ERIC STROUD et al.

Patent Trials and Appeals Board

Oct 6, 2021

2021002129 (P.T.A.B. Oct. 6, 2021)

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.
12/613,813 11/06/2009 ERIC STROUD VM013 7123
54698 7590 10/06/2021
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
ABU ALI, SHUANGYI
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC STROUD and GARY J. PIERINGER

Appeal 2021-002129
Application 12/613,813
Technology Center 1700

Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2021-002129
Application 12/613,813

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STATEMENT OF THE CASE1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 3, 4, 7, 9, 10, 19, 20, and 23–28.3 We
have jurisdiction under 35 U.S.C. § 6(b). The panel heard oral argument by
video for this matter on September 21, 2021.4
We AFFIRM IN PART.

CLAIMED SUBJECT MATTER5
Appellant describes the invention as relating to an ink useful for
marking a patient for surgery (for example, to indicate the correct part of the
patient to operate on) that will not be readily removed by surgical
disinfectants. Spec. ¶¶ 2–3. Claims 20, 27, and 28 are the independent
claims on appeal. We reproduce claim 20 below as illustrative while
emphasizing a key recitation:
20. A scrub-resistant ink composition, comprising:
a dye for marking skin; and

1 In this Decision, we refer to the Final Office Action dated July 8, 2020
(“Final Act.”), the Appeal Brief filed September 23, 2020 (“Appeal Br.”),
the Examiner’s Answer dated December 21, 2020 (“Ans.”), and the Reply
Brief filed February 5, 2021 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Viscot Medical, LLC. Appeal Br. 3.
3 The Office Action Summary for the July 8, 2020, Final Rejection
inadvertently omits claim 7 from the list of claims rejected. The rejection
itself, however, addresses claim 7. Final Act. 3. This error is, thus, harmless.
4 A transcript of the hearing will be entered into the record when available.
5 We previously addressed certain claims of U.S. Patent Application No.
12/613,813 in our October 30, 2017, decision of Appeal 2017-001447.
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aqueous solvent dissolving all of the dye, wherein the
solvent comprises 50 to 90 percent by weight of polar aprotic
solvent(s), wherein the amount of dye is between 1 percent
to 5 percent by weight of the composition, and wherein the
composition is free of thickeners, wherein the composition is
entirely a solution, and wherein polar aprotic solvent, water and
dye comprise 95% by weight or more of the ink composition.

Appeal Br. 23–24 (Claims App.) (emphasis added). Claims 27 and 28
similarly recite a composition requiring dye “between 1 percent to 5
percent by weight of the composition.” Id. at 24–25.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:

Name Reference Date
Drautz US 3,617,185 Nov. 2, 1971
Hugelshofer et al.
(“Hugelshofer”)
US 4,500,321 Feb. 19, 1985

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 27 and 28 under 35 U.S.C. § 112 as indefinite. Final Act. 2.
B. Claims 3, 7, 9, 10, 19, 20, and 23–28 under 35 U.S.C. § 103(a) as
obvious over Hugelshofer. Id. at 3.
C. Claim 4 under 35 U.S.C. § 103(a) as obvious over Hugelshofer in
view of Drautz. Id. at 7.
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OPINION
Rejection A, indefiniteness. Claim 27 recites, in relevant part, a
composition comprising “aqueous solvent dissolving all of the dye, wherein
[a] the solvent comprises 50 to 90 percent by weight of polar aprotic
solvent(s) comprising dimethyl sulfoxide such that 50 to 90 percent by
weight of [b] the solvent is dimethyl sulfoxide.” Appeal Br. 24 (Claims
App.) (emphases and bracketed notation added). Claim 28 includes a similar
recitation.
The Examiner rejects claims 27 and 28 as indefinite under 35 U.S.C.
§ 112. In particular, the Examiner determines that the claims’ second
recitation of the term [b] “the solvent” is unclear as to whether it refers to the
recited “aqueous solvent” or instead refers to the “polar aprotic solvent.”
Final Act. 2; see also Ans. 3–4. Appellant argues that claims 27 and 28 each
recite “the solvent” twice and [b] “the solvent” is necessarily the same
“aqueous solvent” in both instances. Appeal Br. 7–8. Appellant further
argues that Appellant’s proposed interpretation of the second recitation of
“the solvent” is consistent with paragraph 21 of the Specification. Id.
With regard to indefiniteness, the Examiner has appropriately
identified imprecision in the language of claims 27 and 28. The first
recitation of [a] “the solvent” in claims 27 and 28 must refer to the recited
“aqueous solvent” because, at this point in the claim, no other solvent has
been recited. Once the claims recite [b] “the solvent” a second time, the
claims have now referenced both an “aqueous solvent” and “polar aprotic
solvent(s).” Either of these two possibilities could provide an antecedent
basis for this second recitation of “the solvent.” Thus, claims 27 and 28 are
unclear and do not meet the requirements of § 112(a) or § 112, ¶ 2. See In re
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Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (setting forth the standard
that the claim language must be “as precise as the subject matter permits”
and explaining that the USPTO plays an important role in ensuring that
patent claims are clear and unambiguous); see also accord Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2123 (2014) (“Section 112’s
definiteness requirement must take into account the inherent limitations of
language,” yet mandates clarity to the extent possible under the
circumstances.).
The Examiner’s rejection has given Appellants an opportunity to
bring the necessary clarity to the claim language. See Packard, 751 F.3d at
1314 (affirming an indefiniteness rejection because Packard had been given
the opportunity to bring clarity to his claim language stating that “[i]n some
cases it is difficult enough for courts to construe claims when the
draftsperson has made every effort to be clear and concise, let alone when
the claims have readily observable ambiguities or incoherencies within
them.”). 35 U.S.C. § 112, ¶ 2 “puts the burden of precise claim drafting
squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997); see also Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008) (noting that “the patent drafter is in the best position to
resolve the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate circumstances
so that the patent can be amended during prosecution rather than attempting
to resolve the ambiguity in litigation.”). We, therefore, sustain the
Examiner’s rejection of claims 27 and 28 based on indefiniteness.
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For efficiency, we provisionally construe these claims’ second
recitation of “the solvent” as referring to the recited “aqueous solvent” when
evaluating the Examiner’s obviousness rejections below.
Rejections B and C, obviousness. The Examiner rejects claims 3, 7, 9,
10, 19, 20, and 23–28 as obvious over Hugelshofer. Final Act. 3. The
Examiner rejects claim 4 as obvious over Hugelshofer in view of Drautz. Id.
at 7. The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art, or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Because we decide this appeal based on a limitation recited, in substance, by
each independent claim, we focus our analysis on claim 20. This analysis is
equally applicable to each of the independent claims and, therefore, all of the
dependent claims as well.
The Examiner finds that Hugelshofer’s concentrated fluid
composition comprises 10 to 60% dye by weight (in contrast to the
maximum 5% recited by Appellant’s claim 20). Final Act. 3 (citing
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Hugelshofer 6:36, 7:42–53). The Examiner finds, however, that Hugelshofer
teaches dilution of its concentrated fluid composition with organic solvents.
Id. at 4 (citing Hugelshofer 12:20–47); see also Ans. 4–6. The Examiner also
determines that fluid concentration is a result effective variable whose
optimum range could be determined by routine experimentation. Ans. 6–7.
Appellant argues that the Examiner has not adequately established
that a person of skill in the art would reach claim 1 by following the
teachings of Hugelshofer. Appeal Br. 9–18; see also Reply Br. 5–15.
Appellant emphasizes, for example, that Hugelshofer does not provide
adequate guidance regarding dilution of its concentrate to reach claim 20.
Reply Br. 6. As we explain below, Appellant’s arguments persuade us of
reversible error.
As the Examiner acknowledges, Hugelshofer’s concentrate has too
much dye to reach claim 20 even if a person of skill in the art were to select
a polar aprotic solvent from the many possible organic solvents Hugelshofer
teaches. Final Act. 3; see also Hugelshofer 5:64–6:54 (listing dozens of
different possible organic solvents for the concentrated solution), 7:43–53
(teaching that the concentrate composition is 10 to 60% dye by weight).
Hugelshofer teaches diluting the concentrate (Hugelshofer 12:20–66), but
the Examiner has not established that Hugelshofer provides enough guidance
to lead a person of skill in the art to reach claim 20’s composition via this
dilution. In particular, Hugelshofer teaches adding one part concentrate to “4
to 9 parts of water” and, alternatively, teaches adding organic solvents
instead of water. Id. Hugelshofer does not, however, teach how much
organic solvent should be added, and it does not explicitly suggest diluting
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with polar aprotic solvents (necessary to maintain claim 20’s requirements
regarding a solution with 50 to 90 percent polar aprotic solvent). Id.
The Examiner also reasons that a person of skill in the art would have
skill to dilute the concentrate fluid without causing the dye to precipitate or
other inhomogeneity and that it is not inventive to discover the optimum or
workable range for dye concentration. Ans. 6. In other words, the Examiner
suggests a result effective variable theory of obviousness to reach claim 20’s
dye composition. The Examiner, however, does not adequately explain how
Hugelshofer teaches that the composition’s various concentrations are
known parameters for reaching a desired result. Reply Br. 10; see also In re
Antonie, 559 F.2d 618, 620 (C.C.P.A. 1977) (explaining that a result-
effective variable rationale of obviousness cannot be used where the
parameter optimized is not recognized in the art). Also, even if Hugelshofer
suggests that a person of skill in the art would optimize dilution in order to
achieve “padding liquors, dye baths, print pastes and spraying solutions . . .
to dye or print textile material”, the record does not support that the result of
this optimization would overlap with claim 20’s composition which is
directed towards surgical ink having scrub-resistant properties. See, e.g.,
Reply Br. 9; see also Hugelshofer 12:25–34.
The Examiner’s treatment of dependent claims does not cure the error
we address above. We, thus, do not sustain the Examiner’s obviousness
rejections.
DECISION SUMMARY
In summary:

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27, 28 112 Indefiniteness 27, 28
3, 7, 9, 10,
19, 20, 23–
28
103 Hugelshofer 3, 7, 9, 10,
19, 20, 23–
28
4 103 Hugelshofer, Drautz 4
Overall
Outcome
27, 28 3, 4, 7, 9,
10, 19, 20,
23–26

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

AFFIRMED IN PART