Ex Parte Müller

Patent Trial and Appeal Board

Aug 27, 2018

12526200 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/526,200 08/06/2009
826 7590 08/29/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
RolfMtiller
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.
060077 /370130 4480
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF MULLER
Appeal2017-010735
Application 12/526,200
Technology Center 1700
Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010735
Application 12/526,200
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of pending claims 24--45. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
THE INVENTION
Appellant states that the invention relates to a receptacle for accepting
nutrient media, including nutrient solutions or nutrient substrates, the
receptacle including a dish and a cover, which engage one another to form a
more or less closed chamber. (Spec. 1, 11. 3-10.)
Claim 24, reproduced below, is illustrative of the claimed subject
matter ( emphasis added):
24. A receptacle for accepting nutrient media, said receptacle
compnsmg:
a dish and a cover, which closes the dish, the dish and the
cover each comprising a bottom ( dish bottom and cover
bottom), implemented in the form of a circular surface, and a
circular ring wall ( dish wall and cover wall), which protrudes
from the bottom, and one of the walls having an inner diameter
at least slightly larger than the outer diameter of the other wall,
so that one wall may be slipped over the other to close the dish;
engagement means, which prevent unintentional
detachment of the dish and the cover upon mutual engagement,
being assigned to the dish and the cover, and the engagement
means of the dish being implemented to at least partially
encompass or engage the engagement means of the cover,
wherein the engagement means of the cover or the dish
comprises a flange having two adjacent sides, with each side
having a wedge face of a different height or different inclination
than that of the other adjacent side, the two adjacent sides
1 According to the Appellant, the real party in interest is Heipha GmbH.
(Appeal Brief filed January 23, 2017, hereinafter "Appeal Br.," 1.)
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Application 12/526,200
intersecting at approximately half of the length of the flange, so
that the engagement means of the cover has a different
clamping and sealing force depending on which side of the
flange is engaged with the engagement means of the dish or the
cover, and wherein the engagement means are insertable via
constant sliding contact between the engagement means of the
cover relative to the engagement means of the dish from either
the left side or the right side of the flange.
( Appeal Brief, Claims Appendix 15.)
THE REJECTIONS
The Examiner rejected the claims as follows:
Claims 24--45 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement;
Claims 24--35 and 38--44 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Carski (US 3,158,553, issued November 24, 1964) (hereinafter
"Carski");
Claims 36 and 45 as obvious over Carski further in view of Ervin (US
5,021,351, issued June 4, 1991) (hereinafter "Ervin"); and
Claim 37 as obvious over Carski further in view of Bedingham et al.
(US 6,756,225 B2, issued June 29, 2004) (hereinafter "Bedingham").
(Non-Final Rejection, mailed October 21, 2016, (hereinafter "Office Act.")
2-19; Examiner's Answer, mailed June 15, 2017, (hereinafter "Ans.").)
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Application 12/526,200
Written Description
The Examiner found that three particular recitations in claim 24 lack
written description support, and as a result are indicative of new matter
added to the claim. (Office Act. 3-5.) We discuss the Examiner's findings
in tum.
"two adjacent sides intersecting at approximately half the length of the
flange"
The Examiner found that the recitation in claim 24 of "two adjacent
sides intersecting at approximately half the length of the flange" lacks
written description support in the originally filed Specification. (Office Act.
3.) In particular, the Examiner found that the originally filed Specification
does not make any reference to any specific length of any portion of the
engagement means and does not describe any intersection of adjacent sides
of a flange, and as a result the added claim limitation constitutes new matter.
(Id. at 3--4.)
Appellant contends that Figures 1, 3, and 4a depict flanges (7, 10),
each having a defined shape, which is relatively long and thin, and having a
defined length. (Appeal Br. 4--5.) Appellant also points to the Specification
for support, and in particular, page 4, lines 19-22, which describes the
engagement means of the cover as having wedge faces of different
inclinations insertable approximately halfway from both sides and having
different clamping and sealing actions. (Appeal Br. 5---6.)
We agree with Appellant. As pointed out by Appellant, the
Specification describes: "engagement means of the cover have wedge faces
of different heights and different inclinations, insertable approximately
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halfway from both sides having different clamping and sealing actions, so
that the engagement means of the cover are insertable from both sides with
different clamping and sealing actions." (Spec. 4, 11. 19--22.) In this regard,
the Specification describes the "engagement means" may be a "flange."
(Spec. 4, 11. 6-7, 8, 11. 9--15, Figs. 3a, 3b, 4a, 4b.) Accordingly, the
Specification provides sufficient written description support for the
recitation "two adjacent sides intersecting at approximately half of the length
of the flange:" in claim 24. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563---64 (Fed. Cir. 1991) (a patent applicant must "convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention." ( emphasis omitted)).
"engagement means are insertable via constant sliding contact"
The Examiner also found that the recitation in claim 24 that the
"engagement means are insertable via constant sliding contact ... " is not
supported by the Specification. (Office Act. 4.) The Examiner explained
that the Specification as originally filed does not make any mention of any
"' sliding contact"' between engagement means, and if the engagement
inherently requires some form of sliding contact, such contact need not be
constant, and as a result the added claim limitation constitutes new matter.
(Id.)
Appellant contends that the Specification discloses that the operation
of the receptacle involves rotating the cover relative to the dish, where the
engagement means of the dish "clamp" the engagement means of the cover,
and that one of ordinary skill in the art would understand this engagement
occurs through "constant sliding contact" between the engagement means of
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the cover and the dish. (Appeal Br. 6-7, citing Spec. p. 4, 11. 13-15 and 19-
22, and p. 8, 11. 9-12.)
We agree with Appellant. Initially, we observe that in haec verba
support for the claimed subject matter is not required in order to satisfy the
written description requirement, but rather the disclosure must convey with
reasonable clarity that the inventor was in possession of the invention.
Purdue Pharm. L.P. v. Paulding Inc., 230 F.3d 1320, 1323-24 (Fed. Cir.
2000). In the instant case, we are of the view that one of ordinary skill in the
art would have immediately understood that the Specification, by describing
that the engagement means of the cover and the dish having a "clamping and
sealing action[]" caused by, e.g., insertion of the engagement of the cover in
the engagement means of the dish, and rotation in relation to the dish,
provides written description support for the "constant sliding contact"
recited in claim 24. (Spec. 4, 11. 19-29.) Indeed, as the Specification makes
clear, the flanges have a shoulder, which is responsible for the retention and
clamping action when the engagement means, such as catch lugs are
inserted. (Spec. 8, 11. 9-17; Figs. 2b, 5a, 5b.) Therefore, one of ordinary
skill in the art would have understood that Appellant was in possession of
the "constant sliding contact" recited in the claims at the time the application
was filed.
"engagement means of the cover or the dish comprises a flange
having two adjacent sides, with each side having a wedge face of a different
height or different inclination"
The Examiner found that although claim 24 recites that the
engagement means of the cover or the dish comprises a flange with two
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adjacent sides, each side having wedge faces of different heights or
inclinations, the Specification does not provide support for such an
arrangement with respect to the dish. ( Office Act. 4--5.) The Examiner also
found that the Specification does not describe wedge faces of different
heights or inclinations on adjacent sides, and that this feature is not inherent,
and as a result the added claim limitations constitute new matter. (Id. at 5.)
Appellant argues that this limitation is supported by the Specification,
such that one of ordinary skill in the art would have understood that either
the cover or dish can contain the engagement means, and that the flange
would have two adjacent sides with each side having a wedge face of a
different height or inclination. (Appeal Br. 7-8, citing Spec. p. 3, 11. 1--4 and
14--21, p. 4, 11. 19-22.)
We agree with Appellant. In particular, the Specification describes
that "[i]t is only essential that engagement means are assigned to both the
dish and also the cover .... " (Spec. 3, 11. 1--4.) The Specification also
makes clear that the cover may overlap the dish or the dish may overlap the
cover such that one of ordinary skill in the art would have understood that
the wedge faces of different heights or inclinations could be on either the
dish or the cover. (Spec. 3, 11. 10-28.) With respect to a flange with two
adjacent sides, each side having wedge faces of different heights or
inclinations, we are of the view that the Specification provides support for
this limitation as further discussed above. (Spec. 4, 11. 19-29.)
In sum, we are persuaded by Appellant's arguments that the
Specification provides sufficient written description support for claim 24,
and as a result we reverse the Examiner's rejection of claims 24--45 under
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35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
Obviousness
Claims 24-35 and 38-44
The Examiner found that, inter alia, that Carski discloses engagement
means that prevent unintentional detachment of the dish and the cover upon
mutual engagement, where Carski discloses a cover comprising flange
having two adjacent sides each having a different height or inclination such
that the engagement means of the cover has a different clamping and sealing
force depending on which side of the flange is engaged with the engagement
means of the dish. ( Office Act. 6-7.)
Appellant contends that Carski does not disclose or render obvious to
include a different clamping or sealing force depending on which side of the
flange is engaged with the engagement means. (Appeal Br. 12.) Appellant
argues that Carski is designed to provide a vented or open condition and that
the only condition where the apparatus in Carski is sealed is when the
engagement means in Carski are not engaged. (Appeal Br. 12-13.)
Appellant argues that it would not have been obvious to have modified
Carski, because the engagement means is used to create an unsealed or open
condition. (Appeal Br. 13-14.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in finding that Carski discloses an engagement
means that "prevent[ s] unintentional detachment of the dish and the cover
upon mutual engagement" and where the engagement means contains all of
the structural limitations recited in claim 24?
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DISCUSSION
We are persuaded by Appellant's argument that Carski fails to
disclose the engagement means as recited in claim 24. That is, the Examiner
acknowledged in the Answer that "[t]here is no structure in Carski which
physically fuses the lid to the dish." (Ans. 11.) Appellant contends that the
Examiner's position is indicative that the engagement means of Carski does
not prevent unintentional detachment of the dish and the cover upon mutual
engagement as required by claim 24. (Reply Brief filed August 15, 2017,
hereinafter "Reply Br.," 5---6.)
We agree with Appellant on this point. Carski discloses an
arrangement where projections present on a dish engage with faces of the
wedge-shaped bodies present on a cover, where the projections enter notches
serving as a detent structure to maintain the cover in an elevated position
relative to the dish. (Col. 2, 11. 49--69; Figs. 2-5.) In this arrangement, and
consistent with the Examiner's position, the cover disclosed in Carski
appears to merely sit on top of the dish. (Figs. 4, 5.) We have not been
directed to any particular disclosure in Carski that would serve to prevent
unintentional detachment of the dish and the cover upon mutual engagement
as recited in claim 24.
Thus, although the Examiner relies on the different positions of the
projections in Carski relative to the wedge shaped bodies and notch detent
mechanism for the different clamping and sealing conditions recited in claim
1 (Ans. 14), Carski fails to disclose the limitation recited in claim 24 that the
engagement means prevents unintentional detachment of the dish as the
flange engagement means insertable via constant sliding contact.
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As a result, we reverse the Examiner's rejection of claim 24. Because
claims 25-35 and 38--44 depend from claim 24, we reverse the Examiner's
rejection of those claims as well.
Claims 3 6, 3 7, and 45
The Examiner's reliance on Ervin and Bedingham in order to reject
dependent claims 36, 37, and 45 do not remedy the deficiencies identified
above with respect to claim 24. Therefore, we reverse the Examiner's
rejections of these claims for the same reasons.
DECISION
The Examiner's rejections of claims 24--45 are reversed.
REVERSED
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