Ex Parte Greiner-Perth et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201712925543 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 12/925,543 10/22/2010 Juergen Greiner-Perth 5000.P0241US 2825 23474 7590 03/02/2017 FLYNN THIEL BOUTELL & TANIS, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER NGO, LIEN M ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): DOCKET@FLYNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUERGEN GREINER-PERTH, MATTHIAS WOCHELE, and PETER STADELHOFER Appeal 2015-004407 Application 12/925,543 Technology Center 3700 Before: CHARLES N. GREENHUT, LISA M. GUIJT, and NATHAN A. ENGELS, 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 2—5 and 8—15. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2015-004407 Application 12/925,543 CLAIMED SUBJECT MATTER The claims are directed to a discharging device. Claim 2, reproduced below, with emphasis added, is illustrative of the claimed subject matter: 2. A discharging device for liquids, comprising: a delivery device, an outer housing defining a buffer chamber, a liquid storage receptacle that communicates with an inlet of said delivery device and is adapted to store liquid, and a discharge orifice communicating with an outlet of said delivery device, wherein said liquid storage receptacle is at least in part in the form of a dimensionally flexible liquid-containing bag, and said liquid storage receptacle is disposed in the buffer chamber of constant volume, wherein said buffer chamber permanently communicates with the environment through at least one capillary passageway for the purpose of balancing the pressure, the capillary passageway being configured such that air in the buffer chamber remains saturated with liquid, the capillary passageway having a length-divided-beverage-cross- sectional-area quotient greater than 1000 mm'1, and is, at least in part, a groove defined between a portion of the liquid storage receptacle and a portion of the outer housing. REJECTION Claims 2—5 and 8—15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Meshberg (Re 36,410; iss. Nov. 30, 1999). 2 Appeal 2015-004407 Application 12/925,543 OPINION In rejecting the claims before us the Examiner addresses the disputed limitation emphasized above as follows: It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the capillary passage in the invention of Meshberg with the length and the cross- section as claimed for a venting channel as one’s desire, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Final Act. 4. However, Appellants correctly contend that, even applying the principles of law quoted by the Examiner (above), the Examiner has not established unpatentability because the Examiner has not established that the ratio of length to cross sectional area was a variable known in the prior art to effect any particular result. App. Br. 4 (citing In re Antonie, 195 U.S.P.Q. 6, 9 (C.C.P.A. 1977)). Meshberg has a “venting structure 10” that the Examiner regards as the recited “capillary passageway.” Final Act.3. Meshberg’s vent “allow[s] fluid to be drawn into the pump 13 and the barrier bag 9 to gradually collapse around dip tube 6.” Meshberg, col. 3,11. 58—59. Meshberg does not discuss the length of the vent, its cross sectional area, or any ratio of the two. Appellants argue, and refer to a declaration including four exhibits, to show that the particular numerical range recited in claim 2 is critical and provides results that would not have been expected based on a modification of the cited prior art. App. Br. 4 (“The importance of these dimensions is 3 Appeal 2015-004407 Application 12/925,543 not recognized by the cited prior art.”); see also MPEP § 2144.05 (discussing optimization of ranges and rebuttal by showing criticality). The Examiner’s analysis of the declaration is not entirely clear. See Ans. 5; Final Act. 5. The Examiner appears to take issue with the assumptions Appellants have made in calculating the diffusion rate of the prior art device, namely, the use of 15mm and 4mm2 for the length and cross-sectional area of the channel, respectively. To the extent that this is the Examiner’s position, we agree with the Examiner that the basis for these particular assumptions is not clear from the record before us. It is true that a comparison of the closest prior art practicable is preferred when alleging ranges are critical or results are unexpected. MPEP § 716.02(e). However, the criticality of ranges can nonetheless be demonstrated by comparing a sufficient number of tests both inside and outside the claimed range. MPEP § 716.02(d)(II). Appellants have entered evidence of such a comparison (Decl. paras. 6, 7, Exhibits 3, 4) and that evidence has not been substantively addressed by the Examiner. The Examiner also appears to take issue with the absence of any recitation in the claim regarding the improved results. To the extent that this is the Examiner’s position, we note that while a showing of criticality requires a showing that the beneficial or unexpected results are commensurate in scope with the claimed invention, there is no requirement to actually recite those results themselves as limitations of the claim. The express recitation of results that inherently follow from using the claimed structure does not substantively alter the scope of the claim. Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376-1377 4 Appeal 2015-004407 Application 12/925,543 (Fed. Cir. 2001). What is important is that the claim recites sufficient structure or steps such that the results purportedly achieved are commensurate with the scope of the subject matter that is claimed. See MPEP 716.02(d). The Examiner has not provided any analysis in this regard. Whenever objective evidence is presented in a timely fashion it must be considered by the Examiner. MPEP § 716.01(a). The Patent Trial and Appeal Board is primarily a tribunal of review and will generally not analyze questions of fact and law in the first instance. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010) (precedential); In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation to provide notice to the applicant of all matters of fact and law asserted prior to an appeal being heard before the board.). In light of the fact that the Examiner does not provide evidence or technical reasoning to support the conclusions reached and does not appear to have given proper consideration to Appellants’ evidence, on the totality of the record, we must conclude that the Examiner has not established obviousness by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674, (Fed.Cir.1985) (a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application); see also In re Oetiker, 977 F.2d 1443, 1445-46 (Fed. Cir. 1992); Id. at 1448-49 (Plager concurring). 5 Appeal 2015-004407 Application 12/925,543 DECISION The Examiner’s rejection is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation