Ex Parte Silver

Patent Trials and Appeals Board

Sep 19, 2013

11173860 - (D) (P.T.A.B. Sep. 19, 2013)

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.
11/173,860 06/30/2005 Brian H. Silver 07-2116-B 8469
20306 7590 09/20/2013
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
WEAVER, SUE A
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
09/20/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN H. SILVER
____________

Appeal 2011-012691
Application 11/173,860
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012691
Application 11/173,860

2

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 9, 25 and 26. App. Br. 1. Claims 6 and 12-24 have
been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
THE CLAIMED INVENTION
The claimed invention relates to “an artificial nipple for use with a
bottle for the purpose of feeding, such as an infant.” Spec., p. 1, ll. 7-8.
Claims 1, 25, and 26 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. An improved feeding nipple, comprising: a substantially
solid nipple including one or more ducts formed therethrough
for conveying fluids through said nipple, said nipple having a
shore A hardness in the range of 1 to about 20 or a shore 00
hardness in the range of about 20 to about 45, said one or more
ducts being radially compressible by a suckling infant's oral
action so as to prevent passage of fluids through said one or
more ducts when so compressed, wherein said one or more
ducts are at least 10 times greater in longitudinal length than
radial width; and a reinforcing member disposed in said solid
nipple and oriented axially adjacent to said one or more ducts.

App. Br. 14, Claims App’x (emphasis added).
THE REJECTION ON APPEAL
Appellant seeks review of the Examiner’s final rejection of claims 1,
2, 9, 25 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Silver
(WO 2004/043325 A2, pub. May, 27, 2004) and Hong (WO 2004/010921
A1, pub. Feb. 5, 2004).1 App. Br. 3.

1 The Examiner originally, and additionally, rejected claims 25 and 26 as
being unpatentable over Hong and a third reference, but subsequently
Appeal 2011-012691
Application 11/173,860

3

ANALYSIS
Appellant argues independent claims 1, 25 and 26 collectively, relying
on the same arguments for all three claims. See App. Br. 3-4, 7-11, 12-13;
Reply Br. 3-4. We select claim 1 for review with claims 25 and 26 standing
or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Further,
Appellant does not dispute the specific findings by the Examiner, or provide
separate arguments for patentability, with respect to dependent claims 2 and
9, but appears to rely solely on the arguments presented for the independent
claims. App. Br. passim; Reply Br. passim. As such, dependent claims 2
and 9 will stand or fall with their parent claim 1.
The Examiner found that Silver teaches all the limitations of claim 1,
except that it “does not suggest the inclusion of a reinforcing member
disposed in the solid nipple and oriented axially adjacent to one or more
ducts.” Ans. 4. As for that limitation, the Examiner found that “Hong
recognizes that there is a risk of tearing the nipple by an infant and in this
regard notes that fiber net 4 may be embedded . . . throughout the nipple” so
as to “reinforce[] the nipple against tearing.” Id. (citing Fig. 3 and p. 3, ll. 5-
15 of Hong). Based on these findings, the Examiner concluded that an
ordinarily skilled artisan would have found it obvious “to have provided a
reinforcement net in the nipple of Silver” as taught by Hong. Id. The
Examiner further explained that “[s]ince the reinforcement [of Hong] is
embedded throughout the nipple and along and parallel to the fluid passage
or duct it will inherently be axially oriented and adjacent to the duct.” Id. at
5.

withdrew that rejection in place of the current rejection based only on Silver
and Hong. See Ans. 3.
Appeal 2011-012691
Application 11/173,860

4

Appellant does not dispute that Silver teaches a substantially solid
nipple having a duct formed therethrough. App. Br. 7. Rather, Appellant
contends that the Examiner’s rejection is flawed because “Hong is directed
to a completely hollow nipple with a ‘feeding hole 2,’ not a duct.” Reply
Br. 3 (emphasis added); see also App. Br. 8-11. According to Appellant, the
Examiner’s reliance on the “teat portion” (reference numeral 1) of Hong as
the duct is improper because “the hollow interior of the teat portion does not
open to the exterior of the nipple, the feeding hole does,” and thus, “Hong’s
teat portion does not constitute a duct.” Reply Br. 4. “With this
clarification,” Appellant contends, “it becomes clear that Hong’s fiber net 20
is substantially perpendicular to the feeding hole 2, not parallel as the
Examiner states.” Id.
Appellant’s perception of Hong’s nipple is unreasonably narrow and
contradicted by his own Specification. The Examiner found that Hong’s
duct is defined by the hollow interior passage between the “teat portion” and
the “narrow neck portion” (depicted by reference numerals 1 and 3,
respectively). See Ans. 4. In other words, according to the Examiner,
Hong’s duct is the entire narrow passageway that is gripped and sucked
within the infant’s mouth. Indeed, Hong describes this passageway/duct as a
fluid “connection” between the wider “root portion” at the bottom of the
nipple and the narrower “feeding hole” at the end of the nipple. See Hong,
p. 5, ll. 14-16. This interpretation of Hong’s “duct” coincides with the use
of that term in Appellant’s Specification.
Specifically, Appellant’s Specification states that the nipple includes
“an extending portion sized and shaped to be insertable into the mouth of a
nursing infant.” Spec. 5, ll. 20-21. As described, the mouth-sucking portion
Appeal 2011-012691
Application 11/173,860

5

includes “one or more ducts extending therethrough for conveying fluids.”
Id. at p. 5, ll. 21-22. Notably, the Specification provides that:
[t]he ducts 16 are longitudinal (axial) passageways formed in
the material of the nipple 12. Each duct includes an inner
opening 18 in communication with an inner chamber 20 of the
nipple 10. Each duct includes an outer opening 22 that is open
to the exterior of the nipple. Fluid may flow from chamber 20,
into inner openings 18, through ducts 16 and out through outer
openings 22.

Id. at p. 10, ll. 15-20. Just as the mouth-sucking portion of Appellant’s
nipple includes a longitudinal, axial passageway (i.e., duct) that extends
from an inner fluid chamber 20 to an outer opening 22, so too does Hong’s
nipple include a mouth-sucking portion with a longitudinal, axial passage
that extends from an inner fluid chamber (i.e., root portion) to an exterior
opening (i.e., feeding hole 2). Thus, we are not persuaded by Appellant’s
narrow reading of Hong as including only a reinforced “feeding hole,” when
the term “duct,” as used and defined more broadly by Appellant’s own
Specification, contemplates the passageway that extends the length of the
nipple’s mouth-sucking portion between the fluid chamber and the feeding
hole.
Because Hong’s reinforcing net 4 does not simply “lie[] adjacent to
feeding hole 2,” as Appellant argues (Reply Br. 4), but rather surrounds the
entire passageway extending between the fluid chamber and the feeding hole
(Hong, Figs. 3 and 6), we agree with the Examiner that Hong’s reinforcing
net 4 is “oriented axially adjacent to” the duct. We are not persuaded by
Appellant’s argument to the contrary, as it does not address the specific
rejection articulated by the Examiner. While Appellant attacks Hong as not
teaching a “duct” (discussed supra), Appellant fails to address the
Appeal 2011-012691
Application 11/173,860

6

Examiner’s correctly articulated rationale that it would have been well
within the purview of the ordinarily skilled artisan merely to incorporate the
reinforcing net of Hong around the fluid passageway/duct of Silver (see Ans.
4-5, 7-8). One cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of the references.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus,
Appellant has not overcome the Examiner’s prima facie case of obviousness.
For the foregoing reasons, we sustain the rejection of claim 1, and its
respective dependent claims which fall with claim 1, as unpatentable over
the combined teachings of Silver and Hong. Likewise, we sustain the
rejection of independent claims 25 and 26, which fall with claim 1.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 9, 25, and 26
under 35 U.S.C. § 103(a).
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

Klh