Ex Parte 6293319 et al

Board of Patent Appeals and Interferences

Mar 22, 2011

95000025 (B.P.A.I. Mar. 22, 2011)

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)
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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.

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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
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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
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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
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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
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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.)
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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.

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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).

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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

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