Ex Parte Pavich et al

Board of Patent Appeals and Interferences

Apr 20, 2011

11106094 (B.P.A.I. Apr. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHEILA PAVICH and ERIKA L. MOORE
____________

Appeal 2009-011807
Application 11/106,094
Technology Center 3700
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Before MICHAEL W. O’NEILL, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Sheila Pavich and Erika L. Moore (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-12 and 14.
Appellants cancelled claim 13. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-011807
Application 11/106,094

2
The Invention
The claims on appeal relate to a one-time marking system and a
method of marking a surgical site for location verification.
Claims 1 and 10, reproduced below with emphasis added, are
representative of the subject matter on appeal.
1. A one-time skin marking system,
comprising
a. a marking implement having a hollow
body portion,
b. a marking tip extending from said
marking implement, said marking tip being in fluid
communication with said hollow body portion and
said marking tip having a predetermined liquid
carrying capacity,
c. a marking liquid contained in said hollow
body portion, said marking liquid having a volume
not greater than an amount substantially equal to
said predetermined liquid carrying capacity, and
d. a pressure-sensitive expedient for
delivering said marking liquid to said marking tip.

10. A method of marking a surgical site for
location verification, comprising the steps of
a. selecting the surgical site,
b. selecting a one-time skin marking
implement having a normally dry marking tip
having a predetermined liquid carrying capacity,
c. activating the skin marking implement to
moisten the marking tip with a marking liquid,
where the liquid has a volume not greater than an
amount substantially equal to said predetermined
liquid carrying capacity,
d. marking the surgical site with the now-
moistened marking tip, and
e. disposing of the skin marking implement.

Appeal 2009-011807
Application 11/106,094

3
The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-4 and 9-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosen (U.S. Patent No. 6,056,737, issued May 2, 2000).
Claims 5, 6, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosen and Griffin (U.S. Patent No. 6,972,022 B1, issued
Dec. 6, 2005).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Rosen and Lee (U.S. Patent No. 6,722,804 B2, issued Apr. 20, 2004).

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issue
The determinative issue in this appeal is:
Whether Rosen discloses a marking liquid having a volume not
greater than an amount substantially equal to the predetermined liquid
carrying capacity of the marking tip.
Analysis
First, Appellants contend that Rosen fails to teach the claimed
“marking liquid contained in said hollow body portion.” Reply Br. 1. More
particularly, the Appellants argue that the hollow body portion or housing 20
of Rosen only contains a solvent which flows through the marking tip or nib
50 to release the fluorescamine. Id. Thus, Appellants allege that the
Appeal 2009-011807
Application 11/106,094

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fluorescamine in the nib 50 performs the marking function and not the
solvent liquid 33 in the hollow body portion or housing 20. Id.
Second, Appellants contend that nothing in Rosen limits the marking
device 10 to a single use. App. Br. 4. In other words, Appellants argue that
Rosen fails to disclose matching the liquid carrying capacity of Rosen’s tip
or nib 50 with the volume of liquid housed in the hollow body portion or
housing 20 pursuant to the claim language of the liquid having “a volume
not greater than an amount substantially equal to said predetermined liquid
carrying capacity.” Id. In addition, Appellants allege that Rosen’s
Examples 1-8, discussed in columns 8 and 9, disclose a liquid carrying
capacity for the nib 50 of 0.15 mL and a volume of liquid in the hollow body
portion or housing 20 of 0.25 mL which is “approximately double the
carrying capacity of the nib 50.” Id.
The Examiner posits that claims 1 and 12 are unpatentable over Rosen
because Rosen discloses the invention substantially as claimed, except that
Rosen fails to explicitly disclose that the marking liquid has a volume not
greater than an amount substantially equal to said predetermined liquid
carrying capacity. Ans. 3-4. Although the Examiner notes that Rosen’s
hollow body portion or housing 20 houses a solvent 33, such as ethanol,
which is not independently capable of performing the marking function, the
Examiner finds that the solvent 33 is a necessary component of a marking
liquid and directly serves in performing the marking function so as to
constitute a marking liquid. Ans. 3. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art to provide Rosen
with a volume of marking liquid not greater than an amount substantially
equal to the predetermined liquid carrying capacity of the marking tip in
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order to match the volume of the liquid to an amount sufficient to saturate
the marking tip 50 since doing so would not have produced unexpected
results. Ans. 4-5.
We agree with the Examiner that claims 1 and 12 are unpatentable
over Rosen. We find that Rosen discloses all the elements of claims 1 and
12 for the reasons discussed infra.
We are not persuaded by Appellants’ argument that Rosen fails to
disclose a marking liquid because the fluorescamine in the tip does the
marking, not the solvent in the hollow body portion or housing of the
marking instrument. We agree with the Examiner that Rosen’s solvent 33
constitutes a “marking liquid” because the solvent 33 within Rosen’s hollow
body portion or housing 20 is one of the components used to perform the
marking function. Although Appellants argue that it is the fluorescamine in
the nib 50 that performs the marking function, without the solvent 33, the
fluorescamine would not be able to function to perform the marking function
without the solvent 33. Moreover, we note that in Example 4, at column 8,
lines 50-57, Rosen discloses the use of a carrier fluid 33 “containing
dissolved therein a non-reactive fugitive dyestuff or pigment, e.g., 0.05 mL
of conventional washable blue dye, thereby producing a skin marking device
which produces a mark on skin that is visible under ordinary light until the
skin is washed.” Thus, Rosen does disclose a liquid 33 which is housed in
the hollow body portion or housing 20 and which itself is capable of
performing the marking function.
We now turn to whether Rosen’s marking liquid satisfies the claim
language of having “a volume not greater than an amount substantially equal
to said predetermined liquid carrying capacity.” We note that the word
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“substantially” is often construed in patent claims as “largely but not wholly
that which is specified.” See York Prods., Inc. v. Cent. Tractor Farm &
Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996). While we agree with
Appellants’ contentions that Rosen’s Examples 1-8 disclose the nib 50 as
having a predetermined liquid carrying capacity of 0.15 mL and the glass
ampoule 30 as housing 0.25 mL of solvent 33, we do not agree with
Appellants’ characterization of the 0.25ml volume of solvent 33 within the
glass ampoule as being “approximately double or more” the 0.15 mL
predetermined carrying capacity of the nib 50. The 0.25 mL of solvent 33 is
actually only two-thirds as much more than 0.15 mL. In addition, we note
that use of words of approximation, such as “substantially,” in a patent claim
implies the avoidance of a strict numerical boundary of the specified
parameter. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc.,
340 F.3d 1298, 1311 (Fed. Cir. 2003). Thus, in our opinion, one of ordinary
skill in the art would consider the 0.25 mL volume of solvent 33 in the glass
ampoule 30 of Rosen’s marking device 10 to be substantially equal to the
0.15 mL predetermined carrying capacity of the nib 50. See, e.g., In re
Sinex, 309 F.2d 488, 493 (CCPA 1962) (substantially horizontal includes
chamber that is inclined at 9 degrees). In support of this holding, we note
that “nothing in the prosecution history of the present invention clearly
limits the scope of “substantially equal” such that the adverb “substantially”
does not broaden the meaning of “equal” and thus, in claiming “substantially
equal,” Appellants claimed more than equal. We find that since the two
volumes are relatively small, the two volumes are substantially equal.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-4 and 9-12 under 35 U.S.C. § 103(a) as unpatentable over Rosen.
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Since Appellants have not separately argued the rejections of claims 5-8 and
14, we also sustain the Examiner’s rejection of claims 5, 6, and 14 under 35
U.S.C. § 103(a) as unpatentable over Rosen and Griffin, and the Examiner’s
rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Rosen and Lee.

CONCLUSION
Rosen discloses a marking liquid having a volume not greater than an
amount substantially equal to the predetermined liquid carrying capacity of
the marking tip.

DECISION
We affirm the Examiner’s rejections of: claims 1-4 and 9-12 under 35
U.S.C. § 103(a) as unpatentable over Rosen; claims 5, 6, and 14 under 35
U.S.C. § 103(a) as unpatentable over Rosen and Griffin; and claims 7 and 8
under 35 U.S.C. § 103(a) as unpatentable over Rosen and Lee.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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