Ex Parte Leung

Board of Patent Appeals and Interferences

Jun 28, 2002

09409672 (B.P.A.I. Jun. 28, 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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFREY C. LEUNG
____________
Appeal No. 2002-0266
Application No. 09/409,672
____________
HEARD: May 22, 2002
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 25-36,
38-46 and 52-54. Claims 47-51 have been withdrawn from consideration as being
directed to a non-elected species, and the remaining claims have been canceled.
We REVERSE AND REMAND TO THE EXAMINER.
Appeal No. 2002-0266
Application No. 09/409,672
Page 2
1Our understanding of this foreign language reference was obtained from a PTO translation, a
copy of which is enclosed.
2Which reads as follows: “In further response to the Election of Species Requirement, Applicant
respectfully asserts that pending claims 25-36, 38-46, 48 and 52-55 are generic to and read on the elected
species.”
BACKGROUND
The appellant's invention relates to an article for dispensing liquid materials. An
understanding of the invention can be derived from a reading of exemplary claim 25,
which appears in the appendix to the appellant's Brief.
The prior art of record relied upon by the examiner in rejecting the appealed
claims are:
Koreska et al. (Koreska) 4,784,506 Nov. 15, 1988
European Patent Application 0 170 526 Feb. 5, 1986
(EP)
Japanese Unexamined Utility H2-135479 Nov. 9, 1990
Model Application (JP)1
PCT Published Patent Application WO 91/09641 Jul. 11, 1991
(WO)
Applicant’s admission at page 4 of AMENDMENT AND RESPONSE TO ELECTION OF
SPECIES REQUIREMENT (Paper No. 6, filed May 10, 2000).2
Claims 32, 33 and 44 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention
Appeal No. 2002-0266
Application No. 09/409,672
Page 3
3A rejection of claims 25-34, 52 and 54 under the judicially created doctrine of obviousness-type
double patenting, and a provisional rejection of claims 35-46, 48, 53 and 55 under the same doctrine,
were overcome (see Papers 12 and 13).
Claims 35, 38-46 and 53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koreska in view of applicant’s admission.
Claims 25-34, 52 and 54 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over EP, JP, WO and applicant’s admission.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Koreska in view of applicant’s admission, EP, JP and WO.3
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 17) and the final rejection (Paper No. 11) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 16) and Reply Brief
(Paper No. 18) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations which follow.
The Rejection Under Section 112
Appeal No. 2002-0266
Application No. 09/409,672
Page 4
It is the examiner’s view that claims 32, 33 and 44 are indefinite because they
depend from a base claim in which the applicator tip is recited as being “porous,” but
they recite materials “that are not known as being porous, e.g.’metal,’ ‘glass’ and
‘plastic,’ and the disclosure appears to be silent as to holes or perforations being
provided in such tips” (Paper No. 11, page 2). In response, the appellant has pointed
out where reference to porous metal, glass and plastic is made in the specification as
being known to one of ordinary skill in the art, and has submitted as evidence of this
knowledge that over five thousand patents were uncovered in a word search on “porous
metal,” “porous glass,” and “porous plastic” (Brief, pages 5-7).
The second paragraph of 35 U.S.C. § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of precision and particularity.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the claims must be
analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The appellant’s evidence has persuaded us that the examiner’s position is in
error, and we will not sustain this rejection.
The Rejections Under Section 103
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Application No. 09/409,672
Page 5
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The first of these rejections is that claims 35, 38-46 and 53 are unpatentable
over Koreska in view of the appellant’s admission. As we understand this rejection, it is
the examiner’s view that all of the subject matter recited in these claims is disclosed in
Koreska, except for the specific liquid that is to be dispensed, and for the materials from
which the tips are made and the shapes of the tips. With regard to the liquid, the
examiner points out that Koreska notes that similar liquids have been dispensed from
similar applicators in discussing the background of the invention, and that it therefore
would have been obvious to one of ordinary skill in the art to dispense them from the
Koreska dispenser. With regard to the tip materials and shapes, the examiner takes
Appeal No. 2002-0266
Application No. 09/409,672
Page 6
the view that the appellant’s statement that claims 25-36, 38-46, 48 and 52-55 are
generic and all read on the elected species in Paper No. 6 are an “admission” that “any
of the tip shapes and materials disclosed in the specification are interchangeable with
the one specifically shown in fig. 3, i.e, they are all obvious variants of one another”
(Paper No. 11, page 5). The appellant argues in response that the statement to which
the examiner makes reference was not an admission, and that the examiner is re-
characterizing the election of species as such because he has been unable to cite
references disclosing the various embodiments set forth in the claims.
Independent claim 35 recites an applicator body, a frangible vial held within the
applicator body and containing a liquid adhesive, and a porous applicator tip having “a
shape . . . selected from the group consisting of dome-shaped, conical, chisel and
polygonal shapes.” Koreska discloses a dispenser containing a frangible vial, and an
applicator tip that is not described but appears to be in the shape of a cylinder. Thus,
Koreska fails to disclose an applicator tip having any of the four shapes which
constitute the group named in the claim. We agree with the appellant that the intent of
the election of species was to identify those claims which the appellant believed
corresponded to the species that was elected. It also is noted that while not pictured,
all of the tips recited in claim 35 are mentioned in the specification.
The examiner has provided no authority, and we know of none, supporting his
thesis that the election of species statement made by the appellant is an admission that
Appeal No. 2002-0266
Application No. 09/409,672
Page 7
the subject matter recited in the elected claims constitutes “obvious variants” of one
another. Nor has the examiner provided evidence that any of the four tip shapes
recited in claim 35 would have been obvious in view of the cylindrical shape disclosed
by Koreska. This being so, a prima facie case of obviousness has not been established
with regard to the subject matter recited in independent claim 35, and we will not
sustain the rejection of claim 35 or of dependent claims 38-46 and 53.
Claims 25-34, 52 and 54 stand rejected as being unpatentable over EP, JP, WO
and applicant’s admission. Independent claim 25 sets forth an applicator tip comprising
a porous support and a container body containing a synthetic or semi-synthetic
monomer material, wherein the shape of the tip “is selected from the group consisting
of dome-shaped, conical, cylindrical, chisel and polygonal shapes.” The examiner has
taken the position that the combination of the three references “addresses . . . [the
claimed] combination for the reasons advanced in the English translation of the
Japanese office action submitted with the IDS filed 12/28/99,” and that the limitations
regarding the tip are met by applicant’s admission (Paper No. 10, page 5).
EP discloses a container for storing and dispensing a dose of curable material
and an accelerant therefor, wherein the curable material passes through a fibrous
material containing the accelerant as it is being dispensed. JP discloses a soap
dispenser in which perfume can be added to the soap immediately prior to exiting the
dispenser, and WO is directed to a method for the formulation of fibrin sealant as it is
Appeal No. 2002-0266
Application No. 09/409,672
Page 8
deposited upon the body site by the mixing of two ingredients. Even if one accepts at
face value the examiner’s position that all of the subject matter except for the tip shape
would have been obvious in view of these three references, the rejection is fatally
defective for the same reason as was the rejection of claim 25 for, as we stated above,
it is our opinion that the election of species statement is not an admission that all of the
tip shapes recited in the claim are interchangeable and obvious variants of one another.
In this regard, the examiner has not pointed out that any of the recited shapes are
present in the applied references.
The rejection of independent claim 35 and dependent claims 26-34, 52 and 54 is
not sustained.
Finally, claim 36, which depends from claim 35, has been rejected as being
unpatentable over Koreska in view of applicant’s admission, EP, JP and WO. Claim 36
adds the limitation that the accelerator or initiator recited in claim 35 is disposed in or on
the applicator tip. Adding the teachings of EP, JP and WO to Koreska does not
overcome the problem we pointed out with consideration of the election of species to be
an admission, and we will not sustain this rejection.
Remand To The Examiner
Unquestionably, the field of applicators for dispensing material from containers is
well developed. This application is remanded to the examiner for consideration of
determining whether the tip shapes recited in the claims on appeal are present in the
Appeal No. 2002-0266
Application No. 09/409,672
Page 9
applicable prior art and, if so, whether new rejections of the claims should be entered
by the examiner.
CONCLUSION
None of the rejections are sustained.
The decision of the examiner is reversed.
The application is remanded to the examiner for action consistent with the
suggestion set forth above.
This application, by virtue of its “special” status, requires immediate action, see
MPEP § 708.01 (Eighth Edition, Aug. 200), item (D).
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Appeal No. 2002-0266
Application No. 09/409,672
Page 10
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
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