Ex Parte Lee et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10890748 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT LEE, MARC PEUKER, AMO HOHMANN,
JOHN W. DUBBE, and TOMAS L. FRIDINGER
____________

Appeal 2010-004662
Application 10/890,748
Technology Center 3700
____________

Before STEFAN STAICOVICI, PHILLIP J. KAUFFMAN and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20. Claims 21-28 have been cancelled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-004662
Application 10/890,748

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REJECTIONS
Claims 1-3, 5, 11, 12, 15-17, and 20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Peuker (DE 100 47 679 A1, pub. Apr. 18,
2002)1. Ans. 3.
Claim 10 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Peuker. Ans. 4.
Claims 4, 6, and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peuker and Kalvelage (US 5,791,478, iss. Aug. 11, 1998).
Ans. 5.
Claims 6, 8, 9, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Peuker and Official Notice. Ans. 6.
Claims 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Peuker. Ans. 7.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peuker and Hamilton (US 5,613,609, iss. Mar. 25, 1997).
Ans. 7.

CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent claims.2 Claim 13 is illustrative of
the subject matter on appeal, and with emphasis added, recites:

1 The Appellants treat PCT Publication WO 01/85569 as an English
translation equivalent of Peuker. App. Br. 2-3. The Examiner and the
Appellants both cite to Peuker '077 (US 2004/0029077 A1, pub. Feb. 12,
2004) as a substitute for a translation of Peuker '679. See Ans. 3, Reply Br.
1.
2 The Appellants mischaracterize claim 16 as an independent claim. App.
Br. 4, 5, Reply Br. 2.
Appeal 2010-004662
Application 10/890,748

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13. A device for storing and mixing a plurality of
paste components, comprising:
a base plate having an upper paste mixing
surface having first and second spaced apart paste
holding areas thereon;
a first non-self-leveling paste adhered on the
first paste holding area, and a second non-self-
leveling paste adhered on a second paste holding
area; and
a cover extending over the first and second
paste areas in non-contact relation to the pastes,
the cover being removably hermetically sealed to
the upper mixing surface around the first and
second pastes to provide a single paste chamber
extending over the first and second paste holding
areas and their respective pastes.

Claim 1 recites a device for storing and mixing a plurality of paste
components, including “a first cover extending over the first paste area in
non-contact relation to the first paste, the first cover removably hermetically
sealed to the upper mixing surface around the first paste” and “a second
cover extending over the second paste area in non-contact relation to the
second paste, the second cover removably hermetically sealed to the upper
mixing surface around the second paste.” (Emphasis Added).

OPINION
Independent claim 1 calls for the first and second covers to extend
over their respective paste areas in a non-contact relation. Likewise,
independent claim 13 calls for the cover to extend over the first and second
paste areas in non-contact relationship.
Peuker discloses a device for storing and mixing pasty materials, for
example, dental filler materials. Peuker '077, Abstract. Further, Peuker
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Application 10/890,748

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discloses a base film 1 and a cover film 2 sealed in a peelable manner
forming chambers 7 and 8 containing pre-dosed substances 9, 10. See Id. at
paras. [0013], [0107], [0109], figs. 1, 3. After films 1 and 2 are separated
the pre-dosed substances are exposed for mixing. See Id. at paras. [0027],
[0108]-[0110], fig. 4. Peuker also discloses that the cover film can include
an anti-adhesion coating so that when the cover film is peeled off, the
substances can remain on the base film. Id. at paras. [0093], [0094].
The Examiner finds Peuker’s cover film extends over paste areas in a
non-contact relation to a first and second paste (substances 9, 10). See Ans.
3-4, 7-8. More specifically, the Examiner finds that the pastes do not
contact “the cover because the cover can be coated with anti-adhesion
means.” Ans. 4.
The Appellants persuasively contend Peuker’s disclosure of an anti-
adhesion means “is not separate from the cover film – it is a component of
the cover film.” Reply Br. 2. The Appellants correctly contend that the anti-
adhesion means is a component of the cover film, and anything in contact
with the anti-adhesion means is also in contact with the cover. Reply Br. 2.
The Appellants also correctly point out that Peuker’s Figure 3 depicts the
paste contacting the base film 1 and the cover film 2. Reply Br. 1.
Moreover, Peuker’s Specification does not explicitly state that the
substances in the chambers do not touch either the base film or the cover
film; and, the use of anti-adhesion coatings or treatments, which prevent
substances from sticking to the cover film, supports the Appellants’ position
that the substances are in contact with the cover film. See Reply Br. 1-2. As
such, the Examiner’s finding that Peuker’s cover extends over paste areas in
a non-contact relation to first and second pastes lacks adequate support.
Appeal 2010-004662
Application 10/890,748

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Thus the rejection of claim 1 and claims 2, 3, 5, 11, 12, 15-17, and 20,
as anticipated by Peuker, is not sustained.
The remaining rejections based on Peuker alone or in combination
with Kalvelage, Official Notice, or Hamilton rely on the same erroneous
finding regarding Peuker’s cover extending over paste areas in a non-contact
relation to first and second pastes. Thus, we cannot sustain the rejections of:
claim 10 as anticipated by or, in the alternative, as obvious over Peuker;
claims 4, 6, and 7 as unpatentable over Peuker and Kalvelage; claims 6, 8, 9,
18, and 19 as being unpatentable over Peuker and Official Notice; claim 9 as
being unpatentable over Peuker; and claims 13 and 14 as being unpatentable
over Peuker and Hamilton.

DECISION
We REVERSE the rejections of claims 1-20.

REVERSED

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