Ex Parte 6877530 et al

Patent Trial and Appeal Board

Sep 28, 2015

95000335 (P.T.A.B. Sep. 28, 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.
95/000,335 01/11/2008 6877530 20010-013RX1 6157
118075 7590 09/29/2015
Baxter Corporation Englewood c/o Marsh Fischmann &
Breyfogle LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2015 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
____________

INTELLIGENT HOSPITAL SYSTEMS LTD.
Requester

v.

FORHEALTH TECHNOLOGIES, INC.
Patent Owner
____

Appeal 2015-007256
Inter partes Reexamination Control No. 95/000,335
Patent 6,877,530 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, DANIEL S. SONG, and BRETT C. MARTIN
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

NEW DECISION ON APPEAL UNDER § 41.77(f)

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BACKGROUND
On August 24, 2012, the Board of Patent Appeals and Interferences
1

entered a Decision reversing the Examiner's refusal to adopt the rejections of
claims 1-15 and 21-40 as obvious under 35 U.S.C. § 103(a) over Hochman
in view of other cited prior art in Appeal 2012-002609 (the '2609 Decision).
Claims 1 and 12 are the sole independent claims. The Board's reversal in
that regard constituted a new ground of rejection pursuant to 37 C.F.R. §
41.77(a).
The '2609 Decision provided the Patent Owner with two options
under 37 C.F.R. § 41.77(b): (1) to file a response requesting reopening of
prosecution before the Examiner; or (2) to request that the proceeding be
reheard before the Board upon the same record. On September 24, 2012, the
Patent Owner filed a response requesting that prosecution be reopened
before the Examiner and submitted an amendment to the claims. On
October 24, 2012, the Third Party Requester filed comments on the Patent
Owner's response and the declaration of Dr. Dieter Haemmerich. On
January 30, 2013, the Board issued an Order remanding the case to the
Examiner for further examination.
On September 26, 2013, the Board issued an Order vacating the
previous Remand to the Examiner and notifying the Patent Owner of defects
in its Request to Reopen Prosecution with a fourteen-day response period.
See Order Vacating Remand and Notice of Defective Patent Owner
Response, mailed September 26, 2013. On October 8, 2013, Patent Owner

1
On September 16, 2012, the "Board of Patent Appeals and Interferences"
became the "Patent Trial and Appeal Board" (hereinafter collectively
referenced as the "Board").
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filed a Corrected Request to Reopen Prosecution and Response Pursuant to
37 C.F.R. § 41.77(b) (“Patent Owner’s Corrected Request to Reopen
Prosecution”) and on October 22, 2013, Requester filed Comments By Third
Party Requester Under 37 C.F.R. § 41.77(c) (“Requester Comments”).
On November 14, 2013, the Board issued another Order notifying
Patent Owner of a missing page in the filing of October 22, 2013. In
response to that Order, Patent Owner submitted the complete Corrected
Request to Reopen Prosecution on November 18, 2013 in which claims 16-
20, 28, 30, 31, and 38-40 were cancelled and claim 41 was added. On
January 7, 2014, the Board remanded the case to the Examiner. On March
12, 2014, the Examiner issued an Examiner's Determination after Board
Decision with New Grounds of Rejection. In that Determination, the
Examiner:
1. Determined that the Patent Owner overcame the rejection of claims
1-11, 21, and 36 as unpatentable over Hochman and Ortiz.
Determination 4.
2. Determined that the Patent Owner did not overcome the rejection
of claim 12 as unpatentable over Hochman, Ortiz, and Fonss.
Determination 6.
3. Determined that the Patent Owner did not overcome the rejection
of claims 13-15, which depend from claim 12, for the same reasons
as claim 12. Determination 8.
4. Determined that the Patent Owner overcame the rejection of claims
25-27, which depend from claim 1, due to the amendment made to
claim 1. Id.
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5. Determined that the Patent Owner did not overcome the rejection
of claims 29 and 32, which depend from claim 12 for the same
reasons as claim 12, but also determined that the Patent Owner
overcame the rejection of claims 33 and 34,
2
which depend from
claim 1, due to the amendment made to claim 1. Determination 9.
6. Determined that the Patent Owner overcame the rejection of claims
35 and 37, which depend from claim 1, due to the amendment
made to claim 1. Determination 9-10.
7. Determined that the Patent Owner did not overcome the rejection
of claims 22-24, which depend from claim 12 for the same reasons
as claim 12. Determination 10.
8. Determined that Patent Owner's new claim 41, which depends
from claim 1, is patentable due to the amendments made to claim
1. Id.
9. The Examiner further declined to adopt the Requester's proposed
rejections under 35 U.S.C. §112, first and second paragraphs, of
claims 1-11, 21, 25-27, and 32-35.
3

DISCUSSION
Pursuant to 37 C.F.R. § 41.77(f) and the new grounds of rejection
issued in the '2609 Decision, the Board hereby "reconsiders the matter and

2
As noted infra, claims 33 and 34 depend from claim 12, not claim 1.
3
We note that while the Requester proposed rejections under
35 U.S.C. § 112 in its Comments dated October 24, 2012, no such proposed
rejections were restated in the most recent Comments dated October 22,
2013, so it is not apparent that the Requester even maintains the proposed
rejections; because, however, the Examiner addressed them in the
Determination, we will likewise address the Examiner's Determination on
these issues.
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issue[s] a new decision. The new decision…incorporate[s] the earlier
['2609] Decision, except for those portions specifically withdrawn." We
withdraw the portions of the prior Decision that relate to the rejection of
claim 1 and its dependent claims involving Hochman and Ortiz.
The Examiner's Determination is hereby adopted and incorporated by
reference. Intelligent Hospital Systems, Ltd. did not comment on the
Examiner's determination that the Patent Owner's amendment overcame the
rejection of claim 1, and thus also the rejection of its dependent claims. The
issues before us basically are whether the Patent Owner's proposed
amendments of the two independent claims, claims 1 and 12, overcome the
proposed rejections.
Rejections of Claim 1 and Its Dependent Claims
In response to the rejection at issue, the Patent Owner added the
following language to claim 1:
an automated tip cap remover comprising one of the plural
stations for removing a tip cap from one syringe seated in the
indexed apparatus prior to the syringe being received by the
adjustable plunger extension mechanism, the tip cap remover
being configured to place the removed tip cap at a remote
location at which the tip cap is released from the tip cap
remover, the tip cap being subsequently replaced on the seated
syringe after the plunger is extended by the adjustable plunger
extension mechanism.
The Requester did not provide any comment as to this amendment. As
noted above, the Examiner determined that this language overcame the
rejection of claim 1.
As the Examiner points out, the "combination of Ortiz and Hochman
does not teach an automated tip cap remover for removing a tip cap that is
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configured to replace the cap on the seated syringe after it is removed from
the seated syringe" and that the combination "removes the cap and transfers
the cap into a collective receptacle." Determination 5. We agree with the
Examiner that the "combination does not have the capability of replacing the
same cap onto the seated syringe." Id. Accordingly, we conclude that the
Examiner properly determined that the amendment overcomes the rejection
of claims 1-11, 21, and 36. Additionally, because the combination of
Hochman and Ortiz is relied upon for the aspects of claim 1 that are now
overcome and these missing aspects are not provided by any of the other
secondary references, we further agree with the Examiner's determination
that the Patent Owner has overcome the rejection of dependent claims 25-27,
35, and 37. Also, because new claim 41 depends from claim 1, it likewise is
not subject to the rejections involving Ortiz and Hochman.
Rejections of Claim 12 and Its Dependent Claims
In response to the rejection at issue, the Patent Owner added the
following language to claim 12:
a fluid transfer device configured to deliver an amount of fluid
into a space defined within the syringe barrel of the seated
syringe, the space resulting from the extension of the plunger
by the adjustable plunger extension mechanism.
According to the Patent Owner, "the claimed adjustable plunger extension
mechanism moves the plunger to create an empty space (having a defined
volume) within the syringe barrel" whereas " it is not possible and/or is
completely in contrast to the teachings of Hochman that the plunger be
driven in order to create an empty space that is subsequently filled with
fluid." Patent Owner Comments 24.
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As the Examiner states, however, "claim 12 does not require an empty
space let alone a defined volume within the syringe barrel" and that in the
combination of Hochman and Ortiz, "the plunger is drawn out resulting in a
vacuous space in the barrel while at the same time the fluid delivery device
pushes fluid into the barrel of the syringe." Determination 7. Accordingly,
we agree with the Examiner that "[t]he combination of Ortiz and Hochman
does teach all the elements" of the newly amended language of claim 12 and
that the Patent Owner argues limitations that are not actually present in
claim 12 and that the prior art teaches what is claimed. Determination 7-8.
As such, we agree with the Examiner's determination to maintain the
rejection of claim 12 and its dependent claims 13-15, 22-24, 29, and 32-34
4
.
Rejections under 35 U.S.C. § 112
The Examiner declined to adopt the Requester's proposal that claims
1-11, 21, 25-27, and 32-35 be rejected as indefinite because the Patent
Owner introduced ambiguity by claiming two different automated devices
and then generically referring to "an automated device." Determination 11.
This language was contained in an earlier iteration of the claims, but the
offending language was removed and clarified in the most recent version of
claim 1, so this proposed rejection is moot.

4
The Examiner mistakenly states that claims 33 and 34 depend from claim 1
and are allowable for the same reasons as stated with regard to claim 1.
Examiner's Determination 9. As corrected in the Office Communication
dated September 19, 2014, however, claim 33 actually depends from claim
12 and so suffers from the same issue with respect to claim 12 that has not
been overcome. The same applies to claim 34, which depends from claim
33.
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The Examiner also declined to adopt the Requester's proposal that the
same claims be rejected as failing to comply with the written description
requirement because the addition of an "automated device for removing a tip
cap" is an attempt to claim a genus and the patent does not have support for
the full scope of the claim. Determination 13. We agree with the Examiner
that the Patent's description of tip cap gripper unit 400 sufficiently teaches
this limitation and that "[o]ne skilled in the art would understand that the
specific mechanism of removing the tip cap is unimportant, i.e. mechanical
gripping" and that "it is the overall automated mechanism that results in the
removal of the cap that is supported by the specification." Id. Accordingly,
to the extent that this rejection is still under consideration and was not
dropped by the Requester, by not restating it in its most recent Comments,
we agree with the Examiner's decision not to adopt this rejection.
DECISION
We agree with the Examiner's determination that claims 1-11, 21, 25-
27, 35-37, and 41 have been shown to be patentable.
We also agree with the Examiner's determination that claims 12-15,
22-24, 29, and 32-34 have not been shown to be patentable.
Requests for extensions of time in this proceeding are governed by
37 C.F.R. §§ 1.304, 1.956, and 41.79(e).
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.
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AFFIRMED

Patent Owner:

Baxter Corporation Englewood c/o Marsh Fischmann &
BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver CO 80237

Third Party Requester:

Greg H. Gardella
OBLON SPIVAK MCCLELLAND
MAIER & NEUSTADT LLP
1904 Duke Street
Alexandria, VA 22314