Ex Parte 6293319 et alDownload PDFBoard of Patent Appeals and InterferencesMar 22, 201195000025 (B.P.A.I. Mar. 22, 2011) Copy Citation 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. 95/000,025 08/04/2003 6293319 3710619-00148 8475 24573 7590 05/20/2013 K&L Gates LLP P.O. Box 1135 CHICAGO, IL 60690 EXAMINER DOUGLAS, STEVEN O ART UNIT PAPER NUMBER 3771 MAIL DATE DELIVERY MODE 05/20/2013 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 ____________ SPECTRONICS CORPORATION, Requester and Appellant, v. UVIEW ULTRAVIOLET SYSTEMS INC., Patent Owner and Respondent ____________ Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 Technology Center 3700 ____________ Before RICHARD E. SCHAFER, JEFFREY B. ROBERTSON, and DANIEL S. SONG, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 2 In a previous Decision, we reversed the Examiner’s decision not to adopt certain proposed rejections of claims 1-5. (Decision in Appeal No. 2011-003437, mailed March 23, 2011, hereinafter “Decision,” 18-21.) Patent Owner UView Ultraviolet Systems, Inc. elected to reopen prosecution pursuant to 37 C.F.R. § 41.77(b)(1), submitting both an amendment and new evidence directed to overcoming the rejection. (Patent Owner’s “Response Requesting to Reopen Prosecution,” filed April 21, 2011, hereinafter “PO 41.77(b)(1) Resp.”.) Third-Party Requester Spectronics Corporation filed a response pursuant to 37 C.F.R. § 41.77(c). (“Third Party Requester’s Reply to Patent Owner’s Response Requesting to Reopen Prosecution,” filed May 20, 2011, hereinafter “Req. 41.77(c) Resp.”) The Examiner entered an Examiner’s Determination under 37 C.F.R. § 41.77(d) on April 12, 2012. (Hereinafter, “Det.”) In response to the Examiner’s Determination, Patent Owner filed comments pursuant to 37 C.F.R. § 41.77(e). (“Patent Owner’s Comments in Response to the Examiner’s Determination under 37 C.F.R. § 41.77(d),” hereinafter “PO 41.77(e) Resp.”) Requester filed a reply to Patent Owner’s comments pursuant to 37 C.F.R. § 41.77(e). (“Third Party Requester’s Reply to Patent Owner’s Comments under 37 C.F.R. § 41.77(e),” hereinafter “Req. 41.77(e) Rep.”) This is a decision pursuant to 37 C.F.R. § 41.77(f). Pursuant to § 41.77(f), this decision is deemed to incorporate the earlier Decision, except for those portions specifically withdrawn. Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 3 STATEMENT OF THE CASE In its 41.77(b)(1) response, Patent Owner proposed an amended version of Claim 1, which is reproduced below (with underlining showing additions and bracketing showing deletions with respect to the previous version of claim 1 on appeal): 1. A canister pre-filled with a fluid for charging a closed, pressurized air conditioning or refrigeration system with [a] the fluid, comprising: a) a closed, non-pressurized pre-filled sealed cylindrical canister, wherein said pre-filled canister has two ends, a first open end which when unsealed connects to the system being charged and a second open end, and wherein said first open end comprises a nozzle; b) a predetermined amount of said fluid, wherein said fluid is selected from the group consisting of a lubricant, a fluid dye for said air conditioning or refrigeration systems, and combinations thereof, and wherein said fluid is maintained in said pre-filled canister at about ambient pressure; and c) a piston sealably disposed with said second open end of said pre-filled canister, wherein said pre-filled canister is adapted to sealably and releasably connect to said pressurized air conditioning or refrigeration system via fluidly coupling means to form a closed binary system, wherein said fluidly coupling means is a connector assembly having a first end connected to said nozzle of said pre-filled canister and a second end connected to a service valve of the pressurized system, wherein said connector assembly comprises: i) a flexible conduit, ii) a first end of said flexible conduit, to engage with said nozzle of said pre-filled canister, and iii) a release valve on a second end of said flexible conduit, to engage with the service valve of the pressurized system, and wherein said connector assembly further comprises Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 4 a valve at one end of said flexible conduit, which prevents any material from back flushing into and contaminating said fluid in said pre-filled canister. (PO 41.77(b)(1) Resp. 13, App’x A.) Patent Owner further submitted the following as evidence (PO 41.77(b)(1) Resp.; PO 41.77 (e) Resp.): Decl. of Phil Trigiani under 37 C.F.R. § 1.132 (hereinafter “Trigiani Declaration”), executed on April 20, 2011 and Exhibits attached thereto. Supplemental Decl. of Phil Trigiani under 37 C.F.R. § 1.132 (hereinafter “Sup. Trigiani Declaration”), executed on May 4, 2012 and Exhibits attached thereto. Decl. of Jerome Lemon under 37 C.F.R. § 1.132 (hereinafter “Lemon Declaration”), executed on May 1, 2012 and Exhibits attached thereto. Requester submitted the following as evidence (Req. 41.77(c) Resp.): Decl. of Jonathan Cooper under 37 C.F.R. § 1.132 (hereinafter “Cooper Declaration”), executed on May 20, 2011. The specific grounds of rejection at issue in this decision are (numbering maintained from the previous Decision for consistency): IV. Claim 1 under 35 U.S.C. § 103(a) as being obvious over Robinair 1 or Rotunda 2 , in view of Cooper 3 , Leighley ‘063 4 , Hardesty ‘605 5 , Ferris ‘917 6 , Ferris ‘772 7 , Bradbury 8 , or SAE 9 ; 1 Brochure: “Find Leaks Fast With The Tracker!” Robinar Division of SPX Corporation, one page, dated April 1996 (“Robinair”). 2 Rotunda Ford Dealership Supplies Catalog, “A/C System Servicing”, page 3, dated before April 20, 1996 (“Rotunda”). 3 U.S. Patent 5,167,140, issued Dec. 1,1992 Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 5 V. Claim 2 under 35 U.S.C. § 103(a) as being obvious over Robinair or Rotunda, in view of Cooper, Leighley ‘063, Hardesty ‘605, Ferris ‘772, Haber 10 , Summons 11 , or LeVeen 12 ; VI. Claim 3 under 35 U.S.C. § 103(a) as being obvious over Robinair or Rotunda, in view of Cooper or Ferris ‘917; VII. Claim 4 under 35 U.S.C. § 103(a) as being obvious over Robinair or Rotunda, in view of Leighley ‘063, Hardesty ‘605, Ferris ‘772, Bradley, or Agner 13 ; and VIII. Claim 5 under 35 U.S.C. § 103(a) as being obvious over Robinair or Rotunda, in view of Nielsen 14 or Bradley. ISSUES As a result of Patent Owner’s amendments and evidence, the dispositive issue is: Do Robinair or Rotunda disclose or render obvious a “pre-filled” canister as recited in claim 1? 4 U.S. Patent 4,938,063, issued Jul. 3,1990 5 U.S. Patent 5,027,605, issued Jul. 2,1991 6 U.S. Patent 5,070,917, issued Dec. 10,1991 7 U.S. Patent 4,745,772, issued May 24,1988 8 U.S. Patent 1,716,482, issued Jun. 11, 1929 9 Society of Automotive Engineers, SAE Standard J639, REV APR 94, 8 pages, dated 1993. 10 U.S. Patent 4,810,249, issued Mar. 7, 1989 11 U.S. Patent 4,948,016, issued Apr. 14, 1990 12 U.S. Patent 4,367,739, issued Jan. 11, 1983 13 U.S. Patent 940,572, issued Nov. 16, 1909 14 U.S. Patent 1,926,399, issued Sept. 12, 1963 Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 6 DISCUSSION In our prior Decision, we stated that when viewed in light of the Specification claim 1 did not require a “pre-filled” canister. (Decision 18.) As a result, we disagreed that the syringe injectors disclosed by Robinair and Rotunda did not render the claims obvious because such syringe injectors contained a “pre-determined amount of fluid” as recited in the claims. (Decision 18-19.) In adding the term “pre-filled” to the claims, Patent Owner contends that neither Rotunda nor Robinair discloses a pre-filled canister. (PO 41.77(b)(1) Resp. 6-8.) Specifically, Patent Owner argues that the Rotunda and Robinair devices require the user to purchase small bottles of dye, which are then poured into the device after purchase. (PO 41.77(b)(1) Resp. 7.) Thus, Patent Owner argues that the devices in Rotunda and Robinair do not solve any of the problems solved by using a pre-filled canister as claimed. (PO 41.77(b)(1) Resp. 6-7.) Patent Owner further contends that the Specification and drawings of the ‘319 Patent support the position that the container is “pre-filled” in the manner argued by Patent Owner, and that a “predetermined amount of fluid” is an independent concept from a “pre- filled” canister. (PO 41.77(e) Resp. 4-5.) Requester contends that “pre-filled” only means that the canister must be filled with fluid prior to use. (Req. 41.77(c) Resp. 3.) Requester argues that in order for the containers of Robinair and Rotunda to server their intended purpose, they also must be “pre-filled” prior to use. (Id.) The Examiner agreed with Requester. (Det. 7-8.) Requester further contends Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 7 that the amendments proposed by Patent Owner are not supported by the Specification. (Req. 41.77(e) Resp. 3-5.) Interpretation and Support for “Pre-filled” Patent Owner points to Figure 5 as well as several portions of the ‘319 Patent to provide support for the term “pre-filled.” (PO 41.77(b)(1) Resp. 2- 3.) The portions of the ‘319 Patent relied on by Patent Owner describe a lubricant canister or cartridge that contains fluorescent dye and/or lubricant while not in use. (‘319 Patent, col. 2, ll. 7-9, 22-23; col. 7, ll. 36-38.) We essentially agree with Patent Owner, and interpret the term “pre- filled sealed cylindrical canister” to mean a canister that has been filled and sealed prior to being obtained by the end user. Our interpretation is supported by the ‘319 Patent, which uses the terms “canister” and “cartridge” interchangeably. (See ‘319 Patent, Col. 2, l. 46 “26 canister” and col. 7, l. 35 “lubricant canister or cartridge 26.”) In addition, the ‘319 Patent discloses that the injection device includes a receptacle portion “for receiving a disposable or reusable lubricant canister.” (‘319 Patent col. 2, ll. 20-21.) The interchangeability of the terms “cartridge” and “canister” along with the disclosure that the canister is disposable and received in a receptacle portion supports the position that the term “pre-filled” imparts a structural requirement to the claimed apparatus thereby requiring a cylindrical canister together with non-pressurized fluid sealed therein. Accordingly, Requester has misunderstood our position in the previous Decision in that we did not simply equate “pre-filled” with a canister that is “filled with a fluid prior to use” (Req. 41.77(c) Resp. 3.) Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 8 Rather, as discussed above, the entirety of the limitation “pre-filled canister” imparts a structural requirement to the apparatus. Therefore, we are not persuaded by Requester’s position that pre-filling relates to the method by which the canister is filled and is satisfied by mere filling of the canister with fluid prior to its use. Id. Application of Prior Art In light of the claim interpretation set forth above, we disagree with Requester that the syringe injectors of Robinair and Rotunda disclose a “pre- filled” canister as recited in the claims. As we stated in the previous Decision, prior to being amended, claim 1 only required a “predetermined amount of fluid,” which encompassed the syringe injectors of Robinair and Rotunda. (Decision 18-19.) However, claim 1 as amended does not encompass a syringe injector as such injectors do not contain a pre-filled canister, as the term has been interpreted supra. We have not been directed to sufficient evidence as to how or why, one of ordinary skill in the art would have modified the syringe injectors of Robinair or Rotunda to include or accommodate pre-filled canisters. The Examiner essentially adopts the position of the Requester (Ex. Det. 7-8). Thus, we disagree that the grounds articulated by the Requester would have rendered the subject matter of the claims, as amended, obvious. Accordingly, the grounds of rejection set forth in the previous Decision have been overcome based on Patent Owner’s amendments to the claims. Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 9 Evidence of Secondary Considerations As a result of the above discussion, we need not reach the evidence of secondary considerations provided by Patent Owner in its 41.77(b)(1) response and opposed by Requester in its 41.77(c) response, or the appropriateness of further evidence submitted by Patent Owner in its 41.77(e) response. CONCLUSION On this record, we determine that: the claims as amended would not have been obvious over Robinair or Rotunda in view of the secondary references of record as proposed by the Requester. DECISION The rejections of claims 1-5 under 35 U.S.C. § 103(a) based on Robinair and Rotunda have been overcome in view of the amendments thereto. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§1.304, 1.956, and 41.79(e). Appeal 2013-001100 Reexamination Control 95/000,025 Patent 6,293,319 B1 10 PATENT OWNER: K&L GATES LLP P.O. BOX 1135 CHICAGO, IL 60690 THIRD-PARTY REQUESTER: ROBERT E. CANNUSCIO DRINKLER BIDDLE & REATH LLP ONE LOGAN SQUARE, 18 TH & CHERRY STREET PHILADELPHIA, PA 19103-6996 cu Copy with citationCopy as parenthetical citation