Ex Parte McKendry

Patent Trial and Appeal BoardAug 29, 2013

11724815 (P.T.A.B. Aug. 29, 2013)

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. 11/724,815 03/15/2007 Bruce P. McKendry 10798 on Appeal 3356 36493 7590 08/30/2013 R. MICHAEL WEST LAW OFFICES OF R. MICHAEL WEST 1922 21ST STREET SACRAMENTO, CA 95811 EXAMINER DUKE, EMMANUEL E ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 08/30/2013 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 BRUCE P. McKENDRY ________________ Appeal 2011-010764 Application 11/724,815 Technology Center 3700 ________________ Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and RICHARD E. RICE, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1 decision rejecting claims 1-20. The Examiner rejects under 35 U.S.C. 2 § 103(a) (2010) claims 1-4, 7-10, 13, 16 and 18 as being unpatentable over 3 McKendry (US 6,974,439 B1, issued Dec. 13, 2005), Foley (US 6,910,594 4 B2, issued Jun. 28, 2005) and Lemme (US 2005/0074342 A1, publ. Apr. 7, 5 2005); claims 5, 11 and 17 as being unpatentable over McKendry, Foley,6 1 The Appellant identifies the real party in interest as L. Jason Clute. Appeal 2011-010764 Application 11/724,815 2 Lemme and Scanlan (US 5,121,590, issued Jun. 16, 1992); and claims 6, 12, 1 14, 15, 19 and 20 as being unpatentable over McKendry, Foley, Lemme and 2 Groux (US 6,207,213 B1, issued Mar. 27, 2001). We have jurisdiction 3 under 35 U.S.C. § 6(b). 4 We REVERSE. 5 Claims 1, 7, 13 and 18 are independent. Claims 1 recites: 6 1. A method for storing expressed human 7 breast milk comprising the steps of: 8 a. obtaining a quantity of human breast 9 milk; 10 b. transferring said quantity of milk into a 11 rigid container having an open, upper end, until a 12 volume of said container is at least partially filled 13 with milk, leaving an airspace in said container 14 above an upper surface of said milk, said airspace 15 extending from said upper surface to said upper 16 end; 17 c. evacuating said airspace, so that 18 substantially all ambient air and included oxygen 19 is removed therefrom; 20 d. hermetically sealing said evacuated 21 airspace within said container from atmospheric 22 pressure by sealing said upper end of said 23 container; and 24 e, freezing said container and said contained 25 human breast milk, and maintaining said human 26 breast milk in a frozen state until it is to be 27 consumed. 28 29 Independent claims 7, 13 and 18 also recite methods for storing expressed 30 human breast milk including the steps of: 31 transferring said quantity of milk into a [rigid 32 container or rigid storage container] having an 33 open, upper end, until a volume of said [container 34 or storage container] is at least partially filled with 35 Appeal 2011-010764 Application 11/724,815 3 milk, leaving an airspace in said container above 1 an upper surface of said milk, said airspace 2 extending from said upper surface to said upper 3 end; [and] 4 c. evacuating said airspace, so that substantially 5 all ambient air and included oxygen is removed 6 therefrom. 7 8 McKendry describes a device for expressing milk from either a single 9 breast or from both simultaneously. (McKendry, col. 3, ll. 59-61). The 10 device is capable of obtaining a quantity of human breast milk and 11 transferring the quantity of milk into a rigid container having an open, upper 12 end. (See McKendry, col. 3, ll. 65-66; col. 4, ll. 3-11; and figs. 1-3). The 13 Appellant correctly points out that McKendry fails to teach a step of 14 evacuating an airspace in the rigid container. (See App. Br. 12). To the 15 contrary, McKendry teaches providing a duck-bill valve 36 upstream of the 16 container “which prevents a substantial buildup of vacuum in the collection 17 vessel [or container] 34.” (McKendry, col. 4, ll. 24-26; see also id., col. 4, 18 ll. 12-16 and figs. 3 and 5). 19 Foley describes a milk storage bag. (Foley, col. 3, ll. 20-21 and 20 fig. 1). Foley teaches freezing the milk storage bag and its contents. Foley 21 also teaches maintaining the human breast milk in a frozen state until it is 22 ready to be used for nursing. (Foley, col. 4, ll. 56-67). Figure 11 of Foley 23 depicts a container (although not a rigid one) at least partially filled with 24 milk, leaving an airspace in the container above an upper surface of the milk. 25 Despite this, the Appellant correctly points out that Foley fails to teach a 26 step of evacuating the airspace in the container. (See App. Br. 13). 27 Lemme describes “a hand-held, battery or otherwise powered 28 motorized combination vacuum/pressure pump for either evacuating air 29 Appeal 2011-010764 Application 11/724,815 4 from, or pressurizing, liquid containers. In the vacuum mode, it is most 1 useful for removing air from partially filled wine bottles and food 2 containers, to preserve the contents.” (Lemme, para. [0058]; see also id., 3 para. [0004]). As the Appellant points out, Lemme does not teach both 4 evacuating and freezing a container to preserve the contents. (See App. Br. 5 14). 6 The Examiner concludes that it would have been obvious to “modify 7 the McKendry ′439 and Foley et al. ′594 method to include evacuating 8 airspace and hermetically sealing said evacuated airspace within said 9 container from atmospheric pressure as taught by Lemme et al. ′342 in order 10 to facilitate automatically sealing and storing the content of such container in 11 a vacuum.” (Ans, 5, citing Lemme, para. [0015]). The Appellant correctly 12 points out that this reasoning is circular. (See App. Br. 15). The Examiner’s 13 rationale appears to assume, without discussion, that one of ordinary skill in 14 the art would have had reason to evacuate the airspace; and then explains 15 that one of ordinary skill in the art would have had reason to use Lemme’s 16 teachings to carry out the evacuation. The rationale falls short of articulating 17 persuasive reasoning with some rational underpinning which explains why 18 one of ordinary skill in the art would have had reason to evacuate the 19 airspace at all. 20 The Examiner also concludes that one of ordinary skill in the art: 21 would have taken advantage of the teaching of 22 evacuating a container into which a quantity of 23 liquid such as milk has been transferred, and then 24 hermetically sealing the evacuated airspace within 25 the container by Lemme et al. and incorporate that 26 teaching into McKendry and Foley to achieve the 27 combination of an apparatus and method for 28 Appeal 2011-010764 Application 11/724,815 5 subsequently evacuating a container into which a 1 quantity of milk has been transferred and then 2 hermetically sealing the evacuated airspace within 3 the container in order to achieve among others the 4 benefit of rapid cooling due to reduction of the 5 internal pressure within the container. 6 (Ans. 13). 7 As the Appellant points out, the Examiner does not cite any evidence 8 to support the finding that one of ordinary skill in the art might have had a 9 reasonable expectation that reducing the internal pressure within the 10 container would have resulted in more rapid cooling of the contents of the 11 container. (See Reply Br. 5). This rationale also falls short of articulating 12 persuasive reasoning with some rational underpinning which explains why 13 one of ordinary skill in the art would have had reason to evacuate the 14 airspace. 15 The Examiner has not articulated persuasive reasoning with some 16 rational underpinning to explain why the proposed combination of the 17 teachings of McKendry, Foley and Lemme would have been obvious. We 18 do not sustain the rejection of claims 1-4, 7-10, 13, 16 and 18 under § 103(a) 19 as being unpatentable over McKendry, Foley and Lemme. Since we 20 conclude that the Examiner failed to prove a prima facie case of 21 obviousness, we need not address the comparative data reproduced on pages 22 8-14 of the Appellant’s Specification. 23 The Examiner cites Scanlan as teaching: 24 a removable seal cap (14, Fig. 1-2 & 5: Col 4, lines 25 6-16), said cap including a container line (39, 42, 26 Fig. 2 & 5: Col 5, lines 45-51) and an isolation 27 valve (16, Fig. 2-5 Col 3, lines 66-68), said valve 28 having one end in fluid communication with said 29 container line and another end in fluid 30 Appeal 2011-010764 Application 11/724,815 6 communication with an underside (as shown in 1 Fig. 2 & 4, Col 2, lines 18-22) of said seal cap. 2 (Ans. 7). 3 This teaching fails to remedy the deficiencies in the teachings of 4 McKendry, Foley and Lemme as applied to independent claims 1, 7 and 13. 5 We do not sustain the rejection of claims 5, 11 and 17 under § 103(a) as 6 being unpatentable over McKendry, Foley, Lemme and Scanlan. 7 The Examiner cites Groux as teaching “a process for preparing milk to a 8 frozen temperature of at least 10°C (Col 1, lines 32-38 and Col 2, 43-45).” 9 (Ans. 8). The Examiner also cites Groux as teaching the “warming of milk 10 from said lowered temperature to at least an ambient room temperature (Col 11 4, lines 40-43), wherein a room temperature is an ambient room 12 temperature.” (Ans. 9). This teaching fails to remedy the deficiencies in the 13 teachings of McKendry, Foley and Lemme as applied to independent claims 14 1, 7, 13 and 18. We do not sustain the rejection of claims 6, 12, 14, 15, 19 15 and 20 under § 103(a) as being unpatentable over McKendry, Foley, Lemme 16 and Groux. 17 18 DECISION 19 We REVERSE the Examiner’s decision rejecting claims 1-20. 20 21 REVERSED 22 23 24 Klh 25