Ex Parte Silver

Patent Trial and Appeal Board

Mar 30, 2015

12729049 (P.T.A.B. Mar. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/729,049 03/22/2010 Brian H. Silver 07-2116-A-CON 6495
20306 7590 03/30/2015
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
WEAVER, SUE A
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
03/30/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN H. SILVER
____________________

Appeal 2012-012625
Application 12/729,049
Technology Center 3700
____________________
Before: EDWARD A. BROWN, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian H. Silver (Appellant)
1
seeks review under 35 U.S.C. § 134 of
the Examiner’s rejections of claims 1, 2, 5–10, 13, 16, 17, 35, 36, 56, 57, and
72. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM–IN–PART.

1
Appellant indicates that the real party in interest is Medela Holding AG.
Appeal Br. 1.
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Application 12/729,049
2
CLAIMED SUBJECT MATTER
The claims are directed to an artificial nipple. Claims 1, 16, 17, and
72 are independent claims. Appeal Br. 1. Claims 1 and 72, reproduced
below, are illustrative of the claimed subject matter:
1. An improved feeding nipple, comprising:
a substantially solid nipple having an elongated nipple
portion with a longitudinal length and a width, wherein said
length is substantially greater than said width, and including
one or more ducts formed therethrough for conveying fluids
through said nipple portion, said nipple portion being radially
compressible by a suckling infant’s oral action so as to prevent
passage of fluids through said one or more ducts when so
compressed.

72. An improved nipple for feeding having at least one fluid
conveying duct extending through a part adapted to be inserted
into the user’s mouth, wherein the improvement comprises:
a one-way valve in each said duct, wherein said one-way
valve prevents passage of fluids through the one or more ducts
when said nipple is one or both of a radially compressed state
and axially extended state.

REJECTIONS
I. Claim 72 stands rejected under 35 U.S.C. §112 first paragraph as
failing to comply with the written description requirement. Final Act.
2.
II. Claims 1, 2, 3–10, and 13 stand rejected under 35 U.S.C. § 112
second paragraph as being indefinite. Final Act. 3.
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III. Claims 1, 2, 6, 8, 10, 16, 35, and 57 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ishimaru
2
(JP 02002011076A,
published Jan. 15, 2002). Final Act. 3.
IV. Claims 7, 9, 17, 36, and 58 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ishimaru and Reilly (US 1,672,734, issued
June 5, 1928). Final Act. 4.
V. Claim 72 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Morifuji (US 5,101,991, issued Apr. 7, 1992). Final
Act. 4.

ANALYSIS
Rejection I
Independent claim 72 recites, in relevant part, “a one–way valve in
each said duct, wherein said one-way valve prevents passage of fluids
through the one or more ducts when said nipple is one or both of a radially
compressed state and axially extended state.” Appeal Br. 20, Claims App.
The Examiner determines that the Specification does not support the above–
quoted subject matter. Final Act. 2.
Appellant disagrees, contending that the Specification, at page 4, lines
20–24, provides written description support for the one-way valve of claim
72. Appeal Br. 4. Appellant further contends that the structures depicted in
Figures 16A–16C of the Specification also provide the requisite support for
the claimed one–way valve structure. Id.
The Examiner responds that page 4 of the Specification actually
states:

2
References to specific disclosures in Ishimaru are from the English
translation in the record.
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One restrictive flow feature prevents passage of fluids through
one or more ducts when the nipple is one or both radially
compressed and axially extended. Another is just a small size
of the terminal hole at the end of the duct as disclosed herein
which is sufficient alone to restrict fluid flow, as well as the use
of a valve or valve like feature. It has been observed that these
flow restrictive features reduce the amount of air that could
otherwise return to the fluid container.
Answer 3 (referencing Spec. 4, ll. 20–26) (emphasis added).
The Examiner explains that the Specification refers to one flow restrictive
feature that prevents fluid flow when the nipple is one or both radially
compressed and axially extended. Id. The Specification then indicates that
a valve is another flow restrictive feature. Id. That is, the Specification
supports a flow restrictive feature that prevents passage of fluids through the
one or more ducts when said nipple is one or both of a radially compressed
state and axially extended state and it supports a flow restrictive feature that
is a valve, but the Specification fails to support “a one-way valve [that]
prevents passage of fluids through the one or more ducts when said nipple is
one or both of a radially compressed state and axially extended state.” See
id. The Examiner further responds that the description of Figures 16A–16C
of the Specification “fail[s] to indicate that that [sic] the valves prevent
passage of fluids through one or more ducts ‘when said nipple is one or both
of a radially compressed state and an axially extended state.’” Id.
In reply, Appellant argues the one-way valve claimed in claim 72 and
the “radially compressed and axially extended nipple work together to
restrict fluid flow, the compressed and extended nipple preventing additional
fluid flow out of one or more ducts 16 from chamber 20 and the one or more
one-way valves 23 ‘preventing flow back into the nipple.’” Reply Br. 2.
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Appellant explains that claim 72 recites two flow restriction features that are
not mutually exclusive. Id.
We find Appellant’s argument unpersuasive. “[T]he test for
sufficiency [of the written description] is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Ariad Pharmas., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (citations omitted). The Examiner correctly finds that the
Specification fails to disclose a one–way valve that prevents passage of
fluids through ducts in the nipple when the nipple is one or both of a radially
compressed state and axially extended state. See Answer 3. Further, the
plain language of claim 72 conflicts with Appellant’s contention that the
claim encompasses two flow restrictive features. The claim plainly recites
that the valve functions to restrict the flow of fluids when the nipple is either
radially compressed or axially extended (or both). The claim does not recite
two independent flow restrictive features. Accordingly, the Specification
fails to convey to one of ordinary skill in the art the Appellant was in
possession of the one–way valve of claim 72 as of the filing date of the
application under appeal.
For the reasons above, we sustain the Examiner’s rejection of claim
72 under 35 U.S.C. §112, first paragraph, for failing to comply with the
written description requirement.

Rejection II
Independent claim 1 recites, in relevant part, “said nipple portion
being radially compressible by a suckling infant’s oral action so as to
prevent passage of fluids through said one or more ducts when so
Appeal 2012-012625
Application 12/729,049
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compressed.” Appeal Br. 13, Claims App. The Examiner determines claim
1 is indefinite because the claim fails to recite structure “to effect the
function of the nipple portion ‘being radially compressible but [sic] the
suckling infant[’]s oral action so as to prevent passage of fluids through said
one or more ducts when compressed.’” Final Act. 3. Specifically, the
Examiner determines that the low durometer value of the nipple is
apparently responsible for the recited function and no value is recited in
claim 1. Id.
Appellant argues that the recited “function is effected through the
unique structure set forth in Claim 1.” Appeal Br. 5. Appellant contends
that claim 1 “clearly set forth the scope and boundaries of the claimed
apparatus.” Id. at 6. Appellant explains that prior art nipples are hollow and
have “a duct through the thin wall at the apex of the nipple” and an “infant’s
mouth does not act on this duct, but rather on the hollow bulbous portion of
the nipple.” Id. In contrast, “Appellant’s solid elongated nipple defines one
or more ducts therein that an infant’s mouth acts directly upon.” Id.
We find Appellant’s argument persuasive. In determining whether a
claim is definite under 35 U.S.C. § 112, second paragraph, “[t]he USPTO, in
examining an application, is obliged to test the claims for reasonable
precision . . . .” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). We
find that claim 1 satisfies this standard.
The Examiner responds that the “distinguishing structure” Appellant
identifies does not appear in claim 1 and “[t]he whole nipple could be
substantially solid or with no bulbous portion as with a calf nipple.” Answer
4. The Examiner also responds that Appellant elected the embodiment of
Figures 1 and 2 of the Specification and the Specification identifies a
preferable hardness for the nipple of this embodiment. Id. The Examiner
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Application 12/729,049
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explains that, “it appears to be the low Durometer in conjunction with the
substantially solid nipple that permits compression in suckling by an infant.
A very hard nipple would not necessarily permit this.” Id. at 5.
We agree with Appellant that claim 1 recites sufficient structure to
give effect to the functional language. See Reply Br. 4. We also agree with
Appellants that, although the Examiner is correct that “[a] very hard nipple”
would not necessarily perform the recited function at issue, this finding
supports that claim 1 is definite. See id. As the Examiner understands, the
hardness of the nipple affects its collapsibility—something that one of
ordinary skill in the art would also understand. The claim does not omit
structure that provides for the recited function but instead the functional
language further characterizes the structure of claim 1. See, e.g., In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing
intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims.”).
For the reasons above, we do not sustain the Examiner’s rejection of
claims 1, 2, 3–10, and 13 under 35 U.S.C. § 112, second paragraph, as being
indefinite.

Rejection III
“Substantially solid”
Independent claim 1 recites, in relevant part, “a substantially solid
nipple.” Appeal Br. 13, Claims App. Similarly, independent claim 16
recites “a substantially solid nipple portion.” Id. at 14, Claims App. The
Examiner finds that Ishimaru discloses a substantially solid nipple as recited
in these claims. Final Act. 3. The Examiner relies on the embodiment
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Application 12/729,049
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disclosed in Ishimaru’s Figure 18 to support this finding. See id.
(referencing nipple 600, which is disclosed in Fig. 18).
Ishimaru’s Figure 18 is reproduced below:

Figure 18 illustrates “an outline sectional view showing [an] artificial
teat.” Ishimaru, Description of Drawings. Appellant argues that Ishimaru’s
Figure 18 “fails to disclose . . . a substantially solid nipple portion.” Appeal
Br. 6. Appellant contends that Ishimaru’s Figure 18 depicts “a completely
hollow nipple with a channel-securing pipe extending into the hollow nipple.
The channel-securing pipe is surrounded by hollow voids extending between
the pipe and the sidewalls of Ishimaru’s hollow nipple.” Id. at 7.
Essentially, Appellant argues that the Examiner improperly construes the
claim terms “substantially solid nipple” and “substantially solid nipple
portion” to encompass the nipple depicted in Ishimaru’s Figure 18.
We find Appellant’s argument unpersuasive. It is well established
that “the PTO must give claims their broadest reasonable construction
consistent with the specification. Therefore, we look to the specification to
see if it provides a definition for claim terms [or disavowal of claim scope],
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Application 12/729,049
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but otherwise apply a broad interpretation.” In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citations omitted). Here,
Appellant provides an express definition of the term “substantially solid” in
the Specification:
The term “substantially solid”, for purposes of the present
application, is broadly defined as a range from completely solid
(i.e., including no voids or hollows except for the existence of
one or more generally narrow ducts for conveying fluid), to
having a hollow interior defined by sidewalls that include one
or more ducts formed therethrough where the ducts have a
significantly greater longitudinal length than radial width.
Spec. 9, ll. 2–8. That is, Appellant has chosen to define the term
“substantially solid” broadly to encompass a structure that has a hollow
interior with a duct formed through the hollow space. The Examiner
correctly finds that the nipple depicted in Ishimaru’s Figure 18 has such a
structure. See Answer 5–6.
Appellant replies that the Examiner’s interpretation of the
Specification’s definition of “substantially solid” reads the word “solid” out
of the definition. Reply Br. 4–5. Appellant explains that the Specification’s
definition covers two different embodiments—one embodiment that is
“completely solid” (no voids or hollows except for one or more ducts) and
another embodiment that includes the “completely solid” nipple portion and
a mounting portion 14 that has a hollow interior defined by sidewalls. See
id. at 5 (providing a marked up version of Figure 1 from the Specification
illustrating the embodiments). That is, Appellant contends that the
definition in the Specification requires either a structure that is completely
solid or a structure that has both a completely solid portion and a hollow
interior portion.
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We find Appellant’s contention contrary to the plain language in the
Specification. The language clearly states that the term “substantially solid”
covers a range of structures. See Spec. 9, ll. 2–8 (“The term ‘substantially
solid . . . is broadly defined as a range . . . .”). One end of this range is a
completely solid structure, where ducts represent the only aspect of this
structure that is not solid. See id. At the other end of the range is a structure
that has a hollow interior, sidewalls, and a structure through the hollow
space containing one or more ducts. See id. Nothing in the language
suggests that a structure that has a hollow interior must also have a
completely solid portion. Indeed, Appellant’s mark-up of its Figure 1
ignores the language in the Specification’s definition that requires the nipple
structure with a hollow interior to have a structure through the hollow space
containing one or more ducts. See Reply Br. 5.

“Nipple portion being radially compressible by a suckling infant’s oral
action”
With respect to independent claim 1 and dependent claims 2, 6, 8, and
10, which depend, directly or indirectly, from claim 1, Appellant argues that
“Ishimaru does not teach, and actually teaches away from,
3
the feature of a

3
We note that the Examiner finds that Ishimaru discloses each and every
element of claim 1 (that is, Ishimaru anticipates claim 1), although the
rejection is presented as an obviousness rejection. See Final Act. 3–4.
Thus, Ishimaru renders the claimed nipple unpatentable. See In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (concluding that a disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103, for anticipation is the epitome of obviousness.).
Further, we understand that “teaching away is not relevant to an anticipation
analysis.” Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir.
2012). However, because the Examiner designates the rejection of claim 1
as an obviousness rejection, we address Appellant’s teaching away
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Application 12/729,049
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nipple portion being radially compressible by a suckling infant’s oral action
so as to prevent passage of fluids through said one or more ducts when so
compressed.” Appeal Br. 10 (referencing Ishimaru ¶ 64). Specifically,
Appellant explains that Ishimaru discloses that, with the embodiment
depicted in Figure 18 of Ishimaru, the channel-securing pipe 630c allows
milk to pass to the infant even if the outer part of the nipple is crushed. See
id.; see also Ishimaru ¶ 64.
In response, the Examiner states that, given that the nipple is made of
a very soft material—a material with a Shore hardness of 5 or 10—the
nipple “is inherently compressible and so must [be] the ducts formed of the
same material and hardness.” Answer 7. The Examiner further provides
that the nipple would operate as disclosed in paragraphs 41–49 of Ishimaru.
Id.
In reply, Appellant does not address the Examiner’s finding that the
functional language of claim 1 would be inherent in Ishimaru’s nipple.
Instead, Appellant points out that paragraphs 41–49 of Ishimaru address a
different embodiment than the embodiment relied on by the Examiner.
Reply Br. 8. Appellant argues that reliance on a disclosure concerning a
different embodiment does not defeat Appellant’s teaching away argument.
Id. at 9.
We find Appellant’s argument unpersuasive.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to

argument. See, e.g., In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (noting
that obviousness rejections can be based on references that happen to
anticipate the claimed subject matter).

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12
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Appellant has not
rebutted the Examiner’s finding that the recited function of claim 1 would be
inherent. Further, Appellant’s contention that the Examiner improperly
relies on disclosure concerning a different embodiment is unavailing.
Ishimaru discloses that, with the embodiment of Figure 18, an infant
establishes peristalsis movement. Ishimaru ¶ 64. Appellant fails to explain
why this movement is different from the peristalsis movement discussed by
the Examiner, that is, how the operation of the nipples of the different
embodiments actually differ.
More importantly, Appellant fails to explain how Ishimaru teaches
away from the function recited in claim 1. “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
. . . would be led in a direction divergent from the path that was taken by the
applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting
Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir.
1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed . . . .”).
Appellant fails to identify any teaching in Ishimaru that criticize, discredit,
or otherwise discourage one of ordinary skill in the art to pursue the path of
the inventor of claim 1.
For the reasons above, we sustain the Examiner’s rejection of
independent claims 1 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over Ishimaru. Appellant offers no additional arguments for the separate
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patentability of dependent claims 2, 6, 8, and 10, which depend, directly or
indirectly, from claim 1 and claims 35 and 57, which depend directly from
claim 16.

Rejection IV
Independent claim 17 recites, in relevant part, “a substantially solid
elongated nipple portion.” Appeal Br. 14, Claims App. Similarly, claims 7
and 9 depend from claim 1, which recites “a substantially solid nipple.”
Appellant repeats the argument made in connection with Rejection III that
Ishimaru fails to disclose a substantially solid nipple. Appeal Br. 8. For the
reasons discussed above in our analysis of Rejection III, we find Appellant’s
argument unpersuasive.
Accordingly, we sustain the Examiner’s rejection of independent
claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Ishimaru and
Reilly. Appellant provides no additional arguments for the separate
patentability of claims 7 and 9, which depend from claim 1, and claims 36
and 58, which depend from claim 17. Accordingly, we sustain the
Examiner’s rejection of these dependent claims as well.

Rejection V
Independent claim 72 recites, in relevant part, “a one–way valve in
each said duct, wherein said one-way valve prevents passage of fluids
through the one or more ducts when said nipple is one or both of a radially
compressed state and axially extended state.” Appeal Br. 20, Claims App.
The Examiner finds that Morifuji discloses the nipple of claim 72 including
the one-way value. Final Act. 4.
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Appellant argues that Morifuji’s valve fails to operate as claimed.
Appeal Br. 11. Appellant explains that Morifuji’s valve allows fluid flow
when, and only when, the valve is compressed. Id.; see Morifuji, col. 4, ll.
23–55. In contrast, claim 72 requires the valve to prevent fluid flow when
compressed. See Appeal Br. 11. In response, the Examiner does not address
this factual dispute but rather states that, because the Specification fails to
provide adequate written description for the claimed functional language,
Morifuji’s valve is structurally equivalent to the claimed valve. Answer 7.
This response effectively ignores the functional language of claim 72. See,
e.g., In re Sabatino, 480 F.2d 911, 913 (CCPA 1973) (“Claim limitations
defining the subject matter of the invention are never disregarded.”).
We find Appellant’s argument persuasive. “A claim is anticipated
only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.” Verdegaal
Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he
prior art reference—in order to anticipate under 35 U.S.C. § 102—must not
only disclose all elements of the claim within the four corners of the
document, but must also disclose those elements ‘arranged as in the claim.’”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Claim 72’s functional language further defines the structure of the claim—it
defines the relationship between the valve and the nipple by defining how
the valve opens and closes relative to changes in the nipple’s configuration.
Morifuji’s valve operates to allow the flow of milk when the nipple is
compressed, rather than preventing the flow as required by claim 72.
Because Morifuji fails to disclose the one-way valve arranged as recited in
claim 72, the reference does not anticipate the claim.
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Accordingly, we do not sustain the Examiner’s rejection of claim 72
under 35 U.S.C. § 102(b) as being anticipated by Morifuji.

DECISION
We AFFIRM the Examiner’s rejection of claim 72 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
We REVERSE the Examiner’s rejection of claims 1, 2, 3–10, and 13
under 35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s rejection of claims 1, 2, 6, 8, 10, 16, 35,
and 57 under 35 U.S.C. § 103(a) as being unpatentable over Ishimaru.
We AFFIRM the Examiner’s rejection of claims 7, 9, 17, 36, and 58
under 35 U.S.C. § 103(a) as being unpatentable over Ishimaru and Reilly.
We REVERSE the Examiner’s rejection of claim 72 under 35 U.S.C.
§ 102(b) as being anticipated by Morifuji.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED–IN–PART
em