Ex Parte Peuker et alDownload PDFPatent Trial and Appeal BoardSep 25, 201713388235 (P.T.A.B. Sep. 25, 2017) 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. 13/388,235 01/31/2012 Marc Peuker 65638US005 3904 32692 7590 09/27/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER NOBREGA, TATIANA L ART UNIT PAPER NUMBER 3776 NOTIFICATION DATE DELIVERY MODE 09/27/2017 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 MARC PEUKER and ANDREAS JOHANNES BOEHM Appeal 2016-005404 Application 13/3 88,23 51 Technology Center 3700 Before ULRIKE W. JENKS, TAWEN CHANG, and DAVID COTTA, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a device for dispensing dental material. The Examiner rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is the 3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota. Appeal Br. 3. Appeal 2016-005404 Application 13/388,235 STATEMENT OF THE CASE Claims 1,3, 6—9, 12, 13 and 16 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows: 1. Device for dispensing a dental material, comprising: a container for containing a dental material, the container having an outlet which is closed by a closure; a breakable seal connecting the closure and the container; a valve member; the device allowing for a relative movement between the valve member and the outlet between a storage position in which the outlet is closed and an operational position in which the outlet is open; wherein the valve member engages with the closure such that the relative movement between the valve member and the outlet also causes a relative movement between the closure and the outlet, whereby the seal is caused to break upon movement toward the operational position; wherein the valve member has a receptacle, and wherein in the storage position the closure covers the outlet and extends in a direction generally parallel to a longitudinal axis of the device from the container into the receptacle; wherein the receptacle has inner side walls which correspond in shape to outer side walls of the closure; wherein the closure is retained in the receptacle by friction; and wherein the device is adapted to capture the closure in the device in the operational position. Appeal Brief, Claims Appendix (emphasis added). During prosecution, the Examiner required that Appellants elect between “Species A: Figures 1—2b (valve rotates to open/close and rotation axis is transvers to the longitudinal axis), “Species B: Figures 3a—3b (valve is linearly displaced to open/close and translation axis is transvers to the longitudinal axis);” and “Species C: Figures 4a—6 (valve rotates to 2 Appeal 2016-005404 Application 13/388,235 open/close and rotation axis is parallel to the longitudinal axis).” Office Action 2—3, mailed March 15, 2013. In response, Appellants elected Species A, comprising the species of Figures 1—2b. Response to Restriction Requirement 2. We limit discussion and consideration to the elected species, and take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1461 (Bd. Pat. App. Int. 1987). The following grounds of rejection by the Examiner are before us on review:2 I. claims 1,3, and 6—9 under 35 U.S.C. § 103(a) as unpatentable over Porter3 and Taylor;4 and II. claims 1, 3, 6—9, 12, 13, and 16 under 35 U.S.C. § 103(a) as unpatentable over Broyles,5 Porter, and Taylor. 2 Appellants request rejoinder of claims 10, 11, and 14 that are drawn to the non-elected species. Appeal Br. 9. We note that the propriety of restriction requirements relates to petitionable subject matter under 37 C.F.R. § 1.181 and not to appealable subject matter. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). We also note that this Board does not “allow” claims and does not have jurisdiction to direct an Examiner to pass an application to issuance. Rather, this Board’s primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner. See Ex Parte Frye, 94 USPQ2d 1072, 1077 (BPAI 2010) citing 37 C.F.R. § 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.”). Accordingly, we do not rule on the rejoinder of claims 10, 11, and 14. 3 Porter, US 3,568,895, issued Mar. 9, 1971. 4 Taylor, US 2,317,420, issued Apr. 27, 1943. 5 Broyles et al., WO 2007/104037 A2, published Sept. 13, 2007 (“Broyles”). 3 Appeal 2016-005404 Application 13/388,235 Obviousness over Porter and Taylor The Examiner has rejected claims 1,3, and 6—9 under 35 U.S.C. § 103(a) as being unpatentable over Porter and Taylor; and claims 1, 3, 6—9, 12, 13, and 16 under 35 U.S.C. § 103(a) as unpatentable over Broyles, Porter, and Taylor. Since both of these rejections rely upon the teaching of Porter and Taylor, we will consider the rejections together. The Examiner finds that Porter meets all the claim limitations but acknowledges that “Porter does not disclose the closure is retained in the receptacle by a friction fit. As best shown in Figures 2 and 3[, reproduced in the Findings of Fact section below], the closure fits into the receptacle and is captured therein.” Ans. 3. The Examiner looks to Taylor for teaching a cover member that retains the closure after the seal is broken on the container, the Examiner finds that Taylor shows “the closure (15) is retained in the receptacle via a friction fit.” Ans. 3. The issue is: Does the preponderance of evidence of record support the Examiner’s conclusion that the references disclose a “closure [that] is retained in the receptacle by friction” as claimed? 4 Appeal 2016-005404 Application 13/388,235 Findings of Fact FF1. Porter discloses a dispenser with a cap. Figure 2, reproduced below, shows the cap in the closed position. Figure 2 shows a dispenser closure cap for a container. The outlet hole 31 of the insert 26 is sealed by means of the plug 52. The plug 52 is attached at its lower end at the periphery thereof as at y by a thin frangible connection. Thus with the plug 52 in place material cannot flow through the spout and sealing is not dependent on contact of the spherical base portion with the socket 30. The spherical base portion 46 of the spout 44 is formed with the recess 54 into which the plug 52 fits. The recess 54 is positioned in the base 46 so that when the spout 44 is in its lowermost or closed position as in FIG. 2, the plug 52 is in the recess 54. Porter 2: 36-45. 5 Appeal 2016-005404 Application 13/388,235 FF2. Porter’s Figure 3, reproduced below, shows the same cap in the open position. Figure 3 a dispenser closure cap for a container but with the spout moved to an open position and the frangible sealing member removed. When the spout 36 is initially pivoted from the [closed] position of FIG. 2 to that of FIG. 3 [open], the plug 52 is broken from its frangible connection upon the hole 31 by means of the wall of the recess 54 contacting and being forced against the plug. As the plug is severed, it is carried captive and away from the outlet hole 31 and within the recess 54 by the turning movement of the wall of the recess upon the plug. Porter 2: 65—70. FF3. Taylor discloses a container with a reclosure cap. “[A] container having a pouring or dispensing spout or nozzle fitted with a cap which is adapted to be used as a reclosure for the spout and has particular reference to a seal on the spout which is broken by a the removal of 6 Appeal 2016-005404 Application 13/388,235 the cap and which serves to indicate tampering with the container or its contents.” Taylor 1: 1—5. Taylor’s Figure 3, reproduced below, shows the cap after twisting off the cap and rupturing the seal 19. The “rupturing of the weakened wall section 19 which may only be done by forcing the cap and which is readily detected by the person opening the spout, constitutes- positive assurance that the seal has not been previously broken.” Taylor 2:19-23. Upon the breaking of the seal; when the cap 12 is unscrewed, the broken off sealing part 15 remains in place in the pocket 23 of the cap as shown in Fig. 3. The sealing part is thus confined in out-of-the-way position so that the cap may be readily screwed back onto the spout without any interference, to reclose the spout when only a portion of the contents of the container is desired to be dispensed at one time. Taylor 2:29-37 7 Appeal 2016-005404 Application 13/388,235 Principle of Law “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Analysis Appellants contend that the combination of references does not disclose all the elements claimed. Specifically, Appellants contend that the “form fit [of Taylor’s sealing part 15], in which one component physically obstructs another component by form or shape, is very different from a friction fit.” Appeal Br. 6; see also Reply Br. 26 (“discloses a retention by form fit, such that the sealing part 15 is retained inside the cap 12 solely because it includes a ledge 18 that is shaped to sit above shoulder 25 and therefore be retained in the cap 12” (emphasis removed)). Appellants contend that the Examiner’s reliance on the “in place” language is misplaced because “Taylor’s disclosure as a whole makes it clear how the seal is broken and how the sealing part 15 is retained in the cap 12.” Reply Br 2. On this record, we find that Appellants have the better position. Here, Porter teaches that closure 52 “fits into the receptacle and is captured therein,” the reference does not further explain how the closure is captured. Ans. 3; see FF2. The Examiner acknowledged that “Porter does not disclose [that] the closure is retained in the receptacle by a friction fit.” Ans. 3; see 6 Appellants Reply Brief is not paginated, therefore page numbers refer to the document as if it were consecutively paginated beginning on the first page. 8 Appeal 2016-005404 Application 13/388,235 FF1 and FF2. Thus, the limitation retained by friction must be taught in Taylor. The Specification does not provide a specific definition of what is encompassed by the claimed phrase “retained ... by friction” but it does provide an example that “the receptacle and the closure may be generally cylindrical and sized to fit, for example tightly fit, with one another. Thus the closure may be retained in the receptacle by friction. This may provide for capturing the closure in the device in the operational position.” Spec. 4: 13—16. “Retained by friction,” therefore, is reasonably interpreted to mean that two components fit together tightly. Taylor teaches a container with a spout and enclosure cap that contains a seal. See FF3. “Upon the breaking of the seal; when the cap 12 is unscrewed, the broken off sealing part 15 remains in place in the pocket 23 of the cap as shown in Fig. 3.” FF3. Taylor teaches that “[ijmmediately adjacent the sealing part 15 the spout 11 is formed with an annular recess 17 which sets off an overhanging flange or ledge 18 on the sealing part.” Taylor 2: 23—26. Taylor teaches that the cap contains a shoulder and “[t]his shoulder extends into the spout recess 11 and engages under the ledge 18 of the sealing part 15.” Taylor 2: 53—55; see FF3 (element 25). “The sealing part [15] is thus confined in out-of-the-way position so that the cap may be readily screwed back onto the spout without any interference,” Taylor 3: 32— 35; see FF3. We agree with Appellants that Taylor discloses that the sealing part 15 contains a ledge 18 that engages with the shoulder 25 of that cap and thereby prevents the sealing part from leaving pocket 23. See FF3. We understand that the sealing part 15 and the shoulder 25 could reasonably rub 9 Appeal 2016-005404 Application 13/388,235 against each other and experience friction between the two surfaces. What is missing from the Examiner’s analysis is evidence that one of ordinary skill in the art would have reasonably understood this type of friction between the sealing part and the shoulder to meet the limitation of “retained by friction” as understood in light of the Specification. Here, Taylor is silent with respect to the fit between the sealing part 15, ledge 18, and shoulder 25; all we can say is that shoulder 25 is sized such that lip 18 makes contact to prevent sealing part 15 from falling out of the pocket. See FF3. However, to prevent the sealing part 15 from falling out of the pocket 23 does not necessarily require a tight fit between the components. The Examiner has not explained why, based on the teachings, one of ordinary skill in the art would have made this a tight fit to meet the claim limitation of “retained by friction.” Because the Examiner has not provided evidence showing that the disputed limitation “wherein the closure is retained in the receptacle by friction” is disclosed by Taylor as understood in light of the Specification, and has not provided a sound basis for concluding that it would nonetheless have been obvious, we reverse the rejection of all claims as obvious based on the combination of Porter and Taylor. 10 Appeal 2016-005404 Application 13/388,235 SUMMARY We reverse the rejection of claims 1, 3, and 6—9 under 35 U.S.C. § 103(a) over Porter and Taylor. We reverse the rejection of claims 1,3, 6—9, 12, 13, and 16 under 35 U.S.C. § 103(a) over Broyles, Porter, and Taylor. REVERSED 11 Copy with citationCopy as parenthetical citation