Ex Parte 6685719 et al

Patent Trial and Appeal Board

May 30, 2017

95001930 (P.T.A.B. May. 30, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,930 04/19/2012 6685719 97343.00145 2316
7590 05/31/2017
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 BROAD HOLLOW ROAD,
SUITE 225
MEL VILLE, NY 11747
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/31/2017 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
____________________

BEEKLEY CORP.
Requester and Respondent

v.

JAMES R. MATERA
Patent Owner and Appellant
____________________

Appeal 2017-005013
Reexamination Control 95/001,930
US Patent No. 6,685,719 B2
Technology Center 3900
____________________

Before: STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

NEW DECISION UNDER 37 C.F.R. § 41.77(f)

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US Patent No. 6,685,719 B2

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BACKGROUND
The ’719 patent was the subject of inter partes reexamination Appeal
2014-009648, for which the Board’s decision was mailed on March 2, 2015,
the (“’9648 Decision”). In the ’9648 Decision, the Board affirmed the
Examiner’s decision to reject claims 1-15 and 19. The Board also entered a
new ground of rejection of claim 16 pursuant to 37 C.F.R. § 41.77(b).
In response to the ’9648 Decision, the Patent Owner requested
reopening of prosecution under 37 C.F.R. § 41.77(b)(1) on April 2, 2015.
The Request to Reopen (“Req.”) amended claim 16. Req. 6. The Requester
filed no comments in response thereto. In the Order Remanding Inter Partes
Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner, mailed May 29,
2015, the Board granted the Patent Owner’s Request to Reopen with regard
to claim 16, entering the amendment, as well as the comments submitted by
the Patent Owner.
Pursuant to 37 C.F.R. § 41.77(d), the Examiner issued Examiner’s
Determination on July, 17, 2015 (“Ex. Det.”). In response, the Requester
filed Requester’s Response to Examiner’s Determination Under 37 C.F.R.
41.77(d) on August 17, 2015 (“Req. Cmts.”). The Patent Owner thereafter
submitted Patent Owner’s Comments Under 37 C.F.R. § 41.77(e) on
September 16, 2015 (“PO Cmts.”).
This reopened reexamination is now before the Board for issuance of
a New Decision under 37 C.F.R. § 41.77(f). A New Decision “is deemed to
incorporate the earlier decision, except for those portions specifically
withdrawn.” 37 C.F.R. § 41.77(f).
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Rejected parent claim 2 is reproduced in the ʼ9648 Decision. Claim
16 has been amended by the Patent Owner as follows (Req. 6):
16. The method according to claim 2 wherein said step of
dispensing includes the user directly manually engaging said ink cartridge
and manually squeezing said ink cartridge to dispense said tattoo ink under
pressure.
ANALYSIS
The sole issue before us is whether the amendment to claim 16
overcomes the rejection of claim 16. The Examiner and the Patent Owner
agree that Gvozdic fails to teach the direct manual engagement of the ink
cartridge to dispense ink. See, e.g., PO Cmts. 2-3, Ex. Det. 3-4. The
Requester disagrees, stating:
The medical marking device described in Gvodzic and
claimed in claims 1-6 of Gvodzic comprises a flexible housing
which can be manually squeezed to dispense tattoo ink. The
medical marking device of claims 1-6 of Gvodzic does not
include a handle. It has long been known in the art of medical
treatment to dispense a substance from a flexible container by
directly manually engaging the flexible container, such as
creams from tubes or drops from eyedroppers or the like. See
I/P Engine, Inc. v. AOL Inc., 2014 U.S. App. LEXIS 15667 at
**18 (“Significantly, moreover, the obviousness inquiry ‘not
only permits, but requires, consideration of common
knowledge and common sense.’”)(emphasis in
original)(quoting DyStar Textilfarben GmbH & Co. v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)).
The Examiner recognizes that the medical marking
device of Gvodzic may be directly manually engaged and
squeezed by a user. Determination at 4. Manually engaging
the flexible housing to dispense tattoo ink is both inherent in the
medical marking device described and claimed in Gvodzic, and
implicit from the description in Gvodzic. Accordingly, the
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limitation added by Patent Owner to claim 16 does not
patentably distinguish over the combination of Gvodzic and
either Hughes, Carol or Zinreich for at least these reasons, and
claim 16 as amended should be rejected as obvious.
Req. Cmts. 3-4
While it may be true that Gvozdic’s first embodiment, which does not
include a handle and push button for cartridge deformation, teaches a
flexible cartridge, Gvozdic already includes means for dispensing the ink in
this embodiment. Specifically, as the Patent Owner points out, “Gvozdic
incorporates a weight element 7 to dispense the dye from its housing 2.” PO
Cmts. 2. In this embodiment, the only thing used to dispense the ink is the
weight element.
Gvozdic’s second embodiment, which discusses deforming the
cartridge, also specifically includes a push button to deform the cartridge
and dispense the ink. Id. While we will not go so far as the Patent Owner
and suggest that this necessarily teaches away from the claimed direct user
engagement (Id.), we do agree that the only teaching present in Gvozdic is to
use a push button to indirectly engage the cartridge. We cannot say with any
certainty that manual deformation would work in the same manner as the
push button mechanism taught in Gvozdic, nor do we agree that such a
determination would be obvious merely from the fact that Gvozdic teaches a
flexible cartridge.
Further, as noted above, the Requester asserts that direct manual
engagement is inherent in Gvozdic. The fact that a certain result or
characteristic may occur or be present in the prior art, however, is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (rejection reversed because
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alleged inherency was based on what would result due to optimization of
conditions, not what was necessarily present in the prior art); see also, In re
Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). “To establish inherency, the
extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotations omitted). In relying upon the theory of inherency, the examiner
(or in this case the Requester) must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Here,
we have no evidence, only attorney argument, that one of ordinary skill in
this art would have perceived Gvozdic’s inherent capability for direct
manual engagement.
Additionally, given that Gvozdic already teaches means for
dispensing the ink in the first embodiment by way of weight 7, assuming
that direct manual pressure would be inherent or implicit, as stated by the
Requester, would be mere speculation. When Gvozdic discloses the
desirability of deforming the cartridge, the only teaching present is the use of
indirect deformation via button 18 as taught in the second embodiment.
Accordingly, we agree with the Examiner and the Patent Owner that the
amendment overcomes the teachings of the prior art of record.
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We note that the Patent Owner re-raises the issue of sterilization with
respect to Gvozdic, which has already been decided and which is not
properly before us at this point in the proceedings. As we stated previously:
The Requester correctly points out, however, that Gvozdic
“discloses that the device is sterilized prior to use.” Resp. Br. 6
(citing Gvozdic col. 6, ll. 23–40 and col. 8, ll. 40–55). We
agree with the Requester that sterilizing the device containing
the ink prior to use would reasonably disclose the use of sterile
ink as well.
’9648 Dec. 5. Although this does not affect our present decision regarding
amended claim 16, we note that our position regarding sterilization is
unchanged from the original Decision.

CONCLUSION
We withdraw the rejection of claim 16 as being unpatentable over the
combination of Gvozdic with any of Hughes, Carol, or Zinreich.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

37 C.F.R. § 41.77(f)

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For PATENT OWNER:
CARTER, DELUCA, FARRELL & SCHMIDT, LLP
445 Broad Hollow Road
Suite 225
Melville, NY 11747

For THIRD PARTY REQUESTER:
McCARTER & ENGLISH, LLP HARTFORD
CityPlace I
85 Asylum Street
Hartford, CT 06103-3495