Ex Parte Gann et al

Board of Patent Appeals and Interferences

Jan 20, 2012

11651725 (B.P.A.I. Jan. 20, 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.
11/651,725 01/10/2007 Diana Lynne Gann 10639 2430
27752 7590 01/23/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/23/2012 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 DIANA LYNNE GANN, THOMAS WARD OSBORN III,
MARGARET HENDERSON HASSE,
and DEVIN WILLIAM BALDRIDGE
____________

Appeal 2010-010127
Application 11/651,725
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-17 (App. Br. 2).
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an applicator. Claim 1 is representative and
is reproduced in the “CLAIMS APPENDIX” of Appellants’ Brief (App. Br.
8).
Appeal 2010-010127
Application 11/651,725

2
Claims 1-7, 11-13, and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Scalise.1
Claims 1-10 and 14-17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Deike.2
We affirm.

The rejection over Scalise:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Scalise teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 3-4) and provide the following for emphasis.
FF 2. Scalise’s “invention relates to a suppository applicator; and, more
particularly, it relates to a suppository applicator for inserting a suppository
into a body cavity” (Scalise, col. 1, ll. 8-10).
FF 3. For clarity we reproduce Scalise’s figures 1 and 2 below:

1 Scalise, US 5,788,664, issued August 4, 1998.
2 Deike, US 1,127,201, issued February 2, 1915.
Appeal 2010-010127
Application 11/651,725

3
“FIG. 1 is a side cross-sectional view of a suppository applicator. FIG. 2 is a
perspective view of a tapered second flange of FIG. 1” (Scalise, col. 2, ll.
26-30; see generally Ans. 4).
ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Appellants contend that
In contrast to the indicator member of the present invention
comprising a hollow open ended first frustum, the second
flange 106 of Scalise . . . is closed ended. This is illustrated by
the bore wall 140 being depicted with dotted lines at the second
end 114 of the second flange 106. If the space between the wall
132 of the second flange 106 and the bore wall 140 . . . was
open, the lines illustrating the bore wall 140 would not be
dashed, which indicate[d] there’s a solid surface blocking the
bore wall 140 from view.

(App. Br. 5-6.) We are not persuaded.
Scalise’s Fig. 2 represents a frustum that has a hollow bore, bounded
by inner bore wall 140, that extends through the entire length of the frustum
(e.g., a hollow open ended frustrum) as required by Appellants’ Claim 1 (see
FF 3; see also Ans. 9). Appellants fail to provide persuasive evidence or
argument to compel an interpretation of the phrase “hollow open ended first
frustum” as it appears in Appellants’ claim 1, differently than as taught by
Scalise (see Ans. 9).
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Scalise teaches the claimed invention. The rejection
of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Scalise is
Appeal 2010-010127
Application 11/651,725

4
affirmed. Because they are not separately argued, claims 2-7, 11-13, and 16
fall together with claim 1.

The rejection over Deike:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Deike teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 4. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 6) and provide the following for emphasis.
FF 5. Deike’s “invention is primarily designed to supply a syringe to be
used as a douche” (Deike 1: 8-9).
FF 6. The Examiner finds that “Deike expressly teaches that the applicator
may be used for a vaginally administered medicine, such as an antiseptic”
(Ans. 10).
FF 7. For clarity we reproduce Deike’s figure 1 below:

Appeal 2010-010127
Application 11/651,725

5
“Figure 1 is a side view of a syringe embodying the invention,” wherein the
“insertion member includes barrel 7; plunger includes rod 1 . . . [; and] [a]n
indicator member D . . . [that] includ[es] part of a hollow open ended first
frustum” (Deike 1: 34-35; Ans. 6).
ANALYSIS
The claims were not separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative.
Appellants contend that “Deike discloses a syringe to be used as a
douche . . . . Therefore, Deike does not disclose an applicator” (App. Br. 6).
We are not persuaded. Deike’s device and Appellants’ claimed device “may
[both] be used for a vaginally administered medicine” (Ans. 10; see FF 8
and Appellants’ claim 16). Further, regardless of the intended use of
Deike’s device or the device set forth in Appellants’ claim 1, Appellants
provide no persuasive evidence or reasoning on this record to support a
conclusion that Deike fails to teach each and every structural element of the
device set forth in Appellants’ claim 1.
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Deike teaches the claimed invention. The rejection
of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Deike is
affirmed. Because they are not separately argued, claims 2-10 and 14-17 fall
together with claim 1.

Appeal 2010-010127
Application 11/651,725

6
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

cdc