Ex Parte Habibi-Naini et al

Patent Trials and Appeals Board

Mar 25, 2019

14119268 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/119,268 11/21/2013
22919 7590 03/27/2019
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Sasan Habibi-Naini
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.
MF-US155219 7509
EXAMINER
VOLZ, ELIZABETH J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
03/27/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SASAN HABIBI-NAINI and MARKUS SCHEUBER
Appeal2017-007102 1
Application 14/119,268
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 14--30. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 An oral hearing was held on March 19, 2019.
2 "[T]he real party in interest is Sulzer Mixpac AG." (Appeal Br. 2.)
Appeal2017-007102
Application 14/119,268
STATEMENT OF THE CASE
The Appellants' invention relates to "[ m ]ulticomponent cartridges"
that "are frequently used for storing and for dispensing multicomponent and
two-component systems." (Spec. 1, 11. 9, 13-16.)
Illustrative Claim
14. A set of multicomponent cartridges comprising:
at least a first multicomponent cartridge and a second
multicomponent cartridge, each of the first and second
multicomponent cartridges including at least one first reception
chamber and at least one second reception chamber,
each of the first and second reception chambers being
configured to dispense a component and having a substantially
cylindrical structure,
the first and second reception chambers further being
arranged parallel to one another and having a same length in the
longitudinal direction and being non-releasably connected to
one another,
each of the first reception chambers having a first outer
diameter, the first outer diameter of each multicomponent
cartridge of the set being the same, each of the second reception
chambers having an outer diameter, at least one of the outer
diameters of the second reception chambers being different
from another one of the outer diameters of the second reception
chambers such that at least two multicomponent cartridges in
the set are suitable for different mixing ratios.
Rejections
I. The Examiner rejects claims 14--23 and 27-30 under 35 U.S.C.
§ I02(b) as anticipated by Keller. 3 (Final Action 2.)
II. The Examiner rejects claims 24--26 under 35 U.S.C. § I03(a) as
unpatentable over Keller. (Final Action 5.)
3 US 2010/0102088 Al, published April 29, 2010. Our quotations from this
publication will omit the bolding of drawing-associated reference numerals.
2
Appeal2017-007102
Application 14/119,268
ANALYSIS
Claims 14 and 30 are the independent claims on appeal, with the rest
of the appealed claims (i.e., claims 15-29) depending directly or indirectly
from independent claim 14. (See Appeal Br., Claims App.)
Independent claims 14 and 3 0 set forth " [a] set of multicomponent
cartridges," with each cartridge in the set including a "first reception
chamber" and a "second reception chamber." (Appeal Br., Claims App.)
The outer diameters of the first reception chambers are the "same" for all of
the cartridges in the set; while the outer diameters of the cartridges' second
reception chambers are "different." (Id.)
For example, in the set of four multicomponent cartridges 2 shown in
the Appellants' Figure 1, reproduced below, the first reception chambers 3
have the same outer diameters, while the outer diameters of the second
reception chambers 4 decrease from left to right.
The above drawing depicts "a set of multicomponent cartridges" in a
"perspective representation." (Spec. 8, 11. 5-6.)
3
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Appeal2017-007102
Application 14/119,268
According to the Appellants, thanks to the first reception chambers 3
being "commonly sized throughout the set," the different mixing ratios of
the various multicomponent cartridges 2 in the set 1 "can be readily apparent
to the user," and "the user can conveniently identify the mixing ratio for
each cartridge." (Appeal Br. 6.)
Rejection I
The Examiner determines that Keller discloses, collectively in
Figures 2 and 12, "a set of multicomponent cartridges." (Final Action 2.)
Keller shows, in Figure 2, "a first exemplary embodiment," namely, a
"cartridge 1" with "two containers 2 and 3." (Keller ,r,r 9, 23.) Keller
shows, in Figure 12, "a further exemplary embodiment," namely, a
"cartridge 80" with "two containers 82 [and] 83." (Id. ,r,r 49, 50.)
As indicated above, independent claims 1 and 14 require the
cartridges in the set to have first reception chambers with outer diameters
that are "the same." (Appeal Br., Claims App.) The Examiner does not
point to, and we do not see, a discussion in Keller about the dimensions of
the chambers 2 and 3 in the cartridge 1 shown in Figure 2, and/or the
chambers 82 and 83 in the cartridge 80 shown in Figure 12. And, according
to the Examiner, Keller's drawings "are not to scale and cannot be measured
to determine [the] actual diameters of the chambers." (Answer 7.) As such,
there is nothing in the record indicating that, if Keller's cartridges 1 and 80
were provided in a set, the outer diameters of their first reception chambers
would be "the same" as required by independent claims 14 and 30.
We are, therefore, persuaded by the Appellants' position that the
Examiner fails to establish that Keller anticipates the multicomponent
cartridge set forth in independent claims 14 and 30. (See Appeal Br. 6.)
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Appeal2017-007102
Application 14/119,268
Thus, we do not sustain the Examiner's rejection of independent claims 14
and 30 under 35 U.S.C. § 102.
The Examiner's further findings and determinations with respect to
dependent claims 15-23 and 27-29 do not compensate for the above-
discussed shortcoming in the rejection of independent claim 14. (See Final
Action 3--4.) Thus, we also do not sustain the Examiner's rejection of
claims 15-23 and 27-30 under 35 U.S.C. § 102.
Rejection II
Dependent claims 24--26 require certain volume ratios (i.e., "two to
one," "three to one," "four to one") between the first reception chamber and
the second reception chamber for a cartridge in the claimed set of cartridges.
(Appeal Br., Claims App.) According to the Examiner, these volume ratios
are "optimum value[s]" and therefore "obvious." (Final Action 6.)
Insofar as the Examiner is saying that it would have been obvious to
modify one or both of Keller's cartridges 1 and 80 to acquire an above-listed
volume ratio, we do not necessarily disagree.
But claims 24--26 also require, via their dependence on independent
claim 14, that the cartridges in the set have first reception chambers with
"the same" outer diameters. (Appeal Br., Claims App.) The Examiner does
not find that the proposed volume-ratio modifications would result in
Keller's so-modified cartridges having first reception chambers with the
same outer diameters. And the Examiner offers us no other reasoning as to
why one of ordinary skill in art would additionally or alternatively modify
Keller's cartridges to achieve this outer-diameter sameness.
We are, therefore, persuaded by the Appellants' position that the
Examiner fails to establish that the set of multicomponent cartridges set forth
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Application 14/119,268
in dependent claims 24--26 would have been obvious over Keller. (See
Appeal Br. 13-14.) Thus, we do not sustain the Examiner's rejection of
claims 24--26 under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's rejections of claims 14--30.
REVERSED
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