Ex Parte Painchaud et al

Patent Trial and Appeal Board

Jul 3, 2018

12891366 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/891,366 09/27/2010 Gaetan Painchaud
24126 7590 07/06/2018
ST. ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
UNITED ST A TES OF AMERICA
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.
03770-P0016A 1255
EXAMINER
MELARAGNO, MICHAEL
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
07/06/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAETAN P AINCHAUD, SYLVAIN LANZI,
XAVIER JULIA, and GUILLAUME GREVIN
Appeal2016-005380
Application 12/891,3 66
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gaetan Painchaud et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-7 and 9-13. 1 An
oral hearing pursuant to 37 C.F.R. § 41.47 was held on June 28, 2018. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Rexam Healthcare La Verpilliere S.A.S. is identified as the real party in
interest. Appeal Br. 3.
Appeal2016-005380
Application 12/891,366
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to "dispensing predetermined
metered quanities" of "ophthalmic liquid such as collyrium or eyewash in
the form of drops." Spec. i-f 2. Claim 1, reproduced below with italics
added, is illustrative of the claimed subject matter.
1. A device for dispensing predetermined metered
quantities of liquid, the device including an end-piece
comprising a hat-shaped sealing member that can take up a
liquid release position, allowing liquid to flow out of the
device, and a non-return position preventing liquid from
flowing back into the device, wherein:
the end-piece further comprises an inner core and an
outer top casing, the outer top casing having a top surface with
an orifice for releasing liquid from the device;
the sealing member, having a top portion with an outer
sidewall, is fastened between the inner core and the outer top
casing in a leak-tight manner to prevent any liquid from
escaping into the outer casing, the outer top casing
circumscribing and substantially covering the outer sidewall of
the sealing member;
the top portion of the sealing member comprises a liquid-
passing channel and a flared shape opening that flares from
and surrounds said channel, said flared shape opening defining
a metering element for metering out the liquid to be dispensed,
the metering element for forming drops of liquid; and
the metering element is disposed in the immediate
vicinity of the orifice in the top surface of the outer top casing
for releasing the liquid from the device.
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Application 12/891,366
REJECTIONS
1) Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ryder (US 5,154,325, issued Oct. 13, 1992) and Wilner (US
6,076,709, issued June 20, 2000).
2) Claims 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dark (US 2003/0094467 Al, published May 22, 2003) and
Wilner.
DISCUSSION
Rejection 1
The Examiner finds that Ryder discloses most of the limitations of
claim 1 except for "dispensing predetermined metered quantities of liquid or
that the sealing member is provided with a metering element for forming
drops of the liquid for metering out the liquid to be dispensed." Non-Final
Act. 3. The Examiner finds that "Wilner discloses a member 20 (see Fig. 2)
able to dispense predetermined metered quantities of liquid (col. 2, lines 5 8-
59) in the form of drops with a liquid dispensing channel opening (50) and a
metering element with a flared shape ( 54) that flares from and surrounds the
channel." Id. at 3--4. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art "to modify the sealing member
(224b) [of Ryder] with the drop dispensing flared structure, as taught by
Wilner, and nozzle (232) of Ryder to accommodate any design change to the
sealing member[] to accurately dispense and control drop formation." Id. at
4.
Appellants contend that "it would not have been obvious to have
formed a metering element in the sealing member (i.e., element 224b) of
Ryder" because "Wilner discloses forming the metering element in the tip of
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Application 12/891,366
the nozzle thereof." Appeal Br. 13. In support of this contention,
Appellants argue that in the proposed combination, "the metering element
would not function properly given the structure and operation of Ryder,
particularly with the disclosed configuration of the nozzle (232) with the
opening (234) therein." Id. Appellants argue that Ryder's "opening (229)
opens and closes thanks to the deformation of the sealing member 224(b)
.... However, the metering element (34) of Wilner is rigid and cannot be
deformed; thus, it cannot perform any movement during the delivery of the
liquid." Id. at 13-14. Appellants continue that if one of ordinary skill in the
art were to modify Ryder with Wilner, the rigid nature of Wilner's metering
element would lead one of ordinary skill in the art to modify Ryder's outer
casing 232, not sealing member 224b. Id. at 14.
The Examiner does not directly address Appellants' argument that one
of ordinary skill in the art would be led by Wilner to modify Ryder's outer
casing 232 rather than sealing member 224b. Ans. 2-3. Rather, the
Examiner responds that "[ m ]odifying the end of Ryder's sealing element as
taught by Wilner would retain the functionality of Ryder's invention while
adding the benefit of dispensing accuracy as taught by Wilner." Id. at 2.
We do not sustain the rejection of claim 1 for the following reasons.
The Examiner correctly finds that Wilner discloses a flare shaped
metering element 54, which is located in dropper conduit 50. See Wilner,
2:52-58, Figs. 1, 2. The Examiner does not, however, direct us to any
disclosure in Wilner that such a flare shaped metering element is located in a
sealing member. Ryder discloses a discharge aperture 234 in outer casing
232 for the passage of liquid. Ryder, 6:36-40. In light of the placement of
Wilner' s metering element in the dropper conduit, the Examiner does not
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Application 12/891,366
adequately explain why it would have been obvious to modify Ryder's
sealing member 224b with Wilner' s metering element as opposed to
modifying the corresponding element in Ryder's device, namely discharge
aperture 234 of outer top casing 232. See Ryder Fig. 8. Consequently, we
do not sustain the rejection of claim 1 because it is not supported by a
rational underpinning. Claims 2-7 depend from claim 1. Appeal Br. 21-22
(Claims App'x). We do not sustain the rejection of claims 2-7 for the same
reasons.
Rejection 2
The Examiner finds that Dark discloses most of the limitations of
independent claim 9 except for "a metering element comprising a cone
shaped portion that flares from and surrounds the liquid-passing channel of
the sealing member." Non-Final Act. 5. The Examiner finds that "Wilner
discloses a member (20) (see Fig. 2) able to dispense predetermined metered
quantities of liquid (col. 2, lines 58-59) in the form of drops with a liquid
dispensing channel opening (50) and a metering element with a cone-flared
shape ( 54) that flares from and surrounds the channel." Id. The Examiner
concludes that it would have been obvious "to modify top portion ( 68) of the
sealing member ( 60) of Dark ... with the drop dispensing structure as taught
by Wilner to accurately dispense and control drop formation." Id. at 5---6
(citing Wilner 1 :40-42).
Appellants contend that the Examiner's modification of Dark with
Wilner "is nothing more than an unsupported conclusion that ignores the
structure and operation of both Dark and Wilner." Appeal Br. 17-18.
According to Appellants, "Wilner discloses forming the metering element in
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the tip of the nozzle thereof, so it is not at all clear why the Examiner would
assert that it would have been obvious to have formed the metering member
in the sealing member instead." Id. at 18. The Examiner does not directly
address Appellants' arguments but maintains that "[i]t would have been well
within the ambit of one skilled in the art [to] borrow the teachings of Wilner
to modify Dark to arrive at the claimed invention while reaping the benefits
taught by the prior art." Ans. 3. For the following reasons, we do not
sustain the rejection of claim 9.
Dark's element 60 surrounds "the upwardly extending portion 48 of
the upwardly extending plug 44." Dark i-f 82, Fig. 25. Element 60 comprises
a "dispensing orifice perimeter 68." Id. Dispensing orifice 68 fits around
upwardly extending plug 44 to "form a locking seal." Id. i-f 84. "The
locking seal functions to maintain the fluid dispensing valve 10 closed
against outside forces until the pressure against the dispensing valve body 60
is great enough, and sustained long enough, to overcome the friction and
drag the dispensing orifice perimeter 68 off of the upwardly extending plug
44." Id. The Examiner does not adequately explain how Wilner's cone-
shaped flare portion would be incorporated into Dark' s element 60 and
thereby "defin[ e] a metering element" as required by claim 9 in light of the
fact that element 60 surrounds plug 44. Further, similar to the rejection of
claim 1, the Examiner does not explain why one of ordinary skill in the art
would place Wilner' s metering element in Dark' s seal member 60 as
opposed to the area near element 34. We, thus, do not sustain the rejection
of claim 9 because it is not supported by a rational underpinning. Claims
10-13 depend directly or indirectly from claim 9. Appeal Br. 23 (Claims
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App'x). We do not sustain the rejection of claims 10-13 for the same
reasons.
DECISION
The Examiner's decision rejecting claims 1-7 and 9-13 is reversed.
REVERSED
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