Ex Parte Hansson

Patent Trials and Appeals BoardMar 29, 2019

13522657 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/522,657 07/17/2012 Erik Hansson 22428 7590 04/02/2019 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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. 030481-0388 3503 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK HANSSON Appeal2017-006972 Application 13/522,657 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and LISA M. GUIJT, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Erik Hansson ("Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-1 7, which are all the pending claims. Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). An oral hearing, scheduled for March 19, 2019, was waived. We REVERSE. According to Appellant, the real party in interest is St. Jude Medical Coordination Center BVBA. Appeal Br. 2. Appeal2017-006972 Application 13/522,657 CLAIMED SUBJECT MATTER Appellant's disclosed invention "relates to an injection pressurizer for pressurizing an inflatable device and a method in connection thereto." Spec., p. 1, 11. 5---6. Claims 1 and 13 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. An injection pressurizer for pressurizing an inflatable device, the injection pressurizer comprising: a housing enclosing a first cavity; a plunger adapted to fit inside said housing and compnsmg: a plunger sealing unit adapted to define a second cavity inside said housing, an elongated tube defining a tube cavity, the elongated tube extending from said plunger sealing unit to an end of the plunger opposite the plunger sealing unit, said tube cavity being in fluid communication with said second cavity via an opening in said plunger sealing unit, a pressure indicating piston moveably arranged inside said tube cavity, such that the piston delimits a first volume in said tube cavity from a second volume, such that when a pressure is built up in the second volume, the piston is moved by the pressure to equalize the pressures of said first volume and said second volume, and thereby indicates the pressure in the second volume, and an end member that is (i) moveable from a location at which the end member is attached to the end of the plunger so as to seal the first volume to a location at which the first volume is in communication with ambient air outside of the plunger, and (ii) moveable from the location at which the first volume is in communication with ambient air outside of the plunger back to the location at which the end member is attached to the end of the plunger so as to seal the first volume. 2 Appeal2017-006972 Application 13/522,657 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Leibinsohn Enk Millerd us 4,064,879 us 6,086,559 US 2009/0240209 Al REJECTIONS The following rejections are before us for review: Dec. 27, 1977 July 11, 2000 Sept. 24, 2009 I. Claims 1---6, 10-13, and 16 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Enk and Millerd. Final Act. 2--4. II. Claims 7-9, 14, 15, and 17 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Enk, Millerd, and Leibinsohn. Id. at 4--5. ANALYSIS All the claims require an injection pressurizer for pressurizing an inflatable device, where the injection pressurizer includes a housing enclosing a first cavity and a plunger adapted to fit within the housing, with the plunger including a plunger sealing unit for defining a second cavity, an elongated tube defining a tube cavity, and a pressure indicating piston moveably arranged in the tube cavity and delimiting a first volume and a second volume, such that a pressure increase in the second volume moves the piston to indicate that pressure. See Appeal Br. 11-14, Claims App. All the claims also require that the plunger include an end member that is both 3 Appeal2017-006972 Application 13/522,657 "(i) moveable from a location at which the end member is attached to the end of the plunger so as to seal the first volume to a location at which the first volume is in communication with ambient air outside of the plunger," and also "(ii) moveable from the location at which the first volume is in communication with ambient air outside of the plunger back to the location at which the end member is attached to the end of the plunger so as to seal the first volume." Id. (emphasis added). As disclosed in the Specification, this moveable end member of the plunger ( which selectively seals the first volume in the tube cavity by being alternatively moveable between two locations----one in which the first volume is sealed, and one in which the first volume is open to ambient air) enables the injection pressurizer to be calibrated to the local environment where it is used. See, e.g., Spec., p. 3, 11. 10-13, p. 7, 1. 24-p. 8, 1. 14, p. 11, 11. 4--15; Figs. 3-5. More specifically, the pressure indicating piston is calibrated to the ambient air pressure of the local environment by opening the first volume in the tube cavity to ambient air in the local environment, and then sealing the first volume before injecting pressure with the injection pressurizer. See id. Independent claim 1 recites the apparatus of the injection pressurizer itself. See Appeal Br. 11, Claims App. Independent claim 13 recites a method for pressurizing that includes "providing" the same relevant structure as in claim 1, as well as "sealing" the first volume in the tube cavity ( which calibrates to ambient, as described above), and "pressing" the plunger such that the applied pressure is correctly indicated by the calibrated piston. See id. at 12-13, Claims App. 4 Appeal2017-006972 Application 13/522,657 In rejecting the independent claims, the Examiner relies on Enk for disclosing an injection pressurizer, substantially as claimed, except for a moveable end member of the plunger to selectively seal the first volume in the tube cavity. See Final Act. 2-3. These findings from Enk are generally uncontested by Appellant and appear to be supported by a preponderance of the evidence. For the moveable end member of the plunger, the Examiner turns to Millerd, and relies on plug 24 at the end of vial 14 as being such a moveable end member, reasoning that it would have been obvious "to modify the device of Enk by providing a moveable end member at the end of the plunger, as taught by Millerd, in order to seal the end in place, allowing the device to be filled and adjusted with a predetermined amount of desired fluid if needed." Id. at 3--4 (citing Millerd, Fig. 3, ,r 2). However, Appellant persuasively argues that Millerd, as relied on in the rejections, does not sufficiently disclose that plug 24 is "moveable" as recited in the claims. See Appeal Br. 7-9; Reply Br. 4--5. Even presuming, arguendo, that Millerd's medicine delivery syringe is sufficiently within the same field of endeavor as Appellant's injection pressurizer, as both devices push fluid from a chamber via pressure from a plunger, we agree with Appellant's observation that Millerd's plug 24 does not appear to be "moveable" from the end of vial 14 at all, at least not after initial attachment once vial 14 is filled with a medicine. See Appeal Br. 7; Reply Br. 4--5; see also Millerd, Figs. 2, 3, 5A---C (depicting vial 14 defining a chamber that is longitudinally constrained by plug 24 and stopper 26). Further, we discern neither a logical reason why Millerd's plug 24 would be "moveable" as recited in the claims, nor a relevant disclosure within Millerd that it would 5 Appeal2017-006972 Application 13/522,657 be "moveable" in such a way (to selectively seal a first volume by being alternatively moveable between two locations, as discussed above). Moreover, we also agree with Appellant that the Examiner's stated reasoning for combining Millerd's plug 24 with the injection pressurizer of Enk lacks a rational underpinning. See Appeal Br. 7-9; Reply Br. 4---6. Specifically, the rationale provided for incorporating Millerd's plug 24 onto the end of Enk' s plunger-namely, to "allow[] the device to be filled and adjusted with a predetermined amount of desired fluid if needed"----does not appear to have any logical connection to Enk's plunger, which (unlike the vial in Millerd) is not filled with a medicine. Final Act. 3--4; see Appeal Br. 7-9; Reply Br. 4---6. Absent a reliance on improper hindsight reconstruction, we do not see a sufficient reasoned explanation based on a rational underpinning as to why one of ordinary skill in the art would have been led to modify Enk' s plunger ( which already has a static sealing piece 2h, 2i, 2j (see Appeal Br. 8-9; see also Enk, Figs. 1-8)) by providing Millerd's plug 24 (which is not disclosed as being "moveable" as recited in the claims, as discussed above), and a reason for such a modification is not otherwise evident from the record. In short, for at least the reasons presented by Appellant regarding the distinctions between Millerd's plug 24, as relied on in the rejections, and the moveable end of the plunger in the present invention, we agree with Appellant that a proper case of obviousness has not been established. See Appeal Br. 6-9; Reply Br. 4---6. We note that Leibinsohn is relied on for disclosing additional features ( a locking mechanism to selectively secure the plunger to the housing), but 6 Appeal2017-006972 Application 13/522,657 not in any way that would cure the deficiency of the stated combination of Enk and Millerd identified above. See Final Act. 4--5. Accordingly, because the Examiner's rejections are premised on findings that are not supported by a preponderance of the evidence, and rely on a combination of prior art teachings that lacks a rational basis for its formation, we do not sustain them. DECISION We REVERSE the Examiner's decision rejecting claims 1---6, 10-13, and 16 under 35 U.S.C. Â§ 103(a) as being unpatentable over Enk and Millerd. We REVERSE the Examiner's decision rejecting claims 7-9, 14, 15, and 17 under 35 U.S.C. Â§ 103(a) as being unpatentable over Enk, Millerd, and Leibinsohn. REVERSED 7