Ex Parte Dodge

Board of Patent Appeals and Interferences

May 19, 2004

09540592 (B.P.A.I. May. 19, 2004)

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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LARRY H. DODGE
____________
Appeal No. 2004-0455
Application No. 09/540,592
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 3, 4
and 6, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/540,592
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BACKGROUND
The appellant's invention relates to a tip for dispensing adhesive sealants and
the like. An understanding of the invention can be derived from a reading of exemplary
claim 1, which appears in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Antanavich WO 97/28834 Aug. 14, 1997
(PCT Application)
Tovey EP 858 775 A1 Aug. 18, 1998
(European Patent Application)
Claims 1, 3, 4 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Antanavich in view of Tovey.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 12) and the final rejection (Paper No. 7) for the examiner's complete
reasoning in support of the rejection, and to the Brief (Paper No. 11) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
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Application No. 09/540,592
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1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is directed to improvements in dispensing tips for
dispensing adhesive tissue sealants and other liquid preparations that require mixing of
multiple components immediately prior to use. Among the features recited in
independent claim 1 are a first rigid section having at least two lumens therethrough, a
second rigid section having an opening for dispensing material and comprising at least
one static mixing element, and a flexible section interposed between the first and
second rigid sections
wherein the flexible section has a preset bend so as to urge the first and
the second rigid sections towards a preset angle to one another.
The examiner has rejected claim 1 as being obvious1 on the basis of the
teachings of Antanavich taken in view of those of Tovey. In particular, the examiner
has found all of the subject matter recited in claim 1 to be disclosed or taught by
Ananavich, except for the flexible section having a preset bend. However, it is the
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Application No. 09/540,592
Page 4
examiner’s position that it would have been obvious to add this feature to Antanavich in
view of the teachings of Tovey “for the purpose of altering the dispensing angle with
respect to the longitudinal axis” (Paper No. 7, page 4). The appellant provides several
arguments in rebuttal to this position, the essence of them being that there is no
suggestion to combine the references in the manner proposed by the examiner.
Antanavich is directed to a device for dispensing two ingredients which are mixed
immediately prior to exiting the dispensing tip. Disclosed in Figure 9 is a dispensing tip
having a first rigid section 38 comprising a pair of lumens through which the ingredients
to be mixed are passed, a flexible section 62, and a second rigid section 24 which
includes a static mixing element 24. There is no disclosure or teaching that the flexible
section includes a “preset bend” which will “urge the first and the second rigid sections
towards a preset angle to one another.” Therefore, as conceded by the examiner, the
primary reference lacks disclosure or teaching of the preset bend recited in claim 1.
Tovey also is directed to an apparatus for dispensing multiple ingredients that
must be mixed immediately prior to application. Among the embodiments disclosed by
Tovey are, in Figures 12 and 12A, an applicator having “bellows 118 for effectuating
articulation of the applicator tip 26 for altering the dispensing angle with respect to the
body portion 16,” to which the examiner referred in the explanation of the final rejection
on page 4 of Paper No. 7 and in the response to the appellant’s arguments on page 6
of the Answer, and the embodiment shown in Figures 13 and 13A, which the examiner
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2In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
added in the discussion of the appellant’s arguments on page 6 of the Answer. The
latter embodiment provides a section of “memory metal 120" which can be pushed from
the end of the straight rigid section in which it is housed, whereupon it assumes a
curved shape for in order to “alter the dispensing angle as sleeve 122 is moved
proximally” (column 8, lines 43-48).
What we find to be lacking in the examiner’s rejection is the required suggestion
to combine the references in the manner proposed. Antanavich discloses in the
embodiment of Figure 9 a flexible section interposed between the two rigid sections “for
application of tissue sealant at a distance from the syringe (e.g., in a body cavity made
accessible by laparotomy).” From our perspective, one of ordinary skill in the art would
have been taught nothing more than this by the embodiment of the Tovey invention
shown in Figures 12 and 12A. With regard to the embodiment shown in Tovey’s
Figures 13 and 13A, the mere fact that the prior art structure could be modified does
not make such a modification obvious unless the prior art suggests the desirability of
doing so,2 and the examiner has not adduced evidence why one of ordinary skill in the
art would have been motivated to install a section of curved “memory metal” or other
form of “preset bend” in the Antanavich device in place of or in conjunction with the
flexible section already present. It therefore is our opinion that the examiner has failed
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to establish a prima facie case of obviousness with respect to the subject matter recited
in claim 1, the sole independent claim, and therefore we will not sustain the rejection.
CONCLUSION
The rejection of claims 1, 3, 4 and 6 as being unpatentable over Antanavich in
view of Tovey is not sustained.
The decision of the examiner is reversed.

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA:pgc
Appeal No. 2004-0455
Application No. 09/540,592
Page 7
JEFFREY J. HOHENSHELL
OFFICE OF INTELLECTUAL PROPERTY COUNSEL
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427