Ex Parte Hatton et al

Patent Trial and Appeal Board

Nov 30, 2018

14371003 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/371,003 07/08/2014 Jason D. Hatton
32116 7590 12/04/2018
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 1130
CHICAGO, IL 60661
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.
Ll\1S03072P00581US 5398
EXAMINER
NGO,LIENM
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
docketing@woodphillips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON D. HATTON and GREG L. COLE
Appeal2017---003519
Application 14/371,003 1
Technology Center 3700
Before CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8 and 10-25. Claim 9 is canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify AptarGroup, Inc. as the real party in interest. Appeal
Br. 1.
Appeal2017-003519
Application 14/371,003
ILLUSTRATIVE CLAIMS
Independent claims 1 and 14, reproduced below, are illustrative of the
claimed subject matter:
1. A slit valve (10) to selectively restrict the passage of a fluent
substance between an interior environment ( 17) and an
exterior environment (15), the valve (10) comprising:
a flexible, resilient head (12) centered on a central axis
(27) and extending laterally therefrom, the head (12) having:
an interior surface ( 16) to face an interior environment
(17), the interior surface (16) having one of a concave or
convex shape,
an exterior surface ( 14) to face an exterior
environment (15), the exterior surface (14) having the other
of a concave or convex shape, and confronting, openable
portions (30) to define a normally dosed orifice in an
unconstrained condition wherein the openable portions (30)
can move in a first direction to an open orifice configuration
and return in an opposite direction to a closed configuration;
an annular, peripheral attachment portion (19) spaced
laterally from the head (12); and
an annular, flexible, resilient, intermediate portion (20)
extending laterally from the head (12) to the peripheral
attachment portion (19), the intermediate portion (20)
having:
an interior surface (26) to face said interior
environment (17), and an exterior surface (24) to face said
exterior environment ( 15);
wherein the head (12) and the intermediate portion
(20) have a uniform material thickness T spacing the exterior
surfaces (14,24) from the interior surfaces (16,26), ·with T
being no greater than 0.020 inch; and
wherein the head (12) and the intermediate portion
(20) are formed from a film of material that has undergone a
permanent deformation to define the head (12) and the
intermediate portion (20).
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Application 14/371,003
14. A method for forming a slit valve (10) to selectively
restrict the passage of a fluent substance between an interior
environment (17) and an exterior environment (15), the
method comprising the steps of:
providing at least one layer of film material; and
permanently deforming the film material to define a
valve (10) for selectively restricting the passage of a fluent
substance between an interior environment ( 1 7) and an
exterior environment ( 15).
THE REJECTIONS
Claims 1--4, 10-16, and 19--25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view ofBilani et al. (US 5,390,805; iss.
Feb. 21, 1995). Final Act. 2--4.
Claims 1--4, 6, 7, 10-17, and 19--25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Bloom (US 8,608,034 B2; iss.
Dec. 17, 2013). Final Act. 4---6.
Claims 1-5 and 10-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of Stull et al. (US 7,152,763 B2; iss. Dec. 26,
2006). Final Act. 6-7.
Claims 1--4, 6, 8, 10-16, and 19--25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Mohary et al. (GB 2,331,069 A;
pub. May 12, 1999). Final Act. 7-8.
ANALYSIS
Claims 1-8 and 10-13
Independent claim 1 recites a valve that has a flexible, resilient head
and an intermediate portion, both of which are formed to have a uniform
thickness T of no greater than 0.020 inch. Appeal Br. 2-3. In the rejections
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Appeal2017-003519
Application 14/371,003
of claim 1, the Examiner finds that each reference discloses the limitations
of claim 1 except for the limitations requiring the head and intermediate
portion to have a uniform thickness T of no greater than 0.020 inch. Citing
In re Aller, 220 F.2d 454 (CCPA 1955), the Examiner states that it would
have been obvious to one of skill in the art to make the inventions of the
prior art with the claimed uniform thickness of no greater than 0.020 inch
"since it has been held that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art." Final Act. 4 (addressing Bilani), 5
(addressing Bloom), 7 (addressing Stull), 8 (addressing Mohary); see Aller,
220 F .2d at 827 ("where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation").
As noted by Appellants (see Appeal Br. 8), however, the principle
described in Aller regarding optimization of general principles disclosed in
the prior art "is limited to cases in which the optimized variable is a 'result-
effective variable."' In re Applied Materials, Inc., 692 F.3d 1289, 1294
(Fed. Cir. 2012) (explaining Aller and related cases). Because the Examiner
has not shown that the claimed thickness T is a result-effective variable, the
Examiner's reliance on Aller as a rationale to modify the cited references is
misplaced. Accordingly, we do not sustain the Examiner's rejections of
independent claim 1 nor the rejections of dependent claims 2-8 and 10-13,
which Appellants do not argue separately.
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Application 14/371,003
Claims 14--25
Independent claim 14 recites a method for forming a slit valve
comprising the steps of providing at least one layer of film material and
permanently deforming the film material to define a valve. See Appeal Br.
3. Appellants contend the Examiner erred in concluding that the subject
matter of claim 14 would have been obvious in view of the cited references
because, according to Appellants, none of the references discloses providing
a film material and permanently deforming the film material as claimed. See
Appeal Br. 9--10 ( addressing Bilani), 13 ( addressing Bloom), 16-18
(addressing Stull), 21-22 (addressing Mohary). Appellants further argue
that prior art disclosures of injection-molded valves teach away from
providing a film material and permanently deforming the film material as
claimed. Appeal Br. 9--10; Reply Br. 3--4 (arguing Bilani's reference to
another application that discloses an injection-molded valve teaches away
from the claimed invention).
For each of Bilani, Bloom, Stull, and Mohary, the examiner states that
the reference discloses "a slit valve comprising limitations substantially as
claimed; therefore, the slit valve is inherent or obvious to make from the step
as claimed." Ans. 9 (addressing Bilani), 10-11 (addressing Bloom), 12
(addressing Stull), 13-14 (addressing Mohary). The Examiner does not
support the finding of inherency with evidence or persuasive technical
reasoning to establish that it necessarily follows that the valves taught in
each reference were formed by a step of permanent deformation within the
scope of claim 14. In general, other than injection molding, the references
do not specify the process( es) by which the valves were to be formed, and
the Examiner does not provide adequate factual findings and rational
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Application 14/371,003
underpinnings to support the conclusion that it would have been obvious to
employ the claimed permanent deformation step with each of the processes
suggested by the cited references.
Accordingly, we do not sustain the Examiner's rejection of claim 14,
nor the Examiner's rejections of dependent claims 15-25, which depend
from claim 14.
DECISION
We reverse the Examiner's rejections of claims 1-8 and 10-25.
REVERSE
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