Ex parte Schwab

Board of Patent Appeals and Interferences

Aug 31, 1999

08347201 (B.P.A.I. Aug. 31, 1999)

Application for patent filed November 21, 1994. 1
According to the appellant, the application is a continuation
of Application 07/865,501, filed April 9, 1992, now abandoned.
1
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not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JURGEN SCHWAB
__________
Appeal No. 1997-2908
Application 08/347,2011
___________
ON BRIEF
___________
Before MEISTER, STAAB and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 5, 7-11, 14 and 20, all the claims
Appeal No. 97-2908
Application 08/347,201
2
currently pending in the application.
By way of background, this is the second appeal of the
presently disclosed subject matter. In Appeal No. 94-3699 in
parent application SN 07/865,501, a merits panel of this Board
affirmed the examiner’s rejections of the appealed claims.
Familiarity with the decision in the prior appeal is presumed.
Appellant’s invention pertains to a container having a
sealing member for sealing the opening of the container (claim
14), and a container seal per se (claims 5, 7-11 and 20). Of
particular interest to appellant is the provision of a seal
having an incision below a puncture area of the seal, wherein
the incision extends only partially through the material
beneath the puncture area. Independent claims 5 and 20 are
illustrative of the subject matter in issue and read as
follows:
5. A container seal which can be punctured for repeated
liquid transfer to and from a container by means of a hollow
needle, comprising:
an elastic sealing member having a top surface and a
bottom surface and a puncture area on the top surface, the
sealing member including only one incision therein, the
incision positioned below the puncture area and extending from
Appeal No. 97-2908
Application 08/347,201
3
the bottom surface through at least 75% but less than 100% of
the thickness of the sealing member to define a layer between
the incision and the puncture area which is capable of being
punctured by a hollow needle to facilitate liquid transfer
from a container, the layer consisting of rubber.
20. A container seal which can be punctured for repeated
liquid transfer to and from a container by means of a hollow
needle, comprising:
an elastic sealing member having a top surface and a
bottom surface and a puncture area on the top surface, the
sealing member including only one incision therein, the
incision positioned below the puncture area and extending from
the bottom surface through at least 75% but less than 100% of
the thickness of the sealing member to define a layer between
the incision and the puncture area which is capable of being
punctured by a hollow needle to facilitate liquid transfer
from a container and is substantially resealable after the
needle is withdrawn from the container.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Monnier 2,099,370 Nov. 16,
1937
Nicko 3,343,699 Sept. 26,
1967
Zackheim 3,823,840 Jul. 16,
1974
Tatsumi et al 4,915,243
Apr. 10, 1990
Freeman 558,998 Jan. 31,
1944
(British)
Appeal No. 97-2908
Application 08/347,201
4
The following rejections under 35 U.S.C. § 103 are before
us for review:
(a) claim 5, 7, 14 and 20, unpatentable over Zackheim in
view of either Freeman or Nicko;
(b) claims 8-10, unpatentable over Zackheim in view of
either Freeman or Nicko, and further in view of Tatsumi; and
(c) claim 11, unpatentable over Zackheim in view of
either Freeman or Nicko, and further in view of Monnier.
The rejections are explained in the examiner’s answer
(Paper No. 40, mailed March, 17, 1997).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 35, filed January 13, 1997) and the reply
brief (Paper No. 41, filed May 12, 1997).
Zackheim, the examiner’s primary reference in each of the
standing § 103 rejections, discloses a prepunctured closure
for a container comprising a flat member 24 preferably made of
an elastomeric material such as rubber, an overlying barrier
layer 26 advantageously made of a flexible, impermeable and
tearable material such as aluminum foil (column 2, lines 54-
Appeal No. 97-2908
Application 08/347,201
5
66), and a cap 28 having a tear tab 34 positioned over the
barrier layer and flat member. The cap is crimped over a bead
22 on the mouth of the container to make a tight seal
protecting the contents of the container. The flat member 24
includes a preformed slit 38 extending therethrough from one
side to the other. The slit does not extend through the
barrier layer 26. When it is desired to access the liquid
contents of the container, the tear tab 34 and an underlying
portion of the barrier layer are removed (see
Figures 6 and 7), and a blunt tipped plastic cannula 48 is
inserted through the preformed slit in the flat member to
allow for drawing off a quantity of the container’s contents
(see Figure 8). When the cannula is withdrawn, the slit
reseals itself insuring that any remaining contents of the
container is not contaminated by the outer atmosphere (column
3, lines 19-23).
Appeal No. 97-2908
Application 08/347,201
6
Considering first the examiner’s § 103 rejection of
claims 5, 7, 14 and 20 as being unpatentable over Zackheim in
view of either Freeman or Nicko, the examiner tacitly admits
that Zackheim does not meet the requirement of independent
claims 5 and 14 calling for an elastic member having an
incision below a puncture area, wherein the incision extends
only partially through the member to define a layer between
the incision and the puncture area, and wherein the layer
consists only of rubber. The examiner also tacitly admits
that Zackheim does not meet the requirement of independent
claim 20 calling for an elastic member having an incision
below a puncture area, wherein the incision extends only
partially through the member to define a layer
between the incision and the puncture area, and wherein the
layer is substantially resealable after the needle is
withdrawn from the container.
Appeal No. 97-2908
Application 08/347,201
7
Freeman, the first of the examiner’s secondary
references, relates to stoppers “adapted to be readily pierced
by hypodermic syringes” (page 2, lines 18-20). Freeman
teaches in Figure 9 a stopper 12 fitting into the neck of the
container, the stopper having a top diaphragm 19 extending
over an open cavity with an indication or target ring 22 for
showing the piercing area (page 3, lines 53-56). Nicko, the
other of the examiner’s secondary references, pertains to a
closure 10 comprising a combination cap and tapping plug for
bottles, cans, kegs or other containers. The taping plug 22
of Nicko’s closure comprises a stopper portion 38 which fits
within the spout 12 of a container and a diaphragm or web 50
which is adapted to be pierced by a tapping device 42. Below
the diaphragm, the plug is formed with a cylindrical opening
or bore 52 through which the tapping device is inserted into
the container after the diaphragm has been pierced (column 2,
lines 50-56).
Appeal No. 97-2908
Application 08/347,201
Appellant argues on pages 14 and 15 of the brief that2
Nicko constitutes non-analogous art.
8
Based on the teachings of Freeman or Nicko, it is the
examiner’s position that
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to provide Zackheim’s sealing member 24 with a thin,
unpunctured layer of sealing [material] (i.e.,
rubber) above slit 38 by stopping slit 38 short of
the upper surface of the sealing member . . .
because it would have obviated the need for separate
barrier layer 26. [Answer, page 4.]
In responding to appellant’s argument in the brief, the
examiner further explains on page 6 of the answer that
it would have been obvious to an artisan at the time
the invention was made to eliminate Zackheim’s
aluminum foil layer 26 in favor of an uncut layer of
material at the top of sealing element 24, as
suggested by either Nicko or Freeman. Whether the
uncut layer overlies “an open cavity” as in Nicko
and Freeman, or a slit, as in Zackheim, is
immaterial to the question of obviousness.
Assuming for the sake of argument that Nicko is analogous
prior art with respect to appellant’s invention, we will not2
sustain this rejection. We view the examiner’s consideration
of the teachings of the applied references to be based on the
use of impermissible hindsight. Here, in an attempt to
justify the
Appeal No. 97-2908
Application 08/347,201
9
proposed modification of Zackheim, the examiner has
inappropriately devised a correspondence between (1) the slit
38 in Zackheim’s flat member 24 and the underlying open
cavities or chambers of Freeman and Nicko, and between (2) the
aluminum foil barrier layer 26 of Zackheim and the diaphragms
of Freeman and Nicko. One of ordinary skill in the art, in
our view, simply would not have so interpreted the applied
prior art at the time of appellant’s invention (i.e., without
the benefit of having first seen appellant’s invention). In
this regard, we view the examiner’s theory as to what the
ordinarily skilled artisan would have gleaned from a reading
of the applied references to be flawed because of both
structural and functional differences between the various
structures of the references. The structural differences
between the slit 38 and aluminum foil barrier layer 26 of
Zackheim on the one hand and the open chambers and overlying
elastomeric diaphragms of Freeman and Nicko on the other hand
are readily apparent. Functionally, Zackheim’s slit 38 is
constructed to reseal itself when the cannula 48 is withdrawn,
Appeal No. 97-2908
Application 08/347,201
10
whereas the open cavities or chambers of Freeman and
Nicko clearly were never intended to function in this manner.
Further, the barrier layer 26 of Zackheim is, in effect,
physically and bodily removed from the container prior to
insertion of the cannula (see Figure 7), whereas the
diaphragms of Freeman and Nicko are pierced by the cannula.
From our perspective, at best, Freeman and Nicko would have
suggested to one of ordinary skill in the art that the flat
member 24 of Zackheim might somehow be modified to provide an
annular portion on the lower surface thereof that extends into
the neck of the container to hold it in place. However, such
a modification clearly would not result in the subject matter
called for in the independent claims on appeal.
In light of the foregoing, we will not sustain the
standing rejection of claims claim 5, 7, 14 and 20 as being
unpatentable over Zackheim in view of Freeman or Nicko.
Concerning the rejection of claims 8-10 as being
Appeal No. 97-2908
Application 08/347,201
11
unpatentable over Zackheim in view of Freeman or Nicko and
further in view of Tatsumi, and the rejection of claim 11 as
being unpatentable over Zackheim in view of Freeman or Nicko
and further in view of Monnier, we have carefully reviewed the
Tatsumi and Monnier references additionally relied upon by the
examiner but find nothing therein that makes up for the
deficiencies of Zackheim, Freeman and/or Nicko discussed
above. Accordingly, we also will not sustain the standing
rejections of these dependent claims.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
Appeal No. 97-2908
Application 08/347,201
12
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/pgg
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