Ex Parte PieringerDownload PDFPatent Trial and Appeal BoardJun 6, 201712110970 (P.T.A.B. Jun. 6, 2017) 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. 12/110,970 04/28/2008 Gary J. Pieringer VM008 6457 54698 7590 06/08/2017 MOSFR TAROADA EXAMINER 1030 BROAD STREET NGUYEN, TUAN N SUITE 203 SHREWSBURY, NJ 07702 ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 06/08/2017 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): docketing@mtiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY J. PIERINGER Appeal 2015-007011 Application 12/110,970 Technology Center 3700 Before CHARLES N. GREENHUT, BRETT C. MARTIN, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Gary J. Pieringer (Appellant) appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1, 3—6, 8, 9, 16, 18, 19, and 21— 27.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Claims 2, 10—15, 17, and 20 are canceled. Claim 7 is withdrawn from consideration. Appeal 2015-007011 Application 12/110,970 BACKGROUND Independent claims 1,16, and 23 are pending. Independent claim 1, reproduced below, illustrates the claimed invention. 1. A surgical marking device for marking tissue, comprising: a body including an at least partially hollow interior, a first end, and a second end having an opening; an ink disposed within in the at least partially hollow interior of the body, wherein the ink is Food and Drug Administration (FDA) approved for use in internal and/or external marking tissue of a mammal during surgical procedures; a tip retained within the opening of the body at the second end, the tip comprising a porous assembly of fibers or fibrous flow-inducing channels fluidly coupled to the body to permit flow of the ink from the body to the tip by capillary action; and a plunger movably coupled to the body at the first end and configured to control a gas pressure within the at least partially hollow interior of the body via movement of the plunger relative to the body, wherein an increase in the gas pressure increases a pressure of liquid ink contained within the tip and the pressure controls a flow of the ink outward of the body via the tip during use, and wherein the tip is non-reactive with the ink. REJECTION I. Claims 1, 3, 4, 6, 8, 9, 16, 18, 19, 21—24, 26 and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Stokes (US 5,253,942, iss. Oct. 19, 1993) and Abbas (US 6,986,620 B2, iss. Jan. 17, 2006). Final Act. 2. 2 Appeal 2015-007011 Application 12/110,970 II. Claims 5 and 25 stand rejected under 35 U.S.C. 103(a) as unpatentable over Stokes, Abbas, and Swan (US 3,212,685, iss. Oct. 19, 1965). OPINION Rejection I Claims 1, 4, and 9 Appellant argues claims 1, 4, and 9 as a group. We select independent claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 4 and 9 stand or fall with claim 1. The Examiner finds that Stokes discloses the claimed device, except for (1) ink that is FDA approved, (2) the tip comprising a porous assembly of fibers or fibrous flow-inducing channels, and (3) the ink being in a cartridge. Non-Final Act. dated Jan. 20, 2013, p. 4. The Examiner finds that Abbas discloses a similar device having a tip 6 comprising a porous assembly of fibers or fibrous flow-inducing channels, and concludes that it would have been obvious to replace Stokes’ tip 17 and paint with Abbas’ tip 6 and ink where “doing so would involve mere substitution of one functional equivalent marking tip and ink material for another and the selection of any of these known equivalents ... would perform equally well.” Id. at 4—5. The Examiner further concludes that using FDA-approved ink would have been obvious, because “an FDA approved ink is just another type of ink that can be used in any fluid marking device.” Final Act. dated July 17, 2014, pp. 2— 3. Appellant disagrees with the Examiner’s conclusion that applying Abbas’ tip to Stokes’ device is not mere substitution of one functional 3 Appeal 2015-007011 Application 12/110,970 equivalent marking tip and ink material for another that would perform equally well. See Appeal Br. 7. According to Appellant, Stokes is directed to applying paint, and states that ink applicators have “lengthy torturous passages of capillary size, which prevent excessive flow of ink, and through which ink is drawn by the action of the marking tip upon the surface.” Id. Appellant contends that (1) paint and ink are not equivalent due to differing viscosities, (2) the intended use of Stokes is decorating with paint, and (3) modifying Stokes to include the ink and tip of Abbas would render Stokes inoperable for its intended use of decorating with paint. Id. The Examiner responds that paint and ink “are commonly used in the art as equivalent alternatively],” and that Stokes contemplates varying viscosities of paint and varying the tip configuration based thereon without departing from the essential spirit of the invention.” Ans. 2—3 (citing Stokes 3:67— 4:2). The Examiner further responds that the intended use of Stokes is to allow one-handed control of an applicator so that the user can use the other hand to hold or manipulate the workpiece being marked. Id. at 3. While Appellant is correct that substituting Abbas’ ink and tip for Stokes’ paint and tip omits the paint decorating use apparently regarded as Stokes’ contribution to the art along with such advantages as it might provide, the modified marker is clearly obvious in view of the prior art and Abbas’ ink and tip will operate with Stokes’ device and allow marking based on the same plunger pressure principles. See, e.g., In re Umbarger, 407 F. 2d 425, 430 (CCPA 1969). We are not persuaded that the differing viscosities of paint and ink prevents them from being known alternatives in the marking art, particularly in view of Stokes’ acknowledgement of ink as a 4 Appeal 2015-007011 Application 12/110,970 decorative agent. Stokes 1:14—19. We therefore are not persuaded that the Examiner’s reasoning lacks a rational basis. Appellant also argues that the cited references fail to disclose an FDA-approved ink. Appeal Br. 8. The Examiner responds that Appellant does not (1) define “FDA- approved ink,” (2) distinguish an FDA-approved ink from commercially available ink referred to in the prior art, or (3) explain why an FDA- approved ink is non-obvious. Ans. 3. While Appellant is correct that the cited references do not explicitly disclose an FDA-approved ink, the Examiner did not make such a finding. Rather, the Examiner concluded that an FDA-approved ink, for provision in the combined device of Stokes and Abbas as claimed, would have been obvious. We are not persuaded that the Examiner’s conclusion is erroneous. For the reasons stated above, we sustain the rejection of claim 1. Claims 4 and 9 fall with claim 1. Claims 3 and 21 Appellant argues claims 3 and 21 as a group. We select claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 21 stands or falls with claim 3. Claim 3 recites the ink cartridge containing ink, being at least partially contained in the body, and being in fluid communication with the tip. Appellant argues that the Examiner fails to “provide any details or reasoning as to why one skilled in the art would have modified Stokes to include the cartridge of A bbas.” Appeal Br. 10. The Examiner responds that providing an ink cartridge in Stokes’ body would be understood by one skilled in the art “to minimize waste by 5 Appeal 2015-007011 Application 12/110,970 re-using the marking device body by simply replacing the empty ink cartridge.” Ans. 3. Therefore, using Abbas’ ink cartridge in Stokes’ body “would simply be for the purpose of reducing waste [going] into the environment.” Id. at 3^4 (citing Abbas 8:9—13). We are not persuaded that the Examiner’s reasoning, which is taken from the disclosure of Abbas itself, lacks a rational basis. Appellant then contends that Abbas’ replaceable ink cartridge 14 is “clearly separated from” its tip 6, apparently arguing that Abbas’ tip 6 is not in fluid communication with its ink cartridge 14. Appeal Br. 10. We disagree. Abbas states that “[t]he predetermined amount of ink [is] displaced from the cartridge 14[,] enters the chamber 40 within the pump housing 8, and is also absorbed by the block of felt 34, in which the pen tip 6 is embedded.” Abbas 6:67—7:3. Abbas’ ink cartridge is thus in fluid communication with its tip. We sustain the rejection of claims 3 and 21. Claims 6, 8, and 22 Claim 6 recites “a pressure release valve for reducing the pressure within . . . the body.” The Examiner finds that Stokes also discloses a pressure release valve 23, 24 as claimed, because Stokes’ wiping flanges 23, 24 serve the same function as Appellant’s seal 254 and stop that restrict downward motion of the plunger to prevent the plunger from separating the tip from the body. Non-Final Act of Jan. 20, 2013, p. 4. Appellant argues that nothing in Stokes indicates that its “forward and rearward wiping flanges 23 and 24 . . . can be used to reduce the pressure within the at least partially hollow interior of the body.” Appeal Br. 11. 6 Appeal 2015-007011 Application 12/110,970 The Examiner responds that the claimed pressure relief valve is embodied in Appellant’s seal 254, which is equivalent to Stokes wiping flanges 23, 34. Ans. 4; Spec. 145, Stokes 3:6—8. The Examiner’s finding is not supported by a preponderance of the evidence. There is no disclosure in Stokes, or in any of the cited references, of pressure relief within the marker or any structure acting as a pressure relief valve. While it is possible that Stokes wiping flanges 23, 24 provide a pressure relief function, such a possibility is speculative and does not support the Examiner’s finding. We therefore do not sustain the rejection of claim 6. Claims 8 and 22 depend from claim 6, and we likewise do not sustain the rejection thereof. Claims 16 and 19 Independent claim 16 recites, inter alia, “a pressure release valve for relieving the pressure within the body.” Appellant again argues that Stokes’ wiping flanges 23, 24 are not a pressure relief valve. Appeal Br. 12. For the reasons explained above, we are persuaded by these arguments, and we do not sustain the rejection of independent claim 16, or its dependent claim 19. Claim 18 Claim 18 depends from claim 16 and recites the pressure relief valve being “disposed in the body.” For the reason set forth above regarding claim 16 (and claim 6), we do not sustain the rejection of claim 18. Claims 23—26 Appellant argues claims 23—26 as a group. We select independent claim 23 as representative. Dependent claims 24—26 stand or fall with claim 23. 7 Appeal 2015-007011 Application 12/110,970 In arguing against the rejection of claim 23, Appellant repeats the above arguments that (1) the Examiner’s reasoning lacks a rational basis, (2) the Examiner fails to provide any reason why one skilled in the art would have modified Stokes to include the cartridge of Abbas, and (3) Abbas’ tip 6 is not in fluid communication with its ink cartridge 14. Appeal Br. 15. For the reasons explained above, we are not persuaded by these arguments. We therefore sustain the rejection of independent claim 23. Claim 24—26 fall with claim 23. Claim 27 Regarding claim 27, which is not separately argued by Appellant but recites “a pressure release valve for reducing the pressure within the at least partially hollow interior of the body,” we do not sustain the rejection for the reason set forth above regarding claim 6. Rejection II Appellant makes no argument that claims 5 and 25 would be patentable over Stokes, Abbas, and Swan, if claims 1 and 23, respectively, are not patentable over Stokes and Abbas. For the reasons set forth above, we sustain Rejection II. DECISION We AFFIRM the rejection of claims 1, 3, 4, 9, 21, 23, 24, and 26 under 35 U.S.C. § 103(a) as unpatentable over Stokes and Abbas. We REVERSE the rejection of claims 6, 8, 16, 18, 19, 22, and 27 under 35 U.S.C. § 103(a) as unpatentable over Stokes and Abbas. 8 Appeal 2015-007011 Application 12/110,970 We AFFIRM the rejection of claims 5 and 25 under 35 U.S.C. 103(a) as being unpatentable over Stokes, Abbas, and Swan. 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)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation