Ex Parte Zurcher

Board of Patent Appeals and Interferences

Jan 25, 2011

10337092 (B.P.A.I. Jan. 25, 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 01/25/2011
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
01/25/2011 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 APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010195
Application 10/337,092

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Appellant’s invention relates to a two-piece closure assembly for
containers that allows for sample purity while enabling direct access to a
sample by diagnostic instrument probes (Spec. ¶ [0001]). One embodiment
of the closure assembly is shown in Figures 1 and 2, which are reproduced
below:

Fig. 1 is a longitudinal cross-sectional view of the closure assembly
70 (Spec. ¶ [0011]).

Fig. 2 is a longitudinal cross-sectional view of the top ring assembly 20 of
the closure assembly 70 (Spec. ¶ [0012]).

Appeal 2009-010195
Application 10/337,092

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Of particular interest in this appeal is claim 1, reproduced below with
added reference numerals from Figures 1 and 2:
1. A closure assembly [70] for a specimen collection
container having an open end, an opposed closed end and a side
wall therebetween, defining a container interior, said closure
assembly comprising:
a bottom ring [50] removably attachable to said open end
of said container; and
a top ring assembly [20] removably attachable to said
bottom ring [50] when said bottom ring [50] is attached to said
container for closing said open end of said container; said top
ring assembly [20] including:
a mounting ring [21] removably attachable to said bottom
ring [50], said mounting ring [21] having an opening [25]
therein for communication with said container interior; and
a pierceable, resealable septum [31] closing said opening
and permitting pierceable instrument access therethrough.

The Examiner maintains, and Appellant seeks review of, the
following rejections:
1. The rejection of claims 1, 2, 4, 6-8, 10, 11, 13, and 15-17 as
anticipated under 35 U.S.C. §102(b) by Niermann et al. (US 5,972,297;
issued Oct. 26, 1999).
2. The rejection of claims 19, 21, 23-25, and 27 as unpatentable under
35 U.S.C § 103(a) over Niermann.
3. The rejection of 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 et al. (US 6,375,022 B1; issued Apr. 23, 2002), King (US
Appeal 2009-010195
Application 10/337,092

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5,788,101; issued Aug. 4, 1998), and Levy (US 6,030,582; issued Feb. 29,
2000).
II. DISPOSITIVE ISSUE
The contention for all the rejections is the same: Appellant contends
that the Examiner has failed to demonstrate that Niermann teaches, directly
or inherently, a top ring assembly removably attached to a bottom ring by
removing a ball from a socket (Br. 5). As Appellant does not argue any
claim apart from the others, we select claim 1 as representative for deciding
the issue on appeal.
The issue is: Does the evidence as a whole support the Examiner’s
finding that Niermann describes a closure assembly having a top ring
assembly with the “removably attachable” structure required by claim 1?
We answer is question in the affirmative.
III. FINDINGS OF FACT
The following Findings of Fact (FF) are particularly relevant for
disposing of the issue on appeal.
1. Niermann describes a closure assembly including a spherically-shaped
ball 20 having a passageway 21 fitted within a socket 40 (Niermann, col.
4, ll. 56-58, Figs. 3 and 4).
2. Figure 4 of Niermann shows the structure of the ball 20 and socket 40.
Figure 4 is reproduced below:
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Application 10/337,092

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Fig. 4 is an enlarged cross-sectional view of the closure showing ball 20
above socket 40 in an unassembled state above collection tube 100
(Niermann, col. 3, ll. 6-7).

3. Niermann describes forming the closure assembly either by a two-shot
molding process or by separately molding the two pieces and later
assembling them together (Niermann, col. 12, ll. 10-17).
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4. Niermann discloses a specific process of assembling in which the
socket 40 is molded from an elastomeric-like material, such as
polyethylene or thermoplastic elastomer (TPE), while the ball 20 is made
of a more rigid material such that the ball 20 may be forcefully inserted
into socket 40 during assembly (Niermann, col. 12, ll. 2-9).
5. Figure 5 shows the assembled closure and is reproduced below:

Fig. 5 shows a cross-sectional view of the assembled closure
(Niermann, col. 3, ll. 8-10).
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IV. PRINCIPLES OF LAW
A product or apparatus must be distinguished from the prior art in
terms of structure, rather than function. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997).
Where there is reason to believe that the prior art structure possesses
all the claimed characteristics including the capability of performing the
claimed function, the burden shifts to the applicant to show that the claimed
function, in fact, structurally distinguishes the claimed apparatus from the
prior art apparatus. Schreiber, 128 F.3d at 1478; In re Hallman, 655 F.2d
212, 215 (CCPA 1981); In re Ludtke, 441 F.2d 660, 664 (CCPA 1971).
V. ANALYSIS
The key question at issue is whether the language “top ring assembly
removably attachable to said bottom ring” in claim 1 structurally
distinguishes the claimed closure assembly from the assembly described by
Niermann. The Examiner has provided a reasonable basis to conclude,
based upon the materials used and the structure of the ball 20 and socket 40
of Niermann, that the ball 20 is inherently capable of being removed from,
as well as forcefully inserted into, the socket 40. It is reasonable to conclude
that the elastomeric nature of the materials of the socket 40 would allow
removal of the ball 20 from the socket 40 given the structure of the ball 20 in
relation to the socket 40 as shown in Figure 5 (see FF above).
Because the Examiner’s finding of inherent capability was reasonable,
the burden shifted to Appellant to show that, in fact, the “removably
attachable” language of the claim patentably distinguishes the claimed
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closure assembly structure from that of Niermann. Appellant’s arguments
that Niermann does not expressly teach removing the ball or that so
removing the ball would destroy the intended use of Niermann are irrelevant
to the issue. The ball and socket need only have a structure allowing it to be
“removably attachable.” Removal need not actually occur for the prior art
closure assembly to meet the structural limitations of the claim.
VI. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
VII. DECISION
The decision of the Examiner is affirmed.
VIII. TIME PERIOD FOR RESPONSE
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

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DAVID W. HIGHET, VP & CHIEF IP COUNSEL
BECTON, DICKINSON AND COMPANY
(HOFFMAN & BARON)
1 BECTON DRIVE, MC 110
FRANKLIN LAKES, NJ 07417-1880