Ex Parte Haq

Board of Patent Appeals and Interferences

Feb 3, 2012

11688491 (B.P.A.I. Feb. 3, 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 02/06/2012
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
02/06/2012 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.

PER CURIAM

DECISION ON APPEAL

Appeal 2010-010706
Application 11/688,491

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-7, and 9-19. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
The Examiner maintains, and Appellant appeals, the following
rejections:
1) claim 19 under 35 U.S.C. § 102(b) as being anticipated by Castanet
(FR 2607109 issued Nov. 24, 1986, as translated);
2) claims 1-6, 9-15, and 19 under 35 U.S.C. § 102(b) as being
anticipated by Pedullà (US 6,598,755 B1 issued July 29, 2003);
3) claims 1-7, 9, 11, 12, 14, 15, and 19 under 35 USC § 103(a) as
unpatentable over Castanet in view of any one of Higuchi (US
6,669,040 B2 issued Dec. 30, 2003), Gash (US 3,083,877 issued
Apr. 2, 1963), or Santelli (US 3,301,293 issued Jan. 31, 1967);
4) claims 1-6, 9-15, and 19 under 35 USC § 103(a) as unpatentable
over Pedullà in view of any one of Higuchi, Gash, or Santelli; and
5) claims 16-18 under 35 USC § 103(a) as unpatentable over Castanet
or Pedullà, each in view of any one of Higuchi, Gash, or Santelli,
and further in view of Saghri (US 5,310,068 issued May 10, 1994).
Appellant focuses the arguments on independent product claims 1 and
19 (App. Br. 8-24); and does not present any substantive separate arguments
for any of the dependent claims, even those separately rejected (id.). Claims
1 and 19 are representative and are reproduced in the “Claims Appendix” of
Appellant’s Brief (id. at 26 and 28-29). Thus, dependent claims 2-7 and 9-
18 stand or fall with independent claim 1.
Appeal 2010-010706
Application 11/688,491

3
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s finding and conclusion that the subject
matter of Appellant’s claims 1 and 19, is anticipated and unpatentable over
the applied references. Accordingly, we sustain each of the Examiner’s
rejections of the claims on appeal for the reasons set forth in the Answer,
which we incorporate herein by reference.
We provide the following for emphasis only. Given the structural
identity and similarity of Castanet’s and Pedullà’s bottles to Appellant’s
corrugated bottle as claimed and disclosed respectively, we determine that
the Examiner was justified in concluding that Castanet anticipates claim 19,
and that Pedullà anticipates Claims 1 and 19. The respective accordion-like
(i.e., corrugated) bottles of Castanet and Pedullà appear reasonably to have
the capability of functioning as claimed, as when sufficient force is applied
thereto as explained by the Examiner (e.g., Ans. 6) 1. See, e.g., In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (Where there is reason to
conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure.).2

1 Pedullà also states that “the significant drawback” of a prior art collapsible
bottle is that there is “a low resistance against the return of the collapsed
folds to the original extended position” (Pedullà, col. 2, ll. 5-10).
2 Thus, the burden shifts to Appellant to prove that the corrugated bottle of
Castanet is not capable of functioning to be “extendible and contractible” as
claimed in claim 19, and to likewise prove that the corrugated bottle of
Pedullà does not have this capability, or the capability to be “selectively
Appeal 2010-010706
Application 11/688,491

4
Appellant has provided no evidence, or any persuasive line of
technical reasoning, explaining why the respective corrugated bottles of
Castanet or Pedullà do not have the claimed capabilities (see generally App.
Br.; Reply Br.).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED
bar

deformable between a most contracted state and a most expanded state” as
recited in claim 1.