BRAND GMBH + CO KG

Patent Trials and Appeals Board

Feb 16, 2022

2021002930 (P.T.A.B. Feb. 16, 2022)

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. 15/002,757 01/21/2016 Günter Hochholzer 740126-237 1044 25570 7590 02/16/2022 Roberts Calderon Safran & Cole, P.C. 7918 Jones Branch Drive Suite 500 McLean, VA 22102 EXAMINER STCLAIR, ANDREW D ART UNIT PAPER NUMBER 3799 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): docketing@rcsc-ip.com lgallaugher@rcsc-ip.com secretaries@rcsc-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GÜNTER HOCHHOLZER and MARKUS KURZ ____________ Appeal 2021-002930 Application 15/002,757 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals from the Examiner’s rejections of claims 20, 23-25, 27, 32, 34, 36, and 38 under 35 U.S.C. § 103. We REVERSE.2 1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “all of the joint inventors”). “The real party in interest is the assignee, Brand GmbH + Co KG.” (Appeal Br. 1.) 2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). A hearing was held on January 31, 2022. Appeal 2021-002930 Application 15/002,757 2 THE APPELLANT’S INVENTION The Appellant’s invention relates to a “bottle attachment apparatus for handling liquids” comprising a “valve block” and “valve insert[s]” that are “inserted in a replaceable and sealing manner” in assigned “receptacles” in the valve block. (Spec. ¶ 26.) “Bottle attachment apparatuses of this type are widely used in chemical, biological, and pharmaceutical laboratories and production facilities” (id. ¶ 3) for “precisely measuring and conveying liquids” (id. ¶ 2). The valve block and the valve inserts are “composed of plastics which are suitable for autoclaving” so that they can be “sterilized.” (Id. ¶ 22.) ILLUSTRATIVE CLAIM 20. A bottle attachment apparatus for handling liquids, comprising: a cylinder-and-piston assembly for suctioning and exhausting liquid, a valve block assembly, and a fastening assembly for fastening the valve block assembly on a storage bottle, wherein the valve block assembly has a valve block, an intake valve insert and an exhaust valve insert, wherein the valve block has an intake valve receptacle which is assigned to the intake valve insert, wherein the valve block has an exhaust valve receptacle which is assigned to the exhaust valve insert, wherein the intake valve insert is inserted in a replaceable and sealing manner in the intake valve receptacle, wherein the exhaust valve insert is inserted in a replaceable and sealing manner in the exhaust valve receptacle, Appeal 2021-002930 Application 15/002,757 3 wherein the valve block has an intake duct which leads to a cylinder of the cylinder-and piston assembly and connects the cylinder and the intake valve receptacle, wherein the valve block has an exhaust duct which leads to the cylinder of the cylinder-and-piston assembly and connects the cylinder and the exhaust valve receptacle, wherein the valve block and each valve insert, respectively, are composed of plastic that is able to be used in an autoclave at a temperature of 121° C, wherein each valve insert has a planar stop surface portion at an end face of the insert, a fastening portion which is separated from the stop surface portion by an integral sealing surface portion which is distinct from both the stop portion and the fastening portion, the integral sealing surface portion extending peripherally around the valve insert adjacent to the stop portion at the end face and being planar when viewed in longitudinal cross section, wherein each valve receptacle has a planar stop surface portion, a fastening portion, and a sealing surface portion matching the stop surface portion, fastening portion, and sealing surface portion of the respective valve insert, wherein the respective duct and the stop surface portion, sealing surface portion, and fastening portion of each valve receptacle are arranged successively in this order, and wherein the fastening portions of each valve insert and the respective valve receptacle, in an installed condition of the valve insert, are in force-transmitting mutual engagement with each other in such a manner that both the stop surface portions and the sealing surface portions are forced into direct full face- to-face-abutment on one another over the full surfaces thereof, the abutting surfaces of the stop surf ace extending in a planar manner perpendicular to the direction of the longitudinal axis and the sealing surface portions extending at an acute angle relative to a longitudinal axis of the insert. Appeal 2021-002930 Application 15/002,757 4 REJECTIONS The Examiner rejects claims 20, 23, 24, 27, 36, and 38 under 35 U.S.C. § 103 as unpatentable over Oshikubo3 and Reimert.4 (Final Act. 3.) The Examiner rejects claim 25 under 35 U.S.C. § 103 as unpatentable over Oshikubo, Reimert, Hintzer,5 and Viegener.6 (Final Act. 8.) The Examiner rejects claim 32 under 35 U.S.C. § 103 as unpatentable over Oshikubo, Reimert, and Blose7 or Eaton.8 (Final Act. 9.) The Examiner rejects claim 34 under 35 U.S.C. § 103 as unpatentable over Oshikubo, Reimert, and Williams.9 (Final Act. 10.) OBVIOUSNESS An obviousness rejection may be premised, when appropriate, on a combination of old elements taught collectively by two prior art references. (See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).) However, “[a] reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” (In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011.) “Two separate tests define the scope of analogous prior art.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004.) 3 US 4,306,670 issued December 22, 1981. 4 US 4,429,904, issued February 7, 1984. 5 US 2013/0172477 A1, published July 4, 2013. 6 US 2009/0123226 A1, published May 14, 2009. 7 US 3,224,799, issued December 21, 1965. 8 US 1,927,656, issued September 19, 1933. 9 US 2009/0160133 A1, published June 25, 2009. Appeal 2021-002930 Application 15/002,757 5 The first test is “whether the reference is “from the same field of endeavor, regardless of the problem addressed.” (Bigio, 381 F.3d at 1325.) This analogous-art test requires a determination of “the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (Id.) The second test is whether the reference (even though it “is not within the field of the inventor’s endeavor”) is “still is reasonably pertinent to the particular problem with which the inventor is involved.” (Bigio, 381 F.3d at 1325.) This analogous-art test requires the prior art reference to “logically have commended itself to an inventor’s problem when considering his problem.” (In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (cleaned up).) ANALYSIS The Examiner’s obviousness rejections are all based upon “a combination of old elements” taught collectively by Oshikubo and Reimert (Final Act. 7), and, therefore, both of these references must be analogous to the claimed invention. We are persuaded by the Appellant’s argument that the Examiner does not adequately establish that Reimert is analogous art. (See Appeal Br. 6; see also Reply Br. 2-3.) The claims on appeal are all drawn to a “bottle attachment apparatus for handling liquids.” (Appeal Br., Claims App.) As indicated above, such an apparatus is used in “chemical, biological, and pharmaceutical” settings (Spec. ¶ 3) for “precisely measuring and conveying liquids” (id. ¶ 2) via valve structures which need to be “sterilized” (id. ¶ 22). In this regard, the claims on appeal recite a “valve block assembly” and a “fastening assembly” Appeal 2021-002930 Application 15/002,757 6 for fastening the valve block assembly on a storage bottle. (Appeal Br., Claims App.) The valve block assembly has two “valve insert[s]” and a “valve block” with “receptacles” into which the valve inserts are “inserted in a replaceable and sealing manner.” (Id.) The valve inserts and the valve block “are composed of plastic that is able to be used in an autoclave.” (Id.) In contrast, Reimert’s invention relates “particularly to connectors for use on pipe and casing used in oil well drilling, or the like.” (Reimert c1:9-12.) Indeed, an “object” of Reimert’s invention is “to provide technique for connecting pipes such as casing, or the like, that is easier to make up under hostile conditions such as those encountered on floating drilling structures.” (Id. c1:52-56.)10 According to Reimert, “running casing” is “particularly difficult” on “off-shore floating platforms subject to be being buffeted by wave action” (id., Abstract) because the platform’s “motions” render the alignment of “screw-type connections very difficult” (id. c1:29-31). And “[n]o valves are involved” in Reimert’s connector assembly. (Reply Br. 3.) The Examiner maintains that Reimert “is from the same field of endeavor as the claimed invention.” (Answer 3.) The Examiner identifies the “field of endeavor” as “threaded connections for tubular members which convey fluids.” (Id.) However, the Specification makes clear that, to the extent that Appellant’s invention involves threaded connections between 10 When a hole is bored into the earth for the production of oil, “a large diameter pipe known as surface casing” is installed to “stabilize the walls of the borehole” in the upper section of the borehole. (Reimert c1:14-19.) If a hole is drilled in offshore waters, a “marine riser” is extended from the ocean floor to the deck of the drilling structure and “the riser is an extension of the surface casing.” (Id. c1:19-24.) Appeal 2021-002930 Application 15/002,757 7 fluid-conveying members, these connections are in the context of valving functions and structures. (See e.g., Spec. ¶¶ 26-28, 44, 49, 52-54.) Thus, insofar as the Appellant’s field of endeavor involves “threaded connections,” such connections are associated with valving structures which perform valving functions. (See Reply Br. 2.) And, although claim 1 of Reimert may recite “a connector assembly generically and without reference to oil pipes” (Answer 3), Reimert makes no mention of valving functions/ structures in the claims or elsewhere. The Examiner additionally or alternatively maintains that “Reimert is at least reasonably pertinent to the problem faced by the inventor.” (Answer 4.) The Examiner appears to acknowledge that problems faced by the inventor would involve valving structures/functions, as the Examiner identifies “the problem faced by the inventor” as allowing “‘the valve insert to be inserted into the valve receptacle in a particularly sensitive manner.’” (Id. at 4-5.) The trouble with the Examiner’s position is that the “particularly sensitive manner” referred to in the Specification (Spec. ¶ 49) pertains to how far a valve insert is inserted into its assigned receptacle, not its alignment therewith.11 And, again, Reimert makes no mention of valving functions/structures, much less the insertion thereof. (See Reply Br. 3.) 11 The claims on appeal require each valve insert to have a “fastening portion” and each valve receptacle to have a “fastening portion.” (Appeal Br., Claims App.) The Specification says that “[a] bayonet connection, a short-stroke clamping connection, or a stopper-type connection” are possible. (Spec. ¶ 49.) However, the Specification indicates that “mutually engaging screw thread portions” are preferable because they allow “the valve insert to be inserted into the valve receptacle in a particularly sensitive manner,” namely “up to the stop of the stop portions which is clearly perceivable during screwing-in, or up to a specific limiting force being readied or exceeded, respectively.” (Id.) Appeal 2021-002930 Application 15/002,757 8 Thus, the Examiner does not adequately establish, on the record before us, that Reimert is analogous art. As such, we cannot sustain the Examiner’s obviousness rejections. CONCLUSION Claims Rejected 35 U.S.C. Reference(s)/ Basis Affirmed Reversed 20, 23, 24, 27, 36, 38 103 Oshikubo, Reimert 20, 23, 24, 27, 36, 38 25 103 Oshikubo, Reimert, Hintzer, Viegener 25 32 103 Oshikubo, Reimert, Blose, Eaton 32 34 103 Oshikubo, Reimert, Williams 34 Overall Outcome 20, 23-25, 27, 32, 34, 36, 38 REVERSED