Ex Parte Hansen

Patent Trial and Appeal Board

Feb 27, 2017

12448502 (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.
12/448,502 06/23/2009 Bernd Hansen 55612 9642
513 7590 03/01/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERND HANSEN
Appeal 2015-002673
Application 12/448,502
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
BRANDON J. WARNER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bemd Hansen (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the final rejection of claims 14—16, 19—28, and 30-33. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is directed to a plastic ampule produced
in a blow molding process and filled and sealed in a mold. Claim 14,
reproduced below, is illustrative:
Appeal 2015-002673
Application 12/448,502
14. A plastic ampule produced in a blow molding process and
filled and sealed in a mold, comprising:
a receptacle body;
a premolded insert having an outer peripheral surface with at
least one semi-spherical insert surface irregularity having a
bounded base surface;
a sleeve shaped neck part connected to and axially extending
from said receptacle body and forming a seat receiving said
insert, said neck part being molded onto said peripheral surface
of said insert thereby forming a semi-spherical neck surface
irregularity on an inner surface of said seat mating with said
insert surface irregularity to lock positively said insert and said
neck part against translational and rotational movements;
a laterally projecting nub with axial and peripheral opposing
surfaces forming one of said surface irregularities; and
a laterally extending depression forming the other of said
surface irregularities to receive and mate with said nub.
THE REJECTIONS
The Examiner rejects:
(i) claims 14—16, 19-21, 28, 30, and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Iton (JP 09-119598, published
May 6, 1997) in view of Faber (US 2006/0162596 Al, published July
27, 2006);
(ii) claims 24—26, 32, and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Iton in view of Faber and Shigehiko (JP 2004-
196417, published July 15, 2004); and
(iii) claims 14—16, 20-28, and 30-33 under 35 U.S.C. § 103(a)
as being unpatentable over Shigehiko in view of Iton and Faber.
2
Appeal 2015-002673
Application 12/448,502
ANALYSIS
Claims 14—16, 19—21, 28, 30, and 31—Unpatentability over Iton and Faber
Claim 14
The Examiner finds that Iton discloses a pre-molded insert and
receptacle body as set forth in claim 14, but fails to disclose that an insert
surface irregularity and a neck surface irregularity (nub and mating
depression) are of a semi-spherical shape. Final Act. 3.1 The Examiner
finds that Faber discloses the use of a semi-spherical nub and mating
depression, and concludes that it would have been obvious in view thereof to
modify the shapes of the nubs and depressions in Iton to be semi-spherical in
order to reduce material cost and prevent breakage of the nubs when
inserting. Id. The Examiner additionally takes the position that a
modification to the Iton nubs and depressions so as to be semi-spherical is a
mere change in shape that, absent a showing of unexpected results, would
have been obvious to a person of ordinary skill in the art exercising such
ordinary skill. Id. at 3^4.
Appellant argues that Faber is nonanalogous art, and that, for the
alternative basis for the obviousness conclusion, the Examiner has
improperly applied a per se rule of obviousness. Appeal Br. 6. As to the
former, the Examiner appears to concede that Faber’s self-inking stamp is
1 The Examiner’s findings begin with identifying that Iton does not disclose
that the insert surface irregularity is a nub, and that the neck surface
irregularity is a complementary depression; however, those limitations are
not present in claim 14, but instead appear in claim 15, which depends from
clam 14, and in independent claim 28. The limitations and the findings, and
arguments relative thereto, are discussed separately with respect to those
claims.
3
Appeal 2015-002673
Application 12/448,502
not drawn from the same field of endeavor as Appellant’s invention, but
takes the position that Faber is reasonably pertinent to the problem faced by
Appellant. Ans. 8. In this regard, the Examiner posits that “the particular
problem confronting the inventor was the need for a simple holding means
to enable a secure attachment of two parts,” and that a person of ordinary
skill in the art “would have looked to other prior art that teaches fastening
two parts together.” Id.
Appellant counters that the Examiner’s statement of the problem
faced is so broad as to be meaningless, and that the particular problem faced
by Appellant was finding a way to mount an insert in a molded-on receptacle
body that is able to resist both translational and rotational forces. Reply Br.
2. According to Appellant, Faber is directed to a significantly different
problem, and would not be seen as being reasonably pertinent to Appellant’s
problem. Id.
Appellant has the better position here. The Faber semi-spherical nubs
and corresponding depressions are designed to releasably hold an ink pad
container within a self-inking stamp (Faber, para. 33), and the structure
disclosed there does not appear to lend itself to the problem faced by
Appellant of securing an insert to a receptacle in a manner that would resist
rotational and translational forces. Accordingly, the Examiner’s reliance on
Faber in concluding that the subject matter of claim 14 would have been
obvious is misplaced.
We do not, however, agree with Appellant that the Examiner
impermissibly applied a per se rule of obviousness in determining that the
modification to the shape of the nubs and corresponding depressions in Iton
would have been an obvious change in the shape of those components.
4
Appeal 2015-002673
Application 12/448,502
Appellant argues that the claimed semi-spherical irregularities give rise to
“different operational characteristics and advantages,” further arguing that
the shape of the Iton grooves “would be difficult to completely fill and form
with the liner” in a blow molding operation. Appeal Br. 6. Appellant
additionally argues that the “criticality and importance” of the semi-circular
shaped irregularities “is clear from the disclosed structure as set forth in the
Brief on Appeal,” and “the criticality need not be disclosed in the
application” in order to be considered. Reply Br. 3.
Although Appellant is correct that evidence of criticality need not
necessarily be present in an application specification, such evidence must be
somewhere in the record. The unsubstantiated attorney argument appearing
in the briefs is not a substitute for competent evidence. Invitrogen Corp. v.
Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005). Furthermore, the
evidence provided in the form of Appellant’s Specification weighs in favor
of a lack of criticality of the shape of the irregularities. More specifically,
the Specification states that, “[i]n advantageous embodiments, the respective
surface irregularity is formed by a nub, and the respective nubs, viewed in
cross section, can be made circular, semicircular, or polygonal, especially
triangular or square.” Spec. 3,11. 20—22. Nubs forming a “spherical
convexity” are described as being “especially advantageous,” however, such
disclosure falls short of evidence of the criticality of the claimed shape of the
irregularities. Id. at 11. 24—25.
The rejection of claim 14 as being unpatentable based on an obvious
design choice in view of Iton, is thus sustained.
5
Appeal 2015-002673
Application 12/448,502
Claims 15 and 28
Claim 15 depends from claim 14, and requires that the insert surface
irregularity be a nub, and that the neck surface irregularity is a depression.
Independent claim 28 includes substantially identical limitations, and
Appellant presents the same argument for both claims. Appeal Br. 7—9.
In rejecting these claims, the Examiner acknowledges that Iton
discloses the use of depressions on the component relied on as
corresponding to the insert, and that protrusions make up the neck surface
irregularity. Final Act. 2. The Examiner concludes that it would have been
obvious to modify Iton, by merely reversing the location or position of
essential working parts, such that the insert of Iton would have protruding
nubs and the receptacle neck would have corresponding depressions. Id. at
2—3. The Examiner points out that the Specification fails to evidence any
criticality in this respect. Id. at 3.
Appellant maintains that the Examiner’s failure to compare the
relevant facts in In re Einstein,2 which is cited in the Final Action in support
of the rejection, to the relevant facts in the present application, renders that
decision inapplicable and amounts to the application of a per se rule of
obviousness. Appeal Br. 7—8. The manner in which the Examiner applies
the holding in Einstein to the present situation, however, itself evidences that
the Examiner finds the situation in Einstein to be pertinent. Furthermore,
Appellant’s Specification not only fails to show any criticality in reversing
the position of the components, indeed, the Specification states that “[i]t
2 46 F.2d 373 (CCPA 1931).
6
Appeal 2015-002673
Application 12/448,502
goes without saying” that the reversal of these components will result in
achieving the same functionality. Spec. 3,1. 24.
Appellant cites to a number of other cases that espouse principles of
patentability or lack thereof; however, Appellant has not adequately
established how these undermine the Examiner’s conclusion that the
proposed modification of the prior art amounts merely to an obvious reversal
of parts. We are therefore not apprised of error in the Examiner’s position
that it would have been obvious to reverse the positions of the protrusions
and depressions on the Iton device. The rejection of claims 15 and 28 is
therefore sustained.
Claim 16
Appellant argues that Iton does not disclose the limitation set forth in
claim 16, in that the grooves in Iton extend along a substantial peripheral
portion of the metal connector. Appeal Br. 10. The argument fails to take
into account the Examiner’s proposed modification of Iton to change the
shape of the depressions to a semispherical shape. Accordingly, we are not
apprised of error in this regard, and the rejection of claim 16 is sustained.
Claims 19 and 30
These claims are identified in a separate subheading, but the only
“argument” advanced is a repeat of certain claim language and a naked
assertion that such limitations are not disclosed or rendered obvious by the
cited references. Appeal Br. 10. As such, we are not apprised of error in the
rejection of these claims and the rejection is sustained. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“we hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
7
Appeal 2015-002673
Application 12/448,502
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
Claim 20
Appellant argues that the limitations set forth in claim 20 are not
taught by Faber. Appeal Br. 10. This argument does not apprise us of error,
in that Iton, not Faber, is relied upon as teaching these limitations. The
rejection of claim 20 is sustained.
Claims 21 and 31
Appellant includes claims 21 and 31 in a separate subheading, and
argues that the references do not disclose an offsetting of the nubs on
adjacent circular lines.3 Appeal Br. 10. Claim 21 does not include such a
limitation, therefore, the rejection is sustained as to claim 21.
The Examiner makes no findings and presents no reasoning as to the
cited prior art either disclosing or rendering obvious the offsetting feature of
claim 31. Accordingly, the rejection of claim 31 is not sustained.
Claims 24—26, 32, and 33—Unpatentability over Iton, Faber, and Shigehiko
Appellant argues that it would not have been obvious to modify the
Iton container as proposed by the Examiner, in view of the teachings of
Shigehiko, because Shigehiko “does not involve a molded insert.” Appeal
Br. 11. Notwithstanding that the nozzle insert of Shigehiko is not molded to
the neck of the receptacle, the teachings relied on by the Examiner are not
3 Appellant identifies claim 22 in the body of the argument, in place of claim
21. Appeal Br. 10. We note that claim 22 is not identified by the Examiner
as being subject to this ground of rejection, and, given the absence of
findings or conclusions as to the unpatentability of the limitation present in
claim 22, we do not regard claim 22 as being subject to this rejection.
8
Appeal 2015-002673
Application 12/448,502
specific to molded or non-molded inserts, and the argument thus does not
apprise us of error in the rejection.
Appellant also argues, with respect to claims 26 and 33, that the
threads in Shigehiko are on the main body of the container and not on the
insert, as recited in those claims. Id. The Examiner makes no specific
findings in this regard, nor presents any conclusion as to the obviousness of
this particular limitation. Final Act. 4—5. The Examiner instead erroneously
states that these claims stand or fall with claims 14 and 28, respectively. See
Ans. 11.
The rejection of claims 24, 25, and 32 is sustained. The rejection is
not sustained as to claims 26 and 33.
Claims 14—16, 20—28, and 30—.33—Unpatentability over Shigehiko, Iton, and
Faber
For this rejection, Appellant presents an argument directed to claims
14 and 28, and a separate argument for claim 23. Appeal Br. 12—13.
Appellant states that claims 15, 16, 20—22, 24—27, and 30-33 are patentable
“for the reasons presented above, which reasons are not repeated.” Id. at 13.
We interpret this latter statement as directing our attention to the arguments
traversing the rejection of the claims over Iton and Faber, and over Iton,
Faber, and Shigehiko.
Claims 14 and 28
Appellant argues that this rejection is improper because Shigehiko
discloses the use of annular projecting members or rings on a nozzle insert
that engage an inner surface of a tubular neck of a receptacle upon
positioning of the nozzle inside the neck, and that there are no corresponding
grooves or recesses in the neck. Appeal Br. 12. The argument does not
apprise us of error, in that the argument does not address the rejection
9
Appeal 2015-002673
Application 12/448,502
presented, which includes modifying the process by which the Shigehiko
container is produced, in view of the teachings of Iton.
The rejection of claims 14 and 28 is sustained.
Claim 23
Appellant argues that the recitation that the nubs are differently
dimensioned or shaped patentably distinguishes the claimed subject matter
over the cited art. Although we agree with the Examiner’s position that
modifying the shape of the nubs in Iton to a semicircular shape would have
been obvious, the Examiner does not make findings or set forth any reason
supporting a conclusion that it would have been obvious to provide nubs
having different dimensions or shapes among the plurality of nubs.
The rejection of claim 23 is not sustained.
Claims 15, 16, 20—22, 24—27, and 30—33
As previously noted, Appellant relies on the same arguments
presented relative to the rejections applying Iton as the principal reference as
being pertinent to this rejection applying Shigehiko as the principal
reference. Appeal Br. 13. The rejection as to claims 15, 16, 20, 21, 24, 25,
30, and 32 is sustained for the reasons presented above relative to the other
grounds of rejection of those claims.
No argument is presented above for claim 27, however, claim 27
recites essentially the same limitation as set forth in claim 16. Appellant’s
argument directed to claim 16 failed to apprise us of error in the rejection,
and the same applies to claim 27. The rejection is sustained as to claim 27.
The rejection as to claims 26, 31, and 33 is not sustained for the
reasons presented above. The rejection of claim 22 is also not sustained, in
10
Appeal 2015-002673
Application 12/448,502
that claim 22 sets forth essentially the same limitation as in claim 31, and the
argument advanced for claim 31 applies to claim 22 as well.
DECISION
The rejection of claims 14—16, 19-21, 28, and 30 as being
unpatentable over Iton and Faber is affirmed based on the disclosure of Iton
alone.
The rejection of claim 31 as being unpatentable over Iton and Faber is
reversed.
The rejection of claims 24, 25, and 32 as being unpatentable over Iton,
Faber, and Shigehiko is affirmed, based on the combination of Iton and
Shigehiko.
The rejection of claims 26 and 33 as being unpatentable over Iton,
Faber, and Shigehiko is reversed.
The rejection of claims 14—16, 20, 21, 24, 25, 27, 28, 30 and 32 as
being unpatentable over Shigehiko, Iton, and Faber is affirmed based on the
combination of Shigehiko and Iton.
The rejection of claims 22, 23, 26, 31, and 33 as being unpatentable
over Shigehiko, Iton, and Faber is reversed.
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).
AFFIRMED-IN-PART
11