Ex Parte Offermann

Patent Trials and Appeals Board

Jun 28, 2019

14355624 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/355,624 05/01/2014
13897 7590 07/02/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Thomas Offermann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6148-P5014 l 9725
EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS OFFERMANN
Appeal2018-008318
Application 14/355,624 1
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
JEREMY M. PLENZLER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision finally rejecting claims 61---63, 65-88, and 92-97, which are all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Laser Bonding Tech, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2018-008318
Application 14/355,624
CLAIMED SUBJECT MATTER
Claims 61, 78, 88, 92, and 93 are independent. Claim 61, reproduced
below, is illustrative of the claimed subject matter:
61. A metering device for metering a light-curing material
contained in said metering device, wherein the device comprises
at least one reservoir which is present in the form of a single piece
comprising an opening and in which the light-curing material is
present and a wall of which can be deformed at least in a section
thereof; and a metering arrangement for applying the light-curing
material, which metering arrangement is at least one of (i)
configured to be capable of being connected to the opening of
the reservoir by a thread or by a bayonet closure and (ii) made of
harder material than a material of the reservoir or at least
comprises a harder material.
Appeal Br. 18 (Claims App.).
REJECTIONS
Claims 61, 62, 69, 72, 74, 75, 77, and 92 stand rejected as
unpatentable over Leiner (US 2006/0037972 Al, published Feb. 23, 2006)
and Abbott (US 3,240,405, issued March 15, 1966).2
Claims 61-63, 65-88, and 92-97 stand rejected as unpatentable over
Hein (US 1,961,489, issued June 5, 1934) and Bouix (US 2011/0284123 Al,
published Nov. 24, 2011).
2 In the Final Office Action, cancelled claim 64 is included in the rejection
heading. Final Act. 2. This error is corrected in the Examiner's Answer.
Ans. 2-3.
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ANALYSIS
Claims 61, 62, 69, 72, 74, 75, 77, and 92 over Leiner and Abbott
Claims 61, 62, 72, 74, and 75
The Examiner finds that Leiner discloses a metering device for
metering light-curing material, comprising a reservoir ( container 10) and a
metering arrangement ( dispensing device 1) configured to be capable of
being connected to an opening of the reservoir, but does not disclose that the
connection includes threads. Final Act. 2. The Examiner relies on Abbott as
teaching a squeeze bottle dispenser including a metering arrangement
( dispensing closure 10) threaded onto a reservoir (bottle B). Id. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art, in view of Abbott, to modify Leiner to have a threaded attachment
between the metering arrangement and reservoir to provide a more secure
attachment between these elements. Id.
Appellant contends that Leiner and Abbott disclose reservoirs of
significantly different sizes, with Abbott's container having a much larger
volume than Leiner's container 10. Appeal Br 8. According to Appellant,
one of ordinary skill in the art would realize that the snap-action mechanism
disclosed in Leiner to connect dispensing device 1 with bottle 10 is only
suitable for relatively-small bottles. Id. at 9. Appellant also contends that
Leiner was aware of the possibility of providing a threaded connection, as
evidenced by the disclosure that the neck of the container has an external
thread 15 for use with a closure cap. Id. ( citing Leiner ,r 48, Fig. 4 ).
Appellant contends that because Leiner does not mention a threaded
connection as an alternative to the snap-action mechanism, this evidences
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that it would not have been obvious to one of ordinary skill in the art to
replace the snap-action mechanism with a threaded connection. Id. at 10.
These contentions are unpersuasive. First, it is not relevant whether
one of ordinary skill in the art would have known that Leiner's snap-action
mechanism is only suitable for relatively-small bottles. This is because the
Examiner does not propose to modify Abbott's container to include Leiner's
snap-action mechanism, but rather, proposes to substitute Leiner's snap-
action mechanism with a threaded connection, as taught by Abbott. See
Ans. 7.
Second, the Examiner submits that detergent containers, such as
taught by Abbott, are not necessarily large. Ans. 7. And even if Leiner
discloses a smaller container than Abbott, we are not persuaded that
Abbott's threaded connection would be unsuitable for connecting Leiner's
container and dispensing device. In this regard, we are not persuaded that
Leiner itself evidences that it would not have been obvious to replace the
snap-action mechanism with a threaded connection. Appeal Br. 10.
We sustain the rejection of claim 61, and of claims 62, 72, 74, and 75,
which depend from claim 61 and are not separately argued, as unpatentable
over Leiner and Abbott.
Claim 69
Claim 69 depends from claim 61 and recites that "the reservoir
comprises in at least one section thereof a wall thickness in a range of from
0.75 mm to 1.25 mm." Appeal Br. 19 (Claims App.). The Examiner finds
that, as shown in Figure 3a, Leiner discloses that the thickness of the wall of
the reservoir is about one-half the width of D4, or half of 1. 7 mm, which is
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Application 14/355,624
within the claimed range. Final Act. 3. Appellant states that it is unable to
find this disclosure in Leiner. Appeal Br. 11.
Leiner describes that Figure 3a depicts storage/dispensing system 9
comprising container 10 and dispensing device 1, and that "[t]he dispensing
device 1 was described above with reference to FIGS. la, lb and 2." Leiner
,r 42 (boldface and italics omitted). Accordingly, dispensing device 1 shown
in Figure 3a corresponds to dispensing device 1 in Figure 1 b. Reference
"D4" is shown in Figure 1 b. Leiner describes D4 as the diameter of the
opposite (bottom) end of passage channel 6 in Figure 1 b, and that passage
channel 6 (Figure la) has a diameter D4 of 1 to 4 mm, and a diameter of 1.7
mm is particularly preferred. Id. ,r 38. We understand that the Examiner is
relying on these drawing figures and description as evidence that Leiner
meets the claimed wall thickness range. Appellant does not explain why the
Examiner's finding is not supported by Leiner's disclosure.
Furthermore, the Examiner submits that it would have been obvious to
one of ordinary skill in the art to provide Leiner' s dispenser with a wall
thickness within the claimed range, because choosing the most effective wall
thickness by optimization would have been within the skill of one of
ordinary skill in the art. Ans. 2. Appellant does not reply to the Examiner's
position.
As Appellant has not apprised us of error in the Examiner's findings
or reasoning, we sustain the rejection of claim 69 as unpatentable over
Leiner and Abbott.
Claim 77
Claim 77 depends from claim 61 and recites that "the reservoir is
present in the form of a cartridge." Appeal Br. 20 (Claims App.). The
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Examiner finds that Leiner's "bottle 10" can be considered a "cartridge."
Final Act. 3. The Examiner notes that claim 77 recites no structural
limitations specific to a cartridge. Ans. 8. The Examiner cites several
dictionary definitions of the term "cartridge" as evidence of the term's
ordinary meaning. Id. at 8-9 ( citing definitions of "cartridge" from
"dictionary.com"3 and "Merriam-Webster.com"4). Based on these
definitions, the Examiner appears to construe a cartridge as a container for a
liquid substance or material, which is capable of insertion into a mechanism
or apparatus. Id. at 9. The Examiner determines that the containers
disclosed in both Leiner and Abbott meet this definition. Id. at 9.
Appellant contends that the Examiner has provided no evidence that
one of ordinary skill in the art would consider Leiner's bottle 10 to be a
"cartridge." Appeal Br. 11. According to Appellant, its Specification does
not support "the broad definition of a 'cartridge' as a simple bottle," and the
Examiner has not identified any passage in the Specification that supports
the conclusion that a cartridge could be a simple bottle as disclosed in Leiner
or Abbott. Reply Br. 2.
Appellant's contentions are unpersuasive. During examination of a
patent application, claims are to be given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim terms are generally given
3 A "cartridge" is defined as "any small container for powder, liquid, or gas,
made for ready insertion into some device or mechanism." Ans. 7.
4 A "cartridge" is defined as "a case or container that holds a substance,
device, or material which is difficult, troublesome, or awkward to handle
and that usually can be easily changed: such as c : an often cylindrical
container for insertion into a larger mechanism or apparatus." Ans. 8.
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their ordinary and customary meaning as understood by a person of ordinary
skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005). Here, Appellant does not direct us to any disclosure in the
Specification that provides guidance as to the meaning of a cartridge. We
note the Specification describes only that "[t]he reservoir is, in certain
embodiments according to the invention, a container or cartridge." Spec. 3,
11. 6-7. We disagree that the Examiner's construction is unreasonably broad
in light of the Specification, as Appellant appears to contend. Reply Br. 2-3.
Appellant contends that the broadest reasonable interpretation "is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification." Reply Br. 3 (citing In re Smith Int'!, Inc.,
871 F.3d 1375, 1382-83 (Fed. Cir. 2017)). However, Appellant does not
direct us to any description in the Specification that corresponds with what
and how a cartridge is described by Appellant. Importantly, Appellant does
not show that the term cartridge is used contrary to its ordinary meaning in
its disclosure. Thus, Appellant does not apprise us of any error in the
Examiner's construction of a cartridge based on its ordinary meaning, or in
the Examiner's finding that both Leiner and Abbott meet the definition
proposed by the Examiner.
We sustain the rejection of claim 77 as unpatentable over Leiner and
Abbott.
Claim 92
Appellant presents no substantive argument for claim 92, which
includes the limitations of claim 61. Accordingly, we sustain the rejection
of claim 92 as unpatentable over Leiner and Abbott for the same reasons as
claim 61.
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Claims 61-63, 65---88, and 92-97 as unpatentable over Hein and Bouix
Claims 61---63, 65---68, 70-77, 92, and 93
The Examiner finds that Hein discloses a metering device for
metering a dental material, comprising a deformable reservoir ( closure
member 8) containing a dental material and attached by threads to a
metering arrangement (injector portion 2, bowl 4), but finds that Hein does
not disclose that the dental material is a light-curing material. Final Act. 3
(citing Hein, col. 2, 11. 50-59, Figs. 1, 2).
The Examiner relies on Bouix as teaching a manually-controlled,
dental material metering device including light-curable dental material. Id.
at 3--4 ( citing Bouix ,r 17). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to provide light-curing material in
Rein's device, as taught by Bouix, to control when the dental material
commences curing. Id. at 4.
Appellant contends that several passages in Hein make it apparent that
closure member 8 is not intended to hold dental material, and thus, is not "a
deformable single-piece container 8 in which the dental material is present."
Appeal Br. 12-14 (quoting Hein 1, 11. 1--4, 51-59, and 2, 11. 40-132).
Rather, Appellant contends, bowl 4 is intended to hold the dental material.
Id. at 14--15. The Examiner responds that "when [Rein's] element 8 is
released after a dispensing episode the suction caused by element 8 returning
to its static position will suck material into the bulb of element 8 thereby
making element 8 part of a reservoir as claimed." Ans. 9. We understand
the Examiner is relying on Figure 1 of Hein for this position.
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We agree with Appellant that the Examiner has not provided any
persuasive evidence to support the position that material remaining in Hein' s
device will be sucked into the bulb portion of closure member 8.
The Examiner also submits that when Hein' s device is stored upside
down, material will flow into element 8, making it a "reservoir." Ans. 9
( citing Hein 2, 11. 105-110). We understand the Examiner is relying on the
device shown in Figure 3 of Hein for this position. Appellant contends that
the Examiner has not provided any explanation as to how a disc can serve as
a reservoir for materials to be dispensed in Rein's syringe. Reply Br. 4.
Hein states, "[t]his disc form of closure member has a very great
advantage in that it permits the syringe to be stood vertically on its ends
when not in use." See Hein 2, 11. 107-110. Accordingly, this description
pertains to the disc form of closure member depicted in Figure 3, as
Appellant correctly recognizes. We agree with Appellant that the Examiner
has not explained how light-curing material could be present in (i.e.,
contained in) the disc form of the closure member, as required by claim 61.
The Examiner further submits that, as shown in Figure 2 of Hein,
"element 8 is enclosed by the upper portion of bowl 4 and thereby is also
part of the bowl 4 and will also serve to hold material located in the bowl 4
at least in the lower portion of 8." Ans. 9 ( emphasis added). Appellant
contends that the Examiner has not explained why one of ordinary skill in
the art would fill Hein' s syringe with an amount of material to be dispensed
that exceeds the volume bowl 4 can hold. Reply Br. 5. Appellant also
contends that the bowl in Hein' s device "is usually made of metal or glass,
i.e., a material that can be considered to be substantially non-reactive with
any material to be dispensed and can also be sterilized." Id. In contrast,
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Appellant contends, "the material of the bulb of element 8 is usually made of
rubber, i.e., a material that is not as inert as glass or metal and can also not
be sterilized." Id.
These contentions are unpersuasive. Filling Hein' s syringe to a level
above the bottom surface of closure member 8 shown in Figure 2 would,
effectively, increase the capacity of the bowl, and consequently, increase the
volume of material that can be dispensed from the device before needing
refilling.
As to Appellant's contention that usually the material of the bulb of
element 8 is not as inert as the material of the bowl, Appellant does not
identify any disclosure in Hein that the material of enclosure 8 would react
adversely with material contained in the device. As for Appellant's
contention that the bulb of element 8 is usually made of a material that
cannot be sterilized, Hein discloses, to the contrary, that, "[i]n Fig. 2, the
resilient closure member may be removed for cleansing, sterilization or other
purposes." See Hein 2, 11. 119-121.
Appellant also contends that the substance to be dispensed by the
applicator of Bouix is not necessarily a dental substance, and is not even
necessarily a light-curable substance. Appeal Br. 15. According to
Appellant, the only example of a light-curable material to be dispensed by
the applicator of Bouix is an adhesive. Id.
Claim 61 does not specify that the light-curing material is a dental
material. Hein discloses syringes that can be used to dispense "liquid, paste,
gas, and the like." See Hein 1, 11. 1--4. The syringes can be used in dental
applications. See id. at 1, 11. 60-67. Bouix discloses that it is known to use
light to cure dental adhesives. Bouix ,r 3. Bouix also discloses that the
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flowable product in reservoir 1 a may be a dental product, and the flowable
product may be a light-curable adhesive. Id. ,r 17. In view of these
passages, we disagree that Bouix does not disclose a light-curing dental
material.
We sustain the rejection of claim 61, and of claims 62, 63, 65---68, 70-
77, 92, and 93, which depend from claim 61 and are not separately argued,
as unpatentable over Heim and Bouix.
Claim 69
The Examiner concludes that one of ordinary skill in the art would
have considered the claimed wall thickness to be obvious. Final Act. 4. The
Examiner finds that changes in size are considered obvious, and reasons that
it would have been obvious to make Rein's reservoir larger or smaller,
which would increase or decrease the wall thickness. Id. ( citing MANUAL OF
PATENT EXAMINING PROCEDURE§ 2144.04(IV)). Appellant appears to
contend that the Examiner has not articulated adequate reasoning to support
the rejection of claim 69. Appeal Br. 15-16.
We disagree with Appellant. Hein discloses that closure member 8 is
made of a "suitable resilient material." See Hein 2, 11. 65-67. We
understand the Examiner's position is that it would have been obvious to one
of ordinary skill in the art to make the wall thickness of Rein's reservoir
within a workable range for a user to effectively operate the device to
dispense material. The workable range would be selected to provide the
desired properties, such as deformability, elasticity, and strength. We note
that where the only difference between a claim and the prior art is a
recitation of relative dimensions of the claimed device, and a device having
the claimed relative dimensions would not perform differently than the prior
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art device, the claimed device is not patentably distinct from the prior art
device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984).
Here, referring to the embodiment shown in Figure 2 of Hein, for example, it
does not appear that making at least one section of reservoir 8 to have a wall
thickness within the claimed range would cause the resulting reservoir to
perform differently.
We sustain the rejection of claim 69 as unpatentable over Heim and
Bouix.
Claims 78-87 and 94--97
Claim 78 recites a kit, comprising, inter alia, at least one metering
device for metering a light-curing material and at least one housing for
receiving the metering device. Appeal Br. 20-21 (Claims App.). The
Examiner finds that Bouix teaches a kit including a housing ( closure 3) for
receiving a dropper-style metering device, such as the metering device
disclosed in Bouix or Hein, in a releasable manner. Final Act. 5.
Appellant contends that the Examiner has not articulated a reason why
one of ordinary skill in the art would have provided the syringe of Hein with
a housing. Appeal Br. 16. Appellant contends that Rein's syringe and the
metered dose applicator of Bouix have completely different designs and
operation, and the Examiner has not explained any useful purpose that a
housing would serve for Rein's syringe. Id. The Examiner responds that the
overall housing elements 3 of Bouix protect the enclosed metering device
( dropper 2, piston 5) during shipment and storage, thereby providing a useful
function making it obvious to modify Rein's dispenser to include a housing,
as claimed. Ans. 11.
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Bouix describes, "[t]he dropper (2) is the part that takes up product
from the reservoir (la) and delivers it to an application surface. When the
closure (3) is seated on the container (1 ), the dropper is in the reservoir.
When the closure is unseated, the dropper may be removed from the
reservoir." See Bouix ,r 20 (boldface and italics omitted). Accordingly, the
closure is designed to be seated/unseated on the container to control removal
of the dropper from the reservoir. Closure 3 also receives button 8, which is
depressed by a user to dispense product. See id. ,r 36, Fig. la. We agree
with Appellant that the Examiner has not articulated an adequate reason with
a rational underpinning to combine Rein's syringe with Bouix's closure.
Even if, as the Examiner submits, Bouix's closure protects the enclosed
metering device during shipment and storage, the closure remains on the
container during dispensing. As noted by Appellant, the devices disclosed in
Hein and Bouix "have virtually nothing in common structurally." Reply Br.
5. The Examiner does not explain adequately, for example, how the
modified syringe of Hein would be operable with Bouix's closure.
Accordingly, we do not sustain the rejection of claim 78, or of claims
79-87 and 94--97 depending therefrom as unpatentable over Hein and Bouix.
Claim 88
Claim 88 recites a kit comprising, inter alia, at least one metering
device and at least one light-emitting device. Appeal Br. 22 (Claims App.).
We note, however, claim 88 does not recite that the kit comprises a housing
as recited in claim 78. Also, Appellant does not separately argue claim 88,
and thus, does not apprise us of any error in the rejection. Thus, we sustain
the rejection of claim 88 as unpatentable over Hein and Bouix.
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DECISION
We affirm the rejection of claims 61, 62, 69, 72, 74, 75, 77, and 92 as
unpatentable over Leiner and Abbott.
We affirm the rejection of claims 61-63, 65-77, 88, 92, and 93 as
unpatentable over Hein and Bouix.
We reverse the rejection of claims 78-87 and 94--97 as unpatentable
over Hein and Bouix.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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