Ex Parte Levy et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613569444 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. LEVY-002 7187 EXAMINER DESAI, KAUSHIKKUMAR A ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 13/569,444 08/08/2012 21884 7590 01/03/2017 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 Frank LEVY 01/03/2017 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK LEVY and KIMBERLEY LEVY Appeal 2015-000752 Application 13/569,444 Technology Center 3700 Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and JEFFREY A. STEPHENS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Levy and Kimberley Levy (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1 and 4—6 under 35 U.S.C. § 103(a) as unpatentable over Rudholzer (DE 10161027 Al; pub. June 26, 2003), Uesugi (US 2006/0004322 Al; pub. Jan. 5, 2006), and Thix (US 5,246,140; iss. Sept. 21, 1993). Claims 2 and 3 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-000752 Application 13/569,444 CLAIMED SUBJECT MATTER The claimed subject matter relates to “a disposable aluminum cartridge for accommodating compressed medical gases.” Spec. 1, Fig. I.1 Claims 1 and 6 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A disposable cartridge accommodating a medical gas, said cartridge comp[ri]sing: an elongate, generally cylindrical body having an interior chamber accommodating a compressed and sterile medical grade gas therein, said body being inwardly tapered proximate one end thereof and joined to a reduced diameter and generally cylindrical leading end portion, said leading end portion including an opening communicably connected to said interior chamber of said cartridge body, said opening being sealed by a pierceable tip, said tip being selectively punctured to open said cartridge such that the compressed medical gas contained within said interior chamber of said cartridge is deliverable through said tip for use in a medical procedure, wherein said cylindrical body and said end portion include a triple washed aluminum construction for holding the medical grade gas within said interior chamber of said cylindrical body under pressure; said cartridge having a weight with said medical grade gas sealed therein of at least twelve grams and not greater than fifty grams. 1 Appellants’ Specification does not provide line or paragraph numbering and, accordingly, reference will only be made to the page number. 2 Appeal 2015-000752 Application 13/569,444 ANALYSIS Independent claim 1 recites, in relevant part, “said cylindrical body and said end portion [of the cartridge] include a triple washed aluminum construction.” Appeal Br. 14, Claims App. The Examiner finds that the combined teachings of Rudholzer and Uesugi do not disclose the above cited limitation. Final Act. 3^4. The Examiner further finds that “[i]t is well known in the art to make [a] compressed gas cartridge of metal, e.g., steel, aluminum” and that “Thix teaches a compressed CO2 cartridge made of aluminum.” Final Act. 4 (citing Thix, 3:35). The Examiner concludes it would have been obvious to modify Rudholzer and Uesugi with the canister being made of “triple washed aluminum as taught by Thix, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use” and “[t]he selection of a known material based on its suitability for its intended use supported [sic.] a prima facie obviousness determination.” Id. (citing MPEP 2144.07). Appellants contend that “Thix does not actually disclose a triple washed aluminum cartridge, but rather discloses an aluminum cartridge. As such, there is no support for the limitations requiring that the cartridge be triple washed.” Appeal Br. 11. Appellants further contend that “[tripling washing in accordance with the present invention is important when dealing with medical grade CO2 as the CO2 is pure when it is received and should stay pure when stored within the cartridge.” Id. Claims are construed with an eye towards giving effect to all terms in the claim. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in 3 Appeal 2015-000752 Application 13/569,444 claims superfluous); In re Prater, 415 F.2d 1393, 1404 (CCPA 1969) (“claims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification”). Although Appellants’ Specification does not explicitly define the term “triple-washed” aluminum construction, the Specification appears to treat the term “triple-washed” aluminum construction as a term of art that means a construction that “maintains the sterility and purity of gases contained within the canister.” Spec. 5. Appellants’ Specification further describes: the triple washed canister resists the formation of mold and rust, as well as the collection of other types of debris within the interior chamber ... of the canister. As a result, the integrity of the canister is maintained so that the contained gas is suitable for medical use wherein high levels of purity and sterility are indispensable. Id.; see also Appeal Br. 11. In this case, Thix discloses that “[t]he liquid container 1 may be made of plastics, but is usually made of a metal, such as aluminum or stainless steel.” Thix, 3:34—35; see also Final Act. 4. The Examiner does not direct us to any discussion in Thix regarding the aluminum container being a “triple washed” aluminum construction as described in Appellants’ Specification. See Final Act. 4; see also Ans. 3^4; Appeal Br. 11. In this regard, the Examiner’s interpretation appears to render meaningless or superfluous the term “triple-washed” aluminum construction. Further, rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. In re 4 Appeal 2015-000752 Application 13/569,444 Warner, 379 F.2d 1011, 1017 (CCPA 1967). In this case, the Examiner’s assertions that “aluminum is washed multiple times during [the] process of making aluminum” and making the claimed cartridge “of triple wash aluminum is [known and] within the level of one having ordinary skill in the art” (Ans. 4; see also Final Act. 4) are speculative and not based on underlying evidence. As noted above, Thix merely discloses that container 1 “is usually made of a metal, such as aluminum” (Thix, 3:34—35; see also Final Act. 4) and is silent as to the aluminum container being a “triple washed” aluminum construction. Even assuming arguendo that “triple wash[ed] aluminum is [known and] within the level of one having ordinary skill in the art,” as the Examiner posits (see Ans. 4; see also Final Act. 4), the Examiner fails to provide sufficient evidence or technical reasoning for why a skilled artisan would choose to have the cylindrical body and the end portion of the modified cartridge of Rudholzer be of a “triple washed” aluminum construction based on the combined teachings of Rudholzer, Uesugi, and Thix. Thus, the Examiner fails to establish by a preponderance of the evidence that the combined teachings of Rudholzer, Uesugi, and Thix render obvious the cartridge of independent claim 1. Independent claim 6 calls for a supply of pressurized medical gas including the same limitation directed to the cylindrical body and the end portion of the cartridge having a triple washed aluminum construction (see Appeal Br. 15, Claims App.), and thus, the Examiner’s findings with respect to Rudholzer, Uesugi, and Thix are deficient for claim 6 as well. See Final Act. 3^4; see also Ans. 3^4. Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of independent claim 1 and its respective dependent 5 Appeal 2015-000752 Application 13/569,444 claims 4 and 5 and independent claim 6 as unpatentable over Rudholzer, Uesugi, and Thix. DECISION We REVERSE the decision of the Examiner to reject claims 1 and 4— 6 as unpatentable over Rudholzer, Uesugi, and Thix. REVERSED 6 Copy with citationCopy as parenthetical citation