Ex Parte Pritchard

Patent Trial and Appeal Board

Oct 31, 2016

13405688 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,688 02/27/2012
25693 7590 11/02/2016
ANDREWS KURTH KENYON LLP
1801 PAGE MILL ROAD
Suite 210
PALO ALTO, CA 94304-1216
FIRST NAMED INVENTOR
Michael PRITCHARD
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.
13300/23251 5175
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
uspto@kenyon.com
rlangner@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PRITCHARD
Appeal2014-008734
Application 13/405,688
Technology Center 1700
Before JACQUELINE WRIGHT BONILLA, GEORGE C. BEST and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant, Michael Pritchard, appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 2, 4---6, and 8-16. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
BACKGROUND
The subject matter involved in this appeal relates to methods of
dispensing a liquid which, according to Appellant, operate independently of
Appeal2014-008734
Application 13/405,688
the orientation of the dispensing device. Spec 26 (Abstract). 1 Claims 1 and
10 illustrate the subject matter on appeal and are reproduced from the
Claims Appendix of the Appeal Brief as follows:
1. A method of dispensing liquid from a fluid delivery
device comprising a single length of hollow hydrophilic tubular
membrane positioned within the fluid delivery device and a
spray head coupled to the dip tube, the dip tube having a wall
with pores that are sized as a function of viscosity of the liquid
being dispensed and a surface area of the tubular membrane, the
method comprising:
applying a pressure differential through the pores in the
wall of the hollow hydrophilic tubular membrane; and
passing liquid within the fluid delivery device through
the wall of the hollow hydrophilic tubular membrane and
thereby to the spray head,
wherein the membrane is sized to extend across
substantially a length of the fluid delivery device,
thereby enabling dispensing of the liquid substantially
independent of an orientation of the fluid delivery device.
10. A method of dispensing liquid from a fluid delivery
device comprising a dip tube consisting of a single hollow
hydrophilic tubular membrane positioned within the fluid
delivery device and a spray head coupled to the dip tube, the
dip tube having a wall with pores that are sized as a function of
viscosity of the liquid being dispensed and a surface area of the
tubular membrane, the method comprising:
applying a pressure differential through the pores in the
wall of the single hollow hydrophilic tubular membrane; and
passing liquid within the fluid delivery device through
the wall of the single hollow hydrophilic tubular membrane and
thereby to the spray head,
wherein the membrane is sized to extend across
substantially a length of the fluid delivery device, and
1 We cite to the Specification ("Spec.") filed Feb. 27, 2012; Final Office
Action ("Final Act.") dated Nov. 22, 2013; Examiner's Answer ("Ans.");
and Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
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Appeal2014-008734
Application 13/405,688
wherein the liquid can be dispensed substantially
independent of an orientation of the fluid delivery device.
REJECTIONS
The Examiner maintained the following grounds of rejection: 2
I. Claims 1, 2, 4---6 and 8-163 stand rejected under 35 U.S.C. § 112,
2d ,-r, as indefinite.
II. Claims 1, 4, 5, 6, 9, 10, 12-14 and 16 stand rejected under 35 U.S.C.
§ 102(b) or 103(a) as unpatentable overNohren. 4
III. Claims 1, 2, 4---6 and 8-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mir5 and Nohren.
DISCUSSION
I
With regard to Rejection I, the Examiner determined that Appellant's
recitation of "the dip tube" lacks antecedent basis in claim 1. Final Act. 2.
Particularly, claim 1 recites "a spray head coupled to the dip tube,"
(emphasis added). Appellant does not dispute that finding, but argues that
one of ordinary skill in the art would understand that the "dip tube" is the
hollow "tubular membrane" that also is recited in claim 1. App. Br. 11. The
problem with that argument is that claim 1 separately recites a "dip tube"
2 Ans. 2; Final Act. 2-7. Additional grounds of rejection under 35 U.S.C.
§ 112, 1st ,-r, were withdrawn. Ans. 2.
3 Appellant does not dispute the Examiner's corrected identification of
claims subject to this ground of rejection. Compare Reply Br. 3--4 with Ans.
5 (explaining that the Final Action mistakenly listed claim 11 rather than
claim 10 in the claims identified as subject to this ground of rejection).
4 US 2003/0164333 Al, published Sep. 4, 2003 ("Nohren").
5 US 2007/0151924 Al, published Jul. 5, 2007 ("Mir").
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Appeal2014-008734
Application 13/405,688
and a "tubular membrane," and defines features of the dip tube relative to
the tubular membrane. See claim 1 ("the dip tube having a wall with pores
that are sized as a function of ... a surface area of the tubular membrane").
Thus, Appellant's contention that the dip tube and the tubular membrane are
one and the same cannot be reconciled with the express language of the
claim. Because Appellant presents no alternative interpretation of claim 1
that would give definite meaning to the phrase, "the dip tube," we agree that
claim 1 is indefinite. Accordingly, we sustain Rejection I as applied to claim
1 and each of claims 2, 4---6, 8, and 9 depending therefrom.
Claim 10 recites "a dip tube consisting of a single hollow hydrophilic
tubular membrane" and therefore does not present the same defect found in
claim 1. Rejection I as applied to claim 10 was premised on a finding that
the recited tubular membrane requires an open end, like a straw, based on a
statement in the Specification that, "[i]n some embodiments, the membranes
are in the form of hollow tubes and simply replace the conventional
extraction straws found in prior art devices." Final Act. 2-3 (quoting Spec.
22). According to the Examiner, an open ended tubular membrane would
render the claim inoperable. Id. at 3. Irrespective of whether the claim
encompasses an open ended membrane or whether an open ended membrane
would be operable in the claimed method, we are persuaded by Appellant's
argument that "the specification does not state that the membrane is 'like' a
straw. The specification states that the membrane replaces a straw." App.
Br. 12. Thus, we agree that the indefiniteness rejection as applied to claim
10 was based on an incorrect interpretation of the claim premised on an
erroneous finding relative to the Specification. Accordingly, we do not
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Appeal2014-008734
Application 13/405,688
sustain Rejection I as applied to claim 10 and each of claims 11-16
depending therefrom.
II
With regard to Rejection II, the Examiner captions the rejection as
including an alternative ground under 35 U.S.C. § 103, but fails to present
any finding or reasoning relevant to an obviousness determination. See
Final Act. 5---6; Ans. 5-6. Thus, we review Rejection II solely under 35
U.S.C. § 102.
In support of the anticipation determination, the Examiner relied on
Nohren's Figures 1 and 4 and found that the carbon tube depicted in those
figures satisfied the claimed recitation of a "single tubular membrane."
Final Act. 5 ("Nohren teaches a method of filtering water using a container
with an internally extending filter of hollow porous carbon tube membrane
which forms the 'dip tube'."); Ans. 5---6 ("Claims were clearly and
specifically rejected over the carbon tube as the 'single tubular membrane'
and figures 1 and 4 as the embodiments considered."). However, as
Appellant correctly states, Reply Br. 3, Nohren's carbon filter is not a
membrane. Rather, Nohren identifies the relied upon carbon filter as a
"monolithic carbon pre-filter." Nohren at i-f 13. The Examiner's
characterization of such a monolithic carbon filter as a tubular membrane is
unsupported by the evidence of record.
For that reason, we do not sustain Rejection II.
III
With regard to Rejection III, the Examiner acknowledged that "Mir
does not explicitly teach a spray head." Final Act. 7. To bridge that gap
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Appeal2014-008734
Application 13/405,688
between ivlir and the claims on appeal, the Examiner stated that the outlet
port in Mir can be "made into a spray head, which would have been obvious
to one or ordinary skill, since applicant's invention is simply substituting a
hollow tube membrane for a straw or dip tube in a prior art device, such as
any spray bottles." Final Act. 7. Appellant argues that the Examiner failed
to articulate a reason why one of ordinary skill would "put a spray head
anywhere in the Mir device." App. Br. 19. We agree.
Mir discloses a method and apparatus for the filtration of biological
samples. Mir (Title). Particularly, Mir provides "sample preparation
membrane separation modules" for performing "single-pass tangential flow
filtration." Id. at i-f4. Particular applications involve "separation and
purification in the manufacture and research of biomolecules." Id. at i16.
The Examiner's sole reasoning for modifying Mir's biomolecule separation
device to include a spray head lacks any relation to Mir, and appears to be
based solely on Appellant's disclosure of a spray device. As such, we find
the Examiner's reasoning in support of the obviousness rejection to be
conclusory. For that reason, we do not sustain Rejection III.
DECISION
The Examiner's decision rejecting claims 1, 2, 4---6, 8, and 9 as
indefinite under 35 U.S.C. § 112, 2d ,-r, is affirmed.
The Examiner's decision rejecting claims 10-16 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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