Ex Parte Peuker et al

Patent Trial and Appeal Board

Sep 25, 2017

13388235 (P.T.A.B. Sep. 25, 2017)

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
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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”).
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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?
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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.
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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
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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
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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.
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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
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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.
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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
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