Ex Parte Dunn et al

Patent Trial and Appeal BoardDec 19, 2012

10757109 (P.T.A.B. Dec. 19, 2012)

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. 10/757,109 01/14/2004 Steven B. Dunn MBI-1164 2938 3705 7590 12/19/2012 ECKERT SEAMANS CHERIN & MELLOTT 600 GRANT STREET 44TH FLOOR PITTSBURGH, PA 15219 EXAMINER ABBOTT, YVONNE RENEE ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 12/19/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN B. DUNN, BRYCE FUJII, and KEVIN CLARK ____________________ Appeal 2010-007010 Application 10/757,109 Technology Center 3600 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007010 Application 10/757,109 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 13, 18-21, 23-32, 35-39, 47-62 and 64-69. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a styptic applicator with file. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A styptic applicator for pets comprising: a container with a chamber containing a styptic; a removable cap for said container; an applicator device for applying the styptic; and a filing device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Burnett Lenz Gabriele Griffiths Bratby-Carey US 2,273,559 US 2,290,886 US 5,443,172 US 5,762,077 US 5,897,262 Feb. 17, 1942 Jul. 28, 1942 Aug. 22, 1995 Jun. 9, 1998 Apr. 27, 1999 REJECTIONS Claims 1, 2, 5, 18, 23, 24, 27, 35, 36, 47, 48, 51, 60 and 65 are rejected under 35 U.S.C. § 102(b) as being anticipated by Burnett. Ans. 3. Claims 21, 39, 64 and 67 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Burnett and Lenz. Ans. 4. Appeal 2010-007010 Application 10/757,109 3 A new ground of rejection was presented in the Answer rejecting claims 11, 30 and 57 under 35 U.S.C. § 103(a) as being unpatentable over Burnett. Ans. 4. Claims 1-5, 9-13, 18, 19, 23-27, 29-31, 36, 37, 47-51, and 55-60 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Griffiths and Burnett. Ans. 5. Claims 1, 2, 5-9, 18, 23, 24, 27, 28, 29, 36, 47, 48, 51-55, 60-62, 68 and 69 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bratby-Carey and Burnett. Ans. 6. Claims 20 and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bratby-Carey, Burnett and Gabriele. Ans. 7. OPINION In rejecting independent claims 1, 23 and 47, and those claims depending therefrom, based on Burnett, and Burnett and Lenz, the Examiner interprets Burnett’s powder as a styptic. Ans. 8. The Examiner apparently believes Burnett’s powder inherently has styptic properties. The Examiner’s allegation is made without making of record any evidence or reasoning to demonstrate what type of powder Burnett is referring to, or that such a powder contains styptic properties. Reply Br. 2. Absent such evidence or reasoning we cannot agree with the Examiner that Burnett’s powder is reasonably interpreted as the recited styptic. In claims 65 and 67 the styptic defines the function associated with the recited means. Appellants assert without further support, that Burnett lacks the recited storing means and application means. App. Br. 12, 13-15. Appellants point to chamber 24 within container 16, and applicator device 12 within cap 28, as the recited storing means and application means, Appeal 2010-007010 Application 10/757,109 4 respectively. App. Br. 4; See Spec. 4, fig. 1 (reference numeral 24 appears to be omitted). Both structures are essentially cavities having an opening at one end. Burnett also contains the same structures. Thus, receptacle 6 with plug 11 is reasonably interpreted as the recited storing means while receptacle 6 alone is reasonably interpreted as the recited application means. Since Appellants do not assert, and the plain language of the claim does not require, the recited means to be separate structures we are not apprised of any reason why Burnett fails to anticipate claim 65. See, e.g., In re Robertson, 169 F. 3d 743, 746 (Rader, concurring) (Fed. Cir. 1999). Regarding the rejection of claims 64 and 67 based on Burnett and Lenz, Appellants correctly point out that the applied prior art lacks a “handle for gripping [the] cap.” App. Br. 13-15. Even if Lenz’s cord or elastic 27 is reasonably interpreted as a handle, since it lacks any significant rigidity it could not be used for taking a tight hold, or firm grasp, of1 the cap. Accordingly, Lenz’s cord or elastic 27 cannot reasonably be interpreted as a “handle for gripping [the] cap.” In rejecting independent claims 1, 23 and 47, and those claims depending therefrom, based on Griffiths and Burnett, Bratby-Carey and Burnett, and Bratby-Carey, Burnett and Gabriele, the Examiner has incorrectly interpreted the claims as being directed to a styptic applicator intended to be used with a styptic as opposed to a styptic applicator in combination with a styptic. App. Br. 15-31. Since the claims are directed to the latter, the Examiner’s position that the cited prior art structure falls 1 grip1. (2007). In THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE, retrieved from http://www.credoreference.com/entry/hmdictenglang/grip1 Appeal 2010-007010 Application 10/757,109 5 within the scope of the claims because such structure is capable of holding a styptic (Ans. 5, 6) is clearly untenable. Our reasoning concerning the limitations regarding the styptic of claim 64 is equally applicable to claims 61, 62, 68 and 69 as rejected based on Bratby-Carey and Burnett. See App. Br. 31-34. Further, while Appellants point out that the absence of the specific type attachment member recited, a hook and loop or snap mechanism, is a difference between the prior art and the claimed invention, the Examiner never alleged otherwise. App. Br. 31- 34; Ans. 7. Rather, the Examiner concluded that even in light of such a difference the claimed subject matter would have been obvious to one having ordinary skill in the art. Ans. 7.The Examiner’s position in this regard stands uncontroverted. DECISION The Examiner’s rejections of claim 65 as anticipated by Burnett, and of claims 61, 62, 68 and 69 as unpatentable over Bratby-Carey and Burnett, are affirmed. The Examiner’s other rejections are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls