Ex Parte Eisenhut

Board of Patent Appeals and Interferences

Feb 8, 2011

11294331 (B.P.A.I. Feb. 8, 2011)

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.
11/294,331 12/06/2005 Anthony R. Eisenhut NSR-001 3861
21884 7590 02/08/2011
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
02/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANTHONY R. EISENHUT
____________________

Appeal 2009-009466
Application 11/294,331
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

Opinion for the Board filed by SILVERBERG, Administrative Patent Judge.

Opinion dissenting-in-part filed by BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009466
Application 11/294,331

STATEMENT OF THE CASE
Anthony R. Eisenhut (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is directed to resin dispensing
apparatus having an applicator shield which protects the resin during
application (Spec. 1: para. [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A dispensing apparatus, comprising:
a container having a storage reservoir containing a
photocurable resin material;
a dispensing nozzle secured to the container; and
an applicator shield positioned about the dispensing
nozzle to shield dispensed resin from exposure to light.

THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 1-142 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Dragan (US 4,682,950, issued Jul. 28, 1987).

2 As the amendment filed on October 16, 2007 (under 37 C.F.R. § 1.116), in
response to the Final Rejection mailed May 16, 2007, was stated as not
being entered in an Advisory Action mailed October 26, 2007, claims 9-14
remain dependent upon independent claim 1, and will be treated as such in
this decision.
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Appeal 2009-009466
Application 11/294,331

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that Dragan’s end cap 17 is an applicator shield, as called for in independent
claim 1 (App. Br. 8)3; and (2) whether the Examiner erred in finding
that Dragan’s discharge end 15 is an applicator shield, as called for in
independent claim 8 (App. Br. 8).

ANALYSIS
Claims 1-7 and 9-14
The Examiner found (1) that Dragan describes a dispensing
nozzle 14 and an applicator shield 17 (Ans. 3), (2) “[t]he cap 17 of Dragan is
positioned about the nozzle 14 and can be considered as a shield because the
cap is capable of shielding the nozzle 14 and as well as the resin content
around the nozzle” (Ans. 4) (emphasis bolded), (3) “[a]ny residual resin
around the nozzle can be seen as ‘dispensed resin’” (id.), and (4) that
independent claim 1 does not require “the resin to be shielded as it is
dispensed from the storage reservoir for application to a surface” (id.).
Appellant contends (1) that Dragan’s end cap 17 is not an applicator
shield, as called for in independent claim 1 (App. Br. 8), and (2) that
Dragan’s “end cap 17 is not positioned about the dispensing nozzle 14 to
shield dispensed resin from exposure to light” (id.) (emphasis bolded).
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable

3 The Examiner’s Answer states that it “is in response to the appeal brief [the
Supplement Appeal Brief] filed 11/19/2007.” Our decision will also be in
response to the Supplemental Appeal Brief (hereinafter App. Br.) filed
November 19, 2007.
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Appeal 2009-009466
Application 11/294,331

interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Appellant’s Specification describes that:
When the resin 18 is dispensed from nozzle 14, it is partially
shielded from the surrounding ambient light by the
applicator shield 16. . . . The applicator shield 16 avoids
total exposure of the resin 18 to light and thus prolongs the
period of time the resin 18 is workable before curing. This
is very important as photocurable resins often cure very
quickly when exposed to light.
(Spec. 5-6: para. [0012]) (emphasis bolded).
Claim 1 calls for, inter alia, “an applicator shield positioned about the
dispensing nozzle to shield dispensed resin from exposure to light.”
We agree with the Examiner that independent claim 1 does not require
“the resin to be shielded as it is dispensed from the storage reservoir for
application to a surface.” However, we conclude that independent claim 1
does require that the dispensed resin, that is resin that is dispensed from the
nozzle, be shielded by an applicator shield.
As set forth supra, the Examiner takes the position that residual resin
around a dispenser nozzle is “dispensed resin.”
The ordinary meaning of “residual” is “the quantity left over at the
end of a process.”4 A person having ordinary skill in the art would
understand that residual material found on a nozzle of a dispenser is the

4 See THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE
(4th ed. 2007)
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Appeal 2009-009466
Application 11/294,331

quantity of material that is left over after the material is dispensed from the
nozzle.
Thus, when reading independent claim 1 in light of Appellant’s
Specification, we conclude that it is unreasonable to construe whatever
residual resin may remain around the nozzle as “dispensed resin.”
Dragan describes a disposable syringe tip 10 (col. 2, ll. 61-65; figs. 1-
3) having an opening or a discharge orifice 14 sized for material M to be
extruded therefrom in a thin, flat ribbon R (col. 3, ll. 12-20; figs. 3, 8),
wherein “an end cap 17 may be fitted over the discharge end 15 of the tip to
seal the front opening 14” (col. 3, ll. 37-39; figs. 1, 3).
Since Dragan describes the end cap 17 as sealing the discharge orifice
14, we find that Dragan’s end cap 17 does not shield dispensed resin, that is,
resin that has been dispensed from the discharge orifice 14.
We reverse the rejection of independent claim 1 and dependent claims
2-7 and 9-14.

Claim 8
Appellant argues independent claims 1 and 8 together (App. Br. 8).
As set forth supra regarding independent claim 1, Appellant contends that
Dragan’s end cap 17 is not an applicator shield (id.).
The Examiner found, regarding independent claim 8, that, in Dragan,
discharge end 15 is an applicator shield positioned about a dispensing nozzle
10B to shield the resin from exposure to light. (Ans. 4-6).
We find that the Examiner has established a prima facie case of
anticipation.
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Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (“[A]fter the PTO
establishes a prima facie case of anticipation based on inherency, the burden
shifts to appellant to ‘prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.’”)
We find that the Examiner’s rejection of independent claim 8 is based
upon a different premise than is the rejection of independent claim 1, that is,
the rejection of independent claim 8 is based upon the Examiner’s finding
that Dragan’s discharge end 15, not end cap 17, is an applicator shield.
We find that Appellant’s contentions, which are directed to Dragan’s
end cap 17 not being an applicator shield, are not commensurate in scope
with the rejection of claim 8. Thus, we conclude that Appellant has not
rebutted the Examiner’s prima facie case of anticipation.
Accordingly, we affirm the rejection of independent claim 8. In re
Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal)

CONCLUSIONS
The Examiner has erred in finding that Dragan’s end cap 17 is an
applicator shield, as called for in independent claim 1.
The Examiner has not erred in finding that Dragan’s discharge end 15
is an applicator shield, as called for in independent claim 8.

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Appeal 2009-009466
Application 11/294,331

DECISION
The decision of the Examiner to reject claim 8 is affirmed. The
decision of the Examiner to reject claims 1-7 and 9-14 is reversed.
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)(iv).

AFFIRMED-IN-PART
BAHR, Administrative Patent Judge, dissenting-in-part.
I join in the majority’s decision to affirm the rejection of claim 8. The
majority found that the Examiner “established a prima facie case of
anticipation” of the subject matter of claim 8, and that “Appellant has not
rebutted the Examiner’s prima facie case of anticipation.” Claim 8 contains
all of the limitations of claim 1. Therefore, the finding of anticipation of the
subject matter of claim 8 necessarily is also a finding of anticipation of the
subject matter of broader claim 1. Cf. Ormco v. Align Tech., 498 F.3d 1307,
1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been
obvious, the broader claims . . . must also have been obvious”). Thus, the
Examiner’s decision should be affirmed at least as to claim 1, for the same
reasons set forth in the majority opinion for affirming the Examiner’s
decision as to claim 8. Accordingly, I dissent from the majority’s decision
to reverse the Examiner’s rejection, at least with respect to claim 1.

JRG

WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
7