Ex parte Bydlon et al.

Board of Patent Appeals and Interferences

Aug 22, 2001

08868774 (B.P.A.I. Aug. 22, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROLAND JOSEPH BYDLON and DOUGLAS DAVID HANSEL
____________
Appeal No. 2000-0652
Application No. 08/868,774
____________
ON BRIEF
____________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge, and NASE, Administrative Patent
Judge.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4 to 12, 25, 26 and 29 to 31, which are
all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 08/868,774
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Application No. 08/868,774
BACKGROUND
The appellants' invention relates to medication
dispensing devices (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ben Moura 3,656,472 Apr.
18, 1972
Balkwill 5,279,586 Jan. 18,
1994
Claims 1, 5 to 7, 9 to 12 and 29 to 31 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Ben Moura.
Claims 4 and 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Ben Moura.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Balkwill in view of Ben Moura.
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Application No. 08/868,774
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 17,
mailed December 15, 1999) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 16, filed November 26, 1999) and reply brief (Paper
No. 18, filed January 24, 2000) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 1, 5 to 7, 9
to 12 and 29 to 31 under 35 U.S.C. § 102(b).
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Application No. 08/868,774
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). It is well established that an anticipation rejection
cannot be predicated on an ambiguous reference. Thus,
statements and drawings in a reference relied on to prove
anticipation must be so clear and explicit that those skilled
in the art will have no difficulty in ascertaining their
meaning. See In re Turlay, 304 F.2d 893, 899, 134 USPQ 355,
360 (CCPA 1962). Furthermore, under principles of inherency,
when a reference is silent about an asserted inherent
characteristic, it must be 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. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). As the
court stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981)(quoting Hansgirg v. Kemmer, 102 F.2d 212,
214, 40 USPQ 665, 667 (CCPA 1939)):
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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. [Citations
omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the performance
of the questioned function, it seems to be well
settled that the disclosure should be regarded as
sufficient.
We find ourselves in agreement with the appellants'
position (brief, pp. 7-10) that independent claims 1 and 29
are not anticipated by Ben Moura. In that regard, we agree
with the appellants that the limitations that the gripping
layer be "formed from a material that is softer than a
material used to form the portion of said base covered by said
gripping layer" as recited in claim 1 and the limitation that
the gripping layer be "formed of a material that is softer
than a material used to form the portion of the base member
covered by said gripping layer" as recited in claim 29 are not
met by Ben Moura.
Ben Moura discloses an instrument for parenteral
penetration of a needle. As illustrated in Figures 1 to 3 the
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Application No. 08/868,774
instrument comprises essentially a body 1, a s1iding tubular
support 2, a container 3, a hollow needle 4, a mouthpiece 5, a
propulsion spring 6 and a latch 7. Ben Moura teaches (column
2, lines 32-39) that the instrument body 1 may be formed of
plastic material or of metal and, is of elongated shape and
has a configuration such as to afford a convenient grip for
the user. As shown in Figures 2-3, the body 1 is provided
with hollowed-out portions 11 and in which the operator's
fingers may be placed in order to ensure a perfect grip. The
sliding support 2 is constituted by a tubular member which is
capable of sliding axially within a bore 14 of the body 1. In
Figure 3, the sectional view of the sliding support 2 appears
to be hatched to indicate metal.
It is the position of the examiner (answer, p. 4) that
Ben Moura teaches a gripping layer of plastic (i.e., body 1)
covering a metal base (i.e., sliding support 2) and that it
would be inherent that the plastic material of body 1 would be
a softer material than the metal support 2. We do not agree.
In that regard, it is not clear from the disclosure of Ben
Moura that the missing descriptive matter (i.e., that the
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Application No. 08/868,774
plastic material of body 1 would be a softer material than the
metal support 2) is necessarily present, and that it would be
so recognized by persons of ordinary skill. In fact, in view
of Ben Moura's specific teaching that the body 1 be either
plastic or metal, it is our opinion that Ben Moura suggests
that the material of body 1 have the same hardness/softness as
the material of support 2. Additionally, we note that there
is no evidence in the record establishing that all plastic
materials are softer than all metals.
For the reasons set forth above, the examiner has failed
to establish that all the limitations of claims 1 and 29 are
met by Ben Moura. Accordingly, the decision of the examiner
to reject independent claims 1 and 29, and claims 5 to 7, 9 to
12, 30 and 31 dependent thereon, under 35 U.S.C. § 102(b) is
reversed.
The obviousness rejection of claims 4 and 8
We will not sustain the rejection of dependent claims 4
and 8 under 35 U.S.C. § 103 as being unpatentable over Ben
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Application No. 08/868,774
Moura for the reasons set forth above with respect to
independent claim 1.
The obviousness rejection of claim 26
We will not sustain the rejection of claim 26 under
35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
We find ourselves in agreement with the appellants'
position (brief, pp. 12-13) that independent claim 26 is not
rendered obvious by the combined teachings of Balkwill and Ben
Moura. In that regard, we agree with the appellants that the
limitation that the gripping layer be "formed from a material
that is softer than a material used to form the portion of
said base covered by said gripping layer" as recited in claim
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Application No. 08/868,774
26 is not suggested by the combined teachings of Balkwill and
Ben Moura.
The examiner's rejection (answer, pp. 5-6) of claim 26 is
based on the premise that Ben Moura suggests providing
Balkwill's pen with a gripping layer as claimed. We find this
position of the examiner to be untenable for the reasons set
forth above with respect to independent claim 1. That is, Ben
Moura does not suggest a gripping layer be formed from a
material that is softer than a material used to form the
portion of the base covered by the gripping layer.
Accordingly, the decision of the examiner to reject claim 26
under 35 U.S.C. § 103 is reversed.
The obviousness rejection of claim 25
We sustain the rejection of claim 25 under 35 U.S.C. §
103.
Claim 25 reads as follows:
A medication delivery apparatus comprising:
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Application No. 08/868,774
a housing elongated in an axial direction, said
housing comprising a housing exterior periphery and a
length extending between forward and rearward axial ends;
a container of medication mounted to said housing;
an outlet in flow communication with said container
to receive medication forced therefrom;
a drive assembly comprising an actuator, said
actuator advanceable toward said housing in said axial
direction from a first position beyond said rearward
axial end of said housing to a second position to deliver
a dosed quantity of medication, said drive assembly
operatively connected with said container to force said
dosed quantity of medication therefrom and through said
outlet upon movement of said actuator from said first
position to said second position; said housing
exterior periphery comprising a projecting abutment for
digit engagement, said abutment comprising an
ergonomically curved surface axially arranged along said
housing length for abutting contact by a first digit of a
hand of a user when said housing is grasped within the
hand of the user such that a second digit of the hand of
the user may operate said actuator, whereby abutting
contact of the first digit with said abutment permits
application of a generally axial force by the first digit
on said abutment in a direction generally opposite to an
axial force applied to said actuator during advancement
of said actuator from said first position to said second
position; and
a dosage member operable to control said dosed
quantity of medication delivered by said drive assembly.

Balkwill discloses an injection device 10 for injecting
insulin or other medication. As shown in Figures 1-3, the
device includes an adjusting knob 12, an upper body 14, a
center body 16, and a transparent housing 18. All of these
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Application No. 08/868,774
elements have a generally cylindrical configuration, and are
arranged coaxially to define a generally cylindrical housing
20 which can easily be handled by a patient or medical
attendant. As shown in Figures 1, 5b and 7-9, a plunger 22 is
at least partially positioned within the portion of the
injection device housing 20 defined by the adjusting knob 12,
upper body 14 and center body 16. The plunger includes a
hollow, substantially cylindrical body 22a including a band of
radially projecting ribs 22b extending
outwardly therefrom. A pair of opposing projections 22c extend
radially inwardly from the front end of the cylindrical body.
The rear end of the plunger includes a pair of projections 22d
which extend radially outwardly from the cylindrical body 22a.
The rear end of the plunger 22 is secured to a push button 24.
The push button fits partially within the adjusting knob 12
when the plunger is fully inserted within the injection device
housing 20.
Balkwill's transparent housing 18 receives a cartridge 46
of the type including an internal piston 46b and a pierceable
seal 46a at one end thereof. Both ends of the transparent
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housing are threaded. One threaded end 18a is employed for
connecting it to the center body 16. The other threaded end
18b is employed
for securing a double ended needle assembly 50. Needle
assembly 50 includes a cannula 50a having a sharp distal end
50b for piercing the skin of the user and a sharp proximal end
50c for piercing seal 46a of the cartridge and a lumen (not
shown) therethrough. Needle assembly 50 includes a cup shaped
hub 50d holding said cannula so that the sharp proximal end
projects outwardly from the interior of the cup-shaped hub.
The cup-shaped hub includes an internal thread which is
compatible with the thread at 18a so that the needle assembly
may be removably attached to housing 18 with its sharp
proximal end piercing pierceable seal 46a to establish fluid
communication between said lumen and the interior of said
cartridge.
The pertinent teachings of Ben Moura have been set forth
previously in our discussion of the anticipation rejection.
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After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Balkwill and claim
25, it is our opinion that the only difference is the
limitation that the housing exterior periphery comprises
a projecting abutment for digit engagement, said abutment
comprising an ergonomically curved surface axially
arranged along said housing length for abutting contact
by a first digit of a hand of a user when said housing is
grasped within the hand of the user such that a second
digit of the hand of the user may operate said actuator,
whereby abutting contact of the first digit with said
abutment permits application of a generally axial force
by the first digit on said abutment in a direction
generally opposite to an axial force applied to said
actuator during advancement of said actuator from said
first position to said second position.
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious at the
time the invention was made to a person of ordinary skill in
the art to provide the outer surface of Balkwill's housing 20
with a configuration as taught and suggested by Ben Moura's
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Application No. 08/868,774
body 1 having an outer surface with hollowed-out portions so
that the operator's fingers may be placed therein in order to
ensure a perfect grip as taught by Ben Moura.
The appellants' argument (brief, pp. 10-14; reply brief,
p. 3) that the rejection of claim 25 under 35 U.S.C. § 103 is
in error is not persuasive for the reasons that follow.
First, for the reasons set forth above, it is our view
that the combined teachings of the applied prior art are
suggestive of the claimed invention without the use
impermissible hindsight. In that regard, Ben Moura clearly
teaches to provide the outer surface of body 1 with hollowed-
out portions 11 so that the operator's fingers may be placed
therein in order to ensure a perfect grip. It is this
teaching of Ben Moura that provides the required motivation
and suggestion to a person of ordinary skill in the art to
have modified Balkwill's device in the manner set forth above.
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Second, the appellants have noted the deficiencies of
each reference on an individual basis, however, it is well-
settled that nonobviousness cannot be established by attacking
the references individually when the rejection is predicated
upon a combination of prior art disclosures. See In re Merck
& Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986).
Lastly, the appellants point out that the patent to Ben
Moura issued in 1972 and that Balkwill's patent application
was filed in 1992. The appellants appear to argue that the
fact that Balkwill did not incorporate the teachings of Ben
Moura into his device is evidence of nonobviousness. This
argument is without merit. Any "failure" of Balkwill to
incorporate the teachings of Ben Moura in his own apparatus is
not evidence of nonobviousness in this case because the
evidence in this record neither shows that Balkwill actually
knew of the patent to Ben Moura nor that he was seeking to
solve a problem that is solved by the appellants' invention.
See In re Touvay, 435 F.2d 1342, 1344, 168 USPQ 357, 359 (CCPA
1971).
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For the reasons set forth above, the decision of the
examiner to reject claim 25 under 35 U.S.C. § 103 is affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 5 to 7, 9 to 12 and 29 to 31 under 35 U.S.C. §
102(b) is reversed; the decision of the examiner to reject
claim 25 under 35 U.S.C. § 103 is affirmed; and the decision
of the examiner to reject claims 4, 8 and 26 under 35 U.S.C. §
103 is reversed.
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Application No. 08/868,774
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS
Senior Administrative Patent Judge
) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/868,774
BRINKS HOFER GILSON & LIONE
ONE INDIANA SQUARE, SUITE 2425
INDIANAPOLIS, IN 46204
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Application No. 08/868,774
JVN/jg