Ex Parte Odermatt et al

Patent Trial and Appeal Board

Apr 14, 2016

12374061 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/374,061 0212712009
35811 7590 04/18/2016
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Erich Odermatt
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.
RUF-09-1003 5580
EXAMINER
OLIVER, BRADLEY S
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICH ODERMATT and GABRIEL SIEDLE
Appeal2014-002145
Application 12/374,061 1
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Erich Odermatt and Gabriel Siedle (Appellants) appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting under 35 U.S.C.
§ 103(a) claims 27, 28, 30-33, and 36-52.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
According to Appellants, the real party in interest is Aesculap AG.
Br. 1 (filed June 21, 2013).
2 Claims 1-26, 29, 34, and 3 5 have been canceled. See id. at 7-9.
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Application 12/374,061
INVENTION
Appellants' invention relates to "a liquid dispenser for medical
purposes." Spec. 1 :6-8.
Claim 27, the sole independent claim, is representative of the claimed
invention and reads as follows:
27. A liquid dispenser for medical purposes in the form of an
applicator, having an outer container, which comprises a hollow
application aid made from a nonporous material, in the form of
a cannula, and having an inner, vaportight, and closed container
with a curable liquid located therein, the application aid having
a delivery opening with a clear cross section of between about
0.1 and about 5 mm2, wherein the liquid dispenser comprises a
porous barrier comprising a liquid-pervious envelope for the
inner container, shaped as a liquid-pervious flexible tube and is
impervious to fragments of the inner container located between
the inner container and a delivery opening of the application aid
and wherein the porous barrier envelops the inner container.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 27, 28, 30-33, 36, 37, and 41-52
under 35 U.S.C. § 103(a) as being unpatentable over Voiers
(WO 01/51360 A2, pub. July 19, 2001) and Miller (US
5, 133,458, iss. July 28, 1992).
II. The Examiner rejected claim 38 under 35 U.S.C. § 103(a) as
being unpatentable over Voiers, Miller, and Quintero (EP
1 445 032 A2, pub. Aug. 11, 2004).
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Application 12/374,061
Ill. The Examiner rejected claim 39 under 35 U.S.C. § 103(a) as
being unpatentable over Voiers, Miller, and Arsenault (US
6, 113,008, iss. Sept. 5, 2000).
IV. The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
being unpatentable over Voiers, Miller, and Morane (US
3,964,643, iss. June 22, 1976).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 28, 30-33, 36, 37, and 41-52 apart from claim 27. See Br. 3-5.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2014), we select
claim 27 as the representative claim to decide the appeal of the rejection of
these claims, with claims 28, 30-33, 36, 37, and 41-52 standing or falling
with claim 27.
The Examiner finds that Voiers discloses a liquid dispenser having an
outer container 20, an inner, vaportight, and closed container 40 with a
curable liquid located therein, and a hollow application aid 60 made from a
nonporous material and having a delivery opening 70. See Non-Final Act. 2
(citing Voiers, Figs. 2A, 2B) (transmitted Dec. 20, 2012). The Examiner
further finds that although Voiers "does not disclose a porous barrier [that]
envelops the inner container," Miller discloses "a porous protective layer 12
covering an ampoule." See id. at 3 (citing Miller Figs. 1, 2). Thus, the
Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to provide a porous barrier, as taught by Miller, to
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Application 12/374,061
Voiers' s inner element 40, "in order to protect a user from getting cut by
broken glass." Id.
In response, Appellants first argue that the combination of Miller with
Voiers is not obvious because "those skilled in the art would not make the
combination and, in any event, the combination would result in a completely
different structure." See Br. 3. Specifically, Appellant argues that because
Voiers discloses ampoule 40 "positioned entirely within an outer container
[20]" there would be no reason for providing Miller's scrim adhered to the
V oiers' s ampoule, as the Examiner proposes, because "the outer container
mitigates risk of injury by retaining any glass shards and renders the scrim
and adhesive of Miller's ampoule obsolete and ineffectual." See id. at 4.
Although we appreciate Appellants' argument, nonetheless, providing
Miller's scrim tape 12 to envelop Voiers's closed container 40 would
provide additional safety precautions that a person of ordinary skill in the art
would recognize when dealing with medical applications and patient lives
and safety. An artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCP A 1962). Here, where safety is concerned, the benefits of
redundancy would have been well appreciated by those of ordinary skill in
the art. Such a redundant safety system would prevent glass from injuring a
user who is treating a patient with the applicator, as well as preventing glass
from falling out of the container, as the Examiner explains. See Ans. 2. The
presence of Voiers' s outer container 20 in no way undermines the
Examiner's position that it would have been obvious to provide an additional
safety feature, such as Miller's scrim tape 12, to further ensure safety.
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Additionally, Appellants argue that replacing "the adhesive as taught
by Miller with a porous barrier" is not obvious. See Br. 5. We are not
persuaded because Appellants' argument is not commensurate with the
scope of the Examiner's rejection. The Examiner is not proposing to replace
Miller's adhesive with a porous barrier, as Appellants argue (see id.), but
rather the rejection is based on providing Miller's scrim 12 to Voiers's inner
element 40. See Non-Final Act. 3.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 27, and claims 28, 30-33, 36, 37, and
41-52 falling with claim 27, as unpatentable over Voiers and Miller.
Rejections II-IV
With respect to Rejections II-IV, Appellants rely on the same
arguments as presented supra in Rejection I. See Br. 5---6. For the same
reasons as stated above, we sustain the rejections under 35 U.S.C. § 103(a)
of claim 38 as unpatentable over Voiers, Miller, and Quintero; of claim 39 as
unpatentable over Voiers, Miller, and Arsenault; and of claim 40 as
unpatentable over Voiers, Miller, and Morane.
SUMMARY
The Examiner's decision to reject claims 27, 28, 30-33, and 36-52
under 35 U.S.C. § 103(a) is affirmed.
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).
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AFFIRMED
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