Ex Parte Welp

Patent Trial and Appeal Board

Dec 18, 2012

11579349 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GISBERT WELP
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Appeal 2010-012442
Application 11/579,349
Technology Center 3700
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Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/579,349

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claimed subject matter relates to a “manually operated dispenser
for flowable media.” Spec., para. [0001]. Claims 1 and 8 are the
independent claims on appeal. Claim 8, reproduced below, is illustrative of
the claimed subject matter:
8. A manually operated dispenser, comprising:
a container; and
a pump head fastened to the container, comprising:
a nozzle-shaped nasal adapter;
an outlet opening in the nozzle-shaped nasal
adapter;
a first gripping surface protruding laterally from a
central section of the nasal adapter;
a second gripping surface protruding laterally from
the central section of the nasal adapter opposite the first
gripping surface;
a first wing connected to the first gripping surface;
and
a second wing connected to the second gripping
surface, wherein the first wing and second wing form a
protective cap when closed.

REJECTIONS
Appellant seeks review of the following rejections:
(1) Claims 8, 10, and 11 under 35 U.S.C. § 102(b) as anticipated by
DeJonge (US 6,173,868 B1, iss. Jan. 16, 2001). Ans. 3-5.

1 Appellant identifies the real party in interest as MeadWestvaco Calmar
GmbH. Br. 2.
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(2) Claims 1-7, 9, and 12-14 under 35 U.S.C. § 103(a) as unpatentable
over DeJonge and Siff (US 6,297,289 B2, iss. Oct. 2, 2001). Ans. 6-9.

ANALYSIS
Claims 8, 10, and 11 as anticipated by DeJonge
Claims 8 and 10
Only issues and findings of fact contested by Appellant in the Brief
will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010). Appellant argues claims 8 and 10 as a group. Br. 4-6. We select
independent claim 8 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
The Examiner found that DeJonge discloses all of the limitations of
independent claim 8. Ans. 5. In particular, the Examiner found that the left
side and right side of a circumferentially extending element labeled
“Gripping Surface” in the Examiner-annotated drawing on page 4 of the
Answer comprise the first and second gripping surfaces, respectively, as
recited in the claims. Id. The Examiner also found that while “the edges are
narrow[,] they do allow grip to be placed on the stem portion of the nozzle
and appropriately is capable of assisting in the actuation of the sprayer.” Id.
at 10.
Appellant disagrees with the Examiner’s finding that DeJonge
discloses first and second gripping surfaces which protrude laterally from a
central section of a nasal adapter, as recited in claim 8. Br. 4. In particular,
Appellant contends that: (i) the Examiner-identified feature of DeJonge is
not defined as a gripping surface; (ii) the Examiner-identified feature of
DeJonge “does not appear to provide a sufficient surface for it to be a
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‘gripping surface;’” and (iii) DeJonge expressly describes other gripping
surfaces, which are not the Examiner-identified feature. Id. at 4-5.
As to the Examiner-identified feature of DeJonge not being defined as
a gripping surface and DeJonge expressly describing other gripping surfaces,
a reference need not disclose a limitation in haec verba. In re Bode, 550
F.2d 656, 660 (CCPA 1977). While the gripping surfaces identified by the
Examiner do look different than the gripping surfaces 5, 6 in Figures 2-3 of
Appellant’s Specification, we find that no particular structure regarding the
gripping surfaces appears in the claim language or Appellant’s Specification
other than that they protrude laterally from the nasal adapter on opposite
sides. See Spec., para. [0013]. We find the left and right opposing side of
the circumferentially extending element labeled “Gripping Surface” in the
Examiner-annotated drawing on page 4 of the Answer can reasonably be
considered the first and second gripping surfaces consistent with Appellant’s
Specification.
The Examiner also found that DeJonge discloses first and second
wings 50, 60 connected to the first and second gripping surfaces,
respectively, by way of hinge 80. Ans. 5, 10. Appellant disagrees with the
Examiner’s finding that DeJonge discloses first and second wings connected
to the gripping surfaces as recited in claim 8. Br. 5. In particular, Appellant
contends that: (i) the Examiner-identified wings function as gripping
surfaces in DeJonge; and (ii) the wings 50, 60 of DeJonge cannot be
connected to the first and second gripping surfaces as recited in the claims
because the wings are the gripping surface of DeJonge. Id. These
arguments fail to address the rejection as articulated by the Examiner in
which the wings 50, 60 of DeJonge were found to be connected to the
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particular Examiner-identified gripping surfaces (see Ans. 4) through a
hinge connection. Appellant has not persuasively rebutted these findings.
For the foregoing reasons, we find that the Examiner did not err in
finding that DeJonge discloses all of the limitations recited in claim 8 and
we sustain the rejection of claims 8 and 10 under 35 U.S.C. § 102(b).

Claim 11
Claim 11 recites “at least one anti-slip element formed on at least one
of the first gripping surface or second gripping surface.” The Examiner
found that DeJonge discloses this limitation of claim 11. Ans. 5, 11. In
particular, the Examiner found that “the outwardly projected edge [of the
Examiner-identified gripping surface of page 4 of the Answer] allows for an
anti-slip (allows better grip) which is formed on the gripping surface.” Id. at
11.
Appellant disagrees with the Examiner’s finding that DeJonge
discloses an anti-slip element formed on at least one of the gripping surfaces.
Br. 6. In particular, Appellant contends that: (i) the alleged anti-slip edge is
merely a line in a drawing figure; and (ii) there is no express or inherent
indication that “the small edge illustrated about the discharge nozzle (90) is
sufficiently wide to be a gripping surface or to include an ‘anti-slip
element.’” Id.
While the anti-slip element identified by the Examiner does look
different than the anti-slip elements 32 in Figures 2-3 of Appellant’s
Specification, we find that no particular structure regarding the anti-slip
element appears in the claim language or Appellant’s Specification other
than that it be on the gripping surfaces 5, 6. See Spec., para. [0021]. We
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find that the outwardly projected edge labeled “Anti-Slip Edge” in the
Examiner-annotated drawing on page 4 of the Answer can reasonably be
considered the anti-slip element consistent with Appellant’s Specification.
For the foregoing reasons, we find that the Examiner did not err in
finding that DeJonge discloses all of the limitations recited in claim 11 and
we sustain the rejection of claim 11 under 35 U.S.C. § 102(b).

Claims 1-7, 9, and 12-14 as unpatentable over DeJonge and Siff
Claims 1, 2, 5-7, and 9
Appellant argues claims 1, 2, 5-7, and 92 as a group. Br. 6-7. We
select independent claim 1 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). The Examiner finds that DeJonge discloses all of the
limitations of claim 1 except for “the wings being connected by a film hinge
which is formed over the entire length of the end edges of the gripping
surface.” Ans. 7. The Examiner concludes that
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to use a film hinge as
taught by Siff, since Siff states at column 3[,] [l]ine[s] 35-51
such modification would use a strip of flexible plastic (or other
material) to keep the cap held captive.
Id.
Appellant first contends that neither DeJonge nor Siff disclose
“‘gripping surfaces’” as recited in the claims. Br. 7. For reasons discussed,
supra, in connection with claim 8, we find that DeJonge discloses gripping
surfaces as recited in the claims.

2 Appellant does not specifically reference claim 9 in its arguments, but
acknowledges the final rejection of claims 1-14 as being appealed. Br. 2.
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Appellant secondly contends that neither DeJonge nor Siff disclose “a
‘wing of a protective cap’ having a ‘film hinge’ and being connected to the
‘gripping surfaces’ as recited in claim 1.” Id. This contention is not
persuasive since Appellant cannot show nonobviousness by attacking
DeJonge and Siff individually when the rejection, as articulated by the
Examiner, is based on a combination of DeJonge and Siff. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). While Appellant is correct that neither
DeJonge nor Siff individually teach a wing of a protective cap having a film
hinge and being connected to gripping surfaces of a nasal adapter, the
Examiner relied on the combination of DeJonge as modified by the
teachings of Siff. Appellant has contended only that each individual
reference alone does not teach all of the claim limitations, but has not
addressed the propriety of the combination of references asserted by the
Examiner.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claim 1 would have been obvious from
the combination of DeJonge and Siff, and we sustain the rejection of claims
1, 2, 5-7, and 9 under 35 U.S.C. § 103(a).

Claim 3
Claim 3 recites “the wings in each case have at least one rib running
transverse with respect to the film hinges which has a supporting surface,
which, with the wings unfolded, can be brought into engagement with a stop
arranged on the pump head.” The Examiner acknowledges that DeJonge
fails to disclose this limitation, but concludes that
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[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to move the
support projection (100) of DeJonge from the plunger head to
the wings and use the surface of the plunger head as a stop,
since it has been held that a mere reversal of the essential
working parts of a device involves only routine skill in the art.
Ans. 7. In particular, the Examiner finds that the sidewall (40) would
become the stop. Id. at 12.
Appellant contends that “[e]ven if the Final Action’s allegations that
one of ordinary skill in the art could move the support projection of
DeJonge, neither reference teaches the recited ‘stop’ which would engage
with the at least one rib.” Br. 8. Appellant further contends that “there is no
support in the record that one of ordinary skill in the art would be motivated
to add a ‘stop arranged on the pump head.’” Id.
While the stop identified by the Examiner, i.e., sidewall 40, does look
different than stop 20 in Figures 1 and 4 of Appellant’s Specification, we
find that no particular structure regarding the stop element appears in the
claim language or Appellant’s Specification other than that it be on the
pump head 2. See Spec., para. [0018]. We find that the sidewall 40 can
reasonably be considered the stop consistent with Appellant’s Specification.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claim 3 would have been obvious from
the combination of DeJonge and Siff, and we sustain the rejection of claim 3
under 35 U.S.C. § 103(a).

Claims 4 and 12
Appellant argues claims 4 and 12 as a group. Br. 8-9. We select
claim 4 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii). Claim
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4 recites that “the wings each have a blocking wedge which, with the wings
folded shut, deflect locking pins arranged on the pump head.” The
Examiner acknowledges that DeJonge fails to disclose this limitation, but
concludes that “[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to include a locking pin and
blocking wedge snap fastening system as taught by Siff in order to provide a
closing mechanism that will keep the components secured.” Ans. 7-8.
Appellant contends that neither Siff nor DeJonge disclose locking pins
or blocking wedges since “[w]hile Siff may disclose a locking mechanism
for keeping a container lid closed, Siff does not disclose any device or
feature that could be used to lock or block the activation of a pump, let alone
a nasal pump as recited in the claims.” Br. 8. The function of locking or
blocking the activation of a pump is not actually found in the claims. The
claim recites only that the blocking wedges extend into corresponding
recesses and displace the respective locking pins when the first and second
wing are in a closed position. Ans. 13. Unclaimed features cannot impart
patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant’s argument
that the locking pin and blocking wedge perform a particular function is not
based on limitations that appear in the claim.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of claim 4 would have been obvious from
the combination of DeJonge and Siff, and we sustain the rejection of claims
4 and 12 under 35 U.S.C. § 103(a).

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Claims 13 and 14
Claims 13 and 14 depend from claim 8. Appellant’s arguments in
support of the patentability of claims 13 and 14 solely relate to the perceived
deficiencies of DeJonge in connection with claim 8. Br. 9. We have found
no such deficiencies in the teachings of DeJonge. For the foregoing reasons,
we find that the Examiner did not err in concluding that the subject matter of
claims 13 and 14 would have been obvious from the combination of
DeJonge and Siff; and we sustain the rejection of claims 13 and 14.

DECISION
The Examiner’s rejection of claims 1-14 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)(1)(iv).

AFFIRMED

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