Ex Parte Hunt

Patent Trial and Appeal Board

Apr 20, 2016

10946251 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/946,251 09/21/2004 JillM. Hunt
20306 7590 04/21/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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.
07-2136 7347
EXAMINER
GILBERT, ANDREW M
ART UNIT PAPER NUMBER
3763
MAILDATE DELIVERY MODE
04/21/2016 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 JILL M. HUNT
Appeal2014--002466
Application 10/946,251 1
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jill 1\1. Hunt (ii .. ppellant) seeks our revie\v under 35 U.S.C. § 134 of
the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims 1-3, 5,
and 9-14 as unpatentable over either Koehnke (US 6,050,432, iss. Apr. 18,
2000) and Iscovich (US 5,647,670, iss. July 15, 1997), or Lafond (US
6,328,082 B 1, iss. Dec. 11, 2001) and Iscovich; and of claims 4, 6-8, 15, and
16 as unpatentable over either Koehnke, Iscovich, and Clark (US 5,511,883,
iss. Apr. 30, 1996), or Lafond, Iscovich and Clark.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Medela Holding AG.
Appeal Br. 1.
2 Claims 17-28 were canceled and claims 29-37 were withdrawn. Id.
Appeal2014--002466
Application 10/946,251
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent claims. Claim 1 is reproduced below
and illustrates the claimed subject matter.
1. An improved bag for use in combination with a
breastpump;
a breastpump having an outlet through which milk travels and
structure above the outlet;
a bag formed of material having an interior defined within said
bag to form a liquid containing portion, and defining an opening to
said bag;
an elongated attachment element including first and second
ends, said first end being attached to one side of said bag adjacent said
opening of said bag and said second end being releasably attachable to
another side of said bag, wherein said another side is positioned
opposite said one side, and adjacent said opening of said bag so as to
form a loop that spans said bag opening from said one side to said
another side, said attachment element being sized and shaped to
support said bag from said breastpump structure by said loop and
suspend said bag under and in close proximity to said outlet to receive
milk therefrom.
ANALYSIS
Obviousness of claims 1-3, 5, and 9-14 over either Koehnke and
Iscovich, or Lafond and Iscovich
Appellant argues claims 1-3, 5, and 9-14 together in contesting the
rejection of these claims as obvious over either Koehnke and Iscovich, or
Lafond and Iscovich. See Appeal Br. 4--9 and Reply Br. 3-5. We select
claim 1 as the representative claim for this group, and the remaining claims
stand or fall with claim 1. See 37 C.F.R. 41.37(c)(l)(iv).
While relying on Koehnke for teaching "a flexible bag (30) for use
with a breast pump (10), wherein the bag has an interior and an opening for
communication with the outlet of the breast pump (Fig 1 ), as well as a
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Application 10/946,251
resealable seal closure (36)," the Examiner looks to lscovich for teaching
"the use of a strap with one end permanently fixed to the bag and the other
end attachable to another opposite side of the bag to form a loop section that
spans from one side to the other." Final Act. 4. Based on the foregoing, the
Examiner reasons, inter alia, that "[i]t would have been obvious ... to use
the strap of Iscovich with the bag of Koehnke for the purpose of suspending
the bag in the location around the fluid outlet of the pump such that the bag
may easily receive fluids from the outlet when suspended." Id. at 5.
The Examiner also looks to Lafond for teaching "a flexible bag ( 108)
for use with a breast pump (Fig 4c ), wherein the bag has an interior and an
opening for communication with the outlet of the breast pump (Fig 4c) and
is held to the breast pump during pumping by tie-able straps (130, 132)," and
further relies on Iscovich for the same reasons stated supra. Final Act. 6-7.
Based on the foregoing, the Examiner reasons, inter alia, that "[i]t would
have been additionally obvious ... to use the strap of Iscovich with the bag
of Lafond[] for the purpose of suspending the bag in the location around the
fluid outlet of the pump such that the bag may easily receive fluids from the
outlet when suspended." Id. at 7.
While acknowledging that "Koehnke states that the fastener 'may be
used to tighten container 30 about fluid dispensing port 12 of breast pump
10, '" (citing Koehnke, col. 4, 11. 4---6), Appellant contends that because
"[t]here is no mention of hands-free suspension in Koehnke," that "Koehnke
is nothing more than a bag under a breastpump outlet." Appeal Br. 4--5.
Regarding Lafond, Appellant contends that "Lafond uses a twist-tie that
serves to wrap and tighten a bag around its neck," but that "tightening the
container is not the same as hands-free suspension," and for that reason.
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Application 10/946,251
"Lafond, like Koehnke, is nothing more than a bag under a breastpump
outlet." Id. at 5.
However, the Examiner correctly points out that "the features upon
which [Appellant] relies (i.e., hands-free suspension) are not recited in the
rejected claim(s)," while also observing that "[A]ppellant has recognized on
the record that both Koehnke and Lafond teach a bag under and in close
proximity to a breastpump outlet to receive milk therefrom." Ans. 2-3. As
we are instructed by our reviewing court, "limitations are not to be read into
the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir. 1989)).
Appellant continues by arguing "the straps in Iscovich do not have the
same features as the strap recited in independent Claims 1 and 9 ," because
"[t]he only strap contemplated in Iscovich is one where the ends attach such
that the loop formed does not span the bag opening to support and suspend
the bag under an outlet of a breastpump to receive a fluid (such as milk)
from the outlet." Appeal Br. 6 ..
Again, the Examiner has the better position, pointing out that "[t]he
first and second strap ends [of Iscovich] are releasably attached on opposite
sides of the bag, i.e. 180 degrees from another when the bag is opened as
illustrated in annotated Fig 1," thus "clearly disclos[ing] the recitations of
the strap, including ' [to form] a loop [that] spans said bag opening from said
one side to said [an]other side,"' as recited by claim 1. Ans. 4--5. See
Appeal Br. 11, Claims App.
Appellant also contends that "[i]f the bag in Iscovich were to be
suspended from a breastpump structure using the Iscovich attachment
element, the bag would tilt away from the outlet because the Iscovich loop
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Application 10/946,251
would not properly support the bag." Appeal Br. 6-7; see also Reply Br. 5.
Appellant's contention amounts to unsupported attorney argument, and thus
is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (holding that arguments and conclusions unsupported by
factual evidence carry no evidentiary weight). Moreover, the Examiner
explains, "the proposed modification as set forth in the Final Rejection does
not involve the bag of Iscovich," but is based on "the openings of the bags of
Koehnke and Lafond [that] would be placed under and in close proximity to
the breastpump outlet to receive milk therefrom." Ans. 7. Thus, Appellant is
simply attacking Iscovich in isolation for lacking support of findings not
relied upon by the Examiner, rather than addressing the Examiner's
proposed combinations of either Koehnke and Isovich or Lafond and
Iscovich. Nonobviousness cannot be established by attacking references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant further contends that "[t]here is no motivation in Iscovich to
provide a strap configuration that would suspend the bag under an outlet in
the manner recited in Claims 1 and 9," since Iscovich "only discusses and
shows propping its bag against a wearer's chest and wrapping the strap
around the wearer's neck (see the straps 14 located under a plastic
reinforcing strip 1 7, providing for proper placement when the bag is propped
up against a wearer's chest)." Reply Br. 5; see also Appeal Br. 6-7.
Although Figure 1 of Iscovich illustrates "wrapping [strap 14] around
a wearer's neck," we cannot determine from Figure 1 oflscovich that
Iscovich's bag is "[propped] against [the] wearer's chest" or that "strap[] 14
[of Iscovich is] located under a plastic reinforcing strip 17." See Reply Br.
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5; see also Appeal Br. 6-7; lscovich, Fig. 1; Hockerson-Halberstadt, Inc. v.
Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Nor has
Appellant directed us to any discussion in Iscovich regarding Iscovich' s bag
being "[propped] against [the] wearer's chest" or "strap[] 14 [oflscovich
being] located under a plastic reinforcing strip 17." See Reply Br. 5; see
also Appeal Br. 6-7; Iscovich, col. 2, 11. 43--45, col. 3, 11. 2--4. 3 Appellant
has not provided any persuasive factual evidence or technical reasoning that
the Examiner's proposed modification of either Koehnke' s device or
Lafond's device with the teachings of Iscovich would have been beyond the
level of ordinary skill in the art or unpredictable to a person of ordinary skill
in the art. See Reply Br. 5; see also Appeal Br. 6-7; Ans. 5-8; KSR
International Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Neither has Appellant provided any persuasive evidence or argument
sufficient to show that the proposed modification would have been more
than a predictable use of the prior art elements according to their established
functions. "The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. "If a person of ordinary skill can implement a
predictable variation,§ 103 likely bars its patentability." Id. at 417.
Appellant next asserts that Iscovich is not analogous art, contending
that "[Appellant's] bag is for use with a breast pump, to receive milk," while
3 Iscovich discloses that (l)"[t]he bag 10 preferably has a strap 14 for
affixing the bag to the body of a user"; and (2) "[t]he strap 14 may be
conveniently used to hang the bag around the neck 15 of a patient for the
collection of emesis (not shown)." Iscovich, col. 2, 11. 43--45, col. 3, 11. 2--4,
respectively (emphasis omitted); see also id. at Fig. 1.
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"lscovich has nothing to do with a breastpump or with receiving milk."
Appeal Br. 8. Whether a reference in the prior art is "analogous" is a fact
question. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010)
(citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). Our reviewing court
has provided two criteria useful in finding whether art is non-analogous: "(1)
whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Comaper Corp. v. Antee,
Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010).
One determines whether a prior art reference is within the same field
of endeavor as the subject matter of a claim by comparing the structure and
function of the subject matter recited in the claim to that of the subject
matter disclosed in the reference. In re Bigio, 381F.3d1320, 1326 (Fed.
Cir. 2004). Furthermore, the Supreme Court's decision in KSR directs us to
construe the scope of analogous art broadly, stating that "familiar items may
have obvious uses beyond their primary purposes, and a person of ordinary
skill often will be able to fit the teachings of multiple patents together like
pieces of a puzzle." Id. at 402.
The Examiner explains that "Iscovich teaches the benefits of utilizing
a strap that spans the opening and can support the receptacle near the fluid
dispensing outlet, i.e. user's mouth," and that "[s]uch a teaching is directly
applicable to the problem of Koehnke and Lafond as the strap provides a
benefit of supporting the milk receiving bag near the fluid dispensing outlet,
i.e. the pump's milk outlet, without the use of another supporting structure,
such as a user's hands." Ans. 9. We agree.
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Application 10/946,251
For the foregoing reasons, we sustain the rejections of claims 1-3, 5,
and 9-14 as unpatentable over either Koehnke and Iscovich, or Lafond and
Iscovich.
Obviousness of claims 4, 6--8, 15, and 16 over either Koehnke.
Iscovich, and Clark, or Lafond, Iscovich, and Clark
The Examiner looks to Clark for teaching "a tear line (16) for opening
the bag and adhesive hanging tab adhesively (24) secured to both sides of
the bag," Final Act. 5-7 (citing Clark, col 2, 11. 22-24); Ans. 12. Appellant
contends that "Clark was cited merely to teach a hang-tab on a bag, where
the hang-tab secures a closed and folded bag," and again argues that "the
combination of Koehnke and Iscovich or Lafond and Iscovich fails to teach
the strap for use with a bag in the manner as recited in [claims 4, 6-8, 15,
and 16]," concluding that the claims "are allowable for at least the reason
that they depend from allowable Claims 1 and 9." Appeal Br. 9; Reply Br.
6.
We are not persuaded of any deficiencies in the combinations of either
Koehnke and Iscovich, or Lafond and Iscovich, with respect to independent
claims 1 and 9. Thus, we sustain the Examiner's rejection of dependent
claims 4, 6-8, 15, and 16 for the same reasons stated above in sustaining the
rejections of independent claims 1 and 9 over either Koehnke and Iscovich,
or Lafond and Iscovich.
DECISION
We AFFIRM the Examiner's rejections.
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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). See 37 C.F.R.
§ 1.136(a) (1 )(iv).
AFFIRMED
9