Ex Parte Utterberg et al

Patent Trial and Appeal Board

Oct 24, 2012

11124701 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID S. UTTERBERG and
WILLIAM J. SCHNELL
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Appeal 2010-006222
Application 11/124,701
Technology Center 3700
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Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/124,701

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STATEMENT OF THE CASE
David S. Utterberg and William J. Schnell (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-18 and 23.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A one-piece, elastomeric cap proportioned to fit over an outer
end of a female luer-lock connector, which comprises:
an outer cap member defining a tubular, bore-defining
portion, and an end wall to close off the bore of said portion;
a generally cylindrical projection extending inwardly into
said bore from the end wall, said projection being proportioned
to sealingly fill at least an outer portion of the lumen of a
female luer-lock connector occupying said bore;
said outer cap member further defining at least one
radially outwardly extending and at least partially annular space
adjacent to said end wall, said space extending radially
outwardly from said bore, wherein said cap may be pushed over
or removed from outwardly-extending threads or lugs of a
female luer-lock connector inserted within said cap without
inversion of said outer cap member, said space being radially
sized to avoid stretching of said end wall.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wayte
Hayashida
Ryan
Gault
US 686,642
US 3,583,591
US 5,833,213
US 6,261,270 B1
Nov. 12, 1901
Jun. 8, 1971
Nov. 10, 1998
Jul. 17, 2001
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Application 11/124,701

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Rejections
The Examiner rejected claims 1, 2, 4-7, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Wayte and Gault.
The Examiner rejected claims 3 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Wayte, Gault, and Hayashida.
The Examiner rejected claims 9-18 under 35 U.S.C. § 103(a) as
unpatentable over Wayte, Gault, and Ryan.
OPINION
Independent claims 1 and 9 each require an outer cap member
defining, inter alia, an end wall to close off the bore of a bore-defining
portion and at least one radially outwardly extending and at least partially
annular space adjacent the end wall that is sized to avoid stretching of the
end wall.
In addressing the limitation that the at least partially annular space be
sized to avoid stretching of the end wall, the Examiner states that
Wayte explicitly discloses that said space is radially sized to
avoid stretching of said end wall (Page 1, Lines 95-104).
Wayte discloses that the prevention of such stretching is
important as to preserve the resealability of the cap in order to
perform its intended function of allowing syringe access
(Figure 2) while preserving seal integrity.
Ans. 4.
As correctly pointed out by Appellants (App. Br. 10), Wayte discloses
that the annulus 7 affixed centrally to the upper side of the crown 6
“prevents the center of the crown of the cap from being stretched when the
cap is drawn over the bottle-neck, and hence the rubber crown lying under
the open center of the annulus will retain its more or less compressed state.”
P. 1, ll. 55-56, 96-101 (emphasis added). Wayte does not explicitly disclose
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that the end wall (crown) is prevented from stretching. Rather, Wayte’s
disclosure of providing the annulus 7 to prevent the center from stretching
and causing the portion of the crown lying under the open center to retain its
more or less compressed state implies that regions of the crown radially
outwardly of the annulus 7, and perhaps even regions radially outwardly of
the portion lying under the open center of the annulus, are, or at least may
be, stretched when the cap is drawn over the bottle-neck.
The Examiner asserts that the depiction in Wayte’s Figure 1 of the end
wall sagging into the opening of the container shows that the end wall
(crown) is not stretched. Ans. 15. According to the Examiner, “were the
end wall stretched, . . . , the end wall would not be illustrated sagging into
the opening, but would rather be stretched taught.” Id. This assertion
embodies speculation as to the unstressed configuration of Wayte’s cap 4,
and particularly the crown portion thereof, prior to being drawn over the
bottle.
Thus, the Examiner’s rejections of claims 1 and 9 are predicated in
part on a speculative finding not supported by Wayte. The Examiner does
not rely on Gault, Hayashida, or Ryan for any teaching that would remedy
this deficiency in the Examiner’s findings. Consequently, the Examiner fails
to establish a prima facie case that the subject matter of claims 1 and 9 and
their dependent claims 2-8, 10-18, and 23 would have been obvious at the
time of Appellants’ invention. We do not sustain the Examiner’s rejections.
DECISION
The Examiner’s decision rejecting claims 1-18 and 23 is reversed.
REVERSED

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