Ex Parte Hoefte et al

Patent Trial and Appeal Board

Mar 29, 2018

13274586 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/274,586 10/17/2011
27752 7590 04/02/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Paulus Antonius Augustinus Hoefte
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.
CM3571 7700
EXAMINER
WEISS, NICHOLAS J
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL US ANTONIUS AUGUSTINUS HOEFTE,
WOLFRAM BECK, and MIRANDA LAMBRIGTS
Appeal2016-001094 1
Application 13/274,5862
Technology Center 3700
Before MICHELLE R. OSINSKI, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, 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, 4, 5, and 7-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
April 29, 2015), and Reply Brief ("Reply Br.," filed October 30, 2015), the
Examiner's Answer ("Ans.," mailed October 7, 2015), and Final Office
Action ("Final Act.," mailed January 5, 2015).
2 Appellants identify "The Procter & Gamble Company of Cincinnati,
Ohio" as the real party in interest (Appeal Br. 3).
Appeal 2016-001094
Application 13/274,586
CLAIMED INVENTION
Appellants' claims relate generally "to an apparatus and means of
repeatedly dispensing controlled doses of liquid" (Spec. 1, 11. 4--5).
Claims 1, 1 7, and 19 are the independent claims on appeal. Claim 1,
reproduced, is illustrative of the subject matter on appeal:
1. A dosing apparatus for dispensing a dose of liquid
compnsmg:
(i) A resiliently squeezable container;
(ii) A cap operably connected to said container, said cap
comprising a nozzle, wherein said nozzle defines an orifice at its
apex;
(iii) A dosing chamber operably connected to said cap,
wherein said dosing chamber comprises a base having a
discharge opening therein, sidewalls extending upwardly along
the perimeter of said base and at least one inlet opening located
proximal said sidewalls;
(iv) At least one timer aperture located proximal to said
discharge opening;
(v) A plunger, provided in said dosing chamber and
moveable relative to said chamber so as to advance upon
squeezing of said container, up to a blocking position;
(vi) A valve retaining means located below said base;
(vii) A valve provided in said valve retaining means
wherein said valve is movable from an open position, allowing
liquid flow through said discharge opening, and a closed
position, where the valve blocks said discharge opening; wherein
the ratio of the total surface of said inlet openings and said timer
apertures is from 2 to 12, wherein the viscosity of said liquid is
from 1 to 600mPa•s (measured at lOs-1 at 20°C), wherein the
dosing apparatus dispenses a dose of liquid at a substantially
constant liquid output, wherein said base defines a first area and
a second area, said first area being demarcated by said sidewalls
and said second area defining the discharge opening, and wherein
said second area is located below said first area, and wherein said
at least one timer aperture is in the form of at least one slot
extending for a predetermined length from said discharge
opening towards the sidewalls through said base of said dosing
2
Appeal 2016-001094
Application 13/274,586
chamber, and said plunger comprises a ring-like protrusion
wherein said ring-like protrusion is capable of closing said at
least one slot and said discharge opening when resting onto said
base.
REJECTIONS
Claims 1, 4, 5, and 7-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Law (WO 2005/049477 A2, pub. June 2, 2005) and Wass
(US 4,811,871, iss. Mar. 14, 1989).
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Law, Wass, and Monson (US 5,602,091, iss. Feb. 11,
1997).
ANALYSIS
Independent claims 1 and 17, and dependent claims 4, 5, 7-16, and 18
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1 and 17 under 35 U.S.C. § 103(a) because
Law, upon which the Examiner relies, fails to disclose or suggest "wherein
the ratio of the total surface of said inlet openings and said timer apertures is
from 2 to 12," as required in-part by independent claims 1 and 17 (see
Appeal Br. 8-19; see also Reply Br. 2).
In the Final Action, the Examiner acknowledges that "Law does not
explicitly disclose that the ratio of the total surface of said inlet openings and
said timer apertures is from 2 to 12" (Final Act. 4), but finds
Figure 6 [of Law] clearly shows three small timer apertures (28;
page 11, 11. 17-20) and three larger inlet openings (23; page 10,
11. 6-9). This structure clearly reads on the claimed range of 2 to
12, and through Figure 6, appears to be around a ratio of 5.
(Id.). The Examiner also takes the position that it would be obvious to
change the ratio of the timer apertures to inlet openings because Law
identifies "that the size of the openings may change/be adjusted, depending
3
Appeal 2016-001094
Application 13/274,586
on a desired dose, rate of flow, and the viscosity of the fluid" (id. at 4--5
(citing Law, 13: 1---6, 14:3---6). The Examiner reasons that changing the ratio
would have been an obvious matter of design choice to make the
different portions of the total surface of the inlet openings and
the timer apertures of whatever relative sizes were desired, since
such a modification would have involved a mere change in the
proportions of components. A change in proportion is generally
recognized as being within the level of ordinary skill in the art.
(Id. at 5).
In response, Appellants argue that there are no dimensions disclosed
in Law, and as such, the Examiner cannot rely on Law to disclose that "the
ratio of the total surface of said inlet openings and said timer apertures is
from 2 to 12" (Appeal Br. 9-10). At the outset, we note the Examiner does
not respond to Appellants' arguments in the Examiner's Answer with
respect to this limitation. However, in the Final Action, the Examiner relied
solely on Figure 6 of Law as disclosing the argued ratio between the inlet
openings and the timer apertures as being in a range from 2 to 12 (see Final
Act. 4--5, 9). In this regard, the Examiner finds that the ratio of the "three
small timer apertures" and "three larger inlet openings," depicted in Figure
6, "appears to be around a ratio of 5" (id. at 4). Law, however, does not
disclose any ratio between the "three small timer apertures," referred to by
Law as "control openings 28" or "three larger inlet openings," referred to by
Law as "flow openings 23" (Law, 10:6-9; 11:17-20), nor does Law disclose
that any of its figures are drawn to scale. Thus, we would be required to
make certain assumptions regarding size, dimension, and relationship
between "control openings 28" and "flow openings 23" in order to determine
a ratio.
4
Appeal 2016-001094
Application 13/274,586
Although a drawing teaches all that it reasonably discloses and
suggests to a person of ordinary skill in the art, see, e.g., In re Aslanian, 590
F.2d 911, 914 (CCPA 1979), we cannot agree with the Examiner that
Figure 6 reasonably reflects "the ratio of the total surface of said inlet
openings and said timer apertures is from 2 to 12," as required in-part by
independent claims 1 and 17, because Figure 6 provides no basis to compare
the dimensions of "control openings 28" and "flow openings 23" to
determine whether Law depicts, and as such, reasonably discloses "the ratio
of the total surface of said inlet openings and said timer apertures is from 2
to 12," as required by independent claims 1 and 17. Although, Law
discloses an "at least one inlet opening" and "[a]t least one timer aperture,"
as required by independent claim 1 (see Final Act. 4 (citing Law, Fig. 2)),
Law does not provide additional information from which we can determine a
ratio, as required by independent claims 1 and 17. See Hockerson-
Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) ("[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue").
Appellants further argue that Law fails to disclose or suggest "the
ratio of the total surface of said inlet openings and said timer apertures is
from 2 to 12," as required in-part by independent claims 1 and 17, because
"Law simply teaches one may vary the opening size - but not the claimed
ratio-to adjust flow rate/dose." (Appeal Br. 10). More particularly,
Appellants argue that "[ o ]ne of skill would not know to adjust the Law
openings in such a specific manner as to obtain the claimed ratio" (id.). We
agree with Appellants.
5
Appeal 2016-001094
Application 13/274,586
Here, the Examiner finds that Law discloses that "the size of dose
dispensed can be adjusted by adjustment of the flow areas available through
the control openings 28 and the outlet flow openings 23, as well as the outlet
tube 44" (Law, 14:3---6), and based on this disclosure, concludes that "Law
provides the support to change the ratio of the timer apertures to inlet
openings" and that "it would have been an obvious matter of design choice
to make the different portions of the total surface of the inlet openings and
the timer apertures of whatever relative sizes were desired, since such a
modification would have involved a mere change in the proportions of
components" (Final Act. 5). However, as Appellants' point out, "[a]
teaching to make an adjustment in the opening size is not a teaching to have
the final result lie inside the claimed ratio" (Appeal Br. 10, FN 4).
Therefore, although, we agree with the Examiner that Law teaches adjusting
the size of control openings 28, outlet flow openings 23, and outlet tube 44
(see Law, 14:3-6) to alter dosage, we cannot agree with the Examiner that
Law provides a reason to do so while maintaining the claimed ratio.
We note that the Examiner does not respond to this argument in the
Examiner's Answer, and based on the record, we fail to see why it would
have been obvious to one of ordinary skill in the art at the time of the
invention for the reasons provided by the Examiner in the Final Action. The
Examiner, thus, fails to establish that Law alone, or in combination with
Wass, discloses or suggests "wherein the ratio of the total surface of said
inlet openings and said timer apertures is from 2 to 12," as required in-part
by independent claims 1 and 17. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968) ("The Patent Office has
the initial duty of supplying the factual basis for its rejection. It may not,
because it may doubt that the invention is patentable, resort to speculation,
6
Appeal 2016-001094
Application 13/274,586
unfounded assumptions or hindsight reconstruction to supply deficiencies in
its factual basis.").
The Examiner also takes the position that one of ordinary skill in the
art would modify Law's liquid dosing device "to make the different portions
of the total surface of the inlet openings and the timer apertures of whatever
relative sizes were desired" (Final Act. 5) because "[a] change in proportion
is generally recognized as being within the level of ordinary skill in the art"
(id.). This does not explain why one of ordinary skill in the art would have
been led to modify Law to achieve the claimed ratio. See Ex Parte
Levengood, 28 USPQ2d 1300 (BP AI 1998) (holding that because
modifications of the prior art to meet the claimed invention would have been
"well within the ordinary skill of the art at the time the claimed invention
was made" is not sufficient to establish a prima facie case of obviousness).
In the Final Action, the Examiner cites to In re Boesch, 617 F.2d 272 (CCPA
190) as support for finding that "discovering an optimum value of a result
effective variable involves only routine skill in the art" (Final Act. 10).
However, as Appellants point out, "the Examiner admits there are no
teachings in the art" and "the Examiner has not shown where the claimed
parameter of surf ace area ratio is taught in the art to be a result effective
variable" (Appeal Br. 12). Thus, we are persuaded by Appellants' argument
that the Examiner erred in relying on case law to bridge the gap between the
claimed ratio and the asserted combination of Law and Wass. See In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1and17 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 4, 5, 7-16,
and 18, which depend therefrom.
7
Appeal 2016-001094
Application 13/274,586
Independent claim 19 and dependent claim 20
Independent claim 19 also includes the limitation "wherein the ratio of
the total surface of said inlet openings and said timer apertures is from 2 to
12," as discussed above with respect to independent claim 1. The
Examiner's rejection of claims 19 and 20 under 35 U.S.C. § 103(a) based on
Monson, in combination with Law and Wass (Final Act. 7-8), does not cure
the deficiency, identified by Appellants, in the Examiner's rejection of
independent claim 19. Therefore, we do not sustain the Examiner's rejection
of independent claim 19 under 35 U.S.C. § 103(a) forthe same reasons set
forth above with respect to independent claims 1 and 1 7. For the same
reasons, we also do not sustain the Examiner's rejection of claim 20, which
depends therefrom.
DECISION
The Examiner's rejections of claims 1, 4, 5, and 7-20 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
8