Ex Parte Haq

Board of Patent Appeals and Interferences

Apr 13, 2012

11688491 (B.P.A.I. Apr. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/688,491 03/20/2007 Tariq A. Haq P-7037 (102-606) 1130
32752 7590 04/16/2012
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(Hoffman & Baron)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
BEISNER, WILLIAM H
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
04/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TARIQ A. HAQ
____________

Appeal 2010-010706
Application 11/688,491
Technology Center 1700
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a Request for Rehearing (“Request”), dated
April 4, 2012, of our Decision, mailed February 6, 2012 (“Decision”),
wherein we affirmed the Examiner’s § 102 and 103 rejections of all
appealed claims.
Appeal 2010-010706
Application 11/688,491

2
We have reconsidered our Decision of February 6, 2012, in light of
Appellant’s comments in the Request for Rehearing, and we find no error in
the disposition of the § 102 and 103 rejections.
We have thoroughly reviewed the arguments set forth by Appellant in
the Request. However, we remain of the opinion that the subject matter of
independent claims 1 and 19 is properly rejected and anticipated and
unpatentable over the applied references.
Appellant argues that the decision reached by the merits panel is in
error because we allegedly “misapprehended or overlooked” the evidence
presented in the Appeal Brief that the corrugated bottles of Pedulla or
Castanet do not have the claimed capabilities (Request 2), for the reasons
explained again in the Request (Request 2-5). We disagree. The
Examiner has established a reason to believe that the functions recited in
the claim is an inherent characteristic of the corrugated bottles of the
applied prior art (generally Ans.).
Notably, we stated that we sustained the Examiner’s rejections “for
the reasons set forth in the Answer” (Decision 3). In particular we noted that
the Examiner’s reasonable position that when sufficient force is applied, the
corrugated bottles encompassed by the teachings of Pedulla and Castanet
would have the claimed capabilities (that is, of being extendible as well as
contractible) (id.). We further noted that the prior art discussed in Pedulla
teaches that such bottles return to their original extended position (see
Decision 3 Footnote 1) which further supports the Examiner’s position that
the bottles of Pedulla would have the claimed capabilities when sufficient
force is applied. Furthermore, Pedulla states that the result of tightening the
folds instead of reopening the folds of the Fig. 1 embodiment “applies to
Appeal 2010-010706
Application 11/688,491

3
forces which are not particularly high” (Pedulla, col. 4, ll. 41-44). In any
event, the Examiner further reasonably explained that when using the “snap”
configuration embodiment of Pedulla (Figs. 4 and 5), (in contrast to the
specific arched surface fold configuration embodiment of Fig. 1), one of
ordinary skill would have recognized that a force could be used to unsnap
the structure (e.g., Ans. 17). Appellants have provided no compelling
rationale why the Examiner’s position is in error. Likewise, with respect to
the rejections based on Castanet, Appellant’s arguments that Castanet
teaches that the corrugated bottle may be operated in use to prevent return to
its extended state by closing it with stopper 2 or hermetically by stopper 8
(Request 4, 5) does not refute the reasonable position of the Examiner that
the bottle structure has the capability of extending and contracting (e.g.,
when no stopper/seal is applied thereto). Appellant has advanced no
compelling rationale why the Examiner’s conclusion regarding the
corrugated bottle’s capabilities is not reasonable.
Thus, we decline to reconsider our decision to affirm the Examiner’s
§§ 102 and 103 rejections of the appealed claims.
In conclusion, based on the foregoing, Appellant’s Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed February 6, 2012, and is final for the purposes of judicial
review. See 37 C.F.R. 41.52 (a)(1).

tc