Ex Parte Sogaro

Patent Trial and Appeal Board

Sep 28, 2016

13129552 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/129,552 06/17/2011
26710 7590 09/30/2016
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
Alberto C. Sogaro
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
158377.00002 9882
EXAMINER
TAVARES, TIJLIE L
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBER TO C. SOGARO
Appeal2015-000362
Application 13/129,552
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter the "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1--4
and 7.2' 3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellant states that the real party in interest is "Dentaco
Dentalindustrie und - Marketing Gmbh" (Appeal Brief filed June 18, 2014,
hereinafter "Appeal Br.," 1 ).
2 Appeal Br. 1-5; Final Office Action delivered electronically on January 31,
2014, hereinafter "Final Act.," 1, 3-5.
3 Claim 6 is also pending but has been allowed (Final Act. 1, 5).
Appeal2015-000362
Application 13/129,552
BACKGROl.J1'-JD
The subject matter on appeal relates to an apparatus including a
pipetting tube with a delivery orifice at one end for applying a fluid
substance (Specification, hereinafter "Spec.," 1, 11. 6-14). The Appellant's
Figure 1 is illustrative.
Figure 1, reproduced above, depicts an embodiment of the claimed
apparatus, wherein the apparatus 10 includes a pipetting tube 12 provided
with a delivery orifice 14, an interior space 16 in fluid communication with
the delivery orifice 14, a first portion 18 made of an elastically deformable,
flexible plastic and two second portions 20 each adjoining the first portion
18 and made of a hard plastic (id. at 2, 1. 20-3, 1. 2). According to the
Specification, a fluid substance can be delivered by squeezing the first
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Appeal2015-000362
Application 13/129,552
portion 18 to force the fluid substance through the delivery orifice 14 from
the pipetting tube 12 (id. at 3, 11. 2--4).
Representative claim 1 is reproduced from the Appeal Brief (Claims
Appendix A-1 ), with key limitations highlighted in italics, as follows:
1. An apparatus for applying a fluid substance comprising:
a pipetting tube manufactured from plastic as a single
piece having a first portion and second portions, said first
portion defining an inner space of said pipetting tube and
having opposing ends, at least one of said second portions
including a delivery orifice in fluid communication with said
inner space and leading to the environment, said first portion
being an elastically deformable plastic, and each of said second
portions being hard plastic integrally formed with one of the
opposing ends of said first portion; and
an application device proximal the delivery orifice which
can be wetted with the fluid substance.
Claim 7, the only other independent claim, recites similar limitations (id. at
A-2).
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 2, and 7 as unpatentable over Sogaro4 in view of
Jonsson;5 and
II. Claims 3 and 4 as unpatentable over Sogaro in view of Jonsson
and further in view of Fischer et al. 6
4 EP 1 797 957 Al, published June 20, 2007. We cite to the machine-
generated translation of record.
5 WO 2005/085081 Al, published September 15, 2005.
6 US 6,450,810 Bl, issued September 17, 2002.
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Appeal2015-000362
Application 13/129,552
(Examiner's Answer delivered electronically on August 1, 2014, hereinafter
"Ans.," 2-7; Final Act. 2-5.)
DISCUSSION
The Examiner found that Sogaro describes every limitation recited in
claims 1 and 7 except for "an additional second portion such that the first
portion is interposed between hard plastic second portions, and that this
reinforcement layer or second portion is a hard plastic integrally formed with
one of the opposing ends of the first portion" (Ans. 2-3; see also Final Act.
3). The Examiner also found (Ans. 3):
a fragile help or reinforcement is provided to [Sogaro' s] pipetting
device on the inner wall of the pipette device in the form of a
hard material such as a ramp, a lever, or the like so that manual
pressure to the second portion of the pipette which includes the
pipette tip 16 from the dispensing opening 14 to the brush bristles
18 does not break the second portion of the pipette[.]
Regarding Jonsson, the Examiner found that the reference teaches a plastic
tube with different requirements for different parts of the tube-i.e., "[t]he
tube body (i.e. first portion) must be sufficiently flexible to be compressed
with moderate pressure; the tube shoulder (i.e. second portion) should be
rigid enough so that the hole (i.e. delivery orifice) will not collapse and thus
prevent extraction of material ... " (id.). Based largely on these findings,
the Examiner concluded (id.):
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the hard plastic second
portion of Jonsson integrally formed with the flexible portion of
Sogaro in order to form a two-component injection-molded part
which satisfies the different requirements for the different parts
of the tube such as different rigidity and flexibility so that the
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Appeal2015-000362
Application 13/129,552
aenvery onnce w111 not collapse and prevent extraction of
material from the tube body.
The Appellant contends that "[n]othing in Sogaro or Jonsson ...
suggests an elastically deformable first portion interposed between hard
plastic second portions as recited in claims 1 and 7" (Appeal Br. 3).
Specifically, the Appellant points out that "[t]he pipette disclosed by Sogaro
receives an inserted capsule constructed of a breakable material in an open
end that must be broken by the application of radial pressure" and "[t]he
tube, therefore, must be flexible at the opposing end in order to enable
breaking of the capsule" (id.).
For the reasons given below, we hold that the Examiner failed to
articulate a sufficient reason with some rational underpinning to support the
obviousness conclusion. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As found by the Examiner (Ans. 3), Jonsson discloses a plastic tube
with different requirements for different parts of the tube, in which "[i]n
order to facilitate extraction of material from the tube body, [the tube body]
must be sufficiently flexible to be compressed with moderate pressure" but
the "[t]he tube shoulder should be rigid enough that the hole will not
collapse and thus prevent extraction of material" (Jonsson 6, 11. 7-12).
According to Jonsson, "[t]he tube body is made from a more flexible
material, and the closing device from a more rigid material, and the two
parts are joined together in a subsequent manufacturing step" (id. at 11. 22-
25). Thus, we discern no error in the Examiner's determination that Jonsson
would have a provided a sufficient reason for a person having ordinary skill
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Appeal2015-000362
Application 13/129,552
in the art to manufacture a tube with different elasticity or rigidity based on
different requirements for different parts of the tube.
But we disagree with the Examiner's determination that Jonsson's
teachings would have prompted a person having ordinary skill in the art to
modify Sogaro' s pipetting apparatus in the manner claimed by the
Appellant. As pointed out by the Appellant (Appeal Br. 3), Sogaro's
apparatus is provided with a fragile capsule-like insert 20, which is designed
to be broken (thereby releasing an aggressive liquid such as acetone) when
inward radial pressure is exerted on the elastic deformable pipette (Sogaro
Fig. 1; i-fi-17-8). Although Sogaro teaches the use of a hard material (such as
a ramp, a lever, or the like) on the inner wall of the pipette (i-f 14), that
teaching is insufficient to establish that a person having ordinary skill in the
art would have been prompted to substitute the elastically deformable pipette
material in the region proximate to the capsule-like insert with a "hard
plastic" as required by claims 1 and 7. Indeed, replacing the elastically
deformable pipette material in that region would frustrate Sogaro's
requirement that the material should be sufficiently elastic and deformable to
enable inward radial pressure to be exerted on the capsule-like insert.
For these reasons, we cannot uphold the Examiner's rejections.
SUMMARY
The Examiner's decision to reject claims 1--4 and 7 is reversed.
REVERSED
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