Ex Parte Reinprecht

Patent Trial and Appeal Board

Aug 30, 2016

11789399 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111789,399 0412412007
50855 7590 09/01/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Jon Reinprecht
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.
H-US-00619 (203-5386) 8208
EXAMINER
SOOHOO, TONY GLEN
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON REINPRECHT 1
Appeal2015-004099
Application 11/789,399
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection2 of
claims 1 through 4, 6 through 13, 15 through 20, and 22 through 28. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant's invention is generally directed to a system for
homogenizing two or more solutions, and to an applicator assembly for
mixing two or more solutions. App. Br. 2. Claims 1 and 13 illustrate the
1 According to Appellant, the real party in interest is Covidien LP. App. Br.
1.
2 Final Office Action entered May 14, 2014 ("Final Act.").
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Application 11/789,399
subject matter on appeal and are reproduced below:
1. A system for homogenizing two or more solutions, the
system comprising:
at least a first and a second source of solution;
a hand held homogenizer having a homogenizing
assembly;
an applicator assembly configured to fluidly
communicate the at least first and second sources of solution
with the homogenizing assembly, wherein solution from each
of the at least first and second sources of solution is mixed by
the homogenizing assembly upon dispensing of the solution
from the first and second sources of solution, wherein the
homogenizer includes a motor configured to rotates [sic] a
mixing assembly within the homogenizing assembly from about
1, 000 to about 3 5, 000 RPM; and
a handle assembly operably connected to the applicator
assembly for engagement by a clinician during a surgical
procedure and for selectively positioning an outlet of the
applicator assembly relative to a patient during the surgical
procedure.
13. An applicator assembly for mixing two or more
solutions, the applicator assembly comprising:
a housing defining at least two inlets and a mixing
chamber, each of the inlets being configured to releasably
engage a respective one of the two or more sources of solution
and being in fluid communication with the mixing chamber;
and
a mixing assembly rotatably mounted within the mixing
chamber of the housing, the mixing assembly operably
connectable to a motor, wherein a solution from each of the two
or more sources of solution are mixed with one another by the
mixing assembly as the solutions pass through the mixing
chamber, the mixing assembly including rotors and stators,
wherein the rotors alternate with the stators along a length of
the mixing assembly; and
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Application 11/789,399
a handle assembly operably connected to the housing for
engagement by a clinician during a surgical procedure and for
selectively positioning an outlet of the housing relative to a
patient during the surgical procedure.
App. Br. 17-19 (Claims Appendix).
Appellant (see generally App. Br.) requests review of the following
rejections maintained by the Examiner in the Answer entered December 24,
2014:
I. Claims 1--4, 6, 7, and 9-12 under 35 U.S.C. § 102(b) as
anticipated by Binder (US 6,311,871 Bl, issued November 6, 2001)
(hereinafter "Binder").
II. Claims 8, 13, 15-18, 20, and 22-283 under 35 U.S.C. § 103(a)
as unpatentable over Binder and Schneider (US 4,805,154, issued February
14, 1989) (hereinafter "Schneider").
III. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Binder, Schneider, and Buckingham et al. (US 3,764,115, issued October 9,
1973 (hereinafter "Buckingham").
IV. Claims 1, 3, 4, 6, 8-10, 13, 17, 24, and 26-284 under 35 U.S.C.
§ 103(a) as unpatentable over Navarro et al. (US 2005/0237854 Al,
published October 27, 2005) (hereinafter "Navarro") and Binder.
V. Claims 13, 17, 18, 20, 24, 27, and 285 under 35 U.S.C. § 103(a)
3 Although the Examiner includes claim 14 in this ground of rejection, claim
14 was cancelled in an amendment filed March 3, 2014.
4 Although the Examiner includes claims 5 and 14 in this ground of
rejection, claims 5 and 14 were cancelled in an amendment filed March 3,
2014
5 Although the Examiner includes claim 14 in this ground of rejection, claim
14 was cancelled in an amendment filed March 3, 2014.
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Application 11/789,399
as unpatentable over Hisanaga et al. (US 4,976,547, issued December 11,
1990 (hereinafter "Hisanaga") and Binder.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection of claims 1--4, 6, 7, and 9-
12 under 35 U.S.C. § 102(b ), and affirm the Examiner's rejections of claims
1, 3, 4, 6, 8-10, 13, 15-20, and 22-28 under 35 U.S.C. § 103(a). We add the
following for emphasis.
To prevail in an appeal to this Board, an Appellant must adequately
explain or identify reversible error in the Examiner's rejections. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even ifthe examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
appellant to identify the alleged error in the examiner's rejections); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that the error is
harmful normally falls upon the party attacking the agency's
determination.").
Rejection 16
The Examiner finds that Binder discloses a device that comprises first
207 and second 21 sources of solution, a hand-held homogenizer having a
6 Appellant argues claims 1--4, 6, 7, and 9-12 together. App. Br. 4-6.
Therefore, we select claim 1 as representative, and claims 2--4, 6, 7, and 9-
12 will stand or fall with claim 1.
7 Reference numerals refer to Figure 1 of Binder.
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Application 11/789,399
homogenizing assembly 77, 73, 80, 75, 72, 75a, 75b including a motor 41,
42 that rotates a mixing assembly 80 via a spindle 30, and a handle assembly
(Fig. 1) connected to an applicator assembly. Ans. 2-3.
The Examiner determines that the recitation in claim 1 of "for
engagement by a clinician during a surgical procedure and for selectively
positioning an outlet of the applicator assembly relative to a patient during
the surgical procedure," which refers to the handle assembly, is an intended
use of the claimed system and does not impart any structural limitation to the
system. Ans. 3. Similarly, the Examiner further determines that the
recitation in claim 1 that the motor is "configured to rotates [sic] a mixing
assembly within the homogenizing assembly from about 1,000 to about
3 5, 000 RPM" is directed to the intended use and functional operation of the
motor and its effect upon the mixing assembly, and does not impart any
structural limitation to the claimed system. Ans. 3--4.
Appellant argues that the recitation in claim 1 that the motor is
"configured to" rotate the mixing assembly from about 1,000 to about
35,000 RPM is not merely an intended use, but denotes "an actual state of
configuration" that "ties ... the physical characteristics of the motor and the
homogenizing assembly." App. Br. 6. Appellant further argues that Binder
fails to disclose such a motor, and instead the configuration of Binder's
device requires "only a small drive motor, i.e., a small hand tool." App. Br.
4-6.
However, we agree with the Examiner that the recitation in claim 1
that the motor is "configured to rotates [sic] a mixing assembly within the
homogenizing assembly from about 1,000 to about 35,000 RPM" is directed
to the functional operation of the motor, and also indicates the motor's
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intended use. It is well-settled, that language in an apparatus claim directed
to the function, operation, intent-of-use, and materials upon which the
components of the apparatus work, which do not structurally limit the
claimed apparatus components or patentably differentiate the claimed
apparatus from an otherwise identical prior art apparatus, will not support
patentability. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-79 (Fed. Cir.
1997) ("Schreiber' s contention that his structure will be used to dispense
popcorn does not have patentable weight if the structure is already known"
and "the Board [correctly] found that the Harz dispenser [for dispensing
lubricating oil] would be capable of dispensing popcorn in the manner set
forth in claim 1 of Schreiber's application."); see also In re Rishoi, 197 F.2d
342, 344--45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963); In
re Ludtke, 441F.2d660, 663-64 (CCPA 1971); In re Yanush, 477 F.2d 958,
959 (CCPA 1973).
The Examiner correctly finds that Binder discloses a device for
mixing two fluids and dispensing dosed quantities of the mixed fluids that
comprises a homogenizing assembly including a motor that rotates a mixing
assembly via a spindle. Ans. 2-3. Binder discloses that the motor can be
electric or battery-operated. Binder col. 3, 1. 67-col. 4, 1. 1. The Examiner
reasonably determines that Binder's motor would be capable of rotating the
mixing assembly at a speed sufficient to adequately mix the two fluids, such
as at a speed of about 1,000 to about 35,000 RPM as recited in claim 1. It is
noted that Appellant's Specification indicates that the homogenizer, or
homogenizing motor, "may be any known, commercially available portable
homogenizer," and "may be battery operated." Spec. ,-i,-i 32, 46 (emphasis
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added).8 Accordingly, Appellant's argument that Binder only discloses a
small drive motor and does not explicitly disclose a motor that rotates the
mixing assembly at about 1,000 to about 35,000 RPM fails to demonstrate
that Binder's battery-operated motor would be incapable of performing the
function of rotating the mixing assembly at the speed recited in claim 1,
particularly when Appellant's Specification indicates that any known,
commercially-available, battery-operated motor would be suitable for use in
Appellant's homogenizing system. See Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness."); In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (It is a "basic proposition that
a statement by an applicant, whether in the application or in other papers
submitted during prosecution, that certain matter is 'prior art' to him, is an
admission that that matter is prior art for all purposes ... "). Thus, Appellant
does not, on this record, identify reversible error in the Examiner's
determination that Binder's motor would be capable of rotating the mixing
assembly at a speed of 1,000 to about 35,000 RPM, as recited in claim 1.
Jung, 637 F.3d at 1365-66. We therefore sustain the Examiner's rejection
of claims 1--4, 6, 7, and 9-12 under 35 U.S.C. § 102(b) as anticipated by
Binder.
Rejection II
8 Navarro, cited by the Examiner in Rejection IV, evidences that it was
known in the art at the time of the invention to include a motor in a device
for mixing two fluids that drives a rotor in a mixing assembly at a speed of
up to 30,000 rpm. Navarro ,-i,-i 28-34, 47, 48.
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Claims 13, 17, 18, 20, 24, 27, and289
The Examiner finds that Binder's homogenizing assembly includes
spaced rotors, but the Examiner acknowledges that Binder does not disclose
that the homogenizer also includes stators. Ans. 5. To address this feature
missing from Binder's disclosures, the Examiner relies on Schneider's
disclosure of a mixing device for viscous fluids that includes alternating
guide blades 2', 2"10 (stators) and perforated rotor blades 4', 4" (rotors),
which provide improved vorticity of the mixture. Ans. 5-6. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to utilize perforated rotors and stators in Binder's
mixing assembly to improve the mixing by increase the vorticity shear effect
caused by the rotor. Ans. 6, 23.
Appellant argues that modifying Binder's handheld device to include
Schneider's "industrially applicable axial centrifugal pump" would increase
the forces required to tum the spindle, thereby changing the principle of
operation of Binder's device and/or rendering the device unsuitable for its
intended purpose of reducing the extrusion forces so that only a small drive
motor is required. App. Br. 8-9.
However, Appellant's argument is premised on bodily incorporation
and does not focus on the Examiner's reasons for combining the cited art.
The Examiner explains that the proposed modification of Binder's device in
view of Schneider's disclosures is not "substitution of the entire assembly of
9 Appellant argues claims 13, 17, 18, 20, 24, 27, and 28 together. App. Br.
7-9. Therefore, we select claim 13 as representative, and claims 17, 18, 20,
24, 27, and 28 will stand or fall with claim 13.
10 Reference numerals refer to Schneider's Figure 1.
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Application 11/789,399
Schneider into Binder," but is premised on Schneider's disclosure of the
advantages of providing holes in rotors that alternate with stators to improve
mixing. Ans. 23. It is well established that the obviousness inquiry does not
ask "whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.").
Appellant's argument does not explain why the combined disclosures
of Binder and Schneider would not have suggested including rotors and
stators in Binder's mixing assembly, as recited in claim 13. Nor does
Appellant's argument demonstrate that one skilled in the art would not have
been capable of adapting rotors for incorporation into Binder's mixing
assembly as suggested by Schneider to improve mixing. See In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Accordingly, Appellant's arguments are unpersuasive of reversible error,
and we therefore sustain the rejection of claims 13, 17, 18, 20, 24, 27, and 28
under 35 U.S.C. § 103(a) as unpatentable over Binder and Schneider.
Claims 8, 22, 23, and 26
Appellant relies on the contentions discussed above that the Examiner
errs in rejecting the base claim, independent claim 1, from which these
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claims depend, and argues that that Schneider fails to remedy the
deficiencies of Binder. App. Br. 9-10. Because we are unpersuaded of
reversible error in the Examiner's rejection of claim 1 as anticipated by
Binder, Appellant's position as to this ground of rejection is without merit.
Accordingly, we sustain the rejection of claims 8, 22, 23, and 26 under
35 U.S.C. § 103(a) as unpatentable over Binder and Schneider.
Rejection III
Appellant relies on the contentions discussed above that the Examiner
errs in rejecting the base claim, independent claim 13, from which claim 19
depends, and argues that Buckingham fails to remedy the deficiencies of
Binder and Schneider. App. Br. 10. Because we are unpersuaded of
reversible error in the Examiner's rejection of claim 13 as unpatentable over
Binder and Schneider as discussed above, Appellant's position as to this
ground of rejection is without merit. Accordingly, we sustain the rejection
of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Binder,
Schneider, and Buckingham.
Rejection IV11
The Examiner acknowledges that the mixer disclosed in Navarro-
which comprises a homogenizer that includes a motor that drives a rotor at a
speed up to 30,000 r.p.m.-does not include a handle assembly. Ans. 12;
Navarro ,-i,-i 28-34, 47, 48. To address this feature missing from Navarro's
11 Appellant argues claims 1, 3, 4, 6, 8-10, 13, 17, 24, and 26-28 together.
App. Br. 11-13. Therefore, we select claim 1 as representative, and claims
3, 4, 6, 8-10, 13, 17, 24, and 26-28 will stand or fall with claim 1.
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disclosures, the Examiner relies on Binder's disclosure of a portable, driven
shaft mixer having an integrated handle and power source. Ans. 12-13. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to provide Navarro's mixer with a
hand-held motor driver assembly to conveniently power the rotation of the
rotor element of the mixing assembly. Ans. 13.
Appellant argues that the Examiner's proposed combination is based
on impermissible hindsight reconstruction because Navarro's mixer is
configured for use in polymerization installations, and one of ordinary skill
in the art would not have been led to include a handle assembly in such a
mixer. App. Br. 12-13. However, Appellant's argument is again based on
bodily incorporation, and does not explain why the combined disclosures of
Binder and Navarro would not have suggested the homogenizing system
including a handle assembly recited in claim 1. As discussed above, we
agree with the Examiner that Binder discloses a homogenizing system as
recited in claim 1. Accordingly, we sustain the rejection of claims 1, 3, 4, 6,
8-10, 13, 17, 24, and 26-28 under 35 U.S.C. § 103(a) as unpatentable over
Navarro and Binder.
Rejection V12
The Examiner acknowledges that the mixer disclosed in Hisanaga
does not include a handle assembly, and to address this missing feature,
relies on Binder's disclosure of a portable, driven shaft mixer having an
12 Appellant argues claims 13, 17, 18, 20, 24, 27, and 28 together. App. Br.
14-16. Therefore, we select claim 13 as representative, and claims 1 7, 18,
20, 24, 27, and 28 will stand or fall with claim 13.
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integrated handle and power source. Ans. 18-19. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to provide Hisanaga's mixer with a hand-held motor driver
assembly to conveniently power the rotation of the rotor element of the
mixing assembly. Ans. 19.
Appellant argues that the Examiner's proposed combination is based
on impermissible hindsight reconstruction because Hisanaga' s mixer
includes a cylindrical container encased in an outer cylinder, and a liquid
refrigerant flows between the outer cylinder and cylindrical container to
keep the temperature of the cylindrical container constant. App. Br. 14-15.
Appellant contends one of ordinary skill in the art would not have been led
to include a handle assembly in such a mixer. App. Br. 15. However,
Appellant's argument is again based on bodily incorporation, and does not
explain why the combined disclosures of Binder and Hisanaga would not
have suggested the homogenizing system including a handle assembly
recited in claim 13. As discussed above, we agree with the Examiner that
Binder discloses a homogenizing system as recited in claim 13, with the
exception of disclosing that the system includes stators. As the Examiner
correctly finds, Hisanaga discloses a mixer comprising a mixing assembly
operably connected to a driving unit (motor) via a shaft that includes
alternating rotors and stators. One of ordinary skill reasonably would have
been led by Hisanaga' s disclosures to include a conventional rotor/stator
arrangement in Binder's homogenizing system, as recited in claim 13.
Accordingly, we sustain the rejection of claims 13, 17, 18, 20, 24, 27, and 28
under 35 U.S.C. § 103(a) as unpatentable over Hisanaga and Binder.
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ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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