10349572 (B.P.A.I. May. 30, 2012)

Ex Parte Gerondale

Board of Patent Appeals and InterferencesMay 30, 2012

10349572 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SCOTT J. GERONDALE ____________ Appeal 2009-013868 Application 10/349,572 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS and STEVEN D.A. McCARTHY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013868 Application 10/349,572 2 STATEMENT OF THE CASE Scott J. Gerondale (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-9, 13, 14, 17 and 18. Claims 10-12, 15 and 16 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention is directed to a controlled drop dispensing container. Independent claim 1, reproduced below, is illustrative: 1. A controlled drop dispensing container comprising: an aqueous ophthalmic liquid, a dispensing tip comprising: a. an inner orifice having a diameter sufficiently small to restrict the flow of a liquid to the desired rate, b. an outer orifice having a diameter larger than the inner orifice and sufficiently large to form a drop of a liquid of the desired size, and c. a means of coupling the inner orifice to the outer orifice such that a liquid can flow through the inner orifice to the outer orifice; and a laminate tube connected to the dispensing tip comprising: a. an outer polymeric layer, b. a middle barrier layer, c. an inner polymeric layer, and d. a shoulder connecting the laminate to the dispensing tip. THE REJECTIONS The Examiner has rejected claims 1, 2, 4-9, 13, 14, 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Boissay (US 6,000,578, Appeal 2009-013868 Application 10/349,572 3 issued Dec. 14, 1999) in view of Schaefer (US 4,685,591, issued Aug. 11, 1987). Claim 3 has been rejected as unpatentable over Boissay in view of Schaefer and Stull (US 2,874,881, issued Feb. 24, 1959). ISSUE Did the Examiner err in concluding that it would have been obvious to provide the Boissay container with a laminate structure as disclosed by Schaefer? ANALYSIS The Examiner found that Boissay discloses a drop dispensing container having all limitations set forth in independent claims 1 and 13, with the exception of the construction of a laminate tube having layers of the particular materials claimed. Ans. 3. The Examiner cites to Schaefer as disclosing a laminate tube having layers of materials corresponding to the claimed layers. Id. The Examiner reasoned that it would have been obvious to provide the Boissay container with a laminate structure of the type disclosed in Schaefer “in order to better prevent reactivity between the container and the dispensed substance.” Ans. 3-4. The Examiner attempts to buttress this reasoning and conclusion of obviousness by treating a statement made during prosecution by Appellant (see, Amendment and Reply Under 37 C.F.R. § 1.116 to Final Action, filed Feb. 25, 2005), to the effect that aqueous liquids are generally inert toward polyethylene, as an admission that there is some reactivity of aqueous materials and polyethylene. Ans. 4. Further, the Examiner regards information submitted by Appellant in a subsequent response (see, Amendment and Reply Under 37 C.F.R. § 1.116 to Final Action, filed May 9, 2005 (contemporaneously with the filing of a Request for Continued Appeal 2009-013868 Application 10/349,572 4 Examination)) as evidence that “it is clear that the aqueous solution seeps through the plastic, thus showing some reactivity.” Ans. 4-5. The Examiner then notes that Schaefer teaches the use of its multilayer laminate to provide an adequate vapor barrier, and notes that Schaefer is directed to preventing unwanted reactions between the container and the material contained therein. We do not regard Appellant’s statement directed to the general inertness of aqueous liquids toward polyethylene as an admission of some known reactivity between such materials. The Examiner’s position reads too much into Appellant’s use of the term “general.” Further, the additional information supplied by Appellant relates to Appellant’s own test results, not to knowledge that can be attributed to the person of ordinary skill in the art at the time the invention was made. The Examiner has failed to establish that reaction of, or evaporation of, aqueous ophthalmic liquids through container walls was recognized by persons of ordinary skill in the art as being a known problem. The Boissay patent is silent on this point. The Examiner’s reliance on Schaefer as teaching that the use of a foil layer to provide a vapor barrier in a plastic laminate used as a container is unavailing. Schaefer describes that plastic containers previously used for packaging cyanoacrylate adhesives, which are noted by Schaefer as being quite active chemically, did not provide an adequate vapor barrier. Schaefer, col. 1, ll. 5-15. Schaefer does not appear to be addressing, and the Examiner has not pointed to any portions of Schaefer that address, a problem with diffusion of water vapor through the container wall. With the Schaefer patent being directed to containing a cyanoacrylate adhesive, it would seem Appeal 2009-013868 Application 10/349,572 5 that the vapor containment problem would be with containing a vapor of that product. As such, we agree with Appellant that the Examiner has not provided an adequate factual basis supported by rational underpinnings in support of the conclusion that the subject matter of independent claims 1 and 13 would have been obvious in view of Boissay and Schaefer. The rejection of those claims, and that of claims 2, 4-9, 14, 17 and 18 depending therefrom is not sustained. The rejection of dependent claim 3 further relies on combining teachings of the Stull reference with the teachings of Boissay and Schaefer. The Stull patent is not relied on by the Examiner in any manner that would remedy the deficiency noted above with respect to the rejection based on the combination of Boissay and Schaefer. The rejection of claim 3 is thus not sustained. CONCLUSION The Examiner erred in concluding that it would have been obvious to provide the Boissay container with a laminate structure as disclosed by Schaefer. DECISION The rejection of claims 1-9, 13, 14, 17 and 18 is reversed. REVERSED Klh