Ex Parte Grogan

Patent Trial and Appeal Board

Sep 21, 2016

12456418 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/456,418
7590
Jack R. Grogan, Jr.
Pl
2464 Halelaan
FILING DATE
06/11/2009
09/21/2016
Honolulu, HI 96816-3404
FIRST NAMED INVENTOR
Jack Raymond Grogan JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DBW- US9 1404
EXAMINER
CRAIG,PAULAL
ART UNIT PAPER NUMBER
3778
MAILDATE DELIVERY MODE
09/21/2016 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 JACK RAYMOND GROGAN, JR.
Appeal2013-003387
Application 12/456,418
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jack Raymond Grogan, Jr. ("Appellant"), proceeding prose, appeals
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claim 2,
which is the sole pending claim. Appeal Br. 3, 5. 1 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
We note that neither the Appeal Brief (filed July 16, 2012) nor the
Reply Brief (filed December 21, 2012) provides page numbers. For
reference convenience, we designate the cover page of each brief as page 1
and number the pages consecutively therefrom, including the Appendices of
the Appeal Brief.
Appeal2013-003387
Application 12/456,418
CLAIMED SUBJECT MATTER
Appellant's disclosed invention "relates to dispensers for liquid
medications, and more specifically to medicine droppers." Spec. p. 2,
11. 7-8. In particular, the disclosed dispenser involves "putting a dosing
scale such as a body weight scale directly on the dose dispensing device,"
such that the device can be "used to simultaneously calculate and measure
an exact dose of liquid medication, based on the body weight of the patient."
Id., Abstract; Appeal Br. 5. Claim 2, reproduced below with emphasis
added, is the sole independent claim and is representative of the subject
matter on appeal.
2. A dose calculating dispenser for measuring a liquid
medication, comprising a dispenser comprising a medicine
dropper, oral syringe, or cup, and at least one scale visible upon
said dispenser, said scale using only conventional measuring
units that are already used to measure characteristics related to
body size consisting of pounds, kilograms, inches, centimeters,
months, years, square meters, or square feet, said characteristics
related to body size consisting of weight, length, BSA (body
surface area), or age, the measuring units of the scale
comprising at least 2 discrete numerical points in a series, such
that a change in body size related characteristic corresponds to
a change in liquid medication volume, the numerical points
directly representing the measuring units consisting of pounds,
kilograms, inches, centimeters, months, years, square meters, or
square feet, the scale generally positioned such that as the
dispenser is filled to a specific numerical point, the dispenser
calculates and contains a dose of liquid medication for a
patient having that characteristic related to body size.
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Appeal2013-003387
Application 12/456,418
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Page us 1,559,978 Nov. 3, 1925
Appellant's Admitted Prior Art ("AAPA") regarding disclosure
of the Zimecterin dispenser ("Zimecterin dispenser disclosure"),
as described on page 8 of the Specification and on page 3 of the
Information Disclosure Statement Transmittal Letter filed June 11,
2009.
REJECTION
The following rejection is before us for review: Claim 2 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA (the
Zimecterin dispenser disclosure) and Page. Final Act. 5---6.
ANALYSIS
The Examiner determined that a combination of teachings from
AAP A (the Zimecterin dispenser disclosure) and Page renders obvious the
subject matter recited in claim 2. Final Act. 5---6. In particular, the
Examiner found that the Zimecterin dispenser disclosure includes the
structure of a dispenser as claimed, including a scale that uses measuring
units relating to body size, with the exception that its scale calculates a dose
as the contents are dispensed, rather than as the dispenser is filled. Id. at 5.
However, the Examiner stated that "it is well known in the syringe art
for [a] scale to be positioned to either start with a completely filled syringe
and dispense the required dose [(i.e., calculate a dose as the contents are
dispensed)], or to start with an empty syringe and fill the syringe with the
required dose before dispensing the dose [(i.e., calculate a dose as the
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Appeal2013-003387
Application 12/456,418
dispenser is filled)]." Id. at 5---6. Specifically, the Examiner found that Page
teaches a syringe including a scale "generally positioned such that as the
dispenser is filled to a specific numerical point, the dispenser calculates and
contains the dose." Id. at 6 (citing Page, Abstract; p. 1, 11. 7-26; p. 2,
11. 8-39, 90-100; Figs. 1-3) (emphasis added). 2 Appellant does not dispute
these factual findings, acknowledging that the identified dispenser and scales
"are very old and very familiar." Appeal Br. 7; see id. at 7-10.
The Examiner concluded that, given the teachings of the prior art, it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to have modified the dispenser of the Zimecterin
dispenser disclosure "to include a scale generally positioned such that as the
dispenser is filled to a specific numerical point, the dispenser calculates and
contains the dose [(i.e., calculates a dose as the dispenser is filled, as recited
in the claim)], as taught by Page, to allow the syringe to be filled with a dose
from a bottle, as taught by Page." Final Act. 6. Thus, the combination of
teachings applied by the Examiner to render obvious the subject matter
recited in claim 2 includes multiple scales on the dispenser-namely, the
original scale from the Zimecterin dispenser disclosure (which calculates a
dose as the contents are dispensed), and the scale incorporated from the
teaching of Page (which calculates a dose as the dispenser is filled). See id.;
Ans. 6-7 (explaining that the dispenser of the Zimecterin dispenser
2 The Examiner also found that Page teaches using both ascending and
descending scales, which "allows for the syringe to be filled with a dose
from a bottle [(i.e., calculates a dose as the dispenser is filled)] ... while
also permitting a determination of how much medication has been given
[(i.e., calculates a dose as the contents are dispensed)]." Id. (citing Page,
p. 2, 11. 90-100; Figs. 1-3).
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Appeal2013-003387
Application 12/456,418
disclosure "would be equally usable, if not more so, if it had two scales
extending in opposite directions," and that "[t]wo scales in opposite
directions [would] allow for more flexibility in dosing").
Appellant argues by identifying asserted deficiencies in the original
scale from the Zimecterin dispenser disclosure relative to the scale recited in
the claim. See Appeal Br. 8-9; see also id. at 10-13, 23-25. We are not
persuaded by Appellant's argument because these asserted deficiencies are
not responsive to the rejection presented, which acknowledges a
shortcoming of the scale of the Zimecterin dispenser disclosure alone but
fills this gap by including the scale taught by Page. Thus, Appellant's
argument, which attacks a reference individually, is insufficient to apprise us
of error when the rejection is predicated upon a combination of prior art
teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant also argues that there would have been no reason to remove
the original scale from the Zimecterin dispenser disclosure, which calculates
a dose as the contents are dispensed. See Appeal Br. 8-9; see also id. at 11.
But this argument also is not responsive to the rejection presented, which
does not remove the original scale from the Zimecterin dispenser disclosure,
but instead simply includes an additional scale, as taught by Page, that
calculates a dose as the dispenser is filled, as discussed above. Accordingly,
this argument likewise does not apprise us of error.
Appellant's arguments generally contend that there would have been
no reason to combine the known teachings of the prior art as relied on in the
rejection presented, and that the changes proposed to the dispenser of the
Zimecterin dispenser disclosure would not have been obvious. See, e.g.,
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Application 12/456,418
Appeal Br. 7-8, 11-12, 25-27. We are not persuaded by these general
contentions, however, because the Examiner sufficiently articulated
reasoning based on rational underpinnings in support of the legal conclusion
of obviousness applied in the rejection presented. See Final Act. 5---6; KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
A reason to modify a reference may often prompt a person of ordinary
skill in the art to do what the inventor has done, but for a different purpose
or to solve a different problem; it is not necessary that the prior art suggest
the modification to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); see also
KSR Int'! Co., 550 U.S. at 421 ("A person of ordinary skill is also a person
of ordinary creativity, not an automaton."). Here, both the reason provided
in the Final Office Action (to allow the syringe of the Zimecterin dispenser
disclosure to be filled with a calculated dose from a bottle, as taught by
Page) and the response in the Answer explaining an advantage of the
combination (including two scales measuring from opposite directions
would allow for more flexibility in dosing) are reasonable, and Appellant's
general contentions are insufficient to refute the Examiner's position. See
Final Act. 6; Ans. 6.
Moreover, we note that "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co., 550 U.S. at 416. Appellant
has not provided any factual evidence or persuasive technical reasoning to
explain why the combination as applied in the rejection would yield
anything other than a result that would have been predictable to one of
ordinary skill in the art.
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Application 12/456,418
Finally, to the extent that Appellant's argument suggests that the
combination of teachings relied on in the rejection presented is no more than
impermissible hindsight, we are not persuaded by such an argument. See
Appeal Br. 25 (stating that "[t]here is no rational reason ... to make these
changes other than to create the claimed invention"). Although Appellant
may imply that the combination is no more than impermissible hindsight
based on Appellant's own Specification, such an implication is not
persuasive because Appellant does not identify, nor do we discern, any
knowledge that the Examiner relied upon that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F .2d
1392, 1395 (CCPA 1971) (So long as a conclusion of obviousness is based
on a reconstruction that "takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from [Appellant's] disclosure,
such a reconstruction is proper.").
After careful consideration of all the evidence, Appellant's arguments
do not apprise us of error in the Examiner's findings or reasoning in support
of the conclusion of obviousness. Accordingly, we sustain the rejection of
claim 2 under 35 U.S.C. § 103(a) as being unpatentable over the combined
teachings of the Zimecterin dispenser disclosure and Page.
DECISION
We AFFIRM the Examiner's decision rejecting claim 2 under
35 U.S.C. § 103(a) as being unpatentable over AAPA (the Zimecterin
dispenser disclosure) and Page.
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Application 12/456,418
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
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