Ex Parte Hamann

Patent Trial and Appeal BoardOct 10, 2017

12765051 (P.T.A.B. Oct. 10, 2017)

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. 12/765,051 04/22/2010 Curtis P. Hamann 507599 8618 53609 7590 01/12/2018 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER NGUYEN, HUONG Q ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 01/12/2018 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CURTIS P. HAMANN Appeal 2016-008205 Application 12/765,051 Technology Center 3700 Before FRANCISCO C. PRATS, TAWEN CHANG, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requested rehearing of the Board’s Decision entered October 12, 2017, to the extent it entered new grounds of rejection for claims 1 and 12 under 35 U.S.C. § 102(b) over Kurokawa1.2 Appellant’s request is GRANTED and the aforementioned rejection is WITHDRAWN. 1 U.S. Patent 4,158,359 (issued June 19, 1979) (“Kurokawa”). 2 A new ground of rejection was also made for claims 28—37 under 35 U.S.C. § 112, second paragraph. Appellant subsequently filed an amendment to claim 28 (see Amendment dated Dec. 12, 2017), which the Examiner entered and indicated overcame the indefiniteness rejection (see Advisory action dated Dec. 28, 2017). Appeal 2016-008205 Application 12/765,051 Appellant contends “the Board misapprehended or overlooked the limitations of claims 1 and 12 that require the ridge and reservoir to include the same absorbent material.” Req. Reh’g 2. For convenience, we reproduce independent claims 1 and 12 below (emphasis added): 1. A single piece epicutaneous test chamber comprising: a reservoir having an inner surface formed of an absorbent material, and a ridge for contacting a test surface, the ridge surrounding the reservoir; wherein the reservoir and ridge are one continuous piece formed of the same material. 12. An epicutaneous test chamber comprising: a reservoir; and a ridge surrounding the reservoir; wherein the reservoir and the ridge are entirely integrally formed of a multilayer material including at least one absorbent layer and at least one barrier layer. Regarding claim 1, Appellant argues: claim 1 does not recite that the reservoir contains an absorbent material or that an absorbent material is provided on the inner surface of the reservoir. Instead, claim 1 specifically requires that the reservoir itself have an inner surface formed of an absorbent material, i.e., the actual physical structure of the reservoir incorporates the absorbent material. Id. at 3. Appellant also argues: Further, with respect to claim 1, “the reservoir and ridge are one continuous piece formed of the same material.” Given that the reservoir has an inner surface made of an absorbent material and 2 Appeal 2016-008205 Application 12/765,051 that the ridge is formed of the same material as the reservoir, the ridge must also incorporate the absorbent material. Id. We agree with Appellant’s former statement and not the latter. But, this agreement is sufficient to conclude the outstanding rejection should be withdrawn. Having considered Appellant’s position that claim 1 should be interpreted such that the claimed “absorbent material” must be an integral part of the structure defining the claimed reservoir, we conclude that the plain language of the claim and the disclosure in the Specification support this position. The Specification generally describes a laminate-type, multilayer structure that forms the test chamber of the invention. See, e.g., Spec. 13—16, 18, 21, 24—29, 31, Figs. 2, 4, 5. More specifically, we note the Specification states, “the test chamber 104 according to embodiments of the present invention is a single piece device, unlike prior test chambers which are an assembly of a separate base piece and a separate wall piece, or an assembly of a separate chamber piece and a separate filter paper piece, etc.” Id. 1 56 (emphasis added). Based on this description in the Specification, in agreement with the Appellant’s position, we conclude that the claimed absorbent material must be an integral part of the reservoir structure and cannot be a separable component, e.g., a separate piece of paper. However, neither the plain language of the claim nor the Specification’s disclosure supports Appellant’s position regarding claim 1 that the claimed absorbent material necessarily extends to or over the claimed ridge. For example, in a hypothetical prior art product, if a respective absorbent material was provided only as an integrally formed, 3 Appeal 2016-008205 Application 12/765,051 inner surface of a reservoir, without also extending over a ridge, such an absorbent material would still form an inner surface of the reservoir and would also be part of the one continuous piece forming the reservoir and ridge. Such a configuration would not prevent such a prior art product from disclosing the limitations of claim 1. As argued by Appellant, Kurokawa discloses that its porous sheet 9 is merely “placed in the inside space 5 of the tray 1”; thus, while it is reasonably identified as an inner surface of the reservoir, the porous sheet 9 is not an integral part of the structure defining the reservoir. Kurokawa 2:62—63. Therefore, we conclude that Kurokawa does not anticipate claim 1 and withdraw the anticipation rejection with respect to this claim. Regarding claim 12, Appellant argues “claim 12 requires that ‘the reservoir and the ridge are entirely integrally formed of a multilayer material including at least one absorbent layer and at least one barrier layer.’” Req. Reh’g 4. Appellant cites as support the description of Figure 2 in the Specification, which states that “the multilayer material 132 includes an absorbent layer 112 and a barrier layer 116.” Id. Appellant argues that, in contrast, “Kurokawa does not disclose any similar structure. Instead, . . . Kurokawa at best discloses that the ridge (sealing member 4) and the reservoir (inner space 5) are made of the same material, but this material is not a multilayer material and does not include an absorbent layer.” Id. Appellant’s argument is persuasive. The plain language of claim 12 requires that both the reservoir and ridge consist of (“are entirely integrally formed of’ (emphasis added)) a multilayer structure, which has at least one absorbent layer and at least one barrier layer. The claim language, in view 4 Appeal 2016-008205 Application 12/765,051 of the disclosure of the Specification discussed above with respect to claim 1, requires that an absorbent layer is an integral part of the reservoir structure and, here, also requires that the ridge structure includes this absorbent layer (i.e., the ridge is entirely formed of the multilayer). Kurokawa does not disclose that its reservoir and ridge structures include an integral absorbent layer and, for this reason, we withdraw the rejection as to claim 12. DECISION The anticipation rejection of claims 1 and 12 over Kurokawa is withdrawn. GRANTED 5