Ex parte RAKE et al.

Board of Patent Appeals and Interferences

May 12, 1998

07824855 - (D) (B.P.A.I. May. 12, 1998)

Application for patent filed January 24, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KENNETH W. RAKE, ORVIL L. JUDGE
and DONALD M. EARHART
________________
Appeal No. 97-2884
Application 07/824,8551
________________
HEARD: MAY 4, 1998
________________
Before MEISTER, McQUADE and CRAWFORD, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 58
through 61. Claims 39 through 41, 44 through 57 and 62, the
only other claims pending in the application, stand withdrawn
Appeal No. 97-2884
Application 07/824,855
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from consideration pursuant to 37 CFR § 1.142(b).
The subject matter on appeal relates to a spring-powered
drug infusion device. A copy of the appealed claims appears
in the appendix to the appellants’ brief (Paper No. 27).
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Cohen 3,847,304 Nov. 12,
1974
Malacheski et al. (Malacheski) 4,077,544 Mar. 7,
1978
Negaty-Hindi et al. (Negaty-Hindi) 4,756,450 Jul.
12, 1988
Gangemi 4,966,585 Oct. 30,
1990
The appealed claims stand rejected as follows:
a) claims 58 through 61 under 35 U.S.C. § 112, first
paragraph, as being based on a specification which fails to
provide an adequate written description of the invention;
b) claims 58 through 61 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellants regard as the
invention;
c) claims 58, 60 and 61 under 35 U.S.C. § 102(b) as being
Appeal No. 97-2884
Application 07/824,855
The examiner’s answer (Paper No. 28) improperly refers2
to a plurality of prior Office actions to explain the appealed
rejections. As stated in Section 1208 of the Manual of Patent
Examining Procedure, “[a]n examiner’s answer should not refer,
either directly or indirectly, to more than one prior Office
action for the statement of the grounds of rejection.”
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anticipated by Cohen;
d) claims 58, 60 and 61 under 35 U.S.C. § 103 as being
unpatentable over Cohen or Malacheski in view of Gangemi; and
e) claims 58 and 59 under 35 U.S.C. § 103 as being
unpatentable over Negaty-Hindi in view of Cohen, Malacheski
and Gangemi.2
We shall not sustain any of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection is based
on the examiner’s determination that the appellants’
specification does not provide an enabling disclosure of the
infusion apparatus embodiment depicted in Figures 8 through 10
(see the objection to the specification set forth in Paper No.
10; and pages 4 and 5 in the answer). The examiner, however,
has not advanced any cogent reasoning as to why the
appellants’ disclosure of this relatively simple and
straightforward embodiment would not have enabled a person of
ordinary skill in the art to make and use the same without
Appeal No. 97-2884
Application 07/824,855
The statement on page 8 in the appellants’ brief that3
claims 58 through 61 read on both embodiments finds no support
in the specification.
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undue experimentation. Moreover, the appealed claims, which
recite an infusion apparatus comprising, inter alia, a platen
having a non-planar bottom surface configuration which is
complementary to the bottom contour of the second shell or
chamber, do not read on the embodiment shown in Figures 8
through 10 which does not have such a platen. Rather, the
appealed claims read on the infusion device embodiment shown
in Figures 1 through 6 which does have such a platen and whose
disclosure has not been questioned by the examiner. Thus,3
even if the appellants’ specification did fail to provide an
enabling disclosure of the embodiment shown in Figures 8
through 10, this circumstance would not give rise to an
enablement rejection of the appealed claims which are not
directed to such embodiment.
The 35 U.S.C. § 112, second paragraph, rejection rests on
the examiner’s determination that claims 58 through 61 are
indefinite because they do not recite a positive structural
connection between the fluid delivery bag and the other
Appeal No. 97-2884
Application 07/824,855
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recited elements of the claimed infusion apparatus (see pages
2 and 3 in Paper No. 23, and page 5 in the answer). Be this
as it may, the claims do contain functional language which
sets forth the relationship between the fluid delivery bag and
the other recited elements with a reasonable degree of
precision and particularity. In this light, it is not
apparent, nor has the examiner specifically explained, why the
absence of language reciting a positive structural connection
between these elements renders the appealed claims indefinite.
The 35 U.S.C. § 102(b) rejection of claims 58, 60 and 61
as being anticipated by Cohen is unsound because Cohen does
not meet the limitations in these claims requiring the platen
to have a non-planar bottom surface configuration which is
complementary to the bottom contour of the second shell or
chamber. In this regard, anticipation is established only
when a single prior art reference discloses, expressly or
under principles of inherency, each and every element of a
claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Appeal No. 97-2884
Application 07/824,855
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Cohen discloses a fluid dispenser having a platen in the form
of rigid flat plate 42 and a second shell or chamber in the
form of elongate body portion 12. Body portion 12 defines a
“bottom” contour at the end portion thereof which supports
protruding needle 20. The examiner’s finding that Cohen’s
plate 42 has a “non-planar” bottom surface configuration which
is “complementary” to the bottom contour of the body portion
12 (see pages 3 and 4 in Paper No. 23, and pages 5 and 6 in
the answer) is inconsistent with (1) Cohen’s teaching that
plate 42 is “flat” and (2) a reasonable interpretation of the
word “complementary.”
As for the 35 U.S.C. § 103 rejection of claims 58, 60 and
61 as being unpatentable over Cohen or Malacheski in view of
Gangemi, neither of the primary references, Cohen or
Malacheski, meets the limitations in these claims requiring
the platen to have a non-planar bottom surface configuration
which is complementary to the bottom contour of the second
shell or chamber. Cohen’s deficiencies in this regard are
discussed above. Malacheski discloses a fluid dispenser
comprising a platen in the form of a flat disc-like piston 41
having a planar bottom surface configuration which clearly is
Appeal No. 97-2884
Application 07/824,855
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not complementary to the bottom contour 20 of shell 11. This
bottom contour 20 defines an annular pocket 26 for
accommodating a fluid bladder 35 as the piston 41 presses the
bladder to expel fluid therefrom (see Figure 2; column 2,
lines 1 through 27 and 60 through 68; and column 4, lines 45
through 58). The examiner’s reliance on Gangemi to cure these
shortcomings in Cohen and Malacheski is not well taken.
Gangemi discloses an infusion syringe 10 comprising a
piston member 20 and a cylinder bore 11. The nose end 20a of
the piston member is tapered and configured to the geometrical
shape of the end 12 of the bore to ensure the full discharge
of fluid from the bore (see column 3, lines 27 through 29; and
column 7, lines 59 through 62). According to the examiner,
[t]o employ a platen, i.e. piston, having a non-
planar bottom surface complementary to the bottom
contour of the second shell as taught by Gangemi on
either the Cohen or Malacheski et al device would
have been obvious to one of ordinary skill in the
art in view of the recognition that such a feature
would be more economically efficient, i.e. effects
full discharge, and that economic efficiency is
desirable in any device [Paper No. 23, page 5].
Notwithstanding the “full discharge” benefit taught by
Gangemi, the modification of the Cohen and Malacheski devices
proposed by the examiner would have been problematical given
Appeal No. 97-2884
Application 07/824,855
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the protrusion of needle 20 from Cohen’s bottom contour and
the presence of bladder accommodating pocket 26 in
Malacheski’s bottom contour. In this light, it is evident
that the only motivation for combining Cohen or Malacheski and
Gangemi in the manner proposed by the examiner stems from
impermissible hindsight knowledge derived from the appellants’
own disclosure. In other words, the fair teachings of Cohen
or Malacheski and Gangemi would not have suggested the subject
matter recited in claims 58, 60 and 61 to one of ordinary
skill in the art.
The proposed combination of Negaty-Hindi, Cohen,
Malacheski and Gangemi to support the 35 U.S.C. § 103
rejection of claim 58, and claim 59 which depends therefrom,
suffers from the same flaw. Negaty-Hindi discloses a
carbonated drink dispenser which fails to respond to a number
of limitations in claims 58 and 59 including the one in
independent claim 58 requiring the platen to have a non-planar
bottom surface configuration which is complementary to the
bottom contour of the second shell or chamber. In short, the
combined teachings of the applied references would not have
suggested the modifications of Negaty-Hindi’s carbonated drink
Appeal No. 97-2884
Application 07/824,855
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dispenser necessary to arrive at the subject matter recited in
claims 58 and 59.
In summary and for the above reasons, the decision of the
examiner to reject claims 58 through 61 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2884
Application 07/824,855
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