Ex Parte Brinz et al

Board of Patent Appeals and Interferences

Jan 26, 2012

11435431 (B.P.A.I. Jan. 26, 2012)

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.
11/435,431 05/16/2006 Thomas Brinz 10191/4689 6319
26646 7590 01/27/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
EISENBERG, REBECCA E
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
01/27/2012 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 THOMAS BRINZ, JANE LEWIS,
MARKUS TIEFENBACHER, and THOMAS GEIGER
__________

Appeal 2010-007272
Application 11/435,431
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
metering element and device. The Patent Examiner rejected the claims as
anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

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Application 11/435,431

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STATEMENT OF THE CASE
Claims 1-11 are on appeal. Claims 1, 3, 6 and 9 are representative
and read as follows:
1. A metering element comprising:
a storage container open on one side for receiving the substances to be
metered; and
a plunger which is axially movable and reversibly seals an opening of
the storage container, and which has at least one centrally located metering
opening for metering the substances in the storage container, the plunger
including a separation device for particles.

3. The metering element according to claim 1, wherein the separation
device is designed as one of a screen, a magnet, and an annular gap.

6. The metering element according to claim 1, wherein the storage
container has a receptacle opposite the opening.

9. A metering device comprising a plurality of metering elements, each
of the metering elements including:
a storage container open on one side for receiving the substances to be
metered; and
a plunger which is axially movable and reversibly seals an opening of
the storage container, and which has at least one centrally located metering
opening for metering the substances in the storage container, the plunger
including a separation device for particles.

The Examiner rejected the claims as follows:
• claims 1, 3, 4, and 6 under 35 U.S.C. § 102(b) as anticipated by
Meyer;
1

• claim 2 under 35 U.S.C. § 103(a) as unpatentable over Meyer;
• claims 5, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over
Meyer and Hein;
2

1
US Patent No. 4,741,737 issued to Gabriel Meyer et al., May 3, 1988.
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Application 11/435,431

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• claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Meyer and McIntosh;
3

• claim 11 under 35 U.S.C. § 103(a) as unpatentable over Meyer,
McIntosh, and Beck.
4

ANTICIPATION
The Issues
The Examiner’s position is that Meyer disclosed a metering element
comprising:
a storage container (1) open on one side for receiving the
substances (22) to be metered; and a plunger (12) which is
axially movable and reversibly seals an opening of the storage
container, and which has at least one centrally located metering
opening (15) for metering the substances in the storage
container, the plunger including a separation device for
particles (fig. 2, Examiner's Interpretation, Col. 4 ln. 3-16, 26-
41, 63-68, Col. 5 ln. 16-20).

(Ans. 4.) Regarding claims 3 and 4, the Examiner further found that
Meyer’s separation device was designed as an annular gap wherein the
device is situated upstream from the metering opening. (Id. at 3-4.)
Regarding claim 6, the Examiner further found that Meyer’s metering
element comprised a storage container having a receptacle opposite the
opening. (Id. at 4.)

2
US Patent No. 3,722,512 issued to Gary L. Hein et al., Mar. 27, 1973.
3
Patent No. US 6,936,033 B2 issued to Kevin D. McIntosh et al., Aug. 30
2005.
4
US Patent No. 4,657,534 issued to Robert E. Beck et al., Apr. 14, 1987.

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Appellants contend that Meyer did not disclose “a plunger which is
axially movable and reversibly seals an opening of the storage container,” as
recited in claim 1. (App. Br. 5.) According to Appellants, Meyer’s ampoule
body 2 moves, while “tip 12, as well as stopper means 6 or stopper body 11,
are immobile.” (Id.)
Appellants additionally assert that Meyer did not disclose “a
separation device for particles,” as recited in claim 1, or disclose that such a
device was “designed as one of a screen, a magnet, and an annular gap,” as
recited in claim 3. (Id. at 4, 6.) Appellants assert that contrary to the
Examiner’s position, Meyer’s transverse branch 14 is not an annular gap but
rather “a conduit to pass liquid through.” (Id. at 6.) Specifically, Appellants
assert that Meyer explained “[t]he stopper means is provided with an internal
conduit having at least one transverse branch opening into a longitudinal
branch for communication of the interior of the ampoule body with a
needle.” (Id. at 4)(quoting Meyer col. 2, ll. 60-64, emphasis added).
Further, according to Appellants, Meyer had “no need for a separation
device since only one liquid is contained in the ampoule body and the object
of Meyer et al. is to inject, not to separate.” (Id. at 4.)
Regarding claim 6, Appellants additionally assert that Meyer did not
disclose that the storage container has “a receptacle opposite the opening.”
(Id. at 6.)
The issues are whether Meyer disclosed: (a) a plunger which is axially
movable and reversibly seals an opening of the storage container, (b) a
separation device designed as an annular gap, and (c) a receptacle opposite
the opening of the storage container.

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Findings of Fact
1. The Examiner’s findings regarding Meyer may be found at Ans. 3-4.
2. The Examiner annotated Figure 2 of Meyer, reproduced below, to
indicate: (a) a separation device designed as an annular gap 14; and (b) a
receptacle of the storage container 1 opposite the opening. (Ans. 8-9.)

Meyer Figure 2 depicts an axial section of an embodiment of the prefilled
ampoule-syringe of the invention, in which the stopper means 6 is in the
open injection position. (See Meyer col. 3, ll. 58-62.)
3. Meyer disclosed that its ampoule-syringe comprises an ampoule 1
provided with an ampoule body 2 and neck 3, which is provided with an
opening. (Id. at col. 4, ll. 3-11.)
4. Meyer disclosed that the stopper means 6 comprises the stopper body
11 and rod element 10 which is attached to the external capsule 7. (Id. at
col. 3, ll. 3-8.)
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5. Meyer disclosed that rod element 10 is provided with a tip 12 which
engages into a complementary shaped cavity 13 located centrally in the
stopper body 11. (Id. at col. 4, ll. 28-31.)
6. Meyer states that “[t]he stopper means is arranged for axial movement
within said [ampoule] neck from a closed storage position …. During this
axial movement the stopper means penetrates at least partly within the
ampoule body to an open injection position.” (Id. at col. 2, l. 64- col. 3, l. 2)
(emphasis added).
7. Meyer states, “the user pushes the ampoule 1 into the direction of the
external capsule 7. Since the stopper means is integral with or attached to
the capsule, the stopper body penetrates into the neck 3 in direction of the
ampoule body.” (Id. at col. 5, ll. 6-10.)
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Analysis
Plunger
After considering all the evidence and arguments, we conclude that
the preponderance of the evidence supports the Examiner’s finding that
Meyer disclosed a plunger which is axially movable and reversibly seals an
opening of the storage container. According to Appellants, Meyer did not
describe a plunger because Meyer’s “tip 12, as well as stopper means 6 [and]
stopper body 11, are immobile. Only ampoule body 2 moves.” (App. Br.
5.)
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More precisely, Meyer disclosed that a user “pushes” the ampoule 1
(which is provided with an ampoule body 2 and neck 3) into the direction of
the external capsule 7 and that “[s]ince the stopper means is integral with or
attached to the capsule, the stopper body penetrates into the neck 3 in
direction of the ampoule body.” (FF-3,7.) Meyer also expressly stated that
“[t]he stopper means is arranged for axial movement within said [ampoule]
neck from a closed storage position …. During this axial movement, the
stopper means penetrates at least partly within the ampoule body to an open
injection position.” (FF-6.) Thus, contrary to Appellants’ assertion,
Meyer’s stopper means and stopper body are not immobile.
Moreover, because tip 12 is provided on rod element 10 (FF-5) which
is part of stopper means 6 and is also attached to the capsule (FF-4) we find
it reasonable to expect tip 12 to axially move within the ampoule neck along
with stopper means 6. In other words, while a user pushes the ampoule, the
movement of the ampoule toward the capsule is relative to the movement of
stopper means, i.e., stopper body, rod element and tip, into the neck of the
ampoule body.
Separation Device
We also conclude that the preponderance of the evidence supports the
Examiner’s position (see Ans. 3-4, 8) that Meyer’s transverse branch 14
provided an annular gap capable of separating particles based on size.
According to Appellants, “Meyer et al. merely mention that transverse
branch 14 is a conduit to pass liquid through” without describing the element
as a separation device or more specifically as an annular gap. (App. Br. 6.)
However, as illustrated in Meyer’s figure 2, the opening, or gap, of the
transverse branch 14 is of a particular size, and is therefore inherently
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capable of functioning as a separation device for particles by limiting the
particles that pass through the opening based upon their size. See Perricone
v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005)
(“Inherency is not necessarily coterminous with knowledge of those ordinary
skill in the art. Artisans of ordinary skill may not recognize the inherent
characteristics or functioning of the prior art.”)
Receptacle
Appellants additionally assert that Meyer did not disclose that “the
storage container has a receptacle opposite the opening,” as recited in claim
6. (App. Br. 6.) According to the Examiner, Meyer’s ampoule 1 is the
storage container (Ans. 4) and the receptacle opposite the opening is “at the
bottom of the storage container,” as illustrated in the Examiner’s annotated
figure 2 of Meyer. (See Ans. 8-9.) However, the “bottom” of the storage
container represents the opening of the storage container rather than
“opposite the opening.” Consequently, we do not find that the
preponderance of the evidence supports the Examiner’s finding that Meyer
disclosed that its storage container has a receptacle opposite the opening.
Accordingly, we affirm the rejection of claims 1, 3, and 4, but reverse
the rejection of claim 6 as anticipated by Meyer.

OBVIOUSNESS
The Issues
Regarding the rejection of claim 2 as unpatentable over Meyer and the
rejection of claims 5, 7, and 8 as unpatentable over Meyer and Hein, the
Examiner found that “Meyer teaches the metering element according to
claim 1….” (Ans. 5-6.) The Examiner further found that the limitations
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recited in these dependent claims would have been obvious in view of the
ordinary skill in the art and/or in combination with teachings of the
combined reference(s). (Id.)
Regarding the rejection of claims 9 and 10 as unpatentable over
Meyer and McIntosh, and the rejection of claim 11 as unpatentable over
Meyer, McIntosh, and Beck, the Examiner found that Meyer taught a storage
container 1 open on one side for receiving the substances 22 to be metered; a
plunger 12 which is axially movable and reversibly seals an opening of the
storage container, and which has at least one centrally located metering
opening 15 for metering the substances in the storage container, the plunger
including a separation device for particles. (Id. at 6.)
The Examiner found that Meyer did not teach that the metering device
comprised “a plurality of elements,” as recited in claim 9, or that the storage
containers have substantially identical lengths and different diameters, as
recited in claim 10. (Id. at 6-7.) However, the Examiner found that these
deficiencies were cured by combination with McIntosh. (Id.)
Additionally, the Examiner found that the combination of Meyer and
McIntosh did not teach the metering device further comprising a device
adapted to at least one of synchronously vibrate, shake, and rotate the
plurality of metering elements, as recited in claim 11. (Id. at 7.) However,
the Examiner found that this deficiency was cured by combination with
Beck that taught shaking the plurality of metering elements. (Id. at 7-8.)
Appellants contend that claim 2, which depends from claim 1, is not
obvious over Meyer because Meyer did not disclose or suggest all of the
features of claim 1. (App. Br. 6.)
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Regarding the rejection of claims 5, 7, and 8 over the Meyer and Hein,
Appellants assert that Meyer did not disclose or suggest all of the features of
claim 1 and further that Hein is not relied upon for disclosing or suggesting
the features of claim 1, nor did so. (Id. at 7.)
Regarding the rejection of claims 9 and 10 over Meyer and McIntosh,
Appellants assert that Meyer did not disclose or suggest a separation device
for particles and McIntosh is not relied upon for suggesting this feature.
(Id.)
Regarding the rejection of claim 11 over Meyer, McIntosh and Beck,
Appellants assert that neither Meyer nor McIntosh suggest all the features of
claim 9 and that Beck did not cure this deficiency. (Id. at 8.)
The issues are whether the preponderance of the evidence supports the
Examiner’s finding that Meyer taught: (a) the elements of claim 1 upon
which claims 2, 5, 7, and 8 depend, and (b) a plunger including a separation
device for particles, as recited in claims 9-11.
Findings of Fact
8. The Examiner relies on Meyer as discussed above. (Ans. 3-4.)
Principles of Law
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim invalid under 35 U.S.C. § 103, because anticipation is the epitome of
obviousness. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002).
Analysis
Appellants contend that claims 2, 5, 7, and 8, which depend from
claim 1, are not obvious because Meyer did not disclose or suggest all of the
features of claim 1. (App. Br. 6-7.) However, as discussed supra, we have
found that Meyer disclosed each element of claim 1. Therefore, we are not
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persuaded by Appellants’ argument regarding these claims. See McDaniel,
293 F.3d at 1385.
Appellants contend that claims 9, 10, and 11 are not obvious because
Meyer did not disclose or suggest a separation device for particles. (App.
Br. 7-8.) However, we previously found that Meyer disclosed a plunger
including a separation device for particles. Therefore, we are not persuaded
by this argument.
Accordingly, we affirm the obviousness rejections of claims 2, 5, and
7-11.
CONCLUSIONS OF LAW
Meyer disclosed a plunger which is axially movable and reversibly
seals an opening of the storage container. Meyer disclosed a transverse
branch which was a separation device designed as an annular gap. Meyer
did not disclose that the storage container has a receptacle opposite the
opening.
The preponderance of the evidence supports the Examiner’s finding
that Meyer taught: (a) the elements of claim 1 upon which claims 2, 5, 7,
and 8 depend, and (b) a plunger including a separation device for particles,
as recited in claims 9-11.

SUMMARY
We affirm the rejection of claims 1, 3, and 4 under 35 U.S.C. § 102(b)
as anticipated by Meyer;
we reverse the rejection of claim 6 under 35 U.S.C. § 102(b) as
anticipated by Meyer;
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we affirm the rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Meyer;
we affirm the rejection of claims 5, 7, and 8 under 35 U.S.C. § 103(a)
as unpatentable over Meyer and Hein;
we affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Meyer and McIntosh;
we affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Meyer, McIntosh, and Beck.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc