Ex Parte Bertl et al

Board of Patent Appeals and Interferences

Aug 3, 2007

10220606 (B.P.A.I. Aug. 3, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte MATHIAS BERTL, MARC PEUKER, and GABRIELE HAGER 12
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Appeal No. 2007-2072 15
Application No. 10/220,606 16
Technology Center 3700 17
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Decided: August 3, 2007 20
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Before TERRY J. OWENS, STUART S. LEVY, and LINDA E. HORNER, 23
Administrative Patent Judges. 24
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OWENS, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
The Appellants appeal from a rejection of claims 15-21 and 23-39, which are 30
all of the pending claims. 31
THE INVENTION 32
The Appellants claim a device, and disclose that the device is for storing and 33
dispensing a substance such as a dental material (Spec. 1:4-5). The Appellants also 34
claim methods for making and using the device. Claim 15 is illustrative: 35
Appeal 2007-2072
Application 10/220,606
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15. A device, comprising: 1
a first chamber formed by a first foil and a second foil; 2
a closed receptacle in said first chamber; 3
a pouch; and 4
a first selectively-openable passage area disposed between said first 5
chamber and said pouch, wherein 6
said receptacle is openable by applying pressure to said first foil and 7
said second foil such that when opened, a first substance in said first 8
receptacle becomes available to pass through said first chamber and said 9
passage area into said pouch. 10
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THE REFERENCES 13
Sirago US 3,713,779 Jan. 30, 1973 14
Franck US 4,081,077 Mar. 28, 1978 15
Discko US 5,660,273 Aug. 26, 1997 16
Peuker US 6,105,761 Aug. 22, 2000 17
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THE REJECTIONS 19
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 15, 16, 20
18-21 and 23-29 over Discko in view of Sirago; claims 15-21, 23-29 and 32-39 21
over Peuker in view of Sirago; and claims 30 and 31 over Discko in view of Sirago 22
and Franck, or Peuker in view of Sirago and Franck.1 23
OPINION 24
We reverse the aforementioned rejections. We need to address only the 25
independent claims, i.e., claims 15, 34, 36 and 38.2 Each of those claims requires 26

1 A rejection of claims 15-21, 23-27, 32 and 33 under 35 U.S.C. § 103 over Sirago
in view of US 4,008,803 to Smith is withdrawn in the Examiner’s Answer (p. 3).
2 The Examiner does not rely upon Franck for any disclosure that remedies the
deficiency in either Discko and Sirago or Peuker and Sirago as to the independent
claims.
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Application 10/220,606
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1) a closed receptacle in a first chamber, and 2) a selectively openable passage area 1
between the first chamber and a pouch. 2
Rejections over Discko in view of Sirago and 3
over Discko in view of Sirago and Franck 4
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Discko discloses “a single patient dose package for storing, dispensing, and 6
applying a material or medicament that requires an applicator such as a brush, 7
swab, spatula or the like” (Discko, col. 2, ll. 10-13). In the most relevant 8
embodiment the package has in a tray (210, which corresponds to one of the 9
Appellants’ foils) and is covered by a cover (226, which corresponds to the other 10
of the Appellants’ foils) having a medicament well (212, which corresponds to the 11
Appellants’ first chamber) and an applicator well (214, which corresponds to the 12
Appellants’ pouch), between which is an adhesive free section (229) (Discko, 13
col. 5, ll. 46-59). “This adhesive free section forms a channel between the 14
medicament well 212 and the applicator well 214” (Discko, col. 5, ll. 59-61). 15
Squeezing the medicament well forces medicament to pass through the adhesive 16
free section into the applicator well and onto an applicator cotton swab in the 17
applicator well (Discko, col. 5, l. 62 – col. 6, l. 3; figs. 11, 12). 18
Sirago discloses a color comparison kit for detecting substances such as 19
illegal drugs in blood and urine (Sirago, col. 1, ll. 3-14). The kit comprises a 20
sealed, flexible, disposable package having recesses (20-25) containing ampules of 21
liquid chemicals (13, 14, 15) (Sirago, col. 2, ll. 19-27; col. 3, ll. 25-28). The 22
ampules customarily are made of thin glass and have a central portion (19) with a 23
weaken wall that can be easily broken to release the liquid chemical (Sirago, col. 2, 24
ll. 7-17). The released liquids flow through arcuate enlargements (37, 38, 39) and 25
canals (31, 32, 33) to a mixing pocket (30) containing the substance to be analyzed 26
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(Sirago, col. 2, ll. 34-36; col. 2, l. 65 – col. 3, l. 5). “Presence of the enlargements 1
assures that there will be no restriction to the free flow of liquid from the ampuls 2
[sic] when broken, to the mixing pocket and likewise no restriction to venting air 3
or gas from the mixing pocket back to the recesses” (Sirago, col. 2, ll. 39-43). 4
The Appellants argue that Discko’s adhesive-free passage 229 is never 5
closed and, therefore, is not selectively openable, and that Sirago does not have a 6
sealed passage between the ampules and any other portion of the drug testing 7
device (Br. 8; Reply Br. 2-3). 8
The Examiner argues that Discko’s passage 229 is selectively openable 9
because the contents do not move through it from the medicament well to the 10
applicator well until the medicament well is squeezed (Answer 7). The Examiner 11
argues that “[a] channel is not formed until pressure is applied to the device” 12
(Answer 8). The Examiner is incorrect. Discko’s adhesive-free passage initially is 13
open. Medicament does not flow through the passage until the medicament well is 14
squeezed, but that squeezing does not open the passage; it merely passes 15
medicament though an already-open passage. 16
The Examiner argues that a door that is locked, unlocked or ajar is 17
selectively openable because it can be moved from its current position (Answer 7). 18
The Examiner, however, has not established that, like a locked or unlocked closed 19
door, Discko’s passage 229 can be closed, or that like an ajar door, Discko’s 20
passage 229 is closable or is further openable such as, for example, when 21
medicament flows through it. 22
The Appellants argue that Discko and Sirago would not have provided a 23
motivation or suggestion for putting Discko’s medicament in a closed receptacle 24
(Reply Br. 6-7). 25
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The Examiner argues that “[i]t is common and advantageous to provide 1
desired elements in a premeasured amount, such as medicine in a capsule or 2
chemicals in dose bags or bottles, so the user does not have to measure out the 3
individual elements for application in the desired amount” (Answer 8). The 4
Examiner, however, has not established that Discko’s medicament well does not 5
contain the desired application amount or that the amount is any less accurately 6
measured than the amount in Sirago’s ampule, relied upon by the Examiner as 7
corresponding to the Appellants’ closed receptacle (Answer 4). Sirago merely 8
discloses that the ampules are substantially identical in physical form and are 9
adapted to contain a liquid of some specific nature (Sirago, col. 2, ll. 7-10). The 10
Examiner has not pointed out where Sirago discloses that the ampules deliver a 11
precise amount of liquid. 12
The Examiner, therefore, has not established a prima facie case of 13
obviousness of the Appellants’ claimed invention over the combined teachings of 14
either Discko and Sirago or Discko, Sirago, and Franck. 15
Rejections over Peuker in view of Sirago and 16
over Peuker in view of Sirago and Franck 17
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Peuker discloses a device for storing and dispensing a small quantity of a 19
flowable substance such as a dental liquid (Peuker, abstract; col. 1, ll. 14-15). The 20
device comprises sheets (11, 12, which correspond to the Appellants’ foils) having 21
mutually adhering surfaces except in two areas (Peuker, col. 3, ll. 52-53). In one 22
of those areas is a cushioned-shaped compartment (14, which corresponds to the 23
Appellants’ first chamber) for holding a flowable substance (15), and in the other 24
of those areas is a pocket (16, which corresponds to the Appellants’ pouch) for 25
receiving a brush (13) (Peuker, col. 3, ll. 53-57). Between the compartment and 26
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the pocket is a pre-defined break zone (22, which corresponds to the Appellants’ 1
selectively-openable passage area) (Peuker, col. 4, ll. 29-37). 2
The Appellants argue that there would have been no motivation or 3
suggestion for one of ordinary skill in the art to combine Peuker and Sirago 4
(Br. 10-12; Reply Br. 8-10). 5
The Examiner relies upon the same reason for including a closed receptacle 6
in Peuker’s cushion-shaped compartment as was relied upon for including a closed 7
receptacle in Discko’s medicament well (Answer 9). The Examiner has not 8
established that the substance in Peuker’s cushion-shaped compartment is not 9
premeasured adequately or is any less accurately measured than that in Sirago’s 10
ampules. The Examiner’s mere speculation that one of ordinary skill in the art 11
would have included a closed receptacle in Peuker’s cushion-shaped compartment 12
to provide a desired premeasured amount of liquid if not sufficient for establishing 13
a prima facie case of obviousness. 14
We therefore conclude that the Examiner has not established a prima facie 15
case of obviousness over either Peuker in view of Sirago or Peuker in view of 16
Sirago and Franck. 17
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DECISION 1
The rejections under 35 U.S.C. § 103 of claims 15, 16, 18-21 and 23-29 over 2
Discko in view of Sirago, claims 15-21, 23-29 and 32-39 over Peuker in view of 3
Sirago, and claims 30 and 31 over Discko in view of Sirago and Franck, or Peuker 4
in view of Sirago and Franck are reversed. 5
REVERSED 6
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CROWELL & MORING LLP 17
INTELLECTUAL PROPERTY GROUP 18
P.O. BOX 14300 19
WASHINGTON DC 20044-4300 20