Ex Parte Sweeney

Patent Trial and Appeal Board

Feb 23, 2017

13073052 (P.T.A.B. Feb. 23, 2017)

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.
80200/022 7266
EXAMINER
CARPENTER, WILLIAM R
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
13/073,052 03/28/2011
36122 7590 02/23/2017
The Ollila Law Group LLC
2569 Park Lane
SUITE 202
Lafayette, CO 80026
Brian SWEENEY
02/23/2017 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 SWEENEY
Appeal 2015-005119
Application 13/073,052
Technology Center 3700
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Sweeney (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND of REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-005119
Application 13/073,052
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
1. A centering syringe plunger guide (140), comprising:
a guide body (141) including a proximal end (142) and a
distal end (149);
a coupling bore (143) extending partially into the guide
body (141) from the proximal end (142);
a precision guide bore (144) extending partially into the
guide body (141) from the coupling bore (143), with the
precision guide bore (144) adapted to fit over a barrel precision
diameter of a syringe barrel and hold the centering syringe
plunger guide (140) in a predetermined substantially coaxial
alignment with the syringe barrel; and
a guide plunger bore (145) extending completely from the
precision guide bore (144) to the distal end (149) of the guide
body (141), with the guide plunger bore (145) being adapted to
receive a syringe plunger (110) and is configured to substantially
center the syringe plunger in a plunger bore of the syringe barrel,
wherein the coupling bore (143) has a first diameter, the
precision guide bore (144) has a second diameter, and the guide
plunger bore (145) has a third diameter, the first diameter being
larger than the second diameter and the third diameter being
smaller than the second diameter.
The prior art relied upon by the Examiner in rejecting the claims on
matter:
REFERENCES
appeal is:
Smith
Imbert
Collins
US 2,540,461
US 5,282,792
US 2002/0147430 A1
US 2005/0192544 A1
Feb. 6, 1951
Feb. 1, 1994
Oct. 10, 2002
Sept. 1,2005Wolbring
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Application 13/073,052
REJECTIONS
I. Claims 1,2, 4—13, and 16—22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Collins.
II. Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins and Wolbring.
III. Claims 3,4, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins and Imbert.
IV. Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins and Smith.
DISCUSSION
Rejection I
Claims E 2, and 6—11
Appellant argues independent claims 1,2, and 6—11 together. See
Appeal Br. 7—10. We select claim 1 as the illustrative claim, and claims 2
and 6—11 stand or fall with claim 1.
The Examiner finds that Collins discloses each and every limitation of
claim 1. Final Act. 2—3. In particular, the Examiner finds that Collins
discloses “a syringe barrel (5) including a plunger bore (see Fig. 1).” Id. at
2.
Appellant contends that Collins’ carpule carrier 5 is not a syringe
barrel. See Appeal Br. 6. In support of this contention, Appellant argues
that “carpule carrier 5 is ‘adapted for holding the carpule wherein the
carpule carrier has external threads on the proximal end.’” Id.
Responding to this argument, the Examiner notes that “with respect to
Claim 1, a syringe barrel is NOT part of the claimed workpiece.” Ans. 3.
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Application 13/073,052
The Examiner explains that “[t]he only reference toward a ‘syringe barrel’ is
made as a product of functional language directed toward the intended use of
the ‘centering syringe plunger guide.’” Id.
Replying to this argument, Appellant contends that:
the present specification supports an interpretation where the
phrase “configured to” denotes an actual state of configuration
that fundamentally ties “adapted to fit over a barrel precision
diameter of a syringe barrel...” and “configured to substantially
center the syringe plunger ...” to the physical characteristics of
the feature preceding the phrase “configured to”.
Reply Br. 2.
Appellant does not explain how Collins’ carpule carrier 5 differs from
the claimed syringe barrel. Instead, Appellant contends that carpule carrier 5
is “adapted for holding the carpule wherein the carpule carrier has external
threads on the proximal end.” Appeal Br. 6 (citing Collins, claim 1). This
contention does not inform us of why Collins’ carpule carrier 5 is not
configured as a syringe barrel with a precision diameter. Moreover, the
limitations quoted in the Reply Brief and reproduced supra, are directed to
the precision guide bore of the guide body, not the syringe barrel. To the
extent that Appellant is now arguing that Collins’ precision guide bore is not
configured to fit over the barrel precision diameter and to center the syringe
plunger, Appellant’s argument is not persuasive because Collin’s precision
guide bore (identified in the rejection as the largest bore in item 2) is
configured to fit over the barrel precision diameter (i.e. the diameter of
carpule carrier 5) and is configured to center a syringe plunger. See Collin’s
Figs. 1 and 3. Accordingly, Appellant does not apprise us of error.
Noting that “carpule carrier 5 is a completely separate structure from
carpule 6,” Appellant further contends that “[cjarpule carrier 5 is not capable
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of metering out fluid, Collins discloses that carpule 6 actually provides this
function.” Appeal Br. 6.
Appellant’s argument is not commensurate in scope with claim 1,
which does not require that the syringe barrel meter out fluid. See Appeal
Br. 17. Accordingly, Appellant’s arguments are inapposite. Although the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993). Thus, Appellant does not apprise us of error.
In addition, Appellant contends that Collins fails to teach or suggest a
plunger bore or a plunger guide bore. See Appeal Br. 6—7. As the rejection
is based on anticipation, we understand Appellant to be arguing that Collins
does not disclose a plunger bore or a plunger guide bore.1 In support of this
contention, Appellant argues that the Specification states that:
it is undesirable for the plunger shaft itself to come into contact
with the plunger bore, “For example, if the syringe barrel 104 is
made from glass and the plunger shaft 114 is made from metal
or stainless steel, misalignment could cause the plunger shaft 114
to contact the glass, which would cause burnishing or wear of the
plunger shaft 114.
Appeal Br. 7. Appellant further argues that “it would not be possible for
slidable proximal seal 8 to pass beyond the proximal end of carpule
assembly 120 without rendering carpule 6 unfit for the purpose of holding a
fluid. Collins therefore does not teach or suggest the plunger guide bore
recited by claim 1.” Id. However, claim 1 does not preclude the plunger
1What a reference suggests is not germane to a rejection based on
anticipation. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed.
Cir. 1983), cert, denied, Kimberly-Clark Corp. v. Kalman, 465 U.S. 1026
(1984).
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Application 13/073,052
shaft from coming into contact with plunger bore. See id. at 17. Although
the claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d at
1184. Furthermore, the rejection does not rely upon either seal 8 or carpule
6 to meet the limitations of claim 1. See Final Act. 2—3. Accordingly,
Appellant’s argument pertaining to these features of Collins’ device is
inapposite.
Responding to the Examiner’s proffered definition of “barrel” (Ans.
4), Appellant argues that the Examiner’s “analysis is in error, [and ] in fact,
completely disregards the teaching and disclosure of Collins and the
structure of the device disclosed in this reference.” Reply Br. 3.
Appellant’s arguments are misplaced. The issue before us is whether
or not the claim term syringe body fairly “reads on” Collins’ carpule carrier.
We apply “to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969); In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1319 (Fed. Cir. 2005) (en banc).
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Here, the Examiner proffers a definition of “barrel” as ‘“a cylindrical
container usually bulging outwards in the middle and held together by metal
hoops; cask’ and ‘a thing or part shaped like a barrel, especially a tubular
part of a machine.’” Ans. 4. This definition is an ordinary and customary
meaning of the claim term “barrel.” See, e.g., Merriam-Webster.com,
http://www.merriam-webster.com/dictionary/barrel (last accessed February
8, 2017) (defining barrel as “a round bulging vessel of greater length than
breadth that is usually made of staves bound with hoops and has flat ends of
equal diameter ... a drum or cylindrical part: such as”). This definition is
consistent with the use of the term “barrel” in the Specification and shown in
the Figures. See e.g., Spec. 4, Fig. 4. Appellant does not contest this
definition or explain why it is not the broadest reasonable interpretation or
proffer an alternative definition. Thus, Appellant does not apprise us of
error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2 and 6—11, which fall therewith.
Claim 4—New Ground of Rejection
Claim 4 is rejected under 35 U.S.C. §112, second paragraph as failing
to point out and distinctly claim the subject matter which the inventors
regard as the invention.
Claim 4 depends from claim 1. As discussed supra, claim 1 does not
positively recite a syringe barrel. Claim 4 recites “wherein the centering
syringe plunger guide (140) is formed of a first material and the syringe
barrel formed of a second material, the first material being softer than the
second material.” Appeal Br. 17. This limitation also does not positively
recite a syringe barrel; however, it also sets forth additional requirements for
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Application 13/073,052
the syringe barrel. In particular, claim 4 requires a comparison between the
material from which the syringe barrel is made and the material from which
the centering syringe guide plunger is made. Such comparison cannot be
made until the centering syringe guide plunger is used with a syringe barrel.
Thus, one skilled in the art would not be able to determine if a centering
syringe guide plunger meets this this claim limitation until the centering
syringe guide plunger is used with a specific syringe barrel. Moreover, the
same centering syringe guide plunger might meet the limitation at issue
when used with one syringe barrel and not meet this limitation when used
with another syringe barrel. Accordingly, the metes and bounds of the
limitation are unclear.
Having determined that claim 4 is indefinite, we cannot sustain the
rejection of this claim under 35 U.S.C. § 102(b) because to do so would
require speculation as to the scope of the claim. See In re Aoyama, 656 F.3d
1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an
anticipation rejection of indefinite claims).
Claim 5
Appellant argues that “Collins fails to describe, ‘the guide body (141)
further including a guide textured region (154) on an external
circumferential surface.’” Appeal Br. 8.
Responding to this argument the Examiner proffers a definition of
“textured” “as ‘the visual or tactile surface characteristics and appearance of
something.’” Ans. 10 (citingMerriam-webster.com, http://www.merriam-
webster.com). Applying this definition, the Examiner finds that “Collins
inherently has a ‘tactile surface characteristic’ and is therefore a ‘textured
region. ’” Id. In addition, the Examiner notes that the claim does not require
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“the ‘textured region’ to be roughened, ridged, grooved, knurled, or
irregularly surfaced.” Id.
Appellant does not contest the Examiner’s finding, proffer a different
definition of “textured,” or explain why the definition proffered by the
Examiner is not the ordinary and customary definition or is not consistent
with the use of the terminology in the Specification. See, generally, Reply
Br. Accordingly, Appellant does not apprise us of error.
We sustain the Examiner’s decision rejecting claim 5.
Claims 12, 13, and 17—22
Appellant argues claims 12, 13, and 17—22 together. See Appeal Br.
10—13. We select independent claim 12 as the representative claim, and
claims 13 and 17—22 stand or fall with claim 12.
The Examiner finds that Collins discloses each and every limitation of
claim 12. See Final Act. 2—3. In particular, the Examiner finds that Collins
discloses “a coupling sleeve (11) configured to fit over and be affixed to the
barrel precision diameter of the syringe barrel (see Fig. 3).” Id. at 2.
Appellant essentially repeats the same arguments contesting the
rejection of claim 1. See Appeal Br. 10. These arguments do not apprise us
of error for the reasons discussed supra. In addition, Appellant contends
that “Collins fails to recite a coupling sleeve affixed to the barrel precision
diameter of a syringe barrel.” Id. at 10—11. In support of this contention,
Appellant argues that “nowhere does Collins teach or suggest that syringe
body 11 is affixed to a barrel precision diameter of a syringe barrel. By
contrast, Collins discloses that syringe body 11 is threaded into finger grip 2,
and that carpule carrier 5 is also threaded directly into finger grip 2.” Id. at
11. Appellant further argues that:
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Application 13/073,052
syringe body 11 must be able to freely slide over carpule carrier
5 in order to fasten syringe body 11 to finger grip 2. Syringe
body 11 therefore cannot be affixed to carpule carrier 5, or it will
not be possible to slide syringe body 11 over carpule carrier 5 to
assemble the syringe 100 disclosed by Collins.
Id.
Responding to this argument, the Examiner notes that “[t]he claims do
not prohibit additional structures (specifically threads) as being used to
provide the fixation between the syringe barrel precision diameter and the
coupling sleeve” and explains that “the ‘barrel precision diameter’, as
claimed, “is read on by the outer diameter of the syringe barrel described by
Collins.” Ans. 11—12. The Examiner further proffers a definition of affix
“as ‘to attach physically’ or ‘to attach in any way.’” Id at 12 (citing
Merriam-webster.com). In addition, the Examiner finds that:
[a]s shown in Operation #1 the “precision guide bore” fits “over”
syringe outer diameter, i.e. the “barrel precision diameter” and in
turn the coupling sleeve fits “over” the syringe outer diameter as
shown in Operation #2 and Operation #3, whereby it becomes
“affixed” to the outer diameter through the use of the threads of
the centering syringe plunger guide.
Id. at 12.
Appellant does not contest the proffered definition or this finding.
See, generally, Reply Br. Accordingly, Appellant does not apprise us of
error.
For these reasons, we sustain the Examiner’s decision rejecting claim
12, and claims 13 and 17—22, which fall therewith.
Claim 16
Contesting the rejection of claim 16, Appellant essentially repeats the
argument pertaining to the claim term “textured.” See Appeal Br. 11—12.
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This argument is not convincing for the reasons discussed supra with respect
to claim 5. Accordingly, we sustain the Examiner’s decision rejecting claim
16.
Rejections II—IV
Appellant does not present separate arguments pertaining to
Rejections II—IV. Rather, for these rejections Appellant merely refers to the
arguments pertaining to claims 1 and 12, and alleges that none of Wolbring,
Imbert, or Smith cure the deficiencies in Collins. As we find no deficiencies
in Collins, Appellant’s argument is unconvincing.
Accordingly, we sustain the Examiner’s decision rejecting claims 3, 5,
and 14—16, as set forth in Rejections II—IV. As discussed supra, we have
determined that claim 4 is indefinite. Having determined that claim 4 is
indefinite, we cannot sustain the rejections of this claim under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (holding that the
Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)). We do not sustain the Examiner’s decision rejecting claim 4 as
set forth in Rejection III.
DECISION
The Examiner’s rejections of claims 1—3 and 5—22 are AFFIRMED.
The Examiner’s rejections of claim 4 are REVERSED.
Claim 4 is rejected under 35 U.S.C. § 112, second paragraph.
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] NEW GROUND OF
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REJECTION pursuant to this paragraph shall not be considered final for
judicial review.” 37 C.F.R. § Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED-IN-PART; 37 C.F.R $ 41.50(b)
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