Ex Parte Gerondale

Board of Patent Appeals and Interferences

May 30, 2012

10349572 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT J. GERONDALE
____________

Appeal 2009-013868
Application 10/349,572
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-013868
Application 10/349,572

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STATEMENT OF THE CASE
Scott J. Gerondale (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-9, 13, 14, 17 and 18.
Claims 10-12, 15 and 16 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a controlled drop dispensing
container. Independent claim 1, reproduced below, is illustrative:
1. A controlled drop dispensing container comprising:
an aqueous ophthalmic liquid,
a dispensing tip comprising:
a. an inner orifice having a diameter
sufficiently small to restrict the flow of a liquid to
the desired rate,
b. an outer orifice having a diameter
larger than the inner orifice and sufficiently large
to form a drop of a liquid of the desired size, and
c. a means of coupling the inner orifice
to the outer orifice such that a liquid can flow
through the inner orifice to the outer orifice; and
a laminate tube connected to the dispensing tip
comprising:
a. an outer polymeric layer,
b. a middle barrier layer,
c. an inner polymeric layer, and
d. a shoulder connecting the laminate to
the dispensing tip.

THE REJECTIONS
The Examiner has rejected claims 1, 2, 4-9, 13, 14, 17 and 18 under
35 U.S.C. § 103(a) as being unpatentable over Boissay (US 6,000,578,
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Application 10/349,572

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issued Dec. 14, 1999) in view of Schaefer (US 4,685,591, issued Aug. 11,
1987). Claim 3 has been rejected as unpatentable over Boissay in view of
Schaefer and Stull (US 2,874,881, issued Feb. 24, 1959).
ISSUE
Did the Examiner err in concluding that it would have been obvious to
provide the Boissay container with a laminate structure as disclosed by
Schaefer?
ANALYSIS
The Examiner found that Boissay discloses a drop dispensing
container having all limitations set forth in independent claims 1 and 13,
with the exception of the construction of a laminate tube having layers of the
particular materials claimed. Ans. 3. The Examiner cites to Schaefer as
disclosing a laminate tube having layers of materials corresponding to the
claimed layers. Id. The Examiner reasoned that it would have been obvious
to provide the Boissay container with a laminate structure of the type
disclosed in Schaefer “in order to better prevent reactivity between the
container and the dispensed substance.” Ans. 3-4.
The Examiner attempts to buttress this reasoning and conclusion of
obviousness by treating a statement made during prosecution by Appellant
(see, Amendment and Reply Under 37 C.F.R. § 1.116 to Final Action, filed
Feb. 25, 2005), to the effect that aqueous liquids are generally inert toward
polyethylene, as an admission that there is some reactivity of aqueous
materials and polyethylene. Ans. 4. Further, the Examiner regards
information submitted by Appellant in a subsequent response (see,
Amendment and Reply Under 37 C.F.R. § 1.116 to Final Action, filed May
9, 2005 (contemporaneously with the filing of a Request for Continued
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Application 10/349,572

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Examination)) as evidence that “it is clear that the aqueous solution seeps
through the plastic, thus showing some reactivity.” Ans. 4-5. The Examiner
then notes that Schaefer teaches the use of its multilayer laminate to provide
an adequate vapor barrier, and notes that Schaefer is directed to preventing
unwanted reactions between the container and the material contained
therein.
We do not regard Appellant’s statement directed to the general
inertness of aqueous liquids toward polyethylene as an admission of some
known reactivity between such materials. The Examiner’s position reads too
much into Appellant’s use of the term “general.” Further, the additional
information supplied by Appellant relates to Appellant’s own test results, not
to knowledge that can be attributed to the person of ordinary skill in the art
at the time the invention was made. The Examiner has failed to establish
that reaction of, or evaporation of, aqueous ophthalmic liquids through
container walls was recognized by persons of ordinary skill in the art as
being a known problem. The Boissay patent is silent on this point.
The Examiner’s reliance on Schaefer as teaching that the use of a foil
layer to provide a vapor barrier in a plastic laminate used as a container is
unavailing. Schaefer describes that plastic containers previously used for
packaging cyanoacrylate adhesives, which are noted by Schaefer as being
quite active chemically, did not provide an adequate vapor barrier. Schaefer,
col. 1, ll. 5-15. Schaefer does not appear to be addressing, and the Examiner
has not pointed to any portions of Schaefer that address, a problem with
diffusion of water vapor through the container wall. With the Schaefer
patent being directed to containing a cyanoacrylate adhesive, it would seem
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that the vapor containment problem would be with containing a vapor of that
product.
As such, we agree with Appellant that the Examiner has not provided
an adequate factual basis supported by rational underpinnings in support of
the conclusion that the subject matter of independent claims 1 and 13 would
have been obvious in view of Boissay and Schaefer. The rejection of those
claims, and that of claims 2, 4-9, 14, 17 and 18 depending therefrom is not
sustained.
The rejection of dependent claim 3 further relies on combining
teachings of the Stull reference with the teachings of Boissay and Schaefer.
The Stull patent is not relied on by the Examiner in any manner that would
remedy the deficiency noted above with respect to the rejection based on the
combination of Boissay and Schaefer. The rejection of claim 3 is thus not
sustained.
CONCLUSION
The Examiner erred in concluding that it would have been obvious to
provide the Boissay container with a laminate structure as disclosed by
Schaefer.
DECISION
The rejection of claims 1-9, 13, 14, 17 and 18 is reversed.

REVERSED

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