Ex Parte Sundheimer et al

Board of Patent Appeals and Interferences

Dec 10, 2010

11565568 (B.P.A.I. Dec. 10, 2010)

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.
11/565,568 11/30/2006 Herbert Alan Sundheimer 10546/71303 4411
23838 7590 12/10/2010
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
12/10/2010 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 HERBERT ALAN SUNDHEIMER,
CHRISTOPHER A. BENNING, and CHANGQING LI
____________

Appeal 2009-008969
Application 11/565,568
Technology Center 3600

Before: LINDA E. HORNER, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008969
Application 11/565,568

2
STATEMENT OF THE CASE
Herbert Alan Sundheimer et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-3, which are
all of the claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellants’ claimed invention is a connection joint formed between a
tube and a connector. Spec. 1:9-10. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A connection joint comprising:
a female receptacle;
a male connector having at least one groove defined
therein, the male connector at least partially disposed in the
female receptacle, wherein one of the female receptacle and the
male connector is made of plastic and the other is made of
silicone;
a reinforcing agent disposed in the groove; and
a silicone adhesive disposed in the groove, surrounding
the reinforcing agent and adhered to the male connector and the
female receptacle.
THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 2 and 3 under 35 U.S.C. § 102(b) as anticipated by
Villa (US 5,743,327, issued April 28, 1998).
2. Rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable in
view of Villa and Lawless (US 5,078,362, issued January 7, 1992).
Appeal 2009-008969
Application 11/565,568

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CONTENTIONS AND ISSUES
The Examiner’s determination of anticipation by Villa for claims 2
and 3, and the Examiner’s conclusion of obviousness for claim 1 each rely in
part on the finding that Villa discloses an adhesive as called for in each of
independent claims 1-3. Ans. 3-8. Appellants argue that Villa does not
disclose an adhesive. Br. 8-12. The issue before us is whether Villa
discloses an adhesive as called for in independent claims 1-3.
ANALYSIS
Independent claims 1-3 are each directed to a connection joint that
includes an adhesive. Appellants’ Specification does not provide a
lexicographical definition of “adhesive.” Spec. passim. Appellants’
Specification describes, however, that the problem the invention is trying to
solve is to avoid separation of connection joints between silicone tubing and
plastic connectors used in medical devices. Spec. 1:13-2:2. The
Specification describes that “[i]n accordance with the present invention, a
connection joint is provided having increased tensile strength.” Spec. 2:4-5.
In particular, Appellants’ Specification describes that “[t]he reinforcing
agent 16 reinforces the adhesive 18 which surrounds it, creating a stronger
bond between the connector 10 and the tube 14 than the adhesive 18 would
have formed alone. Accordingly, the tensile strength of the connection joint
20 is increased.” Spec. 4:29-32. The Examiner found that the term adhesive
is “commonly used to describe any substance tending to adhere or cause to
adhere, to stick as if by grasping.” Ans. 4.2 In keeping with this ordinary

2 A common meaning of “adhere” is “to stick fast by or as if by suction or
glue.” The American Heritage Dictionary of the English Language (4th ed.
2000).
Appeal 2009-008969
Application 11/565,568

4
meaning of “adhesive,” and in light of Appellants’ Specification, we
interpret claims 1-3 to call for a substance tending to stick as if by grasping.
Villa’s “lubricant/sealing compound” (Villa, col. 4, ll. 24-27) has the
characteristics of a lubricant and a sealant. As a lubricant, the compound
enables components to be “push-fitted” together, and allows “a certain
degree of movement.” Villa, col. 2, ll. 10-14; col. 4, ll. 27-34. As a sealant,
the compound “ensures the joints are well sealed.” Villa, col. 2, ll. 14-15.
We interpret claims 1-3 with the broadest reasonable interpretation
consistent with the Specification. Adhesive, as called for in claims 1-3 tends
to inhibit movement (tending to stick as if by grasping). In sharp contrast,
Villa’s lubricant/sealing compound tends to permit movement (tending to
prevent sticking as if by grasping). Hence, we conclude that it is
unreasonably broad to read the claimed adhesive to cover a substance with
the opposite properties, i.e., a lubricant. Hence, we cannot sustain the
rejection of claims 1-3 based on Villa.
CONCLUSION
Villa does not disclose an adhesive as called for in independent
claims 1-3.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-3.

REVERSED
nlk

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