Ex Parte Gagnieux et al

Patent Trial and Appeal Board

Nov 27, 2017

13389111 (P.T.A.B. Nov. 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.
13/389,111 04/20/2012 Samuel Gagnieux 4684-120348 (P-8601) 6017
32182 7590 11/29/2017
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(The Webb Firm)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07414-1880
EXAMINER
BUI, LUAN KIM
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
11/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lorraine_kow alchuk @ bd .com
ip_docket @bd.com
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL GAGNIEUX, THOMAS DUBOIS,
FRANCK CARREL, NICOLAS EON, and
AURELIE ALLANIC
Appeal 2016-004041
Application 13/3 89,111
Technology Center 3700
Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 12—16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-004041
Application 13/3 89,111
CLAIMED SUBJECT MATTER
The claims are directed to a tray for positioning elongated objects, in
particular syringe bodies or syringes. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A tray for positioning elongated objects, each elongated
object having a cylindrical body and a noncircular flange, the
flange having a length greater than its width, the tray comprising:
a plate defining spaced apart openings arranged in parallel
rows, the plate comprising a first row comprising a first plurality
of spaced apart openings and a second row comprising a second
plurality of spaced apart openings, each opening configured to
receive the body of one of the elongated objects,
wherein the plate further comprises a plurality of
projections extending therefrom, with each opening having at
least one projection adjacent thereto, the at least one projection
displaced from a perimeter of the opening such that the at least
one projection contacts and positions a peripheral edge of the
noncircular flange in a determined angular position when the
elongated object is fully inserted into the opening, such that the
flange of the elongated object inserted in the first plurality of
spaced apart openings imbricates between two adjacent flanges
of elongated objects inserted in the second plurality of spaced
apart openings.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Petrek
Heinz et al.
Vander Bush et al.
US 6,286,678 B1 Sept. 11,2001
US 6,719,141 B2 Apr. 13,2004
US 7,428,807 B2 Sept. 30, 2008
2
Appeal 2016-004041
Application 13/3 89,111
REJECTIONS
Claims 1, 4 and 16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Petrek or in the alternative under 35 U.S.C. § 103(a) as being
unpatentable over Petrek and Heinz.
Claims 2 and 12—15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petrek, or Petrek and Heinz, Official Notice, and Vander
Bush.
OPINION
Each rejection of claim 1, the sole independent claim, is argued, with
the remaining claims and rejection argued based only on dependency. App.
Br. 9-16.
Claim 1 presents issues similar to those discussed by our reviewing
court in Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d
1373, 1384 (Fed. Cir. 2003), where a functional interaction with some broad
class of unclaimed subject matter is used to define the scope of the subject
matter actually claimed. Here, the claim is directed to “[a] tray” but there are
significant structural details recited regarding “elongated objects” which do
not form part of the combination actually claimed. Thus, the Examiner
correctly characterizes those limitations relating to the “elongated objects”
as relating to the intended use of the tray. Ans. 3. The pertinent question in
analyzing claims of this nature is: what, if anything, does the use language,
the manner of cooperation between the tray and the elongated objects, tell us
about the structure of the claimed tray itself? To argue that Petrek fails to
disclose certain structural characteristics of the unclaimed elongated objects,
or that Petrek fails to expressly disclose a method of using those particular
elongated objects (App. Br. 10-11), neglects this point. So long as a prior-art
3
Appeal 2016-004041
Application 13/3 89,111
device is inherently capable of performing a function or use recited in an
apparatus claim that function or use will not serve to create a structural
distinction between the claimed subject matter and the prior-art device. Final
Act. 2; see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
In other words, it is not the structure of the objects with which the claimed
structure is intended to interact that must be inherent in the prior-art device.
See App. Br. 11; Reply Br. 3. Rather, it is the ability to interact with such a
structure in the manner recited that must be inherent. For example, in
Schreiber it was not the popcorn itself, but the ability to pass or dispense it,
that was inherent.
The absence of noncircular flanges on elongated objects in Petrek
(App. Br. 11) means only that Petrek does not expressly disclose the
particular use defined by claim 1. It does not mean that Petrek’s tray itself is
incapable of cooperating with the unclaimed elongated objects having those
flanges in the precise manner recited. A specific example of this can be seen
by comparing Appellants’ Figure-seven embodiment with that depicted in
Figure 6 of Petrek (cited at Final Act. 2). The projections for contacting the
flanges of Appellants’ elongated objects are small rectangular walls on each
side of the tray openings. The only apparent structural distinctions between
those depicted in Appellants’ Figure 7 and Figure 6 of Petrek relates to the
curvature and possibly the size of the walls and their radial displacement
from the openings. However, there is no claim language to require any of
those distinctions. Thus, when considering the structure of the claimed tray
itself, claim 1 covers Appellants’ Figure 7 embodiment in the same way that
claim 1 covers the embodiment depicted in Figure 6 of Petrek. The
Examiner correctly determined that claim 1 actually covers even more
because, Appellants’ use of the elongated objects having flanges to define
4
Appeal 2016-004041
Application 13/3 89,111
the claimed tray leaves open and unbounded the spectrum of elongated
objects that may be used as a basis for the analysis, not necessarily confining
them to any particular structure, such as that expressly described in
Appellants’ Specification. Broad interpretation is the risk associated with
this form of claim drafting that the court discussed in Geneva and Schreiber,
supra.
The recited functions of “contacting]” and “positioning]” flanges so
as to “imbricate[]” them is highly dependent upon the flange-containing
elongated objects chosen as a basis for analysis. Other than specifying that
the flanges are “noncircular . . . having a length greater than its width” the
claim leaves open the spectrum of flanges that may be chosen to determine if
a particular tray does, or does not, satisfy the claim language. The Examiner
here reasonably shifted the burden to Appellants to explain with argument or
evidence why Petrek’s tray would not inherently be capable of performing
these functions with elongated objects according to the claim. See MPEP
§2112. Simply arguing the absence of an express disclosure of elongated
objects, or functional interactions therewith, in the prior art does not satisfy
Appellants’ burden. Appellants do not identify, and we do not see, any
reason why any one of the cited embodiments of Petrek would fail to satisfy
the claim language relating to the intended uses of positioning and
imbricating of elongated objects.1
Accordingly, we sustain the anticipation rejection on Petrek alone.
1 ft is noted merely for example, but not necessary to rely on to sustain the
Examiner’s rejection, that flanges of the type depicted in Figure 4 of Heinz,
appropriately sized, would be one example of a flange that would interact
with the projections of Petrek’s figure-six embodiment in the manner
claimed.
5
Appeal 2016-004041
Application 13/3 89,111
In making a cumulative § 103(a) rejection against claim 1 the
Examiner acknowledges that the “imbricates” language, though it relates to
the interaction of the flanges on the unclaimed elongated objects, could
potentially imply a structural distinction in the tray, such as staggering
openings in rows defined parallel to the tray edges as depicted in Appellants’
Figures 7 and 10.2 As discussed above, because satisfying this claim
language is highly dependent upon the shape and size of the flange chosen as
a basis for analysis, this language does not actually create a structural
distinction sufficient to defeat the anticipation rejection. In other words,
Petrek’s tray is inherently capable of flange imbrication even if the holes
accommodating elongated objects are not themselves staggered or
imbricated. Nevertheless, we also agree with the Examiner that, if that
language did in fact create a structural distinction with regard to the tray, the
claimed subject matter would have been obvious to one skilled in the art.
With regard to the obviousness rejection, Appellants argue that the
Examiner’s proposed combination would still fail to satisfy the claim
language because “Heinz teaches that the lengths of the finger supports (4)
are parallel to the longitudinal directions of the rows of openings (2)”
whereas Appellants define “‘a determined angular position’ to mean that the
lengths of the flanges are neither parallel nor perpendicular to the
longitudinal directions of the rows of openings.” App. Br. 12 (citing Spec
2 It is noted that claim 1 never defines “rows” as either parallel or orthogonal
to an edge of the tray. If the rows are, for example, regarded as defined by
horizontal lines across the tray in the orientation depicted in either Figure 1
or 8 of Petrek they bear sufficient structural similarity to those depicted in
Appellants’ figures 7 and 10 to reasonably conclude that they would perform
the same when interacting with the same flange-containing elongated
objects.
6
Appeal 2016-004041
Application 13/3 89,111
2:26—28) (emphasis omitted). It is true that the Specification defines
“determined angular position” with respect to the length of the flanges.
However, in stark contrast, the claim uses “determined angular position” to
define “<2 peripheral edge of the noncircular flange” (emphasis added). The
peripheral edges of Heinz’s flanges clearly satisfy the definition of
“determined angular position” as one would understand it with regard to an
edge of the flange as opposed to its length, in light of Appellants’
Specification. Appellants’ argument is not commensurate in scope with the
claim.
Appellants further argue that Petrek’s support surfaces 78 would
frustrate imbrication. App. Br. 13. However Appellants do not explain why.
As discussed above, those surfaces depicted in any one of the cited
embodiments (Figs. 5—7) would, based on the characteristics of the flange
chosen for analysis, provide for imbrication in the same manner as the
projections of Appellants’ tray.
Appellants argue a lack of motivation for, and teaching away from,
the Examiner’s proposed combination because Petrek aims to separate the
pipettes. App. Br. 13—15. However, sufficient separation is not defeated by
combination with Heinz’s teachings regarding close packing: Heinz also
separates the containers. See Fig. 4.
Accordingly, we are not apprised of error in, and sustain, the
Examiner’s § 103(a) rejection.
DECISION
The Examiner’s rejections are affirmed.
7
Appeal 2016-004041
Application 13/3 89,111
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)(l)(iv).
AFFIRMED
8