Ex Parte Heckenberger et al

Patent Trial and Appeal Board

Jul 22, 2016

13257849 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/257,849 11/15/2011
4743 7590 07/26/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Hans Heckenberger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30815/37712A 6618
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS HECKENBERGER, HANS-DIETER WIEK,
JOHANN STEMPFLE, BERND GUGEL, and HERBERT LOTT
Appeal2015-001633
Application 13/257 ,849
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 14 and 18. We have jurisdiction under 35 U.S.C. § 6.
Claim 14 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal 2015-001633
Application 13/257 ,849
14. A device for disinfecting, sterilizing and/or
maintaining medical instruments, comprising:
a connection unit;
a storage container connected to the connection unit, the
storage container containing a medium adapted to be utilized by
the device and having a circumferential constriction positioned
on an external surface of the storage container; and
an identification element positioned at a distance along a
longitudinal axis of the storage container, the identification
element engaging the circumferential constriction of the storage
container, and the distance of the identification element position
corresponding to a position of the circumferential constriction
along the longitudinal axis of the storage container;
wherein the position of the circumferential constriction at
least partly identifies the medium within the storage container
when the storage container is properly connected to the
connection unit.
Appellants (App. Br. 9) request review of the following rejections
from the Examiner's Final Action:
I. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable
over Mallett et al. (US 2008/0197059 Al, published August 21, 2008)
("Mallett").
II. Claim 18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Mallett and Peclat et al. (US 2004/0215157 Al, published October 28,
2004) ("Peclat").
OPINION
Prior Art Rejections
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Appeal 2015-001633
Application 13/257 ,849
Rejection I (claim 14)
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejection of claim 14
under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and add
the following for emphasis.
As a preliminary matter, our review of the Examiner's analysis
requires that the claims must first be construed to define the scope and
meaning of the subject matter before us on appeal. See Gechter v. Davidson,
116 F.3d 1454, 1457 (Fed. Cir. 1997). During prosecution before the
Examiner, the claim language should be given its broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account any definitions or
enlightenment contained in the written description of Appellants'
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
According to claim 14, the shape of the storage container partially
identifies the contents (medium) within the storage device. Further, the
claim language does not describe structure that transports the contents of the
storage container to perform a function of disinfecting, sterilizing or
maintaining medical instruments in the device. Therefore, we determine that
the subject matter of independent claim 14 is directed to an apparatus for
holding a storage container comprising a connection unit and an
identification element that engages the storage container.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 2--4.
Appellants argue Mallett does not teach a corresponding structure for
the identification element recited by claim 14 that, in conjunction with the
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Appeal 2015-001633
Application 13/257 ,849
storage container's circumferential constriction, at least partly identifies the
medium within the storage container when it is properly connected to the
connection unit of the device. App. Br. 10, 12. Appellants further argue
Mallett's identification element (keys) is positioned on top of the container
and not along the longitudinal axis of the container as recited by claim 14.
Id. at 12-14.
We are unpersuaded by these arguments. As noted by the Examiner,
Mallett discloses an apparatus for holding a storage container 80 comprising
a connector unit (container compartment shown holding the container 80)
and an identification element 104 that engages the storage container. Final
Act. 3; Mallett Figures 10, 13. While Mallett's Figure 13 depicts an
embodiment where the identification element is placed on top of the
container, we agree with the Examiner's finding that Mallett is not limited to
this embodiment as argued by Appellants. App. Br. 12; Ans. 4. Moreover,
Mallett also discloses the containers can include features for accurately
locating the container in a container compartment of a station and/or
identification information for informing a user of a container's contents (or
intended contents). Mallett i-f 202. This suggests that the container
compartment has an element that interacts with the container features to
ensure accurate placement of the container and identification of the
container contents. Among the features disclosed by Mallett are grooves,
keys, sensors, and other structures. Id. at i-fi-121, 207. Thus, we agree with
the Examiner's determination that Mallett provides adequate guidance for
one skilled in the art to use a container having grooves (constrictions), such
as the ones depicted in the container 80 of Mallett's Figure 10, to accurately
locate the container in a device and where the grooves interact with the
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Appeal 2015-001633
Application 13/257 ,849
device to identify the container's contents based on the shape of the
container. Ans. 3--4.
Appellants argue there is no suggestion that Mallett's liner includes a
medium that would be used for disinfecting, sterilizing, and/or maintaining
medical instruments. App. Br. 12. As set forth above the claimed subject
matter is directed to an apparatus for holding a storage container. An
apparatus must be distinguished from the prior art apparatus on the basis of
structure. Therefore, the patentability of an apparatus claim depends only on
the claimed structure, not on the use or purpose of that structure, Catalina
Marketing Int'!., Inc. v. Coo/savings.com Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F .2d 844,
848 (CCPA 1959); In re Gardiner, 171F.2d313, 315-16 (CCPA 1948).
Language in an apparatus claim directed to the function, operation, intent-of-
use, and materials upon which these apparatus components work that does
not structurally limit the apparatus components or patentably differentiate
the claimed apparatus from an otherwise identical prior art apparatus will not
support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344--45 (CCPA
1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963); In re Ludtke, 441 F.2d
660, 663--64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).
On this record, Appellants have not adequately distinguished the
claimed apparatus from the apparatus disclosed by Mallett.
Accordingly, we affirm the Examiner's prior art rejection of claim 14
for the reasons presented by the Examiner and given above.
Rejections II
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Appeal 2015-001633
Application 13/257 ,849
The Examiner separately rejected dependent claim 18 under 35 U.S.C.
§ 103(a) as unpatentable over Mallett in view of secondary reference Peclat.
Final Act. 4--5. In addressing this separate rejection, Appellants rely
primarily on the arguments presented when discussing Rejection I. App. Br.
1 7. Appellants did not substantially address or further distinguish the
respectively cited secondary reference based on the additional limitations of
the dependent claim. Id.
Accordingly, we sustain the Examiner's Rejection II for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 14 and 18 are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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