Ex Parte Hansen

Patent Trial and Appeal Board

Jun 7, 2016

12449610 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/449,610 12/16/2009
513 7590 06/09/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Bernd Hansen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
55759 1535
EXAMINER
PANCHOLI, VISHAL J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND HANSEN
Appeal2014-005602
Application 12/449,610
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a
non-final rejection of claims 11-15 and 17-20. Appeal Br. 1. Claims 1-10
and 16 have been canceled. See Appellant's Amendment mailed September
12, 2012 and the Examiner's Index of Claims dated April 15, 2013. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to "a hermetically sealed ampule,
with a hollow receiving body for receiving a discharge medium and with a
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Application 12/449,610
discharge opening closed by a sealing part forming the head part of the
container." Spec. 1. 1 Claims 11 and 20 are independent. Independent claim
11 is illustrative of the claims on appeal and is reproduced below:
11. A hermetically sealed ampoule, comprising:
a hollow receiving body for containing a dispensing
medium;
an elongated connecting body extending from said
receiving body and having a connecting channel opening on one
end thereof on an interior of said receiving body and on an
opposite end thereof on a discharge opening, said connecting
channel being conically tapered toward said discharge opening,
said connecting body forming a dropper neck and extending
axially a predetermined length between said discharge opening
and said receiving body;
a head portion forming a container closure member and
detachably connected to said connecting body adjacent said
discharge opening by a separation point;
a first connecting tab extending from an end of said
receiving body remote from said discharge opening and having a
plate shaped body;
a second connecting tab extending from an end of said
head portion remote from said receiving body and having a plate
shaped body; and
lateral reinforcing strips extending from an end of said
receiving body adjacent said first connecting tab and
continuously along said receiving body and approximately one-
half said length of said connecting body.
REFERENCES RELIED ON BY THE EXAMINER
Hansen US 5,009,309 Apr. 23, 1991
Hoyt US 6,241,124 Bl June 5, 2001
Oliver US 2011/0196334 Al Aug. 11, 2011
1 Amended Specification dated September 12, 2012. Appellant's
Specification does not provide line or paragraph numbering, and
accordingly, reference will only be made to the page number.
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Application 12/449,610
THE REJECTIONS ON APPEAL
Claims 11-14 and 17-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oliver and Hoyt.
Claims 15 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oliver, Hoyt, and Hansen.
ANALYSIS
The rejection of claims 11-14 and 17-19 as unpatentable over
Oliver and Hoyt
Appellants address each of claims 11-14 and 17-19. Appeal Br. 5-11.
We do the same.
Claim 11
With respect to independent claim 11, the Examiner primarily relies
on the teachings of Oliver. Non-Final Act. 2--4. The Examiner also relies
on Hoyt for teaching "lateral reinforcing strips (figure 6) extending from an
end of a receiving body (vessel, item 12, figure 6) adjacent to a first
connecting tab (tab, item 18, figure 6) and continuously along the receiving
body and approximately one-half a length of a connecting body (neck, item
14, figure 6)." Non-Final Act. 4; Ans. 4; see also Ans. 9-11. The Examiner
concludes
It would have been obvious ... to have modified ... the ampoule
of Oliver as taught by Hoyt in order to provide increased strength
to the ampoule in the lateral direction and also to ensure that the
fluid sealed in the receiving body is secure against any damage
during general use of the device.
Non-Final Act. 4--5; Ans. 4--5.
Appellant disputes that Hoyt teaches lateral reinforcing strips that
extend as claimed to "approximately one-half said length of said connecting
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Application 12/449,610
body" because "that extension is not described in [Hoyt's] specification."
Appeal Br. 5. Appellant further contends, "the Examiner appears to be
improperly relying on the Hoyt patent drawings for these edge portions
extending to the neck half-way point. Determining proportions of features
in a patent drawing cannot be relied upon without support from the
specification." Appeal Br. 5; see also Reply Br. 2-3.
We disagree with Appellant's assertion regarding the use of patent
drawings because our reviewing court has provided instruction that drawings
can be used as prior art, without referring to the surrounding description, if
the prior art features are clearly disclosed in the drawings. See, e.g., In re
Wagner, 63 F.2d 987, 988 (CCPA 1933) ("While it is true that drawings
may not always be relied upon for anticipation of a later application, it is
also true that, if a drawing clearly suggests to one skilled in the art the way
in which the result sought is accomplished by a later applicant, it is
immaterial whether the prior patentee's showing was accidental or
intentional.") (internal citations omitted). 2 Here, the relied upon features of
the lateral reinforcing strips are clearly shown in the Hoyt drawings. See
Hoyt Fig. 6 (illustrating corresponding lateral reinforcing strips that extend
to a mid-region of corresponding connecting body 14). Accordingly, we can
discern no error by the Examiner in relying on the Hoyt drawings for
teaching reinforcing strips that extend to approximately one-half a length of
the connecting body, as claimed.
2 See also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) ("[W]e did not
mean that things patent drawings show clearly are to be disregarded.").
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Appellant further argues that the specification of Oliver does not
describe, and the drawings of Oliver do not illustrate, the claimed lateral
reinforcing strips. See Appeal Br. 5---6. Appellant is reminded that the
Examiner relies on Hoyt, and not Oliver, for teaching the claimed
reinforcing strips. Non-Final Act. 4. In this regard, Appellant improperly
addresses the references individually while ignoring that the rejection is
based on a combination of references. See Non-Final Act. 2-5. Appellant is
reminded, "[ n ]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellant also urges that the claimed reinforcing strips facilitate
insertion of the connecting body into the nasal passageway without
interference from the reinforcing strips. See Appeal Br. 6-7, 8; see also
Reply Br. 2. The ability to enable insertion of the claimed device into the
nasal passageway is neither a disclosed nor a claimed feature of Appellant's
invention. Accordingly, Appellant's "arguments fail from the outset because
... they are not based on limitations appearing in the claims." In re Self,
671F.2d1344, 1348(CCPA1982). Further, unclaimed features cannot
impart patentability. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998).
Appellant also argues that Oliver fails to disclose a second connecting
tab adjoining the closure member and formed by a plate shaped body to
provide a second handling aid. See Appeal Br. 7; see also Reply Br. 3.
Responsive thereto, the Examiner offers an annotated version of Fig. 1 of
Oliver at page 9 of the Answer, which is reproduced below.
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Application 12/449,610
Annotated Figure 1 depicts a hermetically sealed ampoule that
identifies those elements of the Oliver device the Examiner considers to
correspond to the features of Appellant's invention recited in independent
claim 11.
As seen in annotated Figure 1, the Examiner identifies a "second
connecting tab" at the top of the figure. Ans. 9; see also Non-Final Act. 3
(referencing item 60, Fig. 1 ). The Examiner further asserts that:
[F]igures 1 and 3 of Oliver [] demonstrate that tab 60 of Oliver
contains the structure of a second connecting tab that adjoins a
closure member and also is formed by a plate shaped body so as
to provide a second handling aid in combination with a
connecting body forming an elongated dropper. The side view
of the ampoule in figure 3 of Oliver clearly shows that the tab 60
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is formed by a plate shaped body while figure 1 shows that the
dispensing portion 3 0 acts as a connecting body and extends
axially a predetermined length between the discharge opening
and the receiving body.
Ans. 11. Furthermore, inspection of Appellant's Figures 1 and 2 reveals that
the second connecting tab 25 is integral with the sealing part 9 (or head
portion). Similar to Appellant's construction, Figures 1 and 3 of Oliver
reveal that Oliver's second connecting tab 60 is integral with a closure
member (or sealing part/head portion). We therefore concur with the
Examiner's findings concerning Figures 1 and 3 of Oliver, including the
Examiner's identification of a second plate shaped connecting tab adjoining
the closure member.
Appellant further argues, "there must be something in the teachings of
the cited patents to suggest or to provide a reason to one skilled in the art
that the claimed invention would be obvious." Appeal Br. 8 (emphasis in
original) (citing W. L. Gore & Associates. Inc. v. Garlock, Inc., 721 F.2d
1540, 1551 (Fed. Cir. 1983)). To the contrary, see KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007) ("The obviousness analysis cannot be
confined by a formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasis on the importance of published articles and
the explicit content of issued patents."). Thus, there need not be an explicit
suggestion in the prior art themselves for obviousness to lie. Moreover, "if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill." KSR, 550 U.S. at 417. Here, Hoyt teaches lateral
reinforcing strips extending from an end of a receiving body adjacent to a
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first connecting tab and continuously along the receiving body and
approximately one-half a length of a connecting body. See Hoyt Fig. 6. By
virtue of this construction and arrangement, the Examiner concludes that
such strips enhance the structural rigidity of the Hoyt ampoule. See Non-
Final Act. 4--5. As the Examiner observes: "one of ordinary skill in the art
would[] recognize this advantage and be able to modify [Oliver] to provide
reinforcement to the ampoule structure since increasing or reducing material
is an art-recognized way of manipulating the strength of components." See
Ans. 12; see also Non-Final Act. 5. Appellant is not persuasive of Examiner
error on this point nor does Appellant indicate that enhancing structural
rigidity in a similar manner would not work as intended if applied to the
Oliver ampoule.
Appellant additionally argues, "[t]he Examiner is using the
Examiner's knowledge of the invention, in hindsight, to conclude
improperly that one skilled in the art would have found it obvious to make
the proposed combinations and modifications." Appeal Br. 9. The
Examiner's rejection does not include knowledge gleaned only from the
Appellant's disclosure. Rather, for the reasons discussed above, the
rejection takes into account the teachings of Oliver and Hoyt, i.e.,
knowledge that was within the level of ordinary skill at the time the claimed
invention was made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ).
Appellant additionally argues that Hoyt is non-analogous art. See
Appeal Br. 9. We disagree. The Hoyt device, like the presently claimed
device, is a sealed ampoule for retaining and dispensing small quantities of
liquids. See Hoyt, Abstract; Figs. 1-8. Further, as the Examiner notes:
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"[t]he invention of Hoyt is also classified in the same USPC class as the
present application .... " See Ans. 13. For these reasons, it is apparent that
the Hoyt device is from the same field of endeavor as the present invention
and is thus, analogous art.
Based on the record presented, and for the foregoing reasons, we
sustain the Examiner's rejection of claim 11 as unpatentable over Oliver and
Hoyt.
Claims 12-14 and 17-19
Appellant separately argues in favor of the patentability of dependent
claims 12-14 and 17-19. See Appeal Br. 10-11. For each of these claims,
however, Appellant merely asserts that the additional limitation recited is not
disclosed.
Merely reciting the language of the claims and asserting that the cited
prior art references do not disclose each claim limitation is insufficient. See
37 C.F.R. § 41.37(c)(l)(iv) (2015) ("A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.").
Moreover, Appellant does not apprise us of error in the Examiner's
findings that the limitations of claims 12-14 and 17-19 are disclosed by
Oliver and Hoyt. See Non-Final Act. 2-5.
For the foregoing reasons, we sustain the Examiner's rejection of
claims 12-14 and 17-19 as unpatentable over Oliver and Hoyt.
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The rejection of claims 15 and 20 as unpatentable over Oliver,
Hoyt, and Hansen
Regarding claim 15, the Examiner finds that "Hansen teaches a
double chamber ampoule wherein the material thickness of the flanks is
approximately equal to the material thickness of the reinforcing strips
(figures 1 and 2)." Non-Final Act. 5. The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have formed an ampoule with
the flanks and the reinforcing strips being approximately equal
sized in material thickness in the device of Oliver as taught by
Hansen since it was known in the art to keep the material
thickness of the support strips as uniform as possible for cost
benefits and efficient manufacturing process.
Non-Final Act. 5---6.
In reply, Appellant contends, with regard to claim 15: "FIG. 3 shows
that the Oliver flanks, if any, have a different material thickness from any
reinforcing strips that may exist. The Hansen patent cited for this feature is
not in combination with a dropper." Appeal Br. 11.
Appellant acknowledges that it is Hansen and not Oliver that is cited
for the limitation set forth in claim 15. Appeal Br. 11. Hence, what Fig. 3
of Oliver may or may not show is immaterial to the present analysis. As for
Appellant's statement that the Hansen patent is not in combination with a
dropper, Appellant is reminded that claim 15 (and 20) of the present
application is directed toward "a hermetically sealed ampoule." Hansen
pertains to sealed ampoules (see Hansen, Abstract) and is thus, germane to
the claimed invention.
Significantly, Appellant does not apprise us of error in either the
Examiner's finding in Hansen that the material thickness of the flanks is
approximately equal to the material thickness of the reinforcing strips or in
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the Examiner's conclusion that it was known in the art to keep the material
thickness of the support strips as uniform as possible for cost benefits and
efficient manufacturing process. Non-Final Act. 5---6. Accordingly, since
the Examiner has articulated reasons based on rational underpinnings for
combining Hansen with Oliver and Hoyt, and since the Examiner's findings
and conclusions have not been shown to be in error by Appellant, we sustain
the Examiner's rejection of claim 15 as unpatentable over Oliver, Hoyt, and
Hansen.
As for claim 20, Appellant asserts that that claim "recites all of the
limitations of claims 11-15 and 17-18 as well as additional limitations that
clearly distinguish the Oliver publication as well as the other citations."
Appeal Br. 12. As noted above, Appellant does not apprise us of error in the
Examiner's rejection of claims 11-15, 1 7, and 18. Appellant also does not
identify any additional limitations in claim 20 that "clearly distinguish the
Oliver publication as well as the other citations." Appeal Br. 12.
Accordingly, based on the record presented, we sustain the Examiner's
rejection of claim 20 as unpatentable over Oliver, Hoyt, and Hansen.
DECISION
The Examiner's rejections of claims 11-15 and 17-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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