Ex Parte KAMP

Board of Patent Appeals and Interferences

Dec 12, 2002

08892131 (B.P.A.I. Dec. 12, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID C. KAMP
_____________
Appeal No. 2001-0078
Application No. 08/892,131
______________
ON BRIEF
_______________
Before RUGGIERO, LALL, and BLANKENSHIP, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the Examiner’s
rejection of claims 1-6, 13, 15, and 16. Claims 7-12 and 14 have
been canceled.
The disclosed invention relates to a liquid containment and
dispensing device having a self-contained pump. The device has
the capability of dispensing the liquid in small doses, such as
the dispensing of printing ink for use in an ink jet printer.
More particularly, the device has a protective shell which houses
a flexible pouch which contains the ink or other liquid to be
Appeal No. 2001-0078
Application No. 08/892,131
2
dispensed. Further, the flexible pouch is surrounded by an
annular or perimetrical frame which depends from a chassis and
serves to protect the pouch from impact and shock loads.
Claim 1 is illustrative of the invention and reads as
follows:
1. In a liquid containment and dispensing device
having a rigid, generally cup-shaped outer shell with an
open end and an opposed pair of sidewalls, each of the
opposed pair of sidewalls having a longitudinally extending
recess therein, a chassis secured to the open end of the
shell, the chassis having a pumping mechanism with a liquid
outlet therefrom the chassis further having a planar portion
extending transversely of the open end of the shell, a
flexible pouch having an open end and a closed end, the
closed end being positioned within the shell, the chassis
further having an annular frame, extending transversely from
the planar portion, the frame surrounding the flexible pouch
and having an opposed pair of side members with a rib
portion extending outwardly from each of said side members,
characterized in that each of said opposed pair of side
members is adjacent one of the sidewalls of the outer shell,
the rib portion of each of said opposed pair of side members
extending into one of the recesses in the sidewall of the
shell.
The Examiner relies on the following prior art:
Barinaga 5,721,576 Feb. 24, 1998
(filed Dec. 04, 1995)
Clark et al. (Clark) 5,734,401 Mar. 31, 1998
(filed Dec. 04, 1995)
Claims 1-6, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark in view of Barinaga.
Appeal No. 2001-0078
Application No. 08/892,131
1 The Appeal Brief was filed March 13, 2000 (Paper No. 12). In response
to the Examiner’s Answer dated May 17, 2000 (Paper No. 13), a Reply Brief was
filed June 22, 2000 (Paper No. 14), which was acknowledged and entered by the
Examiner as indicated in the communication dated July 3, 2000 (Paper No. 15).
3
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for their
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner, the arguments in support
of the rejection and the evidence of obviousness relied upon by
the Examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
Appellant’s arguments set forth in the Briefs along with the
Examiner’s rationale in support of the rejection and arguments in
rebuttal set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-3, 6, 13 and 15. We reach the opposite conclusion with
respect to claims 4, 5, and 16. Accordingly, we affirm-in-part.
Appellant’s arguments in response to the Examiner’s
obviousness rejection of the appealed claims are organized
Appeal No. 2001-0078
Application No. 08/892,131
4
according to a suggested grouping of claims indicated at page 4
of the Brief. We will consider the appealed claims separately
only to the extent separate arguments for patentability are
presented. Any dependent claim not separately argued will stand
or fall with its base claim. Note In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
Appeal No. 2001-0078
Application No. 08/892,131
5
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to independent claims 1 and 13, Appellant’s
arguments in response to the obviousness rejection assert a
failure of the Examiner to establish a prima facie case of
obviousness since all of the claim limitations are not taught or
suggested by the applied Clark or Barinaga references. In
particular, Appellant asserts (Brief, page 7; Reply brief, page
2) that Barinaga does not make up for the deficiency of Clark in
disclosing an ink pouch frame with outwardly extending rib
portions which extend into recesses in an outer shell as claimed.
After careful review of the applied Barinaga reference,
relied on by the Examiner as providing a teaching of the claimed
rib and shell recess feature, we are in agreement with
Appellant’s position as stated in the Briefs. Our interpretation
of Barinaga coincides with that of Appellant, i.e., to whatever
extent Barinaga’s frame 46 could be interpreted as containing a
Appeal No. 2001-0078
Application No. 08/892,131
6
rib portion, any such rib portion does not extend into recesses
in an outer shell as set forth in appealed claim 1. In our view,
in contrast to Appellant’s claimed shell recess, Barinaga’s
Figure 2 illustration supports the conclusion that, at best, the
lower skirt portion of frame 46 engages the inner surface of
shell 30 in an interference fit.
Although the Examiner, in addressing Appellant’s shell
recess argument (Answer, page 8), asserts the “notoriously well
known” aspects of such a structure, we find no evidence of record
to support such a conclusion. “[T]he Board cannot simply reach
conclusions based on its own understanding or experience - or on
its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the
record in support of these findings.” In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). See also In
re Lee, 277 F.3d 1338, 1344-45, 61 USPQ2d 1430, 1434-35 (Fed.
Cir. 2002), in which the court required evidence for the
determination of unpatentability by clarifying that the
principles of “common knowledge” and “common sense” may only be
applied to analysis of evidence, rather than be a substitute for
Appeal No. 2001-0078
Application No. 08/892,131
7
evidence. The court has also recently expanded their reasoning
on this topic in In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d
2002, 2006-07 (Fed. Cir. 2002).
Accordingly, since the Examiner has not established a prima
facie case of obviousness, the rejection of independent claim 1
and its dependent claims 2 and 3, as well as independent claim
13, is not sustained.
We also do not sustain the Examiner’s obviousness rejection
of dependent claims 6 and 15 directed to the feature of heat
sealing the cap to the shell. The Examiner suggests (Answer,
pages 9 and 10) that the selection of a particular method for
attaching a cap to a shell would be considered “a common
practice” for a designer depending on a particular application,
and further that heat sealing provides “a quick assembly of the
cartridge so that manufacturing cost would be reduced . . . . ”
As with our misgivings expressed above with regard to the
Examiner’s rejection of claims 1-3 and 13, we find no evidentiary
support on the record that would support these conclusions of the
Examiner.
Turning to a consideration of the Examiner’s obviousness
rejection of claims 4 and 5, we note that while we found
Appellant’s arguments to be persuasive with respect to the
Appeal No. 2001-0078
Application No. 08/892,131
8
rejection of claims 1-3, 6, 13, and 15 discussed supra, we reach
the opposite conclusion with respect to claims 4 and 5. Unlike
previously independent claims 1 and 13 which set forth the
structural relationship between the ribbed frame and the recessed
shell, independent claim 4 is directed to the structural
engagement of the chassis overlying cap and the wall of the
pumping mechanism. Although Appellant contends (Brief, page 4)
that Clark and Barinaga lack the specific features of claim 4, we
find this argument to be unfounded. We find to be equally
without merit Appellant’s arguments with respect to dependent
claim 5 which repeat the assertions made with regard to claim 4
by asserting a lack of teaching of “ . . . the engagement of ribs
(219) of the embodiment of Fig. 11 with the recesses (222d)
. . . . ” In contrast to Appellant’s arguments, Barinaga, as
pointed out by the Examiner (Answer, page 9), discloses a pumping
mechanism 2 having ribs 120 which engage the slot 128 in the
skirt of the cap 32. In our view, the Examiner’s proposed
combination of Clark and Barinaga establishes a prima facie case
of obviousness which has not been rebutted by any convincing
arguments from Appellant. Therefore, the Examiner’s obviousness
rejection of claims 4 and 5 based on the combination of Clark and
Barinaga is sustained.
Appeal No. 2001-0078
Application No. 08/892,131
2 The Examiner and Appellant should review the following instances of
unclear antecedent reference:
Claim 4, lines 17-18, “the pumping chamber”
Claim 13, line 11, “chassis” should apparently be “shell”
Claim 15, line 1, “said cap” which raises a question as to whether claim
15 is properly dependent on claim 13.
9
Lastly, we also sustain the Examiner’s obviousness rejection
of independent claim 16 based on the combined teachings of Clark
and Barinaga. At page 8 of the Answer, the Examiner, responding
to Appellant’s comments in the Brief, sets forth an explanation
in support of the rejection of claim 16 which essentially repeats
the rationale provided in the rejection against previously
discussed claim 4. Although Appellant filed a Reply Brief, no
arguments pointing out any error in the Examiner’s rejection of
claim 16 has been set forth. Further, our review of the Barinaga
reference reveals a cap and shell structure which satisfies the
requirements of claim 16. (See Barinaga, outwardly projecting
bead 124 of cap 32 and inwardly projecting recess 122 on interior
surface of shell 30).
In summary, with respect to the Examiner’s 35 U.S.C.
§ 103(a) rejection of the appealed claims, we have sustained the
rejection of claims 4, 5, and 16, but have not sustained the
rejection of claims 1-3, 6, 13, and 15. Therefore, the
Examiner’s decision rejecting claims 1-6, 13, 15, and 16 is
affirmed-in-part.2
Appeal No. 2001-0078
Application No. 08/892,131
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JFR:hh
Appeal No. 2001-0078
Application No. 08/892,131
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HOWARD G. BRUSS
OWENS-ILLINOIS
ONE SEAGATE 25 LDP
TOLEDO, OH 43666