Ex Parte Dunn et al

Board of Patent Appeals and Interferences

Sep 20, 2010

11059235 (B.P.A.I. Sep. 20, 2010)

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.
11/059,235 02/16/2005 Steven B. Dunn MBI-1164DIV 5979
21302 7590 09/21/2010
KNOBLE, YOSHIDA & DUNLEAVY
EIGHT PENN CENTER
SUITE 1350, 1628 JOHN F KENNEDY BLVD
PHILADELPHIA, PA 19103
EXAMINER
SU, SUSAN SHAN
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/21/2010 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 STEVEN B. DUNN,
BRYCE FUJII, and KEVIN CLARK
____________

Appeal 2009-013364
Application 11/059,235
Technology Center 3700
____________

Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

Appeal 2009-013364
Application 11/059,235

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STATEMENT OF THE CASE
Steven B. Dunn, Bryce Fujii, and Kevin Clark (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims
41-46. Appellants cancelled claims 1-40 and 47-60. We have jurisdiction
under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a styptic applicator.
Claim 41, reproduced below with emphasis added, is representative of
the subject matter on appeal.
41. A styptic applicator for pets comprising:
a container with a chamber that is filled with
a styptic material;
a removable cap for said container;
an applicator device for applying the styptic
material wherein said applicator device has a
concave shape in order to hold said styptic.

The Rejections
The following Examiner’s rejection is before us for review:
Claims 41-46 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mouchmouchian (U.S. Patent No. 5,682,931, issued Nov. 4, 1997) in
view of Kosuge (Japanese Patent Application Publication No. JP 62-240621,
published Oct. 21, 1987)2.

2 A certified translation of Kosuge, a foreign language reference, has not
been provided to the Board. Rather, only an English Abstract has been
supplied by the Examiner. Since it appears that the Examiner has only relied
upon the English Abstract of Kosuge in the rejection of the claims, it is only
the English Abstract of Kosuge which forms the basis of our decision.
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Application 11/059,235

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SUMMARY OF DECISION
We REVERSE.

OPINION
Issue
The determinative issue in this appeal is:
Did the Examiner err in concluding that it would have been obvious to
one of ordinary skill in the art at the time the invention was made to modify
Mouchmouchian’s baby feeding bottle by filling it with Kosuge’s orally
administerable styptic to arrive at the present invention’s claimed styptic
applicator having a container with a chamber filled with a styptic material?
Analysis
Appellants contend that a prima facie case of obviousness has not
been established because “one of ordinary skill in the art would never have
combined the two references” (i.e., Mouchmouchian and Kosuge). App.
Br. 6. Appellants also contend that the combination of Mouchmouchian and
Kosuge is simply “a bizarre combination lacking any reasonable motivation
from either within the references or from the knowledge of one of ordinary
skill in the art.” App. Br. 6-7. Appellants further contend that “[t]here is
no teaching in any of the references to warrant such a combination.” App.
Br. 6. More particularly, Appellants contend that Mouchmouchian discloses
a baby feeding bottle, but that there is no teaching or suggestion in
Mouchmouchian that the baby bottle can be used to administer medicine
such as styptic. App. Br. 5. Appellants also contend that Kosuge discloses
a styptic which can be orally administered, but that given the provision of
dosage amounts (i.e., 3-6 mg/time), it appears that a device which is capable
Appeal 2009-013364
Application 11/059,235

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of measuring dosage should preferably be used. App. Br. 5. Finally,
Appellants also contend that the Examiner’s combination of
Mouchmouchian and Kosuge “is clearly an example of improper usage of
hindsight.” App. Br. 7.
The Examiner’s position is that Mouchmouchian teaches the invention
substantially as claimed, except that Mouchmouchian fails to disclose that
the applicator is filled with styptic. Ans. 4. Examiner also posits that
“Kosuge teaches a styptic to be administered orally to treat hemorrhaging”
and that “[t]his product can be orally administered to adults, young children
or infants.” Ans. 5. The Examiner concludes that “[a]t the time of the
invention, it would have been obvious to one of ordinary skill in the art to
fill the device of Mouchmouchian with the oral styptic of Kosuge in order to
provide a means of orally dispensing styptic for treating hemorrhaging.” Id.
Mouchmouchian discloses a baby feeding bottle 10 which includes a
squeezable baby bottle 16, a feeding structure 30, and a cup 50. Fig. 1. The
squeezable baby bottle 16 has a shoulder 28 and narrowed neck 20 at one
end thereof. Col. 3, ll. 25-26. The neck has interior threads 24 that are for
mating with exterior threads 14 on the neck of a baby food jar 12. Col. 3, ll.
15-17. Once the bottle 16 and jar 12 are threadingly connected to each
other, the pureed or finely chopped food in the jar 12 may be transferred
to the bottle 16 in order to feed the baby. Col. 2, l. 62 through col. 3, l. 3.
When the baby is to be fed, the jar 12 is removed and the feeding structure
30 is attached via mating the interior threads 34 of the hub 32 of the feeding
structure 30 and the exterior threads 18 on the neck 20 of the bottle 16. Col.
3, ll. 34-38. Integrally formed with the hub 32 of the feeding structure 30
is a tapered nozzle 36 having an interior passage 38 leading to a nozzle
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Application 11/059,235

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opening 40 and ultimately to a spoon bowl 44. Col. 3, ll. 38-56. Thus, the
pureed or finely chopped food in the bottle 16 is squeezed out into the spoon
bowl 44 to feed the baby. Id. The top of the spoon bowl 44 has a beaded or
rolled edge to limit the baby food from gushing out of the nozzle opening.
Col. 3, ll. 56-58. The cup 50 is slipped down over the hood 32 when the
baby feeding bottle 10 is not in use. Col. 3, l. 63 through col. 4, l. 3.
Kosuge discloses “[a] styptic useful as a remedy for pulmonary
hemorrhage, cerebral hemorrhage, purpura, etc.” English Abstract, ll. 1-2.
Kosuge also discloses that the styptic can be administered orally. English
Abstract, l. 8. If the styptic is administered orally, Kosuge discloses that the
preferred dosage is 3-6 mg/time. English Abstract, l. 9.
We agree with Appellants that one of ordinary skill in the art would
not combine the baby feeding bottle of Mouchmouchian with the styptic of
Kosuge to arrive at the claimed styptic applicator of the present invention.
The Examiner’s conclusion of “to provide a means of orally dispensing
styptic for treating hemorrhaging,” does not articulate sufficient reasoning
with some rational underpinning to support use of a baby feeding bottle as
an applicator to dispense styptic. Thus, absent hindsight, we see no reason,
and the Examiner has not provided an adequate articulation of a reason, why
a person of ordinary skill in the art would have been led to use the baby
feeding bottle of Mouchmouchian as an applicator for orally administering
the styptic for remedying hemorrhaging of Kosuge. This is particularly true
in view of the fact that Kosuge defines a specific dosage range to be used
(i.e., 3-6 mg/time) and the baby feeding bottle of Mouchmouchian has no
means by which to administer the dosage in the correct range.
Appeal 2009-013364
Application 11/059,235

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In view of the foregoing, the Examiner’s decision to reject claims 41-
46 under 35 U.S.C. § 103(a) as obvious over Mouchmouchian in view of
Kosuge cannot be sustained.

CONCLUSION
The Examiner erred in concluding that it would have been obvious to
one of ordinary skill in the art at the time the invention was made to combine
the baby feeding bottle of Mouchmouchian with the styptic of Kosuge to
arrive at the claimed styptic applicator of the present invention.

DECISION
The Examiner’s decision to reject claims 41-46 under 35 U.S.C.
§ 103(a) as obvious over Mouchmouchian in view of Kosuge is reversed.

REVERSED

JRG

KNOBLE, YOSHIDA & DUNLEAVY
EIGHT PENN CENTER
SUITE 1350, 1628 JOHN F. KENNEDY BLVD
PHILADELPHIA, PA 19103