Ex Parte Faulkner

Patent Trial and Appeal Board

Feb 27, 2017

13385680 (P.T.A.B. Feb. 27, 2017)

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.
BD-145J 5261
EXAMINER
LONG, DONNELL ALAN
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
13/385,680 03/01/2012
32488 7590 02/27/2017
Iandiorio Teska & Coleman, LLP
255 Bear Hill Road
Waltham, MA 02451
Michael T. Faulkner
02/27/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL T. FAULKNER
Appeal 2015-0029571
Application 13/3 85,6802
Technology Center 3700
Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
Sept. 11, 2014) and Reply Brief (“Reply Br.,” filed Dec. 15, 2014), and the
Examiner’s Answer (“Ans.,” mailed Dec. 3, 2014) and Final Office Action
(“Final Act.,” mailed Apr. 21, 2014).
2 According to Appellant, the real party in interest is Biomedical Polymers,
Inc. Appeal Br. 1.
Appeal 2015-002957
Application 13/385,680
BACKGROUND
According to Appellant, “[t]he subject invention relates to blood and
other dispensers.”
CLAIMS
Claims 1—17 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
1. A dispenser comprising:
a base including a stabilizing rim;
a hub;
spokes attached to the rim and extending inwardly to the
hub supporting it with respect to the rim; and
a cannula supported by the hub.
REJECTIONS
1. The Examiner rejects claims 1—5, 9-11, and 13—17 under
35 U.S.C. § 103(a) as unpatentable over Mayes3 in view of
Peplinski.4
2. The Examiner rejects claims 6—8 under 35 U.S.C. § 103(a) as
unpatentable over Mayes in view of Peplinski and Whitworth.5
3. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Mayes in view of Peplinski and Golias.6
3 Mayes, US 5,697,522, iss. Dec. 16, 1997.
4 Peplinski, US 5,810,794, iss. Sept. 22, 1998.
5 Whitworth, US 5,163,583, iss. Nov. 17, 1992.
6 Golias et al., US 2012/0024416 Al, pub. Feb. 2, 2012.
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Application 13/385,680
DISCUSSION
Rejection 1
Claim 1
Appellant addresses independent claims 1,14, and 16 as a group. See
Appeal Br. 4—12. We select and discuss claim 1 as representative of this
group.
With respect to claim 1, the Examiner finds that Mayes discloses a
dispenser including a hub 18, spokes 33,21, and a cannula 12, as claimed.
Final Act. 2. The Examiner acknowledges that Mayes does not disclose a
base with a stabilizing rim, for which the Examiner relies on Peplinski. Id.
(citing Peplinski Fig. 6.). In particular, the Examiner finds that Peplinski
discloses a dispenser including a base with a stabilizing rim 10 that supports
spokes 12 on a horizontal surface. Id. The Examiner concludes it would
have been obvious to modify Mayes to include a base with a stabilizing rim
as taught by Peplinski “in order to provide more stability for the device and
to distribute the load through the rim.” Id. at 2—3.
As discussed below we are not persuaded of reversible error in the
rejection by Appellant’s arguments.
Appellant first argues that Mayes teaches away from using a support
structure with a base as claimed. Appeal Br. 5—9. In support, Appellant
asserts that Mayes teaches the use of legs as the only means of support; that
Mayes teaches legs with spacing to provide viewing spaces; that Mayes
teaches the use of circumferential supports should be avoided; and “[tjhose
skilled in the art reading Mayes would thus clearly ascertain that the legs are
very important as are the viewing spaces between the legs.” Id. at 5—7
(citing Mayes col. 1,11. 54—63; col. 2,11. 11—14; col. 3,11. 6—30).
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“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Here, we agree with the Examiner that Mayes does not
teach away from the use of all circumferential supports. Ans. 6. Rather, the
portions of Mayes cited by Appellant only show that Mayes is concerned
with overcoming the disadvantages of supports that do not allow the user to
view the target surface onto which liquid is to be dispensed. Further, Mayes
acknowledges that circumferential supports may assist in stabilizing the
dispenser. Mayes col. 1,11. 58—61. Thus, we are not persuaded that one of
ordinary skill in the art would be discouraged from using all circumferential
supports in a dispenser.
Second, Appellant argues that Peplinski is non-analogous art because
“[i]n Peplinski, there is no cannula piercing anything and no teaching
concerning solving any problem associated with a blood dispenser.” Appeal
Br. 10. We are not persuaded by this argument.
Our reviewing court has set forth a two-prong test for determining
whether a prior art reference is analogous: (1) whether the reference is from
the same field of endeavor as the claimed invention, and (2) if the reference
is not within the same field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011). We find that Peplinski is analogous
art and satisfies both prongs of this test. First, we find that Peplinski is in
the same field of endeavor of the claimed invention, which is not specifically
limited to the field of blood dispensers as Appellants seem to indicate.
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Specifically, the claimed invention and Peplinski are in the field of
dispensers for dispensing liquids.
Regarding the second prong of the test, we first note that Appellant’s
argument does not provide any particular problem addressed by the inventor
that is not addressed by Peplinski in order for us to evaluate whether
Peplinski is pertinent. Further, the Specification does not provide a clear
indication of the problem addressed by the invention. We can surmise that
the invention solves a problem related to providing “a single stabilizing rim”
(see Spec. 2,11. 19-20), and we agree with the Examiner that Peplinski is
pertinent to this problem, i.e. “the problem of how to support a dispensing
device on a user’s skin without irritation.” See Ans. 7.
In further support of this argument, Appellant also asserts that
“Peplinski teaches away from a cannula or any kind of a dispenser which
pierces a test tube stopper to transfer blood from the test tube to.... a slide
for analysis,” and that Pepinski’s base “is not pressed on by a user’s thumb
to pierce a rubber stopper with a cannular.” Appeal Br. 11. However,
without further explanation, Appellant’s statements alone are not sufficient
to show that a person of ordinary skill in the art “would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d at 553.
Finally, Appellant argues that the Examiner is relying on hindsight
analysis to arrive at the conclusion of obviousness. Appeal Br. 11. In
support, Appellant asserts only that “there is no teaching or motivation to
combine the references as suggested by the Examiner.” Id. at 12. We are
not persuaded. Rather, the Examiner has provided a motivation for the
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combination, i.e. “to provide more stability for the device and to distribute
the load through the rim.” Final Act. 3. The Examiner relies on common
knowledge for this proposed motivation. Ans. 9. Appellant neither points to
error in the Examiner’s proposed motivation nor persuades us that the
rejection is based on knowledge contained solely in Appellant’s
Specification. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
For these reasons, we are not persuaded of reversible error, and thus,
we sustain the rejection of claim 1. For the same reasons, we sustain the
rejection of independent claims 14 and 16, which fall with claim 1 as noted
above. We also sustain the rejection of claims 11, 13, and 15, for which
Appellant does not provide separate arguments.
Claim 2
Claim 2 depends from claim 1 and further requires that the rim is ring
shaped. Appellant argues only that the references teach away from this
limitation for the reasons discussed with respect to claim 1. See Appeal Br.
13. As discussed above, we are not persuaded by these arguments. Thus,
we sustain the rejection of claim 2.
Claim 3
Claim 3 depends from claim 1 and further requires that each spoke
extends upwardly from a top of the rim and then inwardly to a side wall of
the hub. The Examiner cites to Mayes Figure 5 and Peplinski Figure 6 with
respect to this claim. Final Act. 3. Appellant argues that neither Mayes nor
Peplinski disclose the claimed configuration. Appeal Br. 13. However, we
are not persuaded of error at least because Appellant’s argument attacks the
references individually without addresses the combination proposed by the
Examiner in the underlying rejection of independent claim 1. See In re
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Keller, 642 F.2d 413, 426 (CCPA 1981). Accordingly, we sustain the
rejection of claim 3.
Claim 4
Claim 4 depends from claim 1 and further requires that the hub is ring
shaped. In responding to Appellant’s arguments, the Examiner clarifies that
both Mayes and Peplinski disclose ring shaped hubs. Ans. 9 (citing Mayes
Fig. 5; Peplinski Fig. 6). We agree that both Mayes and Peplinski teach a
ring shaped center portion from which the spokes or legs extend, and thus,
we agree that the proposed combination would have included a ring-shaped
hub under the broadest reasonable interpretation of the claim. We are not
persuaded by Appellant’s argument that neither Mayes nor Peplinski
individually disclose a hub as recited in claim 4. Appeal Br. 14.
Accordingly, we sustain the rejection of claim 4.
Claim 5
Claim 5 depends from claim 1 and further requires that the cannula is
supported in the hub. The Examiner finds that Mayes discloses a cannula 12
supported in the hub 18. Ans. 9. Appellant argues only that neither Mayes
nor Peplinski teach a hub. Appeal Br. 14—15. For the reasons discussed
above, we are not persuaded by Appellant’s argument that the reference do
not include a hub, and we find no error in the Examiner’s further findings
regarding this claim. Accordingly, we sustain the rejection of claim 5.
Claim 9
Claim 9 depends from claim 1 and further requires that the base, rim,
spokes, hub, and cannula are integral and made of plastic. Appellant argues
only that Mayes does not teach a hub, and thus, Mayes cannot teach the
configuration claimed. Appeal Br. 16. As discussed above, we are not
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persuaded of error in the Examiner’s finding that Mayes teaches a hub, and
thus, we sustain the rejection of claim 9.
Claim 10
Claim 10 depends from claim 1 and further requires three spaced
spokes. The Examiner finds that Mayes discloses three spaced spokes.
Final Act. 3. Appellant argues that Mayes teaches legs and not spokes
because spokes require attachment to an inner hub and an outer rim. Appeal
Br. 17. We are not persuaded of error by Appellant’s attack on Mayes
individually. As discussed above, we are not persuaded of error in the
Examiner’s finding that Mayes teaches a hub. Further, the Examiner
acknowledges that Mayes does not teach an outer rim and the rejection relies
on Peplinski as disclosing this element. Thus, Appellant’s argument does
not persuade us of error with respect to the combination of Mayes and
Peplinski. Accordingly, we sustain the rejection of claim 10.
Claim 17
Claim 17 depends from claim 16 and further requires spokes attached
to the rim and extending inwardly to the hub. Here, Appellant relies on
arguments that are the same or substantially the same as those addressed
above with respect to claims 1, i.e. that Mayes teaches away from the use of
an outer rim. Appeal Br. 17. We are not persuaded by that argument for the
reasons discussed with respect to claim 1. Accordingly, we sustain the
rejection of claim 17.
Rejection 2
Claim 6 depends from claim 1 and further requires that the hub
includes a lower inwardly tapered dispensing tip in communication with the
cannula. The Examiner relies on Whitworth as disclosing “another
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Application 13/385,680
dispenser with a dispensing hub (36) in a tapered configuration.” Final Act.
5. Appellant argues that Whitworth “fails to teach a hub at all” and
“[therefore claims 6—8 are not obvious . . . over Mayes and Peplinski.”
Appeal Br. 15—16. Appellant’s attack on Whitworth individually fails to
persuade us of error in the proposed combination of Mayes, Peplinski, and
Whitworth. In particular, Appellant does not persuasively explain why
Whitworth does not include a hub or why the claims are not obvious under
the proposed combination of Mayes, Peplinski, and Whitworth.
Accordingly, we sustain the rejection of claim 6, and we also sustain the
rejections of claims 7 and 8, for which Appellant does not present separate
arguments.
Rejection 3
Appellant does not present separate arguments with respect to the
rejection of claim 12. Thus, for the reasons discussed above, we sustain the
rejection of claim 12.
CONCLUSION
For the reasons provided, we conclude as follows.
We AFFIRM the rejection of claims 1—5, 9-11, and 13—17 under 35
U.S.C. § 103(a) as unpatentable over Mayes in view of Peplinski.
We AFFIRM the rejection of claims 6—8 under 35 U.S.C. § 103(a) as
unpatentable over Mayes in view of Peplinski and Whitworth.
We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Mayes in view of Peplinski and Golias.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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Application 13/385,680
AFFIRMED
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