Ex Parte Lassen

Patent Trial and Appeal Board

Feb 27, 2017

13954083 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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.
13/954,083 07/30/2013 Thomas LASSEN PTB-5544-58 1601
23117 7590 03/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DURAND, PAUL R
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS LASSEN
Appeal 2015-004179
Application 13/954,083
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and PAUL J. KORNICZKY,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Lassen (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
June 26, 2014 (“Final Act.”), rejecting claims 1-17 and 19-21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies MICRO MATIC A/S as the real party in interest.
Appeal Br. 3.
Appeal 2015-004179
Application 13/954,083
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a dispensing line for a
dispensing system to be used in connection with dispensing of a beverage.”
Spec. 1,11. 10-11. Claim 1 is representative of the subject matter on appeal
and is reproduced below.
1. A dispensing line for a dispensing system to be used
in connection with dispensing of a beverage, said system
comprising a beverage container, said container comprising an
outlet wherein an extractor tube is arranged, and a dispensing
device adapted to connect a pressure medium to the container so
that the beverage present in the container is forced out of the
container via the extractor tube, said dispensing line comprising:
a flow passage adapted to be in contact with the beverage
when the beverage is being dispensed and adapted to be in fluid
communication with the extractor tube; and
a connection device adapted to attach to the extractor tube,
wherein said connection device comprises a non-reattachment
device that is adapted to disengage the connection device when
the dispensing line is detached from the extractor tube so that the
dispensing line cannot be reused.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 4 and 16 under 35 U.S.C. § 112, first paragraph, for failure
to comply with the enablement requirement.2
2 The Final Action includes claim 3 in this ground of rejection. Final Act. 3.
The Examiner withdraws this rejection of claim 3 in the Examiner’s Answer.
Ans. 10.
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2. Claims 1, 2, 5-8, 10-15, and 19-21 under 35 U.S.C. § 102(b) as
anticipated by Gomi (US 6,105,825, issued August 22, 2000).
3. Claims 1, 3, 4, 10, 14, 15, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Raats (US 6,942,127 B2, issued September 13,
2005) and de la Guardia (US 2004/0035884 Al, published
February 26, 2004).
4. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Gomi and
Huggins (US 4,045,525, issued August 30, 1977).
5. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Gomi and
Vanden Driessche (US 4,402,429, issued September 6, 1983).
6. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Raats, de
la Guardia, and Vanden Driessche.
7. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gomi and
Meike (US 6,820,775 B2, issued November 23, 2004).
8. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Raats, de
la Guardia, and Meike.
ANALYSIS
First Ground of Rejection
Appellant contends that the rejection of claims 4 and 16 is improper
because it “is little more than a bald allegation that undue experimentation
would be required and does not adequately address [the Wands] factors.”
Appeal Br. 9 (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)).
Claim 4 depends from claim 3 and recites “wherein the non­
attachment device is adapted to destroy or damage the snap or click action
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Application 13/954,083
when the connection device is detached from the extractor tube.” Appeal
Br. 17 (Claims App.).3 The Examiner finds:
The manufacture of a dispensing line with a snap or click
connection would require undue experimentation since the
specification and drawings fail to provide any guidance as to how
the snap or click connection interacts with extraction tube or
what structure would be necessary to ensure that the connection
is broken or damaged after one use.
Final Act. 3—4.
Claim 16 depends from claim 15 and recites “the pressure medium is
contained in a separate compartment in the container.” The Examiner finds
“the dispensing line includes only a single one-way valve 16” and “does not
include the necessary structure to receive the pressure medium from a source
within the container and then deliver the pressure medium to the extractor
tube.” Final Act. 4. The Examiner explains “[manufacturing a dispensing
line having such a capability would require undue experimentation since it
would be necessary to completely redesign the dispensing line connector
which could affect the other claimed elements in unforeseen ways.” Id.
To evaluate whether a disclosure would require undue
experimentation is a legal conclusion reached by weighing many factual
considerations including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
3 Claim 3 depends from claim 1 and recites “wherein the connection device
is attached to the extractor tube by a snap or click action.” Appeal Br. 16
(Claims App.).
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Application 13/954,083
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
Wands, 858 F.2d at 737.
The Examiner, who bears the initial burden, failed to adequately
explain why the disclosure, as filed, is not sufficiently complete to enable
one of ordinary skill in the art to make and use the invention of claims 4 and
16 without undue experimentation. See In re Wright, 999 F.2d 1557, 1561—
62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223—24 (CCPA
1971)) (The PTO bears the initial burden when rejecting claims for lack of
enablement.). The rejection before us does not include adequate discussion
of the Wands factors to provide the Appellant or the Board with an
indication as to why one would have to engage in undue experimentation to
practice the claimed invention. “Enablement is not precluded by the
necessity for some experimentation .... However, experimentation needed
to practice the invention must not be undue experimentation. The key word
is ‘undue,’ not ‘experimentation.’” Wands, 858 F.2d at 736—737. For
example, the Examiner failed to demonstrate consideration of the quantity of
experimentation needed to make or use the invention based on the content of
the disclosure; the nature of the invention; the state of the prior art; the
relative skill of those in the art; and the level of predictability in the art. Id.
at 737. Although the Examiner is not required to provide a discussion as to
every Wands factor, it is not apparent from the Examiner’s rejection that any
of these factors has been considered or that the Examiner relies on any
evidence sufficient to support the conclusion of lack of enablement. Id.
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(“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.”). As such, we reverse the Examiner’s decision to reject
claims 4 and 16 under 35 U.S.C. § 112, first paragraph, for lack of
enablement.
Second Ground of Rejection
The Examiner finds Gomi discloses a dispensing line including a
connector configured to attach to the extractor tube, where “[t]he connector
includes a non-reattachment element (46, 47) in the form of a seal that is
adapted to disengage the connection and lose its sealing property when the
dispensing line is detached from the extractor tube so that the dispensing line
cannot be reused.” Final Act. 5 (stating the “seal is capable of being
detached, broken off or destroyed when detached rendering the line
unsuitable for further use inasmuch as the applicant’s seal is capable of such
function”). Appellant argues the Examiner has failed to provide adequate
evidence to support the finding that Gomi’s dispensing line is “adapted to”
perform the functions recited in each of independent claims 1,15, and 21.4,5
4 Claim 15 recites the non-reattachment device “is adapted to disengage the
connection device when the dispensing line is detached from the extractor
tube, so that the dispensing line cannot be reused[.]” Appeal Br. 19 (Claims
App.).
5 Claim 21 recites “the non-reattachment device and/or the seal is adapted to
detach, break off or be destroyed when the connection device is detached
from the extractor tube.” Appeal Br. 20 (Claims App.).
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Appeal Br. 11 (citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014); id. at
12 (arguing “[t]here is no disclosure in Gomi related to a seal that will no
longer seal after being detached”).
In Giannelli, the court looked to the written description of the
application and determined that the phrase “adapted to” in view of the
specification, has a narrower meaning than “capable of’ or “suited for.” Id.
at 1379 (contrasting the narrower meaning of “adapted to” as meaning
“made to,” “designed to,” or “configured to,” with the broader meaning of
“capable of or “suitable for”). See also Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (holding that “adapted
to” required elements to be “designed or configured to accomplish the
specified objective, not simply that they can be made to serve that purpose”).
In this case, we likewise look to Appellant’s Specification to discern the
meaning of “adapted to.”
The Specification describes one embodiment in which a “sealing
means 15 enables hermetically [sic] connection to the extractor tube” and
“which sealing means or non-reattachment means either is detached, broken
off or destroyed when detaching the connecting part 10 from the extractor
tube.” Spec. 6,11. 21-25; Fig. 5. The Specification further describes, “[i]n
Figs. 10-12 is shown another embodiment of the sealing means 35, i.e. the
non-reattachment means.” Id. at 6,11. 27-28. As in Giannelli, we interpret
the “adapted to” language in each of independent claims 1,15, and 21 when
read in the context of the Specification, as requiring a non-reattachment
device and/or a seal to be configured such that when the connection device is
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detached from the extractor tube, the non-reattachment means and/or the seal
cannot be reused.
Gomi does not describe that seal packing 46 of dispense head 13,
which engages the upper surface of inner step portion 60 of spear tube 52, or
seal packing 47 of dispense head 13, which contacts gas valve 57 of spear
tube 52, is configured so that they are not able to be reused when dispense
head 13 is detached from spear tube 52. Gomi does not disclose that seal
packing 46 or seal packing 47 is detached, broken off or destroyed when
detaching dispense head 13 from spear tube 52. Thus, we do not discern
adequate support for the finding that Gomi’s seal packing 46, 47 is adapted
to perform the functions recited in independent claims 1,15, and 21. It is
not sufficient that Gomi’s seal packing 46, 47 could be designed to perform
the function of one-time use.
Further, to the extent the Examiner’s finding is based on a
determination that “a user could manually detach, break or destroy the seal
of Gomi upon detachment, thereby satisfying the claimed recitation” (Ans.
12), the act of manually detaching, breaking, or destroying the seal after
detachment is not sufficient to meet the claim language. Each of claims 1,
15, and 21 calls for the recited function to be performed “when the
dispensing line is detached from the extractor tube.” We interpret this claim
language in view of the Specification to mean it is the act of detachment of
the dispensing line from the extractor tube, and not a manual act separate
from detachment, that causes the seal to detach, break off, or be destroyed.
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For these reasons, we do not sustain the rejection of independent
claims 1,15, and 21, and their dependent claims 2, 5-8, 10-14, 19, and 20
under 35 U.S.C. § 102(b) as anticipated by Gomi.
Third Ground of Rejection
Appellant argues the claims subject to the third ground of rejection,
i.e., claims 1, 3, 4, 10, 14, 15, and 21, as a group. Appeal Br. 12-14. We
select claim 1 as representative of these claims, and the remaining claims
subject to the third ground of rejection stand or fall with claim 1. 37 C.F.R.
§ 41,37(c)(l)(iv). Appellant contests the Examiner’s reason to modify the
device of Raats in the manner called for in claim 1. Appeal Br. 13-14
(arguing “there is no teaching to apply de la Guardia’s teaching of a system
that cannot be reused to prevent reuse of a specific component of Raats” and
“the only document that teaches that the dispensing line should not be reused
is the present application”).
The Examiner finds Raats discloses a system for dispensing a
beverage as claimed, but fails to disclose that the snap or clip action of snaps
58 is destroyed when the connector is detached from the extractor tube.
Final Act. 7. The Examiner finds de la Guardia teaches a dispensing line
having a connection means that includes non-reattachment means to prevent
reuse. Id. (citing de la Guardia, para. 113). The Examiner determines it
would have been obvious to one having ordinary skill in the art at the time
the invention was made to have manufactured the snap connection of Raats
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to be destroyed upon removal, as taught by de la Guardia, “in order to ensure
that every part of the dispensing system is not reused as intended.” Id. at 8.
Appellant contends threads 50, not snaps 58, in Raats are used to
connect the valve assembly to the container. Appeal Br. 14 (citing Raats,
Fig. 4). Appellant’s assertion, however, is not commensurate with the
language of the claims. As noted by the Examiner (Ans. 12), the claims call
for the connection device adapted to attach to the extractor tube, not the
container. We agree with the Examiner’s findings that (1) container 55 and
threaded neck 56 correspond to the claimed “beverage container” and
“outlet,” respectively, (2) valve assembly 1, which includes flange 49 and
threads 50, corresponds to the claimed “extractor tube,” and (3) connecting
element 57 corresponds to the claimed “dispensing device.” Final Act. 7.
Raats discloses threads 50 are used to connect the extractor tube (i.e., valve
assembly) to the beverage container (i.e., container 55). Raats, col. 4,11. 42-
48, Fig. 4. Raats further discloses a connector (snap fingers 58) used to
secure the dispensing device (connecting element 57) to the extractor tube
(i.e., valve assembly 1). Thus, we agree with the Examiner that Raats
discloses a connection device (snap connectors 58) adapted to attach to the
extractor tube (valve assembly 1 including flange 49), as claimed.
Appellant further asserts “the goal of Raats is that the entire system is
disposable” and thus “there is no reason to break the snaps in Raats, much
less when detaching from the threads, because the entire system is intended
to be disposed.” Appeal Br. 14 (citing Raats, col. 1,11. 34-37). The
Examiner’s reason to combine is based on rational underpinnings. The
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Examiner takes into account the intention of Raats to make a disposable
container. Final Act. 7. In other words, Raats discloses a container/valve
assembly/connecting element combination that is not intended to be
disassembled and refilled. The Examiner correctly finds that de la Guardia
anticipates the possibility of a user attempting to reuse a single use
container, and thwarts reuse by employing one-way snap locks that must be
deformed or broken to separate. Id. (citing de la Guardia, para. 113)
(teaching a technique of using one-way snap locks to connect components of
a disposable, single use pump sprayer/container combination to prevent the
user from being able to refill and reuse the combination). We agree with the
Examiner that one having ordinary skill in the art would find such a teaching
of a technique to thwart unintended reuse of a single use pump
sprayer/container to be applicable in the case of Raats, which also provides a
single use container/valve assembly/connecting element combination. The
Examiner’s proposed modification to the snap locks of Raats to make them
one-way snap locks would prevent reuse of the combination, because the
user would need to remove connecting element 57 to refill container 556 and
then would not be able to reattach connecting element 57 due to damage to
the snap locks caused by detachment of the connecting element. In other
words, one having ordinary skill in the art would recognize the one-way
snap locks of de la Guardia would improve the combination of Raats in the
same way by preventing refilling and reuse of the container of Raats. See
6 Raats discloses that “the valve assembly can be fitted prior to the filling of
the container, the connecting element afterwards.” Raats, col. 2,11. 4CM12.
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KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill”).
Appellant has not demonstrated error in the Examiner’s rejection of
claim 1. Accordingly, we sustain the rejection of claim 1, and claims 3, 4,
10, 14, 15, and 21, which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Raats and de la Guardia.
Fourth, Fifth, and Seventh Grounds of Rejection
Each of the fourth, fifth, and seventh grounds of rejection is based on
the Examiner’s deficient finding that Gomi discloses the claimed non­
reattachment element. Final Act. 8-10. As such, for the reasons discussed
above with regard to the second ground of rejection, we likewise do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 9 as unpatentable
over Gomi and Huggins, claim 16 as unpatentable over Gomi and Vanden
Driessche, and claim 17 as unpatentable over Gomi and Meike.
Sixth and Eighth Grounds of Rejection
Appellant relies on the same arguments presented against the
combination of Raats and de la Guardia to contest the sixth and eighth
grounds of rejection based on this combination and further in view of
Vanden Driessche and Meike, respectively. Appeal Br. 14. For the reasons
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discussed above in our analysis of the third ground of rejection, Appellant
has not demonstrated error in the Examiner’s rejections. Accordingly, we
sustain the rejections under 35 U.S.C. § 103(a) of claim 16 as unpatentable
over Raats, de la Guardia, and Vanden Driessche and of claim 17 as
unpatentable over Raats, de la Guardia, and Meike.
DECISION
The decision of the Examiner to reject claims 1,3,4, 10, 14-17, and
21 is AFFIRMED.
The decision of the Examiner to reject claims 2, 5-9, 11-13, 19, and
20 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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