Ex Parte Foley et al

Patent Trial and Appeal Board

Mar 29, 2018

13559285 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/559,285 07/26/2012
27939 7590 03/30/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Brian Foley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BPMDL0055BF (10510U) 2402
EXAMINER
MAUST, TIMOTHY LEWIS
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
03/30/2018 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 BRIAN FOLEY and XINGQUAN REN
Appeal2017-006860
Application 13/559,285
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-3 and 5-20. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 "The real party in interest is Medline Industries, Inc." (Appeal Br. 2.)
Appeal2017-006860
Application 13/559,285
STATEMENT OF THE CASE
The Appellant' invention "relates generally to collection devices, and
more particularly to fluid collection devices." (Spec. i-f 1.)
Illustrative Claim
1. A splash retarding cover for a containment vessel, the
splash retarding cover comprising:
a centrally disposed suspended funnel;
a collar surrounding the centrally disposed suspended
funnel;
a vessel mounting ring; and
a plurality of sloping facets circumscribing the collar and
sloping outwardly from an outer circumference of
the collar and terminating at the vessel mounting
rmg.
Rejections
I. The Examiner rejects claims 1 and 15-18 under 35 U.S.C.
§ 102(b) as anticipated by Lampropoulos. 2 (Final Action 4.)
II. The Examiner rejects claims 2, 3, 5-14, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Lampropoulos and Pittman. 3 (Final
Action 6.)
III. The Examiner rejects claim 19 under 35 U.S.C. § 112, second
paragraph, as indefinite. (Final Action 4.)
ANALYSIS
Claims 1, 19, and 20 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2, 3, and 5-18) depending directly
2 US 5,483,999 issued Jan. 16, 1996.
3 US 6,053,314 issued Apr. 25, 2000.
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or indirectly from independent claim 1. (See Appeal Br., Claims App.)
Independent claim 1 recites "[a] splash retarding cover for a containment
vessel," and independent claims 19 and 20 recite methods involving such a
splash retarding cover. (Id.)
Rejection I
Independent claim 1 requires the cover to comprise a "collar," a
"mounting ring," and "sloping facets" that "slop[ e] outwardly" from the
collar's outer circumference. (Appeal Br., Claims App.) The Examiner
finds that Lampropoulos discloses a splash retarding cover for a containment
vessel that includes a collar, a mounting ring, and sloping facets. (See Final
Action 5.) Lampropoulos discloses a lid 14 "joined to [a] receptacle 12 in
an essentially fluid-tight manner for providing containment of contaminated
fluids within the receptacle 12." (Lampropoulos, col. 4, 11. 49-51.) In the
dissected portion of Lampropoulos's Figure 1 reproduced below, the
lid 14 is depicted as having a shoulder 40, sloping surfaces 46, a central
opening 47, and a circular foam disc 52 placed at the central opening 47.
(See id., at col. 5, 11. 3---6, 21-50.)
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Application 13/559,285
The Examiner considers the portion of Lampropoulos' s lid 14 surrounding
the opening 47 to be the claimed collar, the lid's shoulder 40 to be the
claimed mounting ring, 4 and the lid's sloping surfaces 46 to be the claimed
sloping facets. (See Final Action 5.)
The independent claims further recite a "centrally disposed suspended
funnel." (Appeal Br., Claims App.) As mentioned above, Lampropoulos's
lid 14 has a circular foam disc 52 that is placed at the central opening 47.
The Examiner finds that the "structure below disc 52" can be considered the
claimed funnel. (Final Action 5.) The Examiner alternatively finds that
Lampropoulos's circular foam disc 52 itself can constitute the claimed
funnel when a syringe is inserted therein. (See Answer 5.)
The Appellants argue that Lampropoulos does not disclose a lid
having the centrally disposed suspended funnel required by independent
claim 1. (See Appeal Br. 15-17.) In this regard, the Appellants direct our
attention to a dictionary definition indicating that a "funnel" is a "tube" or a
"pipe" that is "wide at the top and narrow at the bottom." (Id. at 15,
emphasis omitted.) This definition aligns with the description of a funnel in
the Specification. (See e.g., Spec. i-fi-140-41, 47--49, Figs. 1-5.) We agree
with the Appellants that one of ordinary skill would not consider the disc-
supporting structure in Lampropoulos' s lid 14 (see Lampropoulos Fig. 6) to
be a funnel (i.e., wide at the top and narrow at the bottom); and we agree
with the Appellants that one of ordinary skill would not consider
Lampropoulos's foam disc 52 to be a funnel (i.e., a tube or pipe).
4 Lampropoulos discloses that a "rim 44 is formed as a unitary part of [the]
shoulder 40" (Lampropoulos, col. 5, 11. 39--40) and the Examiner considers
elements"( 40, 44)" to be the claimed mounting ring (Final Action 5).
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Thus, we do not sustain the Examiner's rejection of independent
claim 1, and claims 15-18 depending therefrom, under 35 U.S.C. § 102(b) as
anticipated by Lampropoulos.
Re} ection II
Claim 2 depends from independent claim 1, and thus requires the
cover to comprise a "collar," a "mounting ring," "sloping facets," and a
"centrally disposed suspended funnel." (Appeal Br., Claims App.)
Independent claims 19 and 20 require the cover to comprise similar
components. (Id.) The Examiner finds that Lampropoulos discloses a lid
with a collar, a mounting ring, and sloping facets. (See Final Action 6.) As
discussed above, Lampropoulos's disclosure supports these findings. (See
Lampropoulos, col. 4, 11. 51-54, col. 5, 11. 3---6, 16-50; Figs. 1, 6.)
As also discussed above, Lampropoulos does not disclose a lid having
a centrally disposed suspended funnel, but instead discloses a lid having "a
circular disc 52 which is placed at the opening 47 formed in the center of
lid 14." (Lampropoulos, col. 5, 11. 3--4.) Lampropoulos's "circular foam
disc 52" is provided with slits 54 that form flaps 55 which "permit the entry
of a device such as the tip 7 4 of a syringe 72 so as to provide entry through
the circular foam member or disc 52 when injecting fluids into the interior of
receptacle 12." (Id. at col. 5, 11. 16-19; see also Fig. 2.) In other words,
Lampropoulos discloses a lid having a centrally disposed foam pad 52 for
transferring fluids from a syringe to a containment vessel below.
The Examiner finds that Pittman teaches a centrally disposed
suspended funnel; and the Examiner determines that it would have been
obvious "to combine the teachings of Pittman with the teachings of
Lampropoulos." (Final Action 6.) Pittman discloses "a receptacle for liquid
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medical wastes" having a lid 32 "that includes a planar body portion 34
having a top surface 36." (Pittman, col. 2, 11. 19--20, 59--60.) As shown in
Pittman's Figure 3 reproduced below, the body portion 34 of lid 32 "is
provided with a recess 50 which is frustroconical in cross-sectional
geometry." (Id. at col. 3, 11. 7-10.)
40
e.s so ... 3~ 3£ ~4 I
~·~~¥•>'?1.··:o·/·.·~. :4:g
••• ------------- . ~~ '· " ~''Jl:'j
M __ ? 52: "a" :Se \:54 42 ~4
Pittman discloses that "[t]his construction of the recess provides for the
ready guidance of the needle-receiving end of a syringe, for example, toward
the opening [at the bottom end 54] so that such end of the syringe may be
inserted into the opening for the expulsion of the contents of the syringe into
the interior of the vessel." (Id. at col. 3, 11. 15-19; see also Fig. 4.) In other
words, Pittman discloses a lid having a centrally disposed suspended
funnel 50 for transferring fluids from a syringe to the containment vessel
below.
Dependent claim 2 further requires the collar be "configured to
suspend the centrally disposed suspended funnel such that an apogee of the
[funnel's] mouth is disposed on a first side of a plane defined by the vessel
mounting ring and the [funnel's] exit port is disposed on a second side of the
plane defined by the vessel mounting ring." (Appeal Br., Claims App.)
Independent claim 19 (but not independent claim 20) recites a similar
limitation. (See id.) The Examiner finds that the central disposed suspended
funnel in Lampropoulos' s modified lid would have its mouth and exit port
disposed in the claimed manner, and thus its collar so configured. (See Final
Action 6.)
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The Appellants argue that an obvious combination of the teachings
of Lampropoulos and Pittman would not produce a lid in which the apogee
of the funnel's mouth is disposed on the opposite side of a plane (i.e., a
plane defined by the mounting ring) as the funnel's exit port. (See Appeal
Br. 17-19.) We are persuaded by this argument. In the Examiner's
proposed modified version of the prior art lid 14, a funnel is substituted for
the foam pad 52, as is shown schematically in our annotated version of a
dissected portion of Lampropoulos's Figure 6 below.
plane defined by
n1ounting ring is
situated son1e\vhere
in shaded area
exit port of funnel
We note that, regardless of where the location of the plane defined by the
mounting ring exactly falls within the shaded area, the apogee of the
funnel's mouth would be positioned below this plane, and thus on the same
side of this plane as the funnel's exit port.
Thus, we do not sustain the Examiner's rejection of dependent
claim 2, along with claims 3 and 5-14 depending directly or indirectly
therefrom, under 35 U.S.C. § 103(a) as unpatentable over Lampropoulos and
Pittman. Likewise, we do not sustain the Examiner's rejection of
independent claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Lampropoulos and Pittman.
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As for independent claim 20, it requires a "centrally disposed
suspended funnel," but, unlike independent claim 19, does not require the
funnel's mouth to be disposed in a particular location relative to a vessel
mounting ring. (See Appeal Br., Claims App.) Independent claim 20 does
require the step of "transferring a liquid substance to the fluid collection
container by passing the liquid substance through [the] splash retarding
cover." (Id.) The Examiner finds that this step "would be obvious during
normal use and operation" of Lampropoulos's modified lid (i.e., a lid
including a funnel instead of a pad). (See Final Action 10.)
The Appellants advance arguments which appear to be premised upon
one of ordinary skill being unable to appreciate that liquid could pass
through the funnel in Lampropoulos's modified lid. (See Appeal Br. 19--20.)
We are not persuaded by these arguments because Pittman refers specifically
to a doctor or nurse needing to "empty the liquid contents of a syringe" and
using a suspended funnel centrally disposed in a cover to do so. (Pittman,
col. 3, 11. 48-52.)
Thus, we sustain the Examiner's rejection of independent claim 20
under 35 U.S.C. § 103(a) as unpatentable over Lampropoulos and Pittman.
Rejection III
As indicated above, independent claim 19 recites a "collar" and a
"funnel." (Appeal Br., Claims App.) More specifically, independent
claim 19 recites "a collar surrounding the centrally disposed suspended
funnel the collar to suspend the centrally disposed suspended funnel." (Id.)
According to the Examiner, this is "grammatically incorrect and unclear,
rendering the claim indefinite." (Final Action 4.) The Appellants indicate
that they filed an amendment after filing their Appeal Brief "removing the
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§ 112 rejection as an issue." (Appeal Br. 5.) However, the record does not
reflect that this amendment was entered; and the Appellants do not dispute
the Examiner's determination that the presently pending version of
independent claim 19 is indefinite.
Thus, on the record before us, we must sustain the Examiner's
rejection of independent claim 19 under U.S.C. § 112, second paragraph, as
indefinite.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new
ground of rejection for independent claim 1 and dependent claims 15-18
under 35 U.S.C. § 103(a) as unpatentable over Lampropoulos and Pittman.
As discussed above, Lampropoulos discloses a splash retarding cover
for a containment vessel which differs from the claimed cover in that it
includes a foam pad 52 instead of a funnel; and Pittman discloses a splash
retarding cover for a containment vessel including a funnel 50. (See
Lampropoulos, col. 4, 11. 51-54, col. 5, 11. 3-50; Figs. 1, 6; see Pittman,
col. 2, 11. 19-20, 59-60, col. 3, 11. 8-19, Fig. 3.) Pittman's funnel 50
performs the same function as Lampropoulos's foam pad 52, namely
transferring fluids from a syringe to a containment vessel below. (See
Lampropoulos, col. 5, 11. 16-19, Fig. 2; see Pittman col. 3, 11. 15-19, Fig. 4.)
One of ordinary skill in the art could have substituted one known element
(i.e., Lampropoulos's foam pad 52) for another (i.e., Pittman's funnel 52),
and the result of the substitution would have been predictable.
As for the further features recited in dependent claims 15-18, we
adopt the Examiner's findings (see Final Action 5) that they are shown or
suggested by Lampropoulos.
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DECISION
We REVERSE the Examiner's rejection of claims 1and15-18 under
35 U.S.C. § 102(b) as anticipated by Lampropoulos.
We REVERSE the Examiner's rejection of claims 2, 3, 5-14, and 19
under U.S.C. § 103(a) as unpatentable over Lampropoulos and Pittman.
We AFFIRM the Examiner's rejection of claim 20 under U.S.C.
§ 103(a) as unpatentable over Lampropoulos and Pittman.
We AFFIRM the Examiner's rejection of claim 19 under U.S.C.
§ 112, second paragraph.
We ENTER a new rejection of claims 1 and 15-18 under 35 U.S.C.
§ 103(a) as unpatentable over Lampropoulos and Pittman.
NON-FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." 37 C.F.R.
§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in which
event the prosecution will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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