Ex Parte Rudolph

Board of Patent Appeals and Interferences

Sep 15, 2011

10914071 (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/914,071 08/09/2004 Darrel L. Rudolph 1477 3930
33055 7590 09/16/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
CHAN, CEDRIC A
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
09/16/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DARREL L. RUDOLPH
____________________

Appeal 2010-004279
Application 10/914,071
Technology Center 1700
____________________

Before TERRY J. OWENS, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 5, 6, 8-11, 14, 15, 17, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
The claims are directed to a device for opening a medicinal ampule
including a container 12 and a lid 14 placed over the container (Spec. 6:17-
19; Figs.). The container has recesses 16 for holding the ampules so their
tops are exposed while the lid 14 has cell(s) or openings(s) 20 placed so as to
sever or crush the top of the ampule (Spec. 7:1-4; 8:3-8; 9:18 to 10:2; Figs.).
The Specification describes two embodiments of the device. In one
embodiment, shown in Figures 1-3, the lid 14 is free, unrestrained, or
unattached (Spec. 7:15-16). In the other embodiment, shown in Figures 4
and 5, the lid is attached to the container via a hinge 18 (Spec. 7:16-17).
Claim 1 is directed to the embodiment including a hinge. Claim 1 is
reproduced below:
1. A device for opening ampules comprising:
a container having at least one recess for retaining an
ampule; and
a lid selectively featuring at least one cell corresponding
to said at least one recess, said at least one cell receiving a
severable portion of said ampule;
wherein said lid is attached to said container via a hinge;
and
whereby engaging said ampule between the lid and the
container severs said ampule.
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The Examiner maintains the following rejections:
1. The rejection of claims 2, 6, 11, and 15 under 35 U.S.C. § 112, ¶ 2
as indefinite because it is not possible for the lid to be both
unrestrained as recited in claim 2, but attached via a hinge as
recited in claim 1 (Ans. 3; Supp. Ans. 4-5)1;
2. The rejection of claims 10, 11, 14, 15, 17, and 18 under 35 U.S.C.
§ 112, ¶ 2 as indefinite because “said top” in lines 7 and 8 of claim
10 lacks antecedent basis (Final Rejection 2; Ans. 3; Supp. Ans. 4);
3. The rejection of claims 1, 2, 5, 6, and 8 under 35 U.S.C. § 103(a)
as unpatentable over Furphy (US 5,601,128; issued Feb. 11, 1997)
in view of Starr (US 2004/0182904 A1; pub. Sep. 23, 2004) (Final
2-3; Ans. 4-5; Supp. Ans. 5-7);
4. The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Furphy in view of Starr, and further in view of Sharma (US
4,453,639; issued Jan. 12, 1984) (Final 3-4; Ans. 5; Supp. Ans. 7);
5. The rejection of claims 10, 11, 14, 15, and 17 under 35 U.S.C. §
103(a) as unpatentable over Furphy in view of Starr, and further in
view of Halbach (US 2,672,980; issued Mar. 23, 1954) (Final 4-5;
Ans. 6-7; Supp. Ans. 7-8); and

1 We have reviewed all of the Answers, but find it necessary to refer to only
two of the Answers in this opinion. References to the “Ans.” are to the
Answer of April 3, 2009. References to the “Supp. Ans.” are to the
Supplemental Answer of October 2, 2009.
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6. The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Furphy in view of Starr, and Halbach, and further in view of
Sharma (Final 5-6; Ans. 7; Supp. Ans. 8-9).
II. DISCUSSION
A. INDEFINITENESS
The Examiner advances two bases for rejection under 35 U.S.C. §112,
¶ 2.
The Examiner rejects claims 2, 6, 11. and 15 under 35 U.S.C. § 112,
¶ 2 as indefinite because it is not possible for the lid to be both unrestrained
as recited in claim 2, but attached via a hinge as recited in claim 1 (Ans. 3;
Supp. Ans. 4-5).
The Examiner rejects claims 10, 11, 14, 15, 17, and 18 under
35 U.S.C. § 112, ¶ 2 as indefinite because “said top” in lines 7 and 8 of
claim 10 lacks antecedent basis (Final Rejection 2; Ans. 3; Supp. Ans. 4).
Given that the Specification describes a container with an unrestrained
lid as a separate embodiment from a container with a hinged lid (compare
Figs. 1-3 with Figs. 4-5 and Spec. 5:16-19 with Spec. 6:2-4; see also Spec.
7:15-17), the Examiner’s rejection of claims 2, 6, 11, and 15 as indefinite is
reasonable. Claims 2, 6, 11, and 15 require that the lid be unrestrained, but
these claims depend from claims requiring a hinge. Therefore, the rejected
claims are inconsistent with, and do not properly further limit, the claim
from which they depend.
Moreover, the Examiner is correct that “said top” lacks antecedent
basis in claim 10.
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Appellant does not dispute that the claims are indefinite (see Br.
generally; First Reply Br. 8; Second Reply Br. 8).2 Instead, Appellant states
an intent to modify the claims “should the rejection on the merits,”
presumably the rejections based upon obviousness, be overcome.3 Because
Appellant has not alleged error on the part of the Examiner, we sustain the
Examiner’s rejections over 35 U.S.C. § 112, ¶ 2.
B. OBVIOUSNESS
Because of the inconsistency between the limitation that the lid be
unrestrained in claims 2, 6, 11, and 15, and the requirement for a hinge in the
claims from which claims 2, 6, 11, and 15 depend, considerable speculation
would be required to determine the scope and meaning of the terms of
claims 2, 6, 11, and 15. Under these circumstances, it is not appropriate for
us to reach the rejection of claims 2, 6, 11, and 15 under 35 U.S.C. § 103(a).
See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (reversed because § 103
rejection was based on considerable speculation as to meaning of terms of
claims and assumptions as to their scope). This is particularly true here
where the dispositive issue involves the limitation in the independent claims

2 References to “First Reply Br.” are to the Reply Brief filed April 14, 2009.
References to “Second Reply Br.” are to the Reply Brief filed June 26, 2009.
References to “Third Reply Br.” are to the Reply Brief filed November 2,
2009.
3 We are cognizant of Appellant’s statement in the Third Reply Brief that the
Examiner failed to reproduce the reasoning of the rejection of claims 10, 11,
14, 15, 17, and 18 under 35 U.S.C. § 112, ¶ 2 in the Supplemental Answer of
October 2, 2009 (Supp. Ans.). The Examiner’s failure to restate the
reasoning was harmless given that the Examiner had previously set forth the
basis for rejection (see, e.g., Final 2), and Appellant had previously
addressed the substance of the rejection in a previous brief (see First Reply
Brief 8).
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calling for a hinge and that is precisely the point of inconsistency with
claims 2, 6, 11, and 15.4
There is no question that all the other claims on appeal require a hinge
between the lid and container. There is further no question that Furphy does
not teach a lid attached to a container via a hinge (see, e.g., Supp. Ans. 6).
In fact, as pointed out by the Examiner, Furphy’s lid (shear plate 40 shown
in Fig. 4) is unrestrained (Supp. Ans. 6).
The Examiner relies upon Starr’s teaching of a hinge 22 in an ampule
tip housing member 4 as evidence that it would have been obvious to one of
ordinary skill in the art to provide a hinge to couple Furphy’s lid (shear plate
40) to Furphy’s container “in order to limit the horizontal (i.e., shearing)
movement of the shear plate and thus reduce the likelihood of applying an
excessive shearing force in the removal of the ampule breaking portions.”
(Supp. Ans. 7.)
However, we agree with Appellant that the Examiner has not provided
the required evidentiary basis supporting the rationale for combining the
teachings (Br. 11-12). As shown in Figure 16 of Furphy, Furphy’s mallet 44
strikes the shear plate 40 from the side such that the shear plate 40 slides
horizontally on top of the body 70 and shears off the ampule necks 30
(Furphy, col. 6, l. 64 to col. 7, l. 1). Furphy’s shear plate must be able to
move laterally when tapped by mallet 44 in order to break the ampule necks
(Furphy, col. 5, ll. 36-53). The hinge 22 of Starr merely pivots to allow the

4 While claims 10, 11, 14, 15, 17, and 18 are also indefinite, considerable
speculation is not required to decide the obviousness question for these
claims. Therefore, we are able to resolve the obviousness issue with respect
to those claims.
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closing and opening of the halves 4a and 4b of Starr’s ampule tip housing
member 4. The Examiner has provided no evidence that one of ordinary
skill in the art would have understood that the hinge of Starr would have
allowed for the necessary lateral movement required by Furphy.
As stated by Appellant, it appears that the Examiner’s reasoning is
based upon hindsight as the rationale is not based upon evidence grounded
in the prior art.
The defect is present in all of the obviousness rejections advanced by
the Examiner. Therefore, we cannot sustain any of those rejections.
III. CONCLUSION
We sustain the rejection of claims 2, 6, 10, 11, 14, 15, 17, and 18
under 35 U.S.C. § 112, ¶ 2. We do not sustain the rejection of claims 1, 5,
8-10, 14, 17, and 18 under 35 U.S.C. § 103(a). We do not reach the
rejection of claims 2, 6, 11, and 15 under 35 U.S.C. § 103(a).
IV. DECISION
The Examiner’s decision is affirmed-in-part.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

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