Ex Parte Boucherie

Board of Patent Appeals and Interferences

May 2, 2011

10530351 (B.P.A.I. May. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BART GERARD BOUCHERIE
____________

Appeal 2010-002109
Application 10/530,351
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1 and 3-16.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 Final Office Action mailed Feb. 15, 2008 (“Final”).
2 Appeal Brief filed Jul. 14, 2008 (“App. Br.”).
App
App

med
plun

15:2
colla
a hea
conf
7 of
form
pisto
throu
pisto
plast
on th

3 Spe
eal 2010-0
lication 10
The inve
ical syring
Figure
ger 3 mad
Plunger
9-30.) Plu
r 7 on a fa
d and incl
ined by an
the plunge
Figures
ation of pl
n body 5 i
gh a nozz
n body 5.
ic through
e piston b

cification
02109
/530,351
ntion is di
es. (Spec.
1 above ill
e accordin
3 includes
nger body
r end. (Sp
udes “an e
inwardly
r body 4.”
4-8 illustra
unger 3. (
s formed p
le located
(Spec. 19
the rear si
ody can be

filed Apr.
rected to m
3 1:7-8.) A
ustrates a
g to the m
a plunger
4 prefera
ec. 16:2-5
xcavation
directed co
(Spec. 16
te various
Spec. 15:1
rior to the
in the side
:25-27; see
de 8, “the
easily ex

6, 2005.
2
ethods of
pplication

syringe 1 w
ethod of th
body 4 an
bly has a c
.) Piston b
9 on the r
llar 10, w
:7-12.)
stages of
-2.) From
plunger b
of the cav
also, Spe
formation
cluded.” (
manufact
Figure 1
hich is eq
e inventio
d a piston
ross-shap
ody 5 is m
ear side 8,
hich coop
the moldin
these figu
ody 4 by i
ity 23A fo
c. 5:9-13.)
of flash li
Spec. 5:13
uring plun
is reprodu
uipped wi
n. (Spec.
body 5. (
ed shaft 6
ade in the
which is p
erates with
g operatio
res, it is c
njecting p
rming rea
By injec
nes and ga
-15.)
gers for
ced below
th a
14:25-26.
Spec.
and a
shape of
artially
the collar
n during
lear that
lastic
r side 8 of
ting the
te points
:
)

App
App

plun
pene
24:1
mate
body
plun
body
Chib
(Ans
Chib

4 Ch
5 Exa
6 S. W
eal 2010-0
lication 10
Applicat
Figure
In the em
ger 3 protr
trate into a
-12.) The
rial of the
4 (Spec. 2
ger body 4
5 (see Fig
Appeale
1. cl
a4 (Ans. 5
2. cl
. 4);
3. cl
a in view

iba, 2001/2
miner’s A
illiam Je
02109
/530,351
ion Figure
17 above
has an a
bodiment
udes front
narrowed
part 48 is
piston bod
4:12-13,
and part 4
. 18; Spec
d claims 1
aims 1 and
3-4);
aim 16 und
aims 6 and
of Sorense

59031 (20
nswer ma
ntzen, U.S
17 is repr
illustrates
ccessory p
shown in
ally from t
outlet par
made from
y 5, and i
17-18) by
8 into a m
. 24:28-25
and 3-16
3-5 under
er 35 U.S
7 under 3
n7 (Ans. 4

01).
iled Aug.
. Patent 5,
3
oduced be
a syringe
art 48. (S
Figure 17
he front si
t 46 of the
a materia
s made in
injecting th
old agains
:2).
stand rejec
35 U.S.C
.C. §102(b
5 U.S.C. §
-5);

18, 2009.
782,803 (
low:
in which t
pec. 24:7-
, accessory
de of the p
syringe c
l which di
one piece w
e materia
t the prev
ted as foll
. §102(b)
) as antici
103(a) as
1998).
he plunge
10.)
part 48 o
iston bod
ylinder 2.
ffers from
ith the pl
l used to f
iously form
ows:
as anticipa
pated by J
unpatenta
r 3
f the
y 5 and ca
(Spec.
the
unger
orm the
ed piston
ted by
entzen6
ble over
n

Appeal 2010-002109
Application 10/530,351
4
4. claim 8 under 35 U.S.C. §103(a) as unpatentable over Chiba
(Ans. 5);
5. claims 9-13 under 35 U.S.C. §103(a) as unpatentable over
Chiba in view of Schwartz8 (Ans. 5-7); and
6. claims 14 and15 under 35 U.S.C. §103(a) as unpatentable over
Chiba in view of Reynolds9 (Ans. 7).
In the rejections under 35 U.S.C. §103(a), the Examiner relies on the
identical findings made in rejecting claim 1 as anticipated by Chiba. (Ans.
4-7.) Appellant’s arguments are limited to independent claims 1 and 16.
(App. Br. 8), which are reproduced below from the Claims Appendix to the
Appeal Brief:
1. Method for manufacturing plungers for medical syringes, said
plunger comprising at least two parts including a longitudinal plunger body
made of plastic and a piston body provided at a front end of the plunger
body, which piston body comprises a plastic which is softer than the plastic
of the plunger body, wherein said plunger, or at least a part of the plunger, is
formed by first manufacturing the piston body and then the plunger body, or
at least a part of the plunger body, by means of injection moulding, and
wherein the plunger body, or said part of the plunger body, is injected
against the piston body, said piston body having a front side and a side wall
and being formed such that the front side and side wall thereof are free of
any flash lines and/or gate points for the plastic.
16. Method for manufacturing plungers for medical syringes having
at least a piston body comprising forming a part of the piston body at the

7 Jens O. Sorensen, U.S. Patent 5,030,406 (1991).
8 Boris Schwartz, U.S. Patent 3,659,749 (1972).
9 David L. Reynolds, U.S. Patent 4,861,335 (1989).
Appeal 2010-002109
Application 10/530,351
5
location of the piston body which protrudes frontally from a front side of the
piston body and which, when the plunger is located in a syringe, can
penetrate at least partially through an outlet of the syringe, wherein said
piston body part is formed of a material which is different from the material
of the piston body, and wherein the materials forming the piston body on the
one hand and the aforesaid protruding part on the other hand are injected
against one another such that said piston body is made in one piece with a
plunger body belonging to the plunger.
We decide the following two issues in favor of Appellant, and,
therefore, identify them as dispositive of the appeal as to claim 1and its
dependent claims 3-15, and as to claim 16, respectively: (1) did the
Examiner reversibly err in finding that Chiba discloses a method of
manufacturing a plunger in which the resultant piston body front and side
walls are free of flash lines and gate points for the plastic as recited in claim
1? and (2) did the Examiner reversibly err in finding that Jenkins discloses a
method of manufacturing a plunger in which the piston body includes a
protruding part that is made in one piece with the plunger body?
Issue (1): did the Examiner reversibly err in finding that Chiba
discloses a method of manufacturing a plunger in which the
resultant piston body front and side walls are free of flash lines
and gate points for the plastic as recited in claim 1?

Appellant argues that Chiba’s gasket 6 (corresponding to the piston
body of appealed claim 1) is formed by injecting elastomer into the mold at
the front side of the gasket, creating a gate point 23 as well as flash lines on
the side walls of the gasket 6 along the split between the molds. (App. Br.
10-11 (citing Chiba ¶¶ [0015-0016] and Figs. 2(a)-(c)).) The Examiner
argues that the plunger illustrated in Chiba Fig. 1 is free of gate points and
Appeal 2010-002109
Application 10/530,351
6
flash lines and speculates that Chiba may perform a finishing step to remove
the gate point and flash lines, noting that appealed claim 1 does not preclude
additional finishing steps. (Ans. 8.)
“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claims limitations, it
anticipates.” Leggett & Platt, Inc. v. VUTEK, Inc., 537 F.3d 1349, 1354
(Fed. Cir. 2008) (citing Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1376 (Fed. Cir. 2005) (quoting In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349 (Fed. Cir. 2002))). “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.” Therasense, Inc. v.
Becton, Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citations
omitted). We are in agreement with Appellant that the Examiner’s findings
are insufficient to establish that Chiba inherently performs a step to remove
the flash lines and gate point created in the disclosed molding process. As
explained by Appellant, there are a number of reasons why the flash lines
and gate point formed in the gasket during the Fig. 2(a)-(c) molding process
might not be illustrated in the syringe shown in Fig. 1, though actually
present in the final molded product. (Rep. Br.10 5-7.)
Accordingly, we do not sustain the rejection of claim 1, nor do we
sustain the rejections of dependent claims 3-15 (i.e., grounds of rejection 1
and 3-6 supra pp. 3-4), as these rejections are all based on the Examiner’s
unsupported finding.

10 Reply Brief filed Nov. 25, 2008.
Appeal 2010-002109
Application 10/530,351
7

Issue (2): did the Examiner reversibly err in finding that Jenkins
discloses a method of manufacturing a plunger in which the piston body
includes a protruding part that is made in one piece with the plunger body?

The Examiner finds that Jentzen discloses a syringe having a plunger
200 with an elongated end 202 and a sealing means 300 which correspond,
respectively, to Appellants’ claimed plunger body, protruding part, and
piston body. (Ans. 9, Response to Argument.) The Examiner notes that
Jentzen teaches “the piston [body] 300 is in a recess, not easily available or
accessed, and surrounded by [plunger] 200.” (Ans. 9 (citing Jentzen Fig. 7
and col. 5, ll. 15-16).) According to the Examiner, “it follows that the
material for the plunger can reasonably be injection molded against and
around the piston material, to meet the claimed ‘injected against one
another,’ in order for the piston and plunger bodies to be made in one piece,
i.e. contained within one piece.” (Ans. 9.)
Appellant argues there is neither an explicit disclosure in Jentzen nor
any other evidentiary support for the Examiner’s finding that elements 300
and 202 are injected against one another such that they are formed in one
piece. (Rep. Br. 8-9; see generally, App. Br. 12-16.) Appellant notes the
above-cited disclosure in Jentzen actually describes sealing means 300 as “a
twin-lobed elastomeric donut which rides in a recess on the plunger”
(Jentzen col. 5, ll. 15-16). (Rep. Br. 8; see also App. Br. 16.) Appellant
maintains Jentzen most likely applies the elastomeric donut 300 to plunger
200 by simply expanding it, placing it within the recess and then allowing it
to contract and sit within the recess. (Rep. Br. 9.)
Appellant has again persuaded us that the Examiner’s findings are
based on probabilities and possibilities and, as such, are insufficient to
Appeal 2010-002109
Application 10/530,351
8
establish Jentzen inherently discloses the claim 16 step of injecting the
materials forming the piston body and the protruding part against one
another such that the piston body is made in one piece with a plunger body
belonging to the plunger.
Accordingly, we do not sustain the rejection of claim 16 (i.e., ground
of rejection 2 supra p. 3).

REVERSED

tc