Ex Parte O et al

Board of Patent Appeals and Interferences

Aug 11, 2009

11074408 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte KEVIN T. O'DOUGHERTY and ROBERT E. ANDREWS 8
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10
Appeal 2009-001716 11
Application 11/074,408 12
Technology Center 3600 13
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Decided: August 11, 2009 16
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18
Before JENNIFER D. BAHR, LINDA E. HORNER, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25
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Application 11/074,408

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STATEMENT OF THE CASE 1
Kevin T. O'Dougherty et al. (Appellants) seek our review under 2
35 U.S.C. § 134 of the final rejection of claims 41-93, which are all of the 3
pending claims. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We REVERSE. 7
8
THE INVENTION 9
The Appellants’ claimed invention is directed to a liquid storage and 10
dispensing system including electronically storing information regarding the 11
stored liquid (Spec. 2:18-25). 12
The invention is readily understood by reference to Figure 3, and 13
Claim 41. 14
Figure 3 is reproduced below: 15
16
Figure 3 shows how the components of the processing system 14 are 17
assembled (Spec. 6:9-10). 18
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Claim 41, reproduced below, is representative of the claimed subject 1
matter: 2
41. A liquid handling system comprising: 3
a container adapted to hold a liquid and 4
defining a container opening; 5
a cap securable to the container proximate to 6
the container opening, the cap including a radio 7
frequency identification tag and adapted, when 8
secured to the container, to seal the container for 9
containment of liquid therein; and 10
a connector including a connector head and 11
a connector probe extending therefrom, the probe 12
having a liquid flow passage therethrough such 13
that the connector is adapted to deliver a flow of 14
liquid from the container through the probe when 15
the connector is engaged with the cap, the 16
connector head including an antenna adapted to 17
communicate (i) with the radio frequency 18
identification tag when the connector head is 19
engaged with the cap, and (ii) with a controller 20
arranged to control dispensation of liquid from the 21
container through the probe in accordance with 22
information received via the antenna from the 23
radio frequency identification tag. 24
25
THE REJECTIONS 26
The Examiner relies upon the following as evidence of 27
unpatentability: 28
Wolfson US 5,014,208 May 7, 1991 29
Osgar US 5,102,010 Apr. 7, 1992 30
Hill US 2002/0078363 A1 Jun. 20, 2002 31
Madrid US 6,843,414 B2 Jan. 18, 2005 32
De La Huerga US 7,061,831 B2 Jun. 13, 2006 33
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The following rejections1 by the Examiner are before us: 1
1. Claim 54 is rejected under 35 U.S.C. § 112, second paragraph, as 2
being incomplete for omitting essential structural cooperative 3
relationships of elements, such omission amounting to a gap between 4
the necessary structural connections. 5
2. Claims 41, 44, 47-50, 53-55, 57, 58, 61-63, 66-68, 72, 73, 76-782, 81-6
843, 87-90 and 93 are rejected under 35 U.S.C. § 103(a) as being 7
unpatentable over Madrid in view of De La Huerga. 8
3. Claims 45, 46, 56 and 69 are rejected under 35 U.S.C. § 103(a) as 9
being unpatentable over Madrid in view of De La Huerga, and further 10
in view of Osgar. 11
4. Claims 51, 52, 59, 60, 70, 71, 79, 80, 85, 86, 91 and 92 are rejected 12
under 35 U.S.C. § 103(a) as being unpatentable over Madrid in view 13
of De La Huerga, and further in view of Wolfson. 14
5. Claims 42, 43, 64, 65, 74 and 75 are rejected under 35 U.S.C. § 103(a) 15
as being unpatentable over Madrid in view of De La Huerga, and 16
further in view of Hill. 17
18
ISSUES 19
The issues before us are whether: (1) the Examiner has erred in 20
rejecting claim 54 under 35 U.S.C. § 112 as being incomplete; and (2) the 21

1 In view of the Terminal Disclaimer filed November 17, 2006, the rejection
of claims 41-93 on the ground of judicially created obviousness-type double
patenting has been withdrawn (Ans. 8).
2 Although the statement of the rejection does not include claims 77 and 83,
the Examiner’s detailed explanation of the rejection explicitly includes
claims 77 and 83 (Ans. 2, 4; Final Rejection 2).
3 See Footnote 2.
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Examiner has failed to articulate a reason with rational underpinning to 1
combine the teachings of Madrid and De La Huerga as called for in claims 2
41-93 since Madrid teaches away from the invention called for in claims 41-3
93 (App. Br. 24 and 27). 4
5
FINDINGS OF FACT 6
We find that the following enumerated findings are supported by at 7
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 8
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 9
proceedings before the Office). 10
The Examiner’s Findings 11
Claim 54 12
1. The Examiner finds that claim 54 was incomplete for omitting 13
essential structural relationships of elements, in particular, how the 14
connector relates to the container and the cap (Ans. 3). 15
2. The Examiner finds that claim 54 is unclear since claim 54 calls 16
for the limitation “the connector,” which was previously called for 17
in claim 53, line 5 (Ans. 13). 18
Claims 41-93 19
3. The Examiner finds that in Madrid, if one construes the connector 20
head as including top structure 150, the “connector” would 21
encompass both the dip tube assembly 200 and the RFID device 22
300 (Ans. 11). 23
4. The Examiner proposes to combine the teachings of Madrid and 24
De La Huerga to incorporate Madrid’s probe and RFID device into 25
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a securable cap to cover the opening in the container as taught by 1
De La Huerga (Ans. 5). 2
This Board’s Findings 3
5. Madrid describes a smart container assembly 10 including a 4
storage container 100, a top 150 formed as part of the container 5
100, a dip tube assembly 200, a monitoring assembly 300, and a 6
dip tube seal cap 400. Madrid’s container 100 includes a 7
monitoring assembly receiving cavity 110, a dip tube orifice 120, 8
and a storage cavity 140. Madrid’s storage cavity 140 is filled 9
with a fluid via dip tube orifice 120, preferably when the dip tube 10
assembly 200 is absent (col. 2, ll. 40-56 and fig. 1). 11
6. Madrid further describes that “[c]avity 110 protrudes into storage 12
cavity 140 so as to best position monitoring of the contents of 13
cavity 140 by monitoring assembly 300 without monitoring 14
assembly 300 contacting any material stored in the cavity 140. 15
Monitoring assembly 300 may be inserted and removed from 16
cavity 110 without breaking the hermetic seal of cavity 140.” (col. 17
2, ll. 64-col. 3, l. 2 and fig. 1) 18
7. Madrid still further describes that “[d]ip tube orifice 120 is 19
preferably the only opening into the storage cavity 140” (col. 3, ll. 20
51-55 and fig. 1). 21
8. Madrid still further describes that “there is no need to separately 22
transport monitoring assembly 300 which decreases the risk that a 23
particular monitoring assembly 300 will become lost or will be 24
associated with a different container 100 than it was originally 25
associated with.” (col. 4, ll. 19-23) 26
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9. Madrid still further describes that “[i]t is contemplated that making 1
the dip tube assembly part of the container by sealing it into the 2
container immediately after filling the container and not using it 3
with any other storage container assemblies will eliminate the 4
introduction of dried material by movement of a dip tube between 5
containers.” (col. 5, ll. 61-66). 6
10. The ordinary meaning of the word “secure” includes “to make firm 7
or tight; fasten.” THE AMERICAN HERITAGE® DICTIONARY OF THE 8
ENGLISH LANGUAGE (4th ed. 2000). 9
11. The ordinary meaning of the word “fasten” includes “to close, as 10
by fixing firmly in place.” THE AMERICAN HERITAGE® 11
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000). 12
12. The ordinary meaning of the word “connect” includes to “join or 13
fasten.” THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH 14
LANGUAGE (4th ed. 2000). 15
13. Additional findings as necessary appear in the Analysis portion of 16
this opinion. 17
18
PRINCIPLES OF LAW 19
Appellants’ Burden 20
Appellants have the burden on appeal to the Board to demonstrate 21
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 22
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 23
rejection [under § 103] by showing insufficient evidence of prima facie 24
obviousness or by rebutting the prima facie case with evidence of secondary 25
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 26
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(Fed. Cir. 1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 1
(BPAI 2008) [burden on appeal] (on appeal, applicant must show examiner 2
erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 3
83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 4
1509, 1519 (BPAI 2007). 5
6
Undue Breadth 7
The fact that a claim is broad does not mean that it is indefinite, that 8
is, undue breadth is not indefiniteness. In re Johnson, 558 F.2d 1008, 1016 9
n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); and In re 10
Gardner, 427 F.2d 786, 788 (CCPA 1970). 11
12
Obviousness 13
“Section 103 forbids issuance of a patent when ‘the differences 14
between the subject matter sought to be patented and the prior art are such 15
that the subject matter as a whole would have been obvious at the time the 16
invention was made to a person having ordinary skill in the art to which said 17
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 18
(2007). The question of obviousness is resolved on the basis of underlying 19
factual determinations including (1) the scope and content of the prior art, 20
(2) any differences between the claimed subject matter and the prior art, (3) 21
the level of skill in the art, and (4) where in evidence, so-called secondary 22
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 23
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 24
might be reordered in any particular case, the [Graham] factors continue to 25
define the inquiry that controls.”). 26
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In KSR, the Supreme Court stated that “[o]ften, it will be necessary for 1
a court to look to interrelated teachings of multiple patents; the effects of 2
demands known to the design community or present in the marketplace; and 3
the background knowledge possessed by a person having ordinary skill in 4
the art, all in order to determine whether there was an apparent reason to 5
combine the known elements in the fashion claimed by the patent at issue.” 6
KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this 7
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 8
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 9
by mere conclusory statements; instead, there must be some articulated 10
reasoning with some rational underpinning to support the legal conclusion of 11
obviousness”)). However, “the analysis need not seek out precise teachings 12
directed to the specific subject matter of the challenged claim, for a court 13
can take account of the inferences and creative steps that a person of 14
ordinary skill in the art would employ.” Id. 15
16
Teaching Away 17
“A reference may be said to teach away when a person of ordinary 18
skill, upon reading the reference, … would be led in a direction divergent 19
from the path that was taken by the applicant.” In re Haruna, 249 F.3d 20
1327, 1335 (Fed. Cir. 2001). “[W]hen the prior art teaches away from 21
combining certain known elements, discovery of a successful means of 22
combining them is more likely to be nonobvious.” KSR, 550 U.S. at 416. 23
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ANALYSIS 1
Rejection of claim 54 under 35 U.S.C. § 112 2
Appellants contend that claim 53 calls for the cooperative structural 3
relationship between the container and the cap (App. Br. 36). Appellants 4
further contend that claim 54 is complete since it depends from claim 53 and 5
inherently includes all of the limitations of claim 53 (App. Br. 36). 6
For the reason set forth below, we see error in the Examiner’s finding 7
that claim 54 was incomplete (Fact 1). We agree with Appellants that claim 8
53 calls for the cooperative structural relationship between the container and 9
the cap. The issue raised by the Examiner is one of breadth, not 10
indefiniteness. The fact that claim 53 is broad does not render claim 54, 11
which depends from claim 53, incomplete. In re Johnson, 558 F.2d at 1016 12
n.17 (The fact that a claim is broad does not mean that it is indefinite, that is, 13
undue breadth is not indefiniteness.) 14
Further, for the reasons set forth below, we see error in the 15
Examiner’s finding that claim 54 is unclear. Claim 53, line 5 (App. Br. 16
Claims Appendix 3) recites the limitation “being adapted to engage a 17
connector,” which is not a positive recitation of the element ”connector.” 18
Claim 54, lines 1 and 2 calls for the limitation “further comprising the 19
connector” which is the first positive recitation of the “connector.” 20
Therefore, claim 54 does not call for a double inclusion of the limitation 21
“connector.” 22
Therefore, we conclude that Appellants have demonstrated that the 23
Examiner erred in rejecting claim 54 under 35 U.S.C. § 112. 24
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Rejection of claims 41-93 under 35 U.S.C. § 103(a) 1
Appellants contend that Madrid expressly teaches that it is undesirable 2
to remove a seal cap from a container, or to unnecessarily transfer dip tube 3
assemblies between containers due to risk of introducing contaminants (App. 4
Br. 26). 5
For the reason set forth below, we see error in the Examiner’s finding 6
that the teachings of Madrid and De La Huerga are combinable to describe 7
the claimed invention. In particular, the Examiner proposes to combine the 8
teachings of Madrid and De La Huerga to incorporate Madrid’s probe and 9
RFID device into a securable cap to cover the opening in the container as 10
taught by De La Huerga (Fact 4). 11
Claims 41, 53, 61, 72, 76, 82 and 88 call for a cap including a radio 12
frequency identification tag (RFID) being either securable or secured to a 13
container. 14
We look to the dictionary to provide us with the ordinary meaning of 15
the words securable and secured which are variations of the word secure. 16
The ordinary meaning of the word “secure” includes “to make firm or tight; 17
fasten” (Fact 10). The ordinary meaning of the word “fasten” includes “to 18
close, as by fixing firmly in place” (Fact 11). Therefore, a securable cap or a 19
secured cap is a cap that is a separate element that is fixed in place on 20
another element. 21
Madrid’s top 150 is formed as part of the container (Fact 5). 22
Therefore, Madrid’s top 150 is not a separate element.4 Accordingly, we 23

4 Likewise, as Madrid’s top 150 is not a separate element, it cannot be
considered to be a connector (Facts 3 and 12).
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find that Madrid’s top 150 is neither securable nor secured to the container 1
100. 2
Further, Madrid describes that (1) the dip tube assembly 200 and the 3
monitoring assembly 300 are kept separate (Facts 5-6), (2) the monitoring 4
assembly 300 does not contact any material stored in cavity 140 (Fact 6), 5
(3) there is no need to separately transport monitoring assembly 300 (Fact 6
8), and (4) making the dip tube assembly 200 as part of the container 100 7
will eliminate introduction of dried material into a container (Fact 9). 8
Therefore, a person having ordinary skill in the art would not modify 9
the teachings of Madrid by the teachings of De La Huerga as proposed by 10
the Examiner (Fact 4) to put the RFID and the probe (dip tube 220) on the 11
securable cap to gain the advantages of having the RFID and the probe as 12
being removable, as Madrid’s RFID device is kept separate from the cap 13
(Facts 5-6) and attached to the container 100 (Fact 8), and the dip-tube 14
assembly 200 is sealed into the container 100 (Fact 9). See In re Haruna, 15
249 F.3d at 1335, and KSR, 550 U.S. at 416. 16
Therefore, we conclude that Appellants have demonstrated that the 17
Examiner erred in rejecting claims 41, 53, 61, 72, 76, 82 and 88 over Madrid 18
in view of De La Huerga. The Appellants have likewise demonstrated error 19
in the Examiner’s rejection of claims 44, 47-50, 54, 55, 57-58, 62, 63, 66-68, 20
73, 77, 78, 81, 83, 84, 87, 89, 90, 92 and 93, which depend from claims 41, 21
53, 61, 72, 76, 82 and 88, respectively. 22
The Examiner has not relied on Osgar, Wolfson or Hill for any 23
teaching that would remedy the deficiency in the combination of Madrid in 24
view of De La Huerga (Ans. 6-8). We thus conclude that the Examiner also 25
erred in rejecting claims 45, 46, 56 and 69 over Madrid in view of 26
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De La Huerga, and further in view of Osgar; claims 51, 52, 59, 60, 70, 71, 1
79, 80, 85, 86, 91 and 92 over Madrid in view of De La Huerga, and further 2
in view of Wolfson; and claims 42, 43, 64, 65, 74 and 75 over Madrid in 3
view of De La Huerga, and further in view of Hill. 4
5
CONCLUSIONS OF LAW 6
Appellants have established that the Examiner has erred in rejecting 7
claim 54 under 35 U.S.C. § 112 as being incomplete. Appellants have 8
established that the Examiner has failed to articulate a reason with rational 9
underpinning to combine the teachings of Madrid and De La Huerga as 10
called for in claims 41-93 since Madrid teaches away from the invention 11
called for in claims 41-93. 12
13
DECISION 14
The decision of the Examiner is reversed. 15
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REVERSED 17
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Klh 22
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INTELLECTUAL PROPERTY / TECHNOLOGY LAW 24
PO BOX 14329 25
RESEARCH TRIANGLE PARK, NC 27709 26