Ex Parte Zurcher

Board of Patent Appeals and Interferences

Apr 7, 2011

10337092 (B.P.A.I. Apr. 7, 2011)

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.
10/337,092 01/06/2003 Robert G. Zurcher 102-503 8349
32752 7590 04/07/2011
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(Hoffman & Baron)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
HANDY, DWAYNE K
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
04/07/2011 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 ROBERT G. ZURCHER
____________________

Appeal 2009-010195
Application 10/337,092
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal mailed January 25, 2011. In that Decision, the panel affirmed the
Examiner’s decision to reject claims 1, 2, 4, 6-8, 10, 11, 13, and 15-17 as
anticipated under 35 U.S.C. §102(b) by Niermann; claims 19, 21, 23-25, and
27 as unpatentable under 35 U.S.C § 103(a) over Niermann; and claims 3, 5,
9, 12, 14, 18, 20, 22, and 26 as unpatentable under 35 U.S.C. § 103(a) over
Niermann in view of one or more of Zurcher, King, and Levy.

Appeal 2009-010195
Application 10/337,092

2
On rehearing, Appellant contends that we failed to properly consider
the language of representative claim 1, overemphasized the cited In re
Schreiber decision, and overlooked the significance of previously presented
evidence showing that the Niermann ball and socket closure does not
anticipate, inherently or otherwise, the closure assembly defined in the
claims (Request 2).
Representative claim 1 is directed to a closure assembly. The claim
requires “a top ring assembly removably attachable to said bottom ring when
said bottom ring is attached to said container.”
In the Brief, Appellant focused on the “removably attached” language
(Br. 5-8) and we, therefore, focused on that language when fashioning the
issue to be reviewed. Appellant now contends that we ignored the language
“when said bottom ring is attached to said container.” (Request 2-3.)
Appellant states that when the issue on appeal is properly framed by taking
into account the additional “when” clause, it is evident that the rejection is
unsupported “because there is insufficient evidence that the ball 20 in
Niermann is removably attachable from the socket 40 when the socket 40 is
attached to the container.” (Request 3.)
To support the contention, Appellant argues that “[o]nce the closure is
attached to the container, the engagement between the socket and the
container compresses the socket, therefore rendering it less flexible than
when it is not attached to the container, and preventing the ball from being
removable from the socket in the same manner as it is forcibly inserted.”
(Request 3-4.) Appellant does not cite, and we do not find, any credible
evidence supporting the assertion. Figure 5 of Niermann shows that the
Appeal 2009-010195
Application 10/337,092

3
socket is above the level of the container 100 (Fig. 5). It is the protrusion 47
below the socket 40 that is inserted into the container (Fig. 5; Niermann, col.
4, ll. 27-32). The socket is made of elastomeric-like material and is not
constrained (Decision, FF 4-5). The evidence as a whole supports the
Examiner’s finding that the ball 20 would inherently be capable of being
removed from the socket whether or not the protrusion 47 below the socket
40 is fitted within the container (see Decision, FF 1-5).
We neither improperly disregarded the “when” clause of the claim,
nor does evidence indicate that the Examiner’s inherency conclusion is
unreasonable. As properly found by the Examiner, “[s]ince the socket is
flexible enough to allow for the forceful insertion of a ball having a greater
diameter than the first open end (43), then the socket (40) is inherently
flexible enough to allow for removal of the ball through the same first
opening.” (Ans. 8.)
Appellant contends we failed to recognize distinctions between the
present facts and those of In re Schreiber. Appellant asserts that “the
conclusion of inherency set forth in Schreiber, as articulated by the Federal
Circuit, was based on the fact that the disclosed embodiment of the claimed
design had the same general shape, i.e., structure, as the prior art.” (Request
5 (emphasis added).)
Appellant has overlooked a key discussion in Schreiber relating to
functional limitations. As pointed out in Schreiber, “[a] patent applicant is
free to recite features of an apparatus either structurally or functionally.”
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). “Yet, choosing to
Appeal 2009-010195
Application 10/337,092

4
define an element functionally, i.e., but what it does, carries with it a risk.”
Id.
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
Id., (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) and
further citing In re Hallman, 655 F.2d 212, 215 (CCPA 1981); In re
Ludtke, 441 F.2d 660, 663-64 (CCPA 1971).)
In the present case, Appellant has used functional language in an
attempt to distinguish the claimed structure from the prior art structure. The
Examiner has established a reason to believe that the function recited in the
claim may be an inherent characteristic of the ball and socket structure of the
prior art. The fact that the structure of the prior art is structurally different
from the structure of the “disclosed embodiment” Appellant describes in the
Specification and depicts in the Figures is of little moment. The name of the
game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.Cir.1998).
Appellant further would require that one of ordinary skill in the art
recognize that the ball would be capable of being removed from the socket
of Niermann citing to Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1268 (Fed. Cir. 1991) (Request 5-6). There is no such requirement. See
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003) (“Continental Can does not stand for the proposition that an inherent
feature of a prior art reference must be perceived as such by a person of
ordinary skill in the art before the critical date.”); In re Omeprazole Patent
Appeal 2009-010195
Application 10/337,092

5
Litig., v. Andrx Pharms, Inc., 483 F.3d 1364, 1373 (Fed. Cir. 2007)
(recognition in the prior art is not necessary when the claimed characteristic
or function is inherently present in the prior art).
The subject Request has been granted to the extent that the Decision
has been reconsidered, but is denied with respect to making any changes
therein.
REHEARING DENIED

cam