Ex Parte Boucherie

Patent Trial and Appeal Board

Apr 27, 2016

12311651 (P.T.A.B. Apr. 27, 2016)

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.
12/311,651 11/09/2009 Bart Gerard Boucherie 740612-218 6706
41972 7590 04/28/2016
LAW OFFICES OF STUART J. FRIEDMAN
28930 RIDGE ROAD
MT. AIRY, MD 21771
EXAMINER
KENNEDY, TIMOTHY J
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
04/28/2016 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
____________

Ex parte BART GERARD BOUCHERIE
____________

Appeal 2014-009065
Application 12/311,651
Technology Center 1700
____________

Before TERRY J. OWENS, ELIZABETH M. ROESEL, and
AVELYN M. ROSS, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies Firma G. B. Boucherie N.V. as the real party in
interest. App. Br. 1.
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STATEMENT OF THE CASE
Claimed Invention
Appellant claims a method of producing a hollow cylindrical syringe
body by injection molding. App. Br. 14 (claim 1); Spec. 1:2–3. The syringe
body and a constituent part thereof are shown in Figures 1 and 2, which are
reproduced below:

Figure 1 shows syringe body 10 including carrier film 12 having a scale
applied thereto. Spec. 2:23–24, 3:7–8. Figure 2 shows thin carrier film 12
with a scale applied thereto, for example, by screen printing. Id. at 2:25,
3:17–18. Carrier film 12 has opening 14 through which a plastic
composition is injected during molding of the syringe body. Id. at 4:10–14.
Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal and is reproduced below from Appellant’s Claims
Appendix:
1. A method of producing, by injection molding in an
injection mold having an inner wall comprising a shaping
surface, a hollow cylindrical syringe body which is provided
with a scale applied in the longitudinal direction, comprising
the steps of
applying the scale to a thin carrier film,
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inserting the carrier film with the scale into the injection
mold prior to the injection molding process, and
injecting a plastic composition into the injection mold
such that the thin carrier film is pressed by said plastic
composition against said shaping surface of the injection mold
so as to lie on the outer surface of the molded hollow
cylindrical syringe body.
App. Br. 14.
References
Ponchaud et al. US 5,604,006 Feb. 18, 1997 (“Ponchaud”)
Szlosek US 6,033,605 Mar. 7, 2000 (“Szlosek”)
Rennert et al. US 6,120,481 Sept. 19, 2000 (“Rennert”)
Kato JP 54076658 June 19, 1979 (“Kato”)2

Rejections
1. Claims 1 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rennert in view of Ponchaud. Final Action 2–4.3
2. Claims 2–6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rennert and Ponchaud in view of Szlosek. Id. at 4–6.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rennert and Ponchaud in view of Kato. Id. at 6–7.
ANALYSIS
Appellant’s arguments are directed to independent claim 1 only.
Appellant states: “[d]ependent claims 2–8 rise or fall with independent
claim 1,” App. Br. 2, and presents no separate argument regarding the
dependent claims, including separately rejected dependent claims 2–7, id. at

2 An English language abstract of Kato was made of record January 18,
2011.
3 Final Action dated December 5, 2013.
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3–13. As a consequence, dependent claims 2–8 stand or fall with
independent claim 1, and we confine our discussion to independent claim 1.
The Examiner finds that Rennert discloses methods for producing a
syringe body by injection molding, including a first embodiment that meets
all limitations of claim 1, except: “the thin carrier film is pressed by said
plastic composition against said shaping surface of the injection mold so as
to lie on the outer surface of the molded hollow cylindrical syringe body.”
Final Action 2–3 (citing Rennert Figs. 2 and 4, 3:16–30, 5:49–6:5, 6:17–60).
The Examiner finds that Rennert teaches another embodiment in which
“scale 44 is over molded to the outside of the syringe barrel” and “scale 44
would have to be pressed against the shaping surface of the mold.” Id. at 3
(citing Rennert Fig. 6, 4:40–54). The Examiner acknowledges that scale 44
is not a thin carrier film. Ans. 8. Nevertheless, the Examiner finds and
Appellant acknowledges that Rennert teaches two possible locations for the
scale—either “on the outside of the syringe or within the syringe walls.” Id.;
Reply Br. 2.
The Examiner finds that Ponchaud teaches a method for producing an
injection molded product with a label on the outside surface of the product,
including placing a label on the surface of an injection mold and then
injecting molding plastic so as to force the label against the mold. Final
Action 4 (citing Ponchaud Fig. 6 (flow chart)). The Examiner concludes
that, based on the teachings of Rennert and Ponchaud, it would have been
obvious to one of ordinary skill in the art to place the label for a product in
the mold such that the label is pressed against the shaping surface of the
mold and ends up on the outer surface of the final product. Id. According to
the Examiner, Rennert and Ponchaud teach known options for how to place
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a label in a mold during an injection molding process, and one of ordinary
skill in the art would have “good reason” and “anticipated success” in
pursuing either option, depending on the desired location of the label in the
final product. Id. In addition, the Examiner finds that, by placing the label
on the outer surface, the resulting product would have superior properties
due to the force of the injection overmolding process on the label, as taught
by Ponchaud. Ans. 4.
Appellant argues that Rennert does not teach the limitations of claim
1, that Ponchaud requires additional steps not contemplated by claim 1, that
Ponchaud’s teachings are not applicable to the embodiments taught by
Rennert, that, by applying Ponchaud’s teachings to Rennert, many of the
advantages taught by Rennert would be lost, and that the combination of
Rennert and Ponchaud would not result in the method of claim 1. App. Br.
5–12.
Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (“[E]ven assuming that the examiner had failed to make a prima facie
case, the Board would not have erred in framing the issue as one of
‘reversible error.’”).
Appellant’s arguments regarding Rennert alone, App. Br. 5–8, are not
persuasive to show error in the Examiner’s rejection, which is based on the
combined teachings of Rennert and Ponchaud. Final Action 2–4; Ans. 2–4.
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness
is what the combined teachings of the references would have suggested to
one of ordinary skill in the art.”); In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
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references individually where the rejection is based upon the teachings of a
combination of references.”).
We understand that Ponchaud discloses additional steps that are not
recited in claim 1, including adhesively securing label 16 to substrate 12 and
removing protective and release layers 26 and 28. See App. Br. 8–11 (citing
Ponchaud 1:55–2:5, 3:4–4:3). However, because claim 1 uses the open-
ended transitional term, “comprising,” the presence of additional, unrecited
steps is not excluded. See, e.g., Solvay S.A. v. Honeywell Int’l Inc., 742 F.3d
998, 1005 (Fed. Cir. 2014) (“The well-established meaning of ‘comprising’
in a method claim indicates that the claim is open-ended and allows for
additional steps.”) (internal quotes and citation omitted); In re Baxter, 656
F.2d 679, 686 (CCPA 1981) (“the term ‘comprises’ permits the inclusion of
other steps, elements, or materials”). Accordingly, even if one of ordinary
skill in the art were to include the additional steps noted by Appellant when
combining the teachings of Rennert and Ponchaud, we are not persuaded
that the resulting method would be outside the scope of claim 1.
Appellant argues that the cited teachings of Ponchaud are not
applicable to Rennert’s carrier film embodiment “because Rennert . . .
intentionally embeds its carrier film between the inner and outer surfaces to
enhance the accurate and permanent placing of the scale, to facilitate the
ability to mold the scale to 360° around the barrel and to eliminate a
secondary operation.” App. Br. 11 (citing Rennert 6:32–36). Appellant
further argues that utilizing the teachings of Ponchaud would impair the
functionality and advantages of Rennert’s carrier film embodiment,
including the permanent placement of the scale, the ability to mold the scale
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to 360° around the barrel, transparency of the scale, and ease of using the
syringe. Id.; Reply Br. 4.
Appellant’s arguments are not sufficient to persuade us of reversible
error in the Examiner’s rejection. Regarding the permanent placement of the
scale, Appellant’s attorney argument, unsupported by evidence, does not
persuasively refute the Examiner’s finding that, when using the label
overmolding process of Ponchaud, “the force of the injection molding
process helps to embed the label in the product, which creates a long lasting
and superior adhesion to the rest of the product.” Ans. 4 (citing Ponchaud
3:22–29). Regarding the ability to mold the scale to 360° around the barrel,
transparency of the scale, and ease of use of the syringe, Appellant does not
direct us to evidence or technical reasoning sufficient to persuade us that
these features and advantages would not have been achievable by a person
of ordinary skill in the art when applying Ponchaud’s teachings to Rennert’s
carrier film embodiment. Rennert, Figs. 2, 4, 3:16–30, 6:17–60; Ponchaud,
Abstract, Fig. 6, 1:55–2:16, 3:57–66. For example, Appellant does not
explain why one of ordinary skill in the art would not have been able to
mold the scale to 360° around the barrel using the steps described in
Ponchaud for placing a label into a mold cavity and injecting plastic
material. Ponchaud, Fig. 6, 3:57–66. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (attorney argument cannot take the place of evidence).
Furthermore, even if Appellant were correct that 360-degree
placement of the scale would not be possible using Ponchaud’s injection
molding method, the loss of one of several advantages disclosed by Rennert
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and Ponchaud is not sufficient to rebut prima facie obviousness. Rennert
6:32–36, 6:55–57 (advantages of thin carrier film embodiment include
“accurately and permanently placing the scale” and eliminating secondary
printing operation); Ponchaud 3:22–29 (advantages of Ponchaud’s method
include “a superior and long-lasting adhesion” of label to product and
resistance to damage during subsequent shipping, handling, and use). See In
re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (“the Board properly
found that one of ordinary skill would have been motivated to pursue the
desirable properties taught by Wong, even at the expense of foregoing the
benefit taught by Gross”).
Appellant argues that the combination of Rennert and Ponchaud
would “not amount to the method of . . . claim 1 . . . since the carrier film
would not have been placed within the mold cavity prior to forming the
substrate to which the film will become attached.” App. Br. 11; see also id.
at 10 (“[c]laim 1 does not contemplate inserting the substrate to which the
carrier film will become affixed into the mold cavity prior to the molding
operation”); Reply Br. 3 (Ponchaud’s “label 16 does not lie on the outer
surface of the molded sy[r]inge body [18] but rather is spaced from the
syringe body by the decorative insert [12]”).
We are not persuaded by Appellant’s argument for two reasons: First,
the argument incorrectly assumes that, when combining the teachings of
Rennert and Ponchaud, one of ordinary skill in the art would have used a
laminated label structure, as disclosed in Ponchaud (label 16 adhesively
secured to substrate 12, Ponchaud, Abstract, Figs. 3, 5), rather than a simple
label structure, as disclosed in Rennert (tubular foil 34 having scale 38,
Rennert, Figs. 2, 4 and 7, 6:22–23, 6:40–43, 6:51–54). Second, Appellant’s
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argument incorrectly assumes that only Rennert’s label structure meets the
limitations of claim 1. We agree with the Examiner, Ans. 9, that the term
“thin carrier film” is broad enough to read on substrate 20 of Ponchaud,
which is described as “a thin sheet of thermoplastic material.” Ponchaud
4:23–25. Furthermore, the step of “applying the scale to a thin carrier film”
is broad enough to read on Ponchaud’s step of adhesively securing label 16
to substrate 12. Ponchaud, Fig. 6, 3:51–54. Accordingly, the Examiner’s
rejection is consistent with the claim and adequately supported by the
evidence, regardless of which label structure would have been adopted by
one of ordinary skill in the art.
Based on the foregoing, the weight of the evidence supports the
Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejections of
claims 1–8 are sustained.

CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED