Ex Parte Devinat et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11685876 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BENOIT DEVINAT, MICHAEL C. PEREIRA,
and PETRILLO BRECK
____________

Appeal 2011-005562
Application 11/685,876
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 3-12, and 14-18
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an emergency eyewash station (claims 1
and 3-11) and a dispensing structure for an emergency eyewash station
(claims 12 and 14-18). Claim 1 is representative and is reproduced in the
“Claims Appendix” of Appellants‟ Brief.
Appeal 2011-005562
Application 11/685,876

2

Claim 18 stands rejected as under 35 U.S.C. § 112, second paragraph.
Claims 1, 3, 9, 10, 12, 14, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Demeny.
1

Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Demeny and Campagna.
2

We affirm the rejection under 35 U.S.C. § 112, second paragraph; the
rejection of claims 1, 9, 10, 12, and 18 under 35 U.S.C. § 102(b); and the
rejection of claim 11 under 35 U.S.C. § 103. We reverse the rejection of
claims 3 and 14 under 35 U.S.C. § 102(b).

Definiteness:
ISSUE
Does claim 18 lack antecedent basis for the limitation a second
portion of said emergency eyewash station?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that “[c]laim 18 depends on claim 12, which recites
only an emergency eyewash system and does not define any structures
corresponding to a second or first portion” (Ans. 4).
FF 2. Examiner finds that “[t]here is insufficient antecedent basis” for the
limitation in claim 18 of “a second portion of said emergency eyewash
station” (id.).

1
Demeny et al., US 5,566,406, issued October 22, 1996.
2
Campagna et al., US 3,934,590, issued January 27, 1976.

Appeal 2011-005562
Application 11/685,876

3
ANALYSIS
Appellants do not dispute the merits of Examiner‟s rejection. Instead,
Appellants request that the Board (1) enter an amendment canceling the
word “second” from claim 18; or (2) sua sponte cancel claim 18 in its
entirety (Reply Br. 1-2). We decline Appellants‟ invitation to amend or
cancel claim 18.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
conclusion that Appellants‟ claim 18 lacks antecedent basis for the limitation
a second portion of said emergency eyewash station. The rejection of claim
18 under 35 U.S.C. § 112, second paragraph is affirmed.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Demeny teaches Appellants‟ claimed invention?
FACTUAL FINDINGS (FF)
FF 3. Examiner finds that Demeny teaches an eyewash station that
comprises, inter alia, a gasket that releasably seals the eyepiece in such a
manner that it prevents or allows fluid to dispense from the eyepiece (Ans.
6; Cf. Appellants‟ claim 1).
FF 4. Examiner reasons that Demeny‟s gasket reads on a membrane within
the scope of Appellants‟ claimed invention (id. at 8).
FF 5. Examiner finds that Demeny teaches a tab 84 that extends from a
pressure plate 76, which contacts a gasket 90 (id. at 4).
Appeal 2011-005562
Application 11/685,876

4
FF 6. Examiner finds that “the language „comprising‟ allows additional
elements and does not exclude other material” (id.).
FF 7. Examiner finds that Demeny‟s “grooves 36 form gripping structures,
and lock into corresponding slots 34 (col. 6, lines 11-30). This requires a
latching or hooking function, therefore Examiner interprets grooves 36 as
anticipating both the structure and function of the claimed hooks” (Ans. 9).
ANALYSIS
Claim 1:
Examiner finds that Demeny‟s gasket reasonably reads on the term
membrane as it appears in Appellants‟ claim 1 (FF 3-4). We are not
persuaded by Appellants‟ contention that a membrane is not a gasket
because the term “gasket” refers to a material that is “used to make a joint
fluid-tight” (Reply Br. 3; App. Br. 9-10). In the context of Appellants‟ claim
1, the term membrane is used to make a joint fluid-tight (see Appellants‟
Claim 1 (“An emergency eyewash station, comprising . . . a dispensing
structure having an eyepiece with a membrane sealing said eyepiece closed,
. . . whereby when said actuator arm assembly is moved from the closed
position to the open position said membrane is unsealed and the eyewash
fluid dispenses from said eyepiece)).
We are also not persuaded by Appellants‟ contention that the term
“gasket” cannot be interpreted as a “membrane,” which refers to a “thin
pliable sheet of material” (Reply Br. 3). Appellants fail to establish that
Demeny‟s gasket falls outside of the thickness requirements for the
membrane recited in Appellants‟ claims (see also Ans. 9).

Appeal 2011-005562
Application 11/685,876

5
Claims 3 and 14:
Claims 3 and 14 require, inter alia, a tab extending from a membrane
(Claims 3 and 14). Examiner finds that Demeny‟s tab 84 meets the
requirements of Appellants‟ tab extending from a membrane, because
Demeny‟s tab extends form an upper plate that contacts a gasket (Ans. 4; FF
5). In this regard, Examiner finds that “the language „comprising‟ allows
additional elements and does not exclude other material” (FF 6). While the
transitional phrase comprising may allow for additional elements and may
not exclude other materials, Examiner failed to explain how Demeny‟s tab
84, which extends from a plate would have reasonably been interpreted to
read on Appellants tab, which extends from a membrane (see Reply Br. 2).

Claim 18:
Examiner interprets Demeny‟s grooves 36 as hooks because they form
gripping structures and lock into corresponding slots 34, thereby
“anticipating both the structure and function of the claimed hooks” (FF 7).
Appellants contend that “[a] hook is not a groove” (App. Br. 10). Looking
past the words that Appellants and Demeny chose to characterize their
subject matter, it becomes unclear why Appellants would not agree that a
person of ordinary skill in this art would reasonably consider a structure that
performs the function of a hook to be a hook.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
finding that Demeny teaches the subject matter of Appellants‟ claims 1 and
18. Therefore, the rejection of claims 1 and 18 under 35 U.S.C. § 102(b) as
being anticipated by Demeny is affirmed. Claims 9, 10, and 12 are not
Appeal 2011-005562
Application 11/685,876

6
separately argued and fall together with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
The preponderance of evidence on this record fails to support
Examiner‟s finding that Demeny teaches the subject matter of Appellants‟
claims 3 and 14. Therefore, the rejection of claims 3 and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Demeny is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Examiner relies on Demeny as set forth above (Ans. 7).
FF 9. Examiner finds that Demeny fails to suggest a headrest (id.).
FF 10. Examiner relies on Campagna to suggest an eye droplet bottle
support comprising a headrest, which “positions a user‟s eye accurately
when dispensing eye drops, and prevents a user from impacting their eye
with a dispenser nozzle” (id.).
ANALYSIS
Based on the combination of Demeny and Campagna Examiner
concludes that, at the time of Appellants‟ claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to “modify
the invention of Demeny . . . with the headrest as taught by Campagna in
order to position a dispenser accurately and prevent user injury” (Ans. 8).
Appellants contend that “[a] user does not rest their head on
Campagna‟s support . . ., but the reverse, i.e. the support . . . is rested against
the user‟s head. Accordingly, Campagna is not a headrest” (App. Br. 11;
Appeal 2011-005562
Application 11/685,876

7
Reply Br. 4-5). We are not persuaded. To cut through the semantics, we use
the term “support” to refer to a headrest. Appellants‟ claim 11 depends from
and further limits the emergency eyewash station of claim 1 to require a
support (e.g., headrest) extending from the actuator arm assembly.
Campagna suggests an eye-wash device that makes use of a support to
accurately position the dispenser and prevent the user from contacting the
dispenser‟s nozzle (FF 10). Notwithstanding the word Campagna chose to
use in characterizing the subject matter, we find no error in Examiner‟s
conclusion that a person of ordinary skill in this art would have found it
prima facie obvious to incorporate Campagna‟s support (e.g., headrest) into
Demeny‟s eyewash station to properly position the user‟s eye and prevent
injury (Ans. 8).
Lastly, we are not persuaded by Appellants‟ unsupported contention
that there is no reason to believe that a person of ordinary skill in this art,
who is interested in building an eyewash station, would concern themselves
with other devices for administering fluid to the eye (App. Br. 11-12).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Demeny and Campagna is affirmed.

TIME PERIOD FOR RESPONSE
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
Appeal 2011-005562
Application 11/685,876

8
cdc