Ex Parte Han de Man et al

Patent Trial and Appeal Board

Feb 28, 2018

12912241 (P.T.A.B. Feb. 28, 2018)

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.
12/912,241 10/26/2010 Eelco Han de Man 70413-USCIPP2 1701
147365 7590 03/02/2018
Silaan Disinensiina SJvstp.ms
EXAMINER
501 South 5th Street, 3rd Floor
Richmond, VA 23219-0501
MELARAGNO, MICHAEL
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
patent@barjos.com
devin.jensen @ silgandispensing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EELCO HAN DE MAN and STEFAN KOSTER
Appeal 2017-000968
Application 12/912,241
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’
rejections of claims 1—4, 15, and 17—25. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify the real party in interest as “MeadWestvaco
Calmar Netherlands B.V.” (Appeal Br. 3.)
Appeal 2017-000968
Application 12/912,241
STATEMENT OF THE CASE
“Embodiments” of the Appellants’ invention “relate to pump devices
and more particularly, to pump devices utilizing a bellow mechanism for
operating a pump device.” (Spec. 12.)
Illustrative Claim
1. A valve for a pump, comprising:
a valve stem;
an outlet valve at a first end of the valve stem;
a flexible valve disc on the valve stem end opposite the outlet
valve;
at least one valve rim positioned on the valve disc on a side
opposite the outlet valve; and wherein the valve stem,
outlet valve, valve disc, and at least one valve rim are a
single, molded component.
References
Glegg US 2,888,034
Struth US 4,798,226
Lee US 5,524,795
Stem US 5,730,327
Weber US 2002/0074359 A1
Hatton US 2005/0087555 A1
Han de Man US 8,998,591 B2
May 26, 1959
Jan. 17, 1989
June 11,1996
Mar. 24, 1998
June 20, 2002
Apr. 28, 2005
Apr. 7,2015
Rejections
I. The Examiner rejects claims 1 and 2 under 35 U.S.C. § 103(a)
as unpatentable over Lee and Stmth. (Final Action 3.)
II. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Stmth, and Hatton. (Final Action 4.)
III. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Stmth, and Weber. (Final Action 4.)
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Application 12/912,241
IV. The Examiner rejects claims 15, 17, 18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Lee, Glegg, and Weber. (Final Action 5.)
V. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Glegg, Weber, and Struth. (Final Action 7.)
VI. The Examiner rejects claims 21 and 22 under 35 U.S.C.
§ 102(b) as anticipated by Lee. (Final Action 2.)
VII. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Lee and Weber. (Final Action 6.)
VIII. The Examiner rejects claims 24 and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Lee and Stem. (Final Action 6.)
IX. The Examiner rejects claim 1 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 1 of
Han de Man. (Final Action 9.)
X. The Examiner rejects claim 2 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of
Han de Man. (Final Action 9.)
XI. The Examiner rejects claim 3 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of
Han de Man. (Final Action 9.)
XII. The Examiner rejects claim 15 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 10 of
Han de Man. (Final Action 9.)
XIII. The Examiner rejects claim 18 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 8 of
Han de Man. (Final Action 10.)
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Application 12/912,241
XIV. The Examiner rejects claim 19 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of
Han de Man. (Final Action 10.)
XV. The Examiner rejects claim 20 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 2 of
Han de Man. (Final Action 10.)
XVI. The Examiner rejects claim 21 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 10 of
Han de Man. (Final Action 10.)
XVII. The Examiner rejects claims 24 and 25 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claim 6
of Han de Man. (Final Action 11.)
ANALYSIS
Claims 1,15, and 21 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2-4, 17—20, and 22—25) depending
therefrom. (See Appeal Br., Claims App.) Independent claim 1 recites a
“valve for a pump” comprising elements (i.e., a “valve stem,” an “outlet
valve,” a “valve disc,” and a “valve rim”) that are “a single molded
component.” (Id.) Independent claims 15 and 21 recite a “pump device”
comprising a “molded valve,” a “base,” and a “bellow.” (Id.)
Independent Claim 1
The Examiner’s obviousness rejection of independent claim 1
(Rejection I) relies upon Lee to disclose a valve comprising a stem, an outlet
valve, a disc, and a rim. (See Final Action 3.) Lee discloses a doubled
headed valve 16 having a stem 22, a cone-shaped valve 18 on the stem’s
upper end, and a ball valve 20 at the stem’s lower end. (See Lee, col. 3,
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Application 12/912,241
11. 26-42, Figs. 2, 4, 6.) The Examiner considers the “planar surface” of
Lee’s valve 18 to be the claimed “valve disc.” (Final Action 3.)
Independent claim 1 further requires the valve disc to be “a flexible
valve disc.” (Appeal Br., Claims App.) Lee specifies that its “dual valving
(18, 20, 22)” is made of “thermo-plastic” (Lee, col. 4,11. 65—66), but does
not say whether its valve disc is flexible or not. However, the Examiner
determines that it would have been obvious, in view of the teachings of
Struth, to “manufacture the valve from a flexible, resilient material in order
to generate the tensile or compressive forces required to close off the inlet
and outlet apertures.” (Final Action 3.)
The Appellants advance arguments premised upon the applied prior
art failing to provide precise teachings that Lee’s valve elements could be
manufactured from a flexible, resilient material. (See Appeal Br. 9.)2 For
example, the Appellants contend that “nowhere in Lee is there any
indication that Lee’s valve may be made using a ‘flexible’ material” and
“[njothing” in Lee indicates that its valve 18 “could be made of a different
material.” (Id. at 10.) Thus, according to the Appellants, no reason “exists”
in the record “as to why” one of skill in the art would make the modification
proposed by the Examiner. (Id.)
We are not persuaded by these arguments because the Examiner “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim” as “the inferences and creative steps that a person of
2 As for the Appellants’ argument implicating that the Examiner’s rejection
entails the substitution of “a random component from Struth” into Lee’s
doubled-headed valve (see Appeal Br. 9), the Examiner has clarified that the
rejection involves no such bodily incorporation (see Advisory Action mailed
December 3, 2015).
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Application 12/912,241
ordinary skill in the art would employ” can be taken into account. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, Struth teaches that
valve elements can be “conveniently made entirely of resilient material” and,
when so made, can “generate the tensile or compressive forces required to
close off [] inlet and outlet apertures.” (Struth, col. 1,11. 35—41.) In Lee’s
device, valve 18 “seats on seat 40” to “prevent[] fluids from escaping from
within [a] dispenser nipple [12].” (Lee, col. 3,11. 39-41.) In other words,
Lee’s valve 18 is used to close off an aperture and Struth teaches that this
can be accomplished via valve elements made of resilient material. We
agree with the Examiner that one of ordinary skill, armed with this
knowledge, would infer that Lee’s valve elements could be manufactured
from a resilient material.
The Appellants also advance arguments that appear to attack the
Examiner’s “alleged motivation” for manufacturing Lee’s valve elements
from a flexible material. (Appeal Br. 10.) For example, the Appellants
contend that there is no evidence in the record that “the Lee device does not
work” and there is no evidence in the record that Lee’s device “could be
improved with a ‘flexible’ valve.” {Id. at 9.) The Appellants also assert that
“[t]here is no discussion of the ‘tensile or compressive forces’ required for
the Lee device so one of skill in the art would not know if the material of
Struth would work with Lee.” {Id. at 10.)
We are not persuaded by these arguments because the Examiner finds
that “Struth explains the benefits of using a flexible material in the
construction of valves of similar shape and function as Lee in order to
generate the tensile or compressive forces required to close off and enhance
the sealing of inlet and outlet apertures.” (Answer 2.) The Appellants do
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Application 12/912,241
not file a Reply Brief disputing these findings of the Examiner, and they
therefore stand unchallenged. As such, the record before us establishes that
one of ordinary skill would have recognized that the modified version of
Lee’s valve would “work” and that improvements (e.g., enhanced sealing)
could be realized by such a modification.3
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103(a).
The Examiner’s double-patenting rejection of independent claim 1
(Rejection IX) relies upon claim 1 of Han de man “compris[ing] all of the
limitations of the instant claim” including a “valve stem,” an “outlet valve,”
a “valve disc,” and a “rim.” (Final Action 9.) However, as discussed above,
independent claim 1 requires these valve elements to be “a single, molded
component.” (Appeal Br., Claims App.) As pointed out by the Appellants,
claim 1 of Han de man does not recite this limitation (see id. at 13); and the
Examiner articulates no reason why such a molded valve would have been
obvious thereover.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 on the ground of non-statutory double-patenting.
Independent Claim 15
The Examiner’s obviousness rejection of independent claim 15
(Rejection IV) relies upon Lee to disclose a pump comprising a valve, a
3 Although the Appellants assert in the Appeal Brief that “[t]he valves in the
two references operate in a different manner with different component parts
which are required for each device to operate effectively” (Appeal Br. 9), the
Examiner’s unchallenged finding of similar shapes and functions (see
Answer 2) adequately refutes this assertion.
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Application 12/912,241
base, and a bellow. (See Final Action 5.) Lee’s dual-headed valve 16 is
situated with a container 12 and, when the container’s walls are squeezed,
fluid exits through an opening 23. (See Lee, col. 4,11. 27—33, Fig. 6.) The
Examiner considers Lee’s container 12 to form both the claimed “base,” and
the claimed “bellow.” (Final Action 5.)
Independent claim 15 further requires the bellow to be “a domed
bellow.” (Appeal Br., Claims App.) Lee’s container 12 has a cylindrical
shape (see Lee Fig. 3) and, therefore, the container’s to-be-squeezed walls
do not have a dome shape. The Examiner determines that it would have
been obvious, in view of the teachings of Weber “to choose a domed shape
for the bellows” that can be compressed “in the event that the hands of the
user are not free.” (Final Action 5—6.)
The Appellants argue that “[njothing exists in the record” that would
lead one of ordinary skill “to modify Lee to include an additional part,” i.e.,
a “domed bellow,” or to alter the shape of Lee’s container 12. (Appeal
Br. 11.) The Appellants also argue that “the ‘domed bellow’ of Weber may
not be easily combined with Lee absent significant alteration and redesign of
Lee.” (Id.) According to the Appellants, there is no teaching “to guide one
of skill in the art to combine the references.” (Id.)
We are not persuaded by these arguments because Lee discloses a
cylindrical container that is squeezed to change the volume of, and the
pressure conditions in, the container’s interior chamber. (See Lee, col. 4,
11. 28-40.) Weber teaches that such a change in volume/pressure can
likewise be accomplished with a domed bellow. (See Weber | 8.) Weber
also provides guidance as to how a domed bellow can be retained on a
cylindrical container (e.g., tube 10) via a holding ring 12 and a sleeve 16.
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(See id. Ull, 26, Figs. 1—4.) These teachings in the prior art would
sufficiently lead and guide one of ordinary skill in the art towards the
Examiner’ proposed modification.
Thus, we sustain the Examiner’s rejection of independent claim 15
under 35 U.S.C. § 103(a).
The Examiner’s double-patenting rejection of independent claim 15
(Rejection XII) relies upon claim 10 of Han de man “compris[ing] all of the
limitations of the instant claim” including a “valve,” a “base,” and a
“bellow.” (Final Action 9.) However, as indicated above, independent
claim 15 requires a “molded valve.” (Appeal Br., Claims App.) As pointed
out by the Appellants, claim 10 of Han de man does not recite this limitation
(see id. at 13); and the Examiner articulates no reason why such a molded
valve would have been obvious thereover.
Thus, we do not sustain the Examiner’s rejection of independent
claim 15 on the ground of non-statutory double-patenting.
Independent Claim 21
The Examiner’s anticipation rejection of independent claim 21 relies
upon Lee to disclose a pump comprising a valve, a base, and a bellow. (See
Final Action 2.) As discussed above, the Examiner considers Lee’s
container 12 to form both the claimed “base,” and the claimed “bellow.”
(Final Action 5.)
The Appellants advance arguments premised upon independent
claim 21 requiring the bellow to be “separate” from the base. (Appeal
Br. 7.) The Appellants point out that independent claim 21 “specifically
recites ‘a unitary molded base, comprising:’ a list of elements and ‘a bellow’
in communication with the base.” (Id.) According to the Appellants, had
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they “intended to claim that the ‘bellow’ was part of the ‘unitary molded
base,’ then ‘a bellow’ would have been included in the list of elements
following the ‘comprising’ language.” (Id.)
We are not persuaded by these arguments because we construe
independent claim 21 as neither necessitating nor precluding the bellow
from being integrally formed with the unitary molded base, or the listed
elements thereof. While independent claim 21 requires the listed elements
of the base to be part of the unitary molded structure, independent claim 21
does not prohibit this unitary molded structure from including other parts.
Independent claim 21 only requires the bellow to be “in communication with
at least a portion of the interior chamber of the base.” (Appeal Br., Claims
App.) And the Appellants do not assert that such communication would not
occur if the bellow was integrally formed with the base and/or the listed
elements thereof.
Independent claim 21 additionally recites that the outlet valve “seats
against [a] discharge passage” and an adapter “abuts” the valve rim.
(Appeal Br., Claims App.) The Examiner finds that in Lee’s pump device,
the valve elements seat/abut in this manner. (See Final Action 2.) When
Lee’s dispenser is in an upright position, its outlet valve (ball valve 20) seats
against a discharge passage (passage leading to opening 23). (See Lee,
col. 4,11. 28—31, Lig. 2.) And when Lee’s dispenser is turned upside down,
its valve rim (rim of valve 18) seats against an adapter (connector 26). (See
id., col. 4,11. 38-41, Lig. 7.)
The Appellants advance arguments premised upon independent
claim 21 specifying that the recited seating/abutting conditions occur “at one
time.” (Appeal Br. 8.) The Appellants contend that “[t]he claim language
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clearly indicates that these conditions exist simultaneously” and [tjhere is no
language in the claims that would lead one of skill in the art to believe that
they do not occur simultaneously.” (Id.) And, according to the Appellants,
“in Lee, such simultaneous contact does not exist and in fact, such contact is
mutually exclusive.” (Id.)
We are not persuaded by these arguments because independent
claim 21 does not specify that the “seating” and “abutting” conditions occur
at any identified valve position, much less at the same one. Indeed,
independent claim 21 does not even specify that the valve structure is
movable relative to the recited seating/abutting structure. That being said,
construing independent claim 21 to only read on a pump device when the
recited seating/abutting actually occurs, would be inconsistent with the
Specification, as it clearly conveys that valve movement changes
seating/abutting relationships. (See Spec. Tflf 87—92.) As such, we construe
independent claim 21 as requiring the structure of the claimed components
to allow the recited seating and abutting to occur sometime, but not
necessarily at the same time, during valve movement.
Thus, we sustain the Examiner’s rejection of independent claim 21
under 35 U.S.C. § 102(b).
The Examiner’s double-patenting rejection of independent claim 21
(Rejection XVI) relies upon claim 10 of Han de man “compris[ing] all of the
limitations of the instant claim” including a “valve,” a “base,” and a
“bellow.” (Final Action 10.) However, as indicated above, independent
claim 21 requires a “molded” valve. (Appeal Br., Claims App.) As pointed
out by the Appellants, claim 10 of Han de man does not recite this limitation
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(see id. at 13); and the Examiner articulates no reason why such a “molded
valve” would have been obvious thereover.
Thus, we do not sustain the Examiner’s rejection of independent
claim 21 on the ground of non-statutory double-patenting.
Dependent Claims
As for the Examiner’s rejections of the dependent claims on prior art
grounds (Rejections I—VIII), the Appellants state that the dependent claims
“fall with their independent claims.” (Appeal Br. 11.) As discussed above,
the Appellants do not establish that the Examiner errs in rejecting the
independent claims on appeal on prior art grounds.
Thus, we sustain the Examiner’s rejections of dependent claims 2—4,
17-20, and 22-25 under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
As for the Examiner’s rejections of the dependent claims due to
alleged double patenting (Rejections X, XI, XIII—XV, and XVII), these
claims require, by virtue of their dependency, a “molded” valve. (See
Appeal Br., Claims App.) This limitation does not appear in any of the cited
claims in Han de man (e.g., claims 1—3, 8, and 10); and the Examiner
articulates no reason why such a molded valve would have been obvious
thereover. (See Final Action 9—11.)
Thus, we do not sustain the Examiner’s rejections of dependent
claims 2, 3, 18—20, 24, and 25 on the ground of non-statutory double­
patenting.
DECISION
We AFFIRM the Examiner’s rejections of claims 1—4, 15, and 17—25
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
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Application 12/912,241
We REVERSE the Examiner’s rejections of claims 1—3, 15, 18—21,
24, and 25 on the ground of non-statutory double patenting.
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
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