Ex Parte Lane

Board of Patent Appeals and Interferences

May 30, 2006

09828545 (B.P.A.I. May. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte DONOVAN R. LANE
___________

Appeal No. 2006-0798
Application No. 09/828,545
___________

ON BRIEF
___________

Before BAHR, NAPPI, and FETTING, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's final rejection of
claims 3 and 4. All of the remaining claims 1, 2 and 5 pending in this application are
allowed.

We AFFIRM.
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Appeal No. 2006-0798
Application No. 09/828,545

BACKGROUND

The appellant's invention relates to a cartridge for a medicament. An
understanding of the invention can be derived from a reading of exemplary claim 3,
which is reproduced below.
3. An elongated tubular cartridge for containing a medicament, said
cartridge including anterior and posterior ends and a plunger positioned
within said cartridge; wherein said plunger is movable in said cartridge to
dispense said medicament through said anterior end; wherein said
cartridge further comprises an interior wall with tab means projecting into
said cartridge from said interior wall; wherein said tab means is spaced a
predetermined distance from said posterior end; and wherein said plunger
is located between said tab means and said anterior end.

The prior art reference of record relied upon by the examiner in rejecting the appealed
claims is:
Mikkelsen 5,984,900 Nov. 16, 1999
Claims 3 and 4 stand rejected under 35 U.S.C. § 102(e) as being unpatentable over
Mikkelsen.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant/appellants regarding the above-noted rejection, we make reference to the
examiner's answer (mailed December 16, 2003) for the reasoning in support of the
rejection, and to appellant's brief (filed January 29, 2003) for the arguments
thereagainst.
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Appeal No. 2006-0798
Application No. 09/828,545

OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations that follow.
Appellant argues that Mikkelsen does not teach or suggest a cartridge for a
medicament which includes a tab means in the interior of the cartridge as recited in the
language of claim 3, and that the aspect of Mikkelsen most analogous to Appellant’s
cartridge is Mikkelsen‘s ampoule which has no tab. [See brief at page 4] .
The examiner responds that Mikkelsen’s ampoule does contain a tab, embodied by
a ring near reference number 19 in Fig. 1. The structure the examiner is referring to is
more advantageously viewed in Fig. 2, although reference number 19 is not called out
in that figure. Further, the examiner interprets Mikkelsen’s housing, reference number 1
in Fig. 1, as a cartridge. [See answer at page 5].
We note that Mikkelsen’s housing [1] is an elongated tubular cartridge that contains
a medicament [col. 2 lines 22-24], the housing includes anterior [col. 2 lines 22-24,
referred to as “distal end”] and posterior ends [col. 2 lines 49-53, referred to as
“proximal end”] and a plunger [round member on the distal/anterior end of piston rod 35]
positioned within the housing. The plunger is clearly movable in the housing to dispense
the medicament through said anterior end.
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Appeal No. 2006-0798
Application No. 09/828,545

Also, as the examiner has noted, there is a structure that is circular and is a
predetermined distance from the posterior end and projects into the cartridge from the
interior wall, and thus appears to respond fully to the “tab means” limitation of claims 3
and 4. We note that the claim limitation “tab means” has no function modifying it, and
therefore it is not subject to the claim construction requirements of 35 U.S.C. § 112,
sixth paragraph. The plunger is located between this tab means and the anterior end.
We particularly note that neither claim 3 nor claim 4 requires any functional relationship
between the tab means and the plunger, but only a positional relationship met by
Mikkelsen. Accordingly we find that Mikkelsen does anticipate claims 3 and 4 and we
therefore sustain the rejections of claim 3 and 4 under 35 U.S.C. § 102(e).
Only those arguments actually made by Appellant have been considered in this
decision. Arguments which Appellant could have made but chose not to make in the
brief or by filing a reply brief have not been considered and are deemed waived by
Appellant (see 37 CFR § 41.37(c)(1)(vii)). Support for this rule has been demonstrated
by our reviewing court in In re Berger, 279 F. 3d 975, 984, 61 USPQ2d, 1523, 1528-
1529 (Fed. Cir. 2002), wherein the Federal Circuit stated that because the appellant did
not contest the merits of the rejections in his brief to the Federal Circuit, the issue was
waived.
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Appeal No. 2006-0798
Application No. 09/828,545

CONCLUSION
To summarize, the decision of the examiner to reject claims 3 and 4 under 35
U.S.C. § 102(e) is affirmed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a)(1)(vii).
AFFIRMED

JENNIFER D. BAHR )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal No. 2006-0798
Application No. 09/828,545

Dean P. Edmundson
P.O. Box 179
Burton, TX 77835

AWF/ki

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