Ex Parte Engel

Board of Patent Appeals and Interferences

Mar 16, 2011

11135206 (B.P.A.I. Mar. 16, 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.
11/135,206 05/23/2005 Harold J. Engel JEP01270-US1 3750
29328 7590 03/17/2011
THE HILL FIRM, DENNIS A. GROSS
1925 WEST FIELD COURT, SUITE 250
Lake Forest, IL 60045
EXAMINER
CARTAGENA, MELVIN A
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
03/17/2011 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 HAROLD J. ENGEL
____________________

Appeal 2009-010375
Application 11/135,206
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, 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 2009-010375
Application 11/135,206
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
27-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a pump. Claim 27, reproduced below, is
illustrative of the claimed subject matter:
27. A system for dispensing viscous fluids onto a work piece in
small quantities comprising a recipricatable piston coupled to a
variable actuator, a programmable controller operatively
connected to the actuator, a position sensor sensing the position
of the piston and outputting a signal to the controller reflecting
the substantially instantaneous position of the piston, the
controller including a computer for comparing piston position
signals to predetermined criteria and outputting control signals
to the variable actuator in dependent response thereto.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Leuschner US 5,047,012 Sep. 10, 1991

REJECTION
Claims 27-29 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Leuschner. Ans. 3.

OPINION
We have carefully reviewed the rejection on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review we
have determined that the applied prior art does not establish the lack of
Appeal 2009-010375
Application 11/135,206
3
novelty of the claimed subject matter. Therefore the rejection on appeal is
reversed. Our reasons follow.
Appellant argues that the reference does not disclose sensors disposed
to reflect the substantially instantaneous position of the piston. Br. 9.
Leuschner provides several sensors to control his device’s syringe. Sensors
are disclosed for monitoring the rate of transmission of the solvent into the
pressure chamber, the maximum permissible level of the organ secretions in
the pressure chamber, and the pressure at which the solvent is supplied into
the gall bladder. Leuschner, col. 2, ll. 5-10; col. 2, ll. 56-61; col. 4, ll. 1-4
and col. 4, ll. 25-29. Thus none of the sensor monitoring is expressly
disclosed as providing for or reflecting the instantaneous position of the
piston as required by the claimed subject matter. Nor has the Examiner made
a case that monitoring the position of the piston, performed on an
instantaneous basis, is an inherent feature of the Leuschner device.
Therefore it is our subsidiary finding that Leuschner does not disclose the
monitoring of the instantaneous position of the piston as argued by
Appellant. Accordingly, it is our overall finding that Leuschner does not
establish the lack of novelty of the claimed subject matter.

DECISION
The rejection of claims 27-29 under 35 U.S.C. § 102 is reversed.

REVERSED

nlk

THE HILL FIRM, DENNIS A. GROSS
1925 WEST FIELD COURT, SUITE 250
Lake Forest IL 60045