11617938 (B.P.A.I. May. 1, 2012)

Ex Parte Hasse et al

Board of Patent Appeals and InterferencesMay 1, 2012

11617938 (B.P.A.I. May. 1, 2012)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 11/617,938 12/29/2006 Hasse, Debra C. EXAMINER WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 Flick, Jason ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 05/01/2012 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DEBRA C. HASSE and FRANK M. FAGO __________ Appeal 2010-011000 Application 11/617,938 Technology Center 3700 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-011000 Application 11/617,938 2 STATEMENT OF THE CASE The following claims are representative and read as follows: 1. A syringe containing medical fluid for use in a medical imaging procedure comprising: a data tag for storing data identifying one or more of a software update for a powered medical fluid administration device, a product promotion, and an electronic coupon code for sales of further products. 2. A medical syringe comprising: a medical fluid for use in a medical imaging procedure; a body containing the medical fluid and having a syringe tip at one end; a data tag for storing data identifying one or more of a software update for a powered medical fluid administration device, a product promotion, and an electronic coupon code for sales of further products. Cited References The Examiner relies on the following prior art references: Walker et al. US 5,651,775 Jul. 29, 1997 Powers et al. US 2005/0107698 A1 May 19, 2005 Uber, III et al. US 5,840,026 Nov. 24, 1998 Caputo et al. US 2004/0051368 A1 Mar. 18, 2004 Grounds of Rejection  Claims 1, 2, 5-8 and 16-24 are rejected under 35 U.S.C. § 102(b) as anticipated by Walker.  Claims 3-4 are rejected under 35 U.S.C. § 103(a) as obvious over Walker in view of Powers.  Claims 9-12 are rejected under 35 U.S.C. § 103(a) as obvious over Uber in view of Caputo.  Claims 13-15 are rejected under 35 U.S.C. § 103(a) as obvious over Walker in view of Caputo. Appeal 2010-011000 Application 11/617,938 3 FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3- 7. Discussion ISSUE The Examiner concludes that Walker teaches each element claimed. The Examiner argues that Uber teaches each element claimed, except an RFID (radiofrequency identification) tag, and relies on Caputo to make up for this deficiency. The Examiner relies on Powers for the disclosure of a syringe having a contrast fluid or radiopharmaceutical. Appellants argue that neither Walker, Powers, Uber or Caputo disclose or “suggest data related to a software update for a powered medical fluid administration device, a product promotion, or an electronic coupon code for sales of further products.” (App. Br. 4-5.) The issue is: Does the cited prior art support the Examiner’s conclusion that the claimed subject matter is anticipated and/or obvious? PRINCIPLES OF LAW In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Appeal 2010-011000 Application 11/617,938 4 It is well settled that “[t]o anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber at 1477. It is also “well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Id. Thus, functional limitations directed to intended uses of a claimed product do not serve to distinguish the product from prior art products inherently capable of performing the claimed function. See id. at 1478-79 (holding that a prior art apparatus meeting all claimed structural limitations was anticipatory because it was inherently capable of performing the claimed function). “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Finally, “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Appeal 2010-011000 Application 11/617,938 5 Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ANALYSIS We agree with the Examiner’s fact finding, statement of the rejection and responses to Appellants’ arguments as set forth in the Answer. We provide the following additional comments. Appellants’ Specification indicates that their invention addresses several prior art problems related to managing information related to medical syringes, and more particularly, medical syringes containing contrast fluid. (See Spec. 1.) More specifically, their data tracking system can track the quantity, type and time of contrast fluid syringes in the warmer box (see Spec. 2), prevent use of an empty syringe (see Spec. 3), provide safety feature such as recognition of syringe operation in service mode (id.), allow updating of information associated with the medical fluid in the syringe including the “various stages of manufacture, transport, storage, use and disposal” (Spec. 5), and provide information related to coupons, promotions, internet links and software from the supplier (see Spec. 7.). In addition, Appellants’ Specification indicates that a “data tag” stores data (Spec. 7) or is a device capable of having data electromag- netically read therefrom and/or written thereto (RFID tag.) (see Spec. 5). Appeal 2010-011000 Application 11/617,938 6 Appellants argue that neither Walker, Powers, Uber or Caputo disclose or “suggest data related to a software update for a powered medical fluid administration device, a product promotion, or an electronic coupon code for sales of further products.” (App. Br. 4-5.) We are not persuaded. We agree with the Examiner that a bar code or label such as that of Walker is capable of having data electromagnetically read therefrom, as claimed. Thus, the claimed syringe recites no structural difference from the prior art product. Similarly, Caputo discloses a syringe having an RFID tag, and thus Appellants’ claims recite no structural difference over the device of Caputo in combination with Walker or Uber. In other words, Appellants’ claims do not recite a structure or electronic component which differs from that of the prior art which allows the processing of the advantageous data, software updates, tracking or coupons recited in the claims. Thus, the prior art teaches each element claimed. Thus, the anticipation and obviousness rejections are affirmed for the reasons of record. CONCLUSION OF LAW The cited references support the Examiner’s anticipation and obviousness rejections. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED alw