency in the
rejection of parent claim 7. Final Act. 6–7. Accordingly, we do not sustain
the rejection of claim 12 as unpatentable over Sawhney and Simmen.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 112, second
paragraph
Indefiniteness 1–15
1–11, 13–15 103 Sawhney 1–11, 13–15
12 103 Sawhney, Simmen 12
Overall
Outcome
1–15

Appeal 2019-003626
Application 15/034,395

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PERIOD FOR RESPONSE

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED