Ex Parte Dux et al

Board of Patent Appeals and Interferences

Nov 29, 2011

10149988 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLAND DUX, PETER W. MERZ, and STEPHAN ODERBOLZ
____________

Appeal 2010-000773
Application 10/149,988
Technology Center 3700
____________

Before KEN B. BARRETT, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Roland Dux et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1, 8, 9, 26, and 33-35. The Examiner
withdrew claims 4, 5, 10-25, 29, and 36-41 from consideration1, objected to

1 Although the Final Rejection indicates claims 11-14 as both withdrawn
from consideration and objected to (Final Rej. 1), the Examiner clearly
Appeal 2010-000773
Application 10/149,988

2
claims 6, 7, 31, and 32 as being dependent upon a rejected base claim, and
indicated the allowability of claims 2, 3, 27, 28 and 30. We have
jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. Adapter for an extraction of commodities
from a multicompartment tubular bag, wherein the
commodities extracted from the tubular bag
compartments are substantially separately led in
the adapter, the adapter comprises at least two
through flow channels for the feeding of the
commodities contained in the compartments
through said adapter and wherein, during the
extracting of the commodities contained in the
compartments, the inner walls of the through flow
channels are in a direct contact with these
commodities, and at least two of the through flow
channels comprise different cross-sections.
App. Br. 15.
Independent claim 26 recites a method of extracting commodities
from multicompartment tubular bags, wherein the commodities extracted
from the tubular bag compartments are led substantially separately through
an adapter having at least two through flow channels with differing cross
sections, the commodities being in direct contact with the inner walls of the
through flow channels. See App. Br. 18.

withdrew these claims from consideration in the Non-Final Office Action
mailed Jun. 7, 2005.
Appeal 2010-000773
Application 10/149,988

3
The Rejection
The following Examiner’s rejection is before us for review.
Claims 1, 8, 9, 26, and 33-35 are rejected under 35 U.S.C. §102(b) as
anticipated by Iggulden (US 4,893,729, issued Jan. 16, 1990).2

SUMMARY OF DECISION
We AFFIRM.

OPINION
Independent Claims 1 and 26
The Examiner interprets Iggulden to anticipate independent claim 1
by disclosing an adapter 18 for extraction of commodities from a
multicompartment tubular bag 12, wherein the commodities are substantially
led separately in the adapter as shown in Figure 2, and the adapter having at
least two flow channels 22, 24 of different cross-sections and the inner walls
of the flow channels being in direct contact with the commodities (col. 3, ll.
42-59). Ans. 3. In other words, neck 18 acts as an adapter for any structure
that is placed on the bottle 12. As depicted in Iggulden’s Figure 4, the neck
18 is an adapter for the selector dial 28, because the selector dial 28 is
rotatably snapped over the neck 18, prior to the commodities being extracted

2 Appellants briefed the issues of (1) whether claims 6, 7, 31, and 32 are
properly objected to as being dependent upon a rejected base claim and (2)
whether the rejection is consistent with the examination requirements of 35
U.S.C. § 132 and 37 C.F.R. § 1.104. Br. 13-14. These issues are reviewable
by petition under 37 C.F.R. § 1.181, and not by appeal to the Board. See
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
Accordingly, these issues are not within the jurisdiction of the Board, and
we will not review them. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
Appeal 2010-000773
Application 10/149,988

4
from the bottle 12 (interpreted as multicompartment tubular bag by the
Examiner). The Examiner also interprets Iggulden to anticipate independent
claim 26 by performing the method during normal operational use of the
device. Id.
Appellants argue claims 1 and 26 as a group and we select
independent claims 1 and 26 as representative. See App. Br. 11-12; see also
37 C.F.R. § 41.37(c)(1)(vii). Appellants contend that Iggulden fails to
anticipate claim 1 because the present adapter 7 is “claimed as a separate
device into which tubular bag compartments are mounted,” whereas the
adapter of Iggulden is identified by the Examiner as being the neck 18 of a
plastic bottle 12 for holding sunscreen. App. Br. 11. Appellants also
contend that since the neck 18 of Iggulden is integral with the plastic bottle
12, it is inoperable to extract commodities from a multicompartment tubular
bag. Id. Appellants also contend that the bottle of Iggulden is a plastic
bottle for taking to the beach for selective dispensing of sunscreening lotion,
but cannot be considered to be the multicompartment tubular bag that is
expressly recited in claim 1. App. Br. 12.
We disagree with Appellants. In response to Appellants’ arguments,
the Examiner indicates that the structure represented by element number 18
of Iggulden is considered to be an adapter, the adapter is for use with a
multicompartment tubular bag 12, and commodities will be extracted from
the tubular bag compartments. Ans. 4. In other words, the Examiner
construes claim 1 such that a separate device, into which tubular bag
compartments are mounted as suggested by Appellants, is not required.
Although we note that Appellants have cited to page 7, lines 6-10 and page
10, lines 3-12 of the Specification as support for their contention that the
Appeal 2010-000773
Application 10/149,988

5
adapter is a separate device (App. Br. 11), we note that limitations appearing
in the specification, but not recited in the claim, are not read into the claim.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). Here, claim 1 does not require that the adapter is a separate device
from the multicompartment tubular bag. Indeed, the claims do not positively
recite a multicompartment tubular bag, as the multicompartment tubular bag
is only introduced in a recitation of intended use in the preamble of claim 1.
App. Br. 15.
Concerning Appellants’ contention of inoperability, we note that it is
not apparent, and Appellants have not cogently explained, why Iggulden’s
adapter (neck 18) being integral with the plastic bottle 12 would make the
adapter (neck 18) inoperable to extract commodities from a
multicompartment tubular bag. The Examiner indicated that Iggulden
describes “the process of squeezing the container to dispense/extract the
commodities from the tubular bag and [i]nto the two flow channels (22, 24)
of the adapter.” Ans. 4 referring to Iggulden, col. 3, ll. 42-44. Since
sunscreen lotion is extracted through the channels in the adapter (neck 18),
we do not agree with Appellants that Iggulden’s adapter (neck 18) is
inoperable to extract commodities.
Appellants also contend that if Iggulden has an adapter at all, it is the
mixing chamber member 42 attached to the plastic bottle 12; however, the
adapter/mixing chamber member 42 bears little resemblance to the claimed
adapter and is little more than a mixing chamber that is not even attached to
the bottle 12 itself, but instead is snapped onto a selector dial 28, which is in
turn snapped onto the neck 18 of the bottle 12. App. Br. 11-12. We
disagree with Appellants’ contention because the Examiner’s rejection does
Appeal 2010-000773
Application 10/149,988

6
not state that the mixing chamber member is considered the adapter.
Appellants also contend that the Examiner’s reliance on the plastic
bottle of Iggulden to anticipate the claims demonstrates a failure to account
for each element of the claims in a single reference as is required under 35
U.S.C. § 102. App. Br. 12. More particularly, Appellants point to “the
complete omission of the Iggulden reference of either a multicompartment
tubular bag or an adapter,” and argue that the Examiner’s “[b]ootstrapping a
multicompartment tubular bag into the Iggulden reference” constitutes
impermissible hindsight and clear error. Id. We disagree with Appellants.
As discussed supra, the Examiner finds Iggulden’s neck 18 constitutes claim
1’s adapter and claim 1 does not require a multicompartment tubular bag as
the multicompartment tubular bag is only introduced in a recitation of
intended use in the preamble of claim 1. Thus, the Examiner has not omitted
a multicompartment tubular bag from the anticipation rejection based upon
Iggulden. Further, with respect to Appellants’ hindsight argument, we note
hindsight only relates to obviousness, not anticipation, and with respect to
Appellants’ clear error argument, Appellants have failed to persuade us of
any error in the Examiner’s rejection.
Finally, with respect to claim 26 alone, Appellants contend that the
Examiner’s broad assertion that “[t]he device shown by Iggulden et al. will
perform the method recited in claims 26, 33-35 during normal operational
use of the device” is little more than the unsubstantiated opinion of the
Examiner, and fails to clearly articulate where Iggulden teaches the elements
of claim 26. App. Br. 12. We do not agree with Appellants that the
Examiner’s rejection fails to clearly articulate where Iggulden teaches the
elements of claim 26. As Appellants’ method claim 26 fails to recite any
Appeal 2010-000773
Application 10/149,988

7
procedural steps, the Examiner’s rejection of claim 1 properly serves to
articulate how Iggulden anticipates claim 26.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1 and 26 under 35 U.S.C. §102(b) as anticipated by Iggulden.

Dependent claims 8, 9, and 33-35
The Examiner finds that Iggulden discloses, at column 3, lines 42-44,
a multicompartment tubular bag 12 which is squeezable in order to dispense
the commodities in an axial direction as shown in Figure 2. Ans. 5. The
Examiner also finds that Iggulden discloses, at column 3, lines 42-44, the
process of squeezing the container to dispense or extract the commodities
from the tubular bag and into the two flow channels 22, 24 of the adapter.
Ans. 4.
Appellants contend that the Office Action fails to cite any portion or
portions of Iggulden as teaching each element recited in claims 8, 9, and 33-
35 and thus, Appellants are unable to respond or argue against these
rejections.
We are not persuaded by Appellants’ contention. The Examiner has
made findings (Ans. 4 and 5) and Appellants have failed to indicate error in
the Examiner’s findings.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 8, 9, and 33-35 under 35 U.S.C. §102(b) as anticipated by Iggulden.

DECISION
We affirm the Examiner’s decision to reject claims 1, 8, 9, 26, and 33-
35.
Appeal 2010-000773
Application 10/149,988

8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Klh