Ex Parte ThiedeDownload PDFPatent Trials and Appeals BoardMay 20, 201913523114 - (D) (P.T.A.B. May. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/523,114 96845 7590 Advent, LLP The Advent Building 17838 Burke Street Suite 200 Omaha, NE 68118 FILING DATE FIRST NAMED INVENTOR 06/14/2012 Christian A. Thiede 05/22/2019 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. 10020.0001 USUl 1798 EXAMINER HIBBERT-COPELAND, MARY CATHERINE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/22/2019 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): uspto@adventip.com sloma@adventip.com Boumstein@adventip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN A. THIEDE 1 Appeal2018-002148 Application 13/523,114 Technology Center 3700 Before LINDA E. HORNER, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 4 and 7-15. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appeal Brief indicates that Christian Thiede is the real party in interest. Appeal Br. 3. 2 Claims 5 and 6 are cancelled. Appeal Br. 24 (Claims App.). Appeal2018-002148 Application 13/523,114 CLAIMED SUBJECT MATTER The claims are directed to a tray-filling apparatus that uses a vacuum. Spec. ,r 14. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for lifting a predetermined number of solid medicants from a supply location and depositing them in a packaging container comprised of one or more cavities in a predetermined orientation using a pressure differential across the medicants, the apparatus comprising: a head assembly including at least one of a substantially sealed enclosure or a hollow chamber having a plurality of apertures providing fluid communication between the at least one of the substantially sealed enclosure or the hollow chamber and the ambient air, the plurality of apertures spatially arranged to correspond with a plurality of cavities of a packaging container, the head assembly defining a first opening at a first side of the head assembly; a non-flexible hollow handle comprising a coupling communicating with the at least one of the substantially sealed enclosure or the hollow chamber through the first opening, the non-flexible hollow handle interfacing with the head assembly at the first side such that a line of sight of an operator viewing the medicants through at least one of a transparent top plate or a transparent bottom plate is not obscured, the non-flexible hollow handle cantilevered from an end of the head assembly and extending outwardly from the head assembly; and a vacuum source in communication with said coupling at least one of directly or via a flexible tube, wherein the non-flexible hollow handle comprises a switch for operating a solenoid valve, the switch for controlling operation of the vacuum source by blocking a flow of air from the head assembly to vacuum source via the solenoid valve, the solenoid valve disposed between the head assembly and the vacuum source. Appeal Br. 23 (Claims App.). 2 Appeal2018-002148 Application 13/523,114 REFERENCES RELIED ON BY THE EXAMINER Tyler Pearson Kondou Gaudenzi us 2,704,685 us 4,026,091 US 6,708,468 B2 WO 96/17776 Mar. 22, 1955 May 31, 1977 Mar. 23, 2004 June 13, 1996 THE REJECTION ON APPEAL Claims 1--4 and 7-15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pearson, Tyler, Gaudenzi, and Kondou. OPINION Appellant argues for the patentability of the claims 1--4, 7-9, and 11- 15 as a group. 3 See Appeal Br. 11-16, 21. We select claim 1 as representative of the group, and claims 2--4, 7-9, and 11-15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds Pearson discloses many of the elements recited in claim 1, and, specifically, hose 52 of Pearson would be understood by a person of ordinary skill in the art to be a "hollow handle" that is cantilevered. Final Act. 2-3. However, the Examiner finds that hose 52 of Pearson is not "non-flexible" as required by claim 1. Id. at 3. The Examiner relies on Tyler's teaching of pipe 4 to remedy this deficiency. Id. at 3--4. 3 Appellant incorrectly states, "Each of claims 11-15 depends either directly or indirectly from claim 10," and Appellant groups these claims with the argument made in support of the patentability of claim 10. Appeal Br. 21. As set forth in Appellant's Claims Appendix, claims 11-15 depend, directly or indirectly, from claim 1. See Appeal Br. 25-26 (Claims App.). 3 Appeal2018-002148 Application 13/523,114 The Examiner relies on Gaudenzi to teach a switch that operates a valve to allow air flow, and on Kondou to teach a "solenoid" valve. Id. at 4. Pearson Appellant asserts that Pearson fails to disclose that hose 52 is (i) cantilevered or (ii) non-flexible. See Appeal Br. 12-13, Reply Br. 4. In support of this assertion, Appellant argues that "[a] cantilevered object is a rigid structural member supported at a first end and carrying a load at a second end." Appeal Br. 12, Reply Br. 4 (emphases added). In response, the Examiner states Ans. 8. Tyler is brought in as a secondary reference as teaching a rigid pipe or hose 4, extending from the side of a head assembly, with this teaching it would be obvious to relocate the hose of 52 [of Pearson], to extend outwardly of the head assembly, since this modification would not change the function of the device. For the following reasons, Appellant's arguments regarding the disclosure of Pearson do not apprise us of Examiner error. First, Appellant's definition of the term "cantilevered" is unreasonably narrow. "The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the Specification ... is an interpretation that corresponds with what and how the inventor describes his invention in the Specification, i.e., an interpretation that is 'consistent with the specification."' In re Smith International, Inc., 871 F.3d 1375, 1382-1383 (Fed. Cir. 2017). The "cantilevered" limitation was added to claim 1 in an amendment filed on July 17, 2015 (hereinafter the "Amendment"). In the Amendment, Appellant indicated that support for this limitation was to be found in the 4 Appeal2018-002148 Application 13/523,114 Specification in paragraphs 15 and 16 and in Figures 1-5. Amendment, p. 4. Paragraphs 15 and 16 do not use the word "cantilever" or "cantilevered." Nor does the remainder of Appellant's Specification. Paragraph 15 of the Specification briefly describes a handle used to couple the device to a vacuum source, but does not characterize the handle in accordance with Appellant's definition of a "cantilevered" handle (see Appeal Br. 12-13, Reply Br. 4). As for Appellant's Figures 1-5, only Figures 1-3 depict handle 116, and none of these Figures depicts handle 116 in a way that limits it to a rigid structural member supported at a first end and carrying a load at a second end. Further, claim 1 explicitly recites that the handle is "non- flexible." Appeal Br. 23 (Claims App.). Thus, the word cantilevered in claim 1 does not require the handle to be rigid inasmuch as this interpretation would render the modifier "non-flexible" superfluous. A common dictionary definition of the term "cantilever" is "[a] projecting horizontal beam fixed at one end only." https://www.vocabulary.com/dictionary/cantilever (last visited April 30, 2019). Figures 1-3 depict handle 116 connected to and supported by housing 102 at one end, and extending therefrom toward a vacuum source that is not shown. Figures 1-3 do not show whether both ends of handle 116 are supported. Based on Appellant's disclosure, in claim 1, the broadest reasonable interpretation of a handle cantilevered from the head assembly is met by a tube extending from (and supported by) the head assembly and usable as a handle for moving the head assembly. These requirements are satisfied by tube 52 of Pearson. See Pearson 3:34--38, Fig. 1. Appellant repeatedly asserts that tube 52 of Pearson is flexible, thus failing to meet all the requirements of the handle in claim 1. See Appeal Br. 5 Appeal2018-002148 Application 13/523,114 12-13, Reply Br. 3--4. However, the rejection of claim 1 relies on Tyler (not Pearson) to teach a hollow handle that is non-flexible. 4 See Final Act. 3--4. The modified version of Pearson would include a rigid pipe ( as taught by Tyler) extending from a side of Pearson's head assembly and supporting its own weight. 5 We agree that implementation of pipe 4 of Tyler, placed in the system taught by Pearson as proposed by the Examiner, would result in a cantilevered, non-flexible, hollow handle as recited in claim 1. Appellant also asserts that Pearson fails to teach a switch for operating a solenoid valve and its associated limitations as recited in claim 1. Appeal Br. 12-13. This argument fails to apprise us of Examiner error because it does not address the rejection of claim 1, which relies on a combination of the teachings of Gaudenzi and Kondou (not Pearson) to teach the recited details of a switch for operating a solenoid valve. See Final Act. 4. Tyler Appellant next argues "Tyler fails to disclose, teach, or otherwise suggest a 'nonjlexible hollow handle cantilevered from an end of the head assembly and extending outwardly from the head assembly."' Appeal Br. 13; see also Reply Br. 3. This argument is unavailing because Tyler discloses that pipe 4 may be metal or it may be flexible hose. See Tyler 2:2-3. Thus, Tyler teaches that pipe 4, in at least one embodiment, is rigid. As shown in Figure 1, pipe 4 To the extent claim 1 requires the handle to be positioned on a side of the head assembly, the Examiner relies on Tyler to teach placement at this location. See Ans. 8. 5 Appellant does not contest the Examiner's rationale for making the proposed modification, specifically, Appellant does not contest that the proposed modification would add stability and aid in control when manipulating the device. See Final Act. 4, Appeal Br. 11-16. 6 Appeal2018-002148 Application 13/523,114 4 is supported on a side of box 1 in a cantilever arrangement and extends outwardly. Appellant asserts Tyler fails to disclose, teach, or otherwise suggest ... "[that] the non-flexible hollow handle comprises a switch for operating a solenoid valve, the switch for controlling operation of the vacuum source by blocking a flow of air from the head assembly to vacuum source via the solenoid valve, the solenoid valve disposed between the head assembly and the vacuum source" as recited in claim 1. Appeal Br. 13, see also Reply Br. 3. As discussed above, the rejection of claim 1 relies on a combination of the teachings of Gaudenzi and Kondou to teach the recited details of a switch for operating a solenoid valve. See Final Act. 4. 6 Thus, Appellant's argument, which reproduces a group of claim limitations for which Tyler is not cited, does not address the combination of references set forth in the rejection of claim 1. Gaudenzi Appellant next addresses Gaudenzi using the same shotgun approach used to address the Examiner's findings regarding the disclosure in Tyler, stating: Gaudenzi fails to disclose, teach, or suggest a "non-flexible hollow handle cantilevered from an end of the head assembly and extending outwardly from the head assembly" or "wherein the non-flexible hollow handle comprises a switch/or operating a solenoid valve, the switch for controlling operation of the vacuum source by blocking a flow of air from the head assembly to vacuum source via the solenoid valve, the solenoid 6 Although not relied upon by the Examiner, contrary to a portion of Appellant's argument, Tyler discloses valve 5 located between free end 9 of pipe 4 (which is to be connected to a vacuum source) and box 1. See Tyler 1:79-2:15, Fig. 1. 7 Appeal2018-002148 Application 13/523,114 valve disposed between the head assembly and the vacuum source" as recited in claim 1. Appeal Br. 14. These arguments, which list a group of claim elements addressed by a combination of various prior art references, fail to identify Examiner error because the rejection of claim 1 relies on Gaudenzi to teach only a portion of the elements listed by Appellant. See Final Act. 2--4. Specifically, the Examiner finds "Gaudenzi teaches a switch ( 51) or button to operate a valve (52) to prevent or allow air flow (through conduit 73) for picking up a specified amount of medicant (Fig. 3B and 4B)." Id. at 4. Gaudenzi discloses the features for which it is cited in the form of button 51 and valve 52. We recognize that Gaudenzi's button 51 and valve 52 are placed between Gaudenzi's head assembly and a source of pressurized air supplied to Gaudenzi's head assembly, rather than between the head assembly and a vacuum source, as claimed. The Examiner, however, relies on the combination of Pearson and Tyler as disclosing a head assembly in communication with a vacuum source, and relies on Gaudenzi for disclosing a switched valve to control an airflow, which if used in the device of Pearson, as modified by Tyler, would "achieve optimal device control" versus the "flap valve" of Pearson. Final Act. 4; Ans. 10. Thus, Appellant's argument fails to apprise us of Examiner error because it does not address the rejection of claim 1, which relies on a combination of the prior art teachings (not only Gaudenzi) to teach the recited details of a switched valve placed between a head assembly and a vacuum source. 8 Appeal2018-002148 Application 13/523,114 Kondou To address the Examiner's findings of fact regarding the disclosure of Kondou, Appellant repeats the same arguments discussed above with respect to Tyler and Gaudenzi and the recited non-flexible hollow handle and switch for operating a solenoid valve. Appeal Br. 15. These arguments again do not address the Examiner's proposed combination of references, and, instead, merely list a large number of claim elements, most of which are unrelated to the Examiner's findings as to the disclosure in Kondou. See id. at 14--16, Final Act. 4. We have considered all of Appellant's arguments in support of the patentability of claim 1, but find them unpersuasive. Accordingly, we sustain the rejection of claim 1 as unpatentable over Pearson, Tyler, Gaudenzi, and Kondou. Claims 2--4, 7-9, and 11-15 fall with claim 1. Claim 10 Independent claim 10 recites substantially similar features to those discussed above regarding claim 1. See Appeal Br. 23-25 (Claims App.). In support of the patentability of claim 10, Appellant reiterates the arguments made for claim 1. See Appeal Br. 11-21. For the same reasons discussed above regarding the rejection of claim 1, we sustain the rejection of claim 10. DECISION The Examiner's rejection of claims 1--4 and 7-15 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation