Ex Parte Gammons et alDownload PDFBoard of Patent Appeals and InterferencesFeb 16, 201211459625 (B.P.A.I. Feb. 16, 2012) Copy Citation 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. 11/459,625 07/24/2006 Jeffery B. Gammons 06020-UPA 1693 56758 7590 02/16/2012 KNOX PATENTS P.O. BOX 30034 KNOXVILLE, TN 37930-0034 EXAMINER KOCH, GEORGE R ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 02/16/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JEFFERY B. GAMMONS and CLIFFORD E. GAMMONS ____________ Appeal 2012-001197 Application 11/459,625 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001197 Application 11/459,625 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-8 and 21-32. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the subject matter on appeal (emphasis added): 1. An apparatus for fusing, without an adhesive or solvent, an agitator and a drape for containing a slush solution in a medical stirrer, said apparatus comprising: a base having an interface portion for receiving and supporting an agitator, said agitator adapted for agitating the slush solution in the medical stirrer; a cylinder having a piston, said piston movable along an axis normal to a surface of the agitator on said base; a die having a surface for creating a fused area on a sheet and the agitator, said sheet being the drape, said piston attached to said die opposite said surface, said piston moving said die between a first position and a second position, said first position of said die being with said die immediately adjacent said base whereby said surface of said die presses said sheet and the agitator against said base with a specified force for a specified time, said second position of said die being away from said base such that the agitator and said sheet are removable from between said die and said base; a heater in thermal contact with said surface of said die, said heater maintaining said surface at a specified temperature; and a controller in communication with said cylinder and said die, said controller maintaining said specified force, said controller causing said cylinder to apply said force for said specified time with said surface of said die at said specified temperature when said die is in said first position whereby said surface on said die fuses said sheet to said agitator; Appeal 2012-001197 Application 11/459,625 3 whereby the drape and the agitator are fused together at said fused area by said surface pressing against the drape and the agitator with said specified pressure at said specified temperature for said specified time. The Examiner maintains, and Appellants appeal, the following rejections: a) Claims 1-8 and 21-32 under 35 U.S.C. § 102(b) as anticipated by Hall (US 6,009,925 published Jan. 4, 2000); b) Claims 1-8 and 21-32 under 35 U.S.C. § 103(a) as unpatentable over the combined prior art of Hall and Fairies (US 5,457,962 published Oct. 17, 1995). MAIN ISSUE ON APPEAL Although Appellants present separate sections to argue each of independent claims 1, 21, and 29 (App. Br. 9-11) and another section to collectively argue the dependent claims together (App. Br. 14), the arguments are essentially the same. Accordingly we select claim 1 as representative, and address the main issue on appeal as: Did the Examiner reversibly err in determining that the apparatus of claim 1 is anticipated by Hall, because, as alleged by Appellants, there is no teaching or suggestion of “fusing of the substrates [of Hall] at the claimed specified temperature, which is the temperature maintained at the surface of the die by the claimed heater”? (App. Br. 6) We answer this question in the negative, and affirm all of the rejections. PRINCIPLES OF LAW Although “[a] patent applicant is free to recite features of an apparatus either structurally or functionally[,] . . . . choosing to define an element Appeal 2012-001197 Application 11/459,625 4 functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner establishes a reasonable belief that a property or characteristic recited in the claims would have been inherent to the apparatus, the burden of proof shifts to Appellants to show that this characteristic or property is not possessed by the prior art. Id. ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. In reviewing the relevant facts of this case, we agree with the Examiner that there is a reasonable belief that the hot die welding press of Hall would have been capable of operating at temperatures capable of fusing a drape to an agitator, as recited in each of independent claims 1, 21, and 29 (Ans. 3; see also Ans. 9). Appellants discuss that the sterile medical drape may comprise polyurethane and that the agitator may be polycarbonate (which is also a thermoplastic) (e.g., Spec. para. [0007], [0008], [0023]). Hall teaches fusing thermoplastic sheets, foils, laminates, etc., made of polyolefin, polyurethane, vinyls, polyvinyl chlorides and other thermoplastic elastomers (Hall, col. 8, ll. 15-30). Hall teaches his apparatus is useful for fusing materials of similar or dissimilar material (id.), and may be used in medical products (e.g., col. 3, ll. 54-60). Thus, it is reasonable to believe that the welding hot die platen press of Hall has the capability to function as recited in each claim. Appeal 2012-001197 Application 11/459,625 5 Accordingly, Appellants’ contentions that the hot die apparatus of Hall does not operate at the specified temperature(s) of the independent or dependent claims, and that Hall discloses the fusing occurs by the high energy provided by the energy generator versus the platens (App. Br. 12, 15; Reply Br. 5-7) are unavailing, as the claims are all drawn to an apparatus which need only be capable of being operated at temperatures capable of fusing a drape to an agitator. The claims also use the open-ended language of “comprising”, and thus do not preclude the additional resistance heater energy generator of Hall. As the Examiner noted, the independent claims do not even specify the material of the drape or agitator, or the temperature (e.g., Ans. 13). The heated dies of Hall reasonably appear to be capable of operating at temperatures capable of fusing a drape to an agitator. Given the structural identity and similarity of the Hall’s platen die fusing apparatus, to Appellants’ apparatus as claimed and disclosed respectively, we determine that the Examiner was justified in concluding that Hall anticipates claim 1. The hot die welding press of Hall appears reasonably to have the capability of functioning as claimed. See, e.g., In re Schreiber, 128 F.3d at 1478. Thus, the burden shifts to Appellants to prove that the platen press of Hall is not capable of functioning as recited in claim 1. Id. Appellants have provided no evidence, or any persuasive line of technical reasoning explaining why the heated die press of Hall does not have the claimed capabilities (see generally App. Br.; Reply Br.). Thus, Appellants have not persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of anticipation as to claim 1. Appeal 2012-001197 Application 11/459,625 6 Appellants have also provided no persuasive argument to rebut the Examiner’s reasonable determination that it would have been obvious to use the press of Hall to fuse a surgical drape and disc, as Fairies exemplifies that it was known to use resistance or heat welding to fuse an agitator to a surgical drape (e.g., Ans. 9, 15; App. Br. 18-27; Reply Br. 9-12). We find no persuasive merit in Appellants’ argument that there is no reason to combine these references and that the references do not teach all the claimed features for reasons aptly stated by the Examiner (e.g., Ans. 15). In light of these circumstances, the preponderance of the evidence supports each of the Examiner’s rejections. Accordingly, we sustain each of the rejections of the claims on appeal. DECISION The decision of the Examiner is affirmed. 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). AFFIRMED sld Copy with citationCopy as parenthetical citation