Ex Parte Reichert et al

Patent Trial and Appeal Board

Oct 24, 2017

13213710 (P.T.A.B. Oct. 24, 2017)

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.
13/213,710 08/19/2011 Dirk-Stefan REICHERT 73954 8759
7590
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
NIESZ, JASON KAROL
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
10/24/2017 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 DIRK-STEFAN REICHERT, WOLFGANG FALB,
SVEN PASDZIOR, ERNST-GUNTER SCHARMER, and
FRANK GOTTSCHALK
Appeal 2016-000691
Application 13/213,710
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dirk-Stefan Reichert et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 2, 4, 7—15, and
17—19 under 35 U.S.C. § 103(a) as unpatentable over Tinker
(US 7,389,801 B2, issued June 24, 2008). We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on October 10, 2017. We AFFIRM.
1 The Appeal Brief, dated April 9, 2015 (hereinafter “Appeal Br.”), identifies
Drager Medical GmbH as the real party in interest. Appeal Br. 1.
Appeal 2016-000691
Application 13/213,710
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A filling system for an anesthetic dispenser, the filling system
comprising:
an anesthetic evaporator;
a bottle adapter having an adapter neck and an outlet
connection piece comprising a plurality of slots extending in the
radial direction and a central opening connected to said at least
one slot, wherein said central opening comprises an extension of
said plurality of slots;
a filling device at the anesthetic evaporator with a filling
connection piece for receiving the adapter neck; and
a plurality of rods fastened to the filling connection piece,
said plurality of rods extending radially from a center of said
filling connection piece and meshing with said central opening,
said plurality of rods being connected together via a flange, said
flange being arranged in the center of the filling connection
piece.
DISCUSSION
The Examiner finds that Tinker discloses a filling system substantially
as recited in claims 1, 2, 4, and 7—14, and a device as recited in claims 15
and 17—19, with the exception that, in the connection between the bottle
adapter neck and the evaporator filling device of Tinker, the outlet
connection piece of the bottle adapter neck comprises the plurality of rods
connected together by a flange (star shaped body 11) and the filling
connection piece of the evaporator filling device comprises the central
opening connected to a plurality of radially extending slots (the area between
spokes 26), rather than the central opening and passages being on the neck
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Application 13/213,710
connection piece and the rods connected together by a flange being on the
filling connection piece, as required in independent claims 1,7, 11, and 15.2
Ans. 2, 3. In other words, in the two-part connection between the neck and
the filling device, the two parts of the connection in Tinker are inverted, or
reversed, from the arrangement in the claimed connection.
The Examiner determines that “[i]t would have been an obvious
matter of design choice ... to invert the coupling configuration of the
[Tinker] apparatus by placing the plurality of rods and the flange on the
filling connection piece and placing the slot structure on the bottle adapter.”
Id. at 3. “The [EJxaminer notes that the modified device would perform
identically to the original [Tinker] apparatus.” Id.
The Examiner finds:
It was well known in the fluid handling art at the time of the
invention that . . . many types of fluid connections can be
reversed while not materially affecting the functioning of a fluid
handling apparatus. For example, a threaded pipe connection
passes fluid equally well whether the male threaded portion is
located on a fluid receiver or a fluid supply.
Id. at 4. Appellants do not dispute the Examiner’s finding.
The Examiner explains further:
[Tinker] varies from [Appellants’] invention in that the rod and
flange portion of the fluid connection of the instant invention is
located on the filling connection piece while the opening and
slots portion is located on the bottle adapter. This is merely a
2 Claim 15 recites, in the preamble, “[a] a device for interfacing an
anesthetic reservoir with an anesthetic dispenser,” but the only connection
structure positively recited in the body of claim 15 is between the neck and
the anesthetic reservoir. See Appeal Br. 34—35 (Claims App.). In the event
of further prosecution of the claimed subject matter, the Examiner may wish
to reconsider where claim 15 requires the plurality of rods connected
together by a flange to be located.
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Application 13/213,710
reversal of the fluid connector of [Tinker], It has been held that
a mere reversal of the essential working parts of a device
involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Id.
Appellants provide arguments, under separate subheadings, for each
of claims 1, 2, 4, 7—15, and 17—19. Appeal Br. 10—28. However, the
respective arguments are largely repetitive. Id.
One recurring theme in Appellants’ arguments is that Tinker does not
provide any disclosure recognizing or addressing the problem of the
unsupported arrangement of spokes 26 and “does not provide any teaching
or suggestion that would direct a person of ordinary skill in the art toward
connecting the spokes 26 to a flange as featured in the present invention.”
See, e.g., id. at 11, 13, 15, 16, 24, 28. This argument does not identify error
in the rejection because it does not address the rejection set forth by the
Examiner. The Examiner does not propose to modify Tinker’s spoked
wheel 25 by connecting spokes 26 thereof to a central flange. Rather, the
Examiner finds that Tinker’s star shaped body 11 is an arrangement of rods
connected to a central flange as called for in the claims and that Tinker’s
arrangement of spokes 26 defines a plurality of slots and a central opening as
called for in the claims. See Ans. 2, 4. The Examiner acknowledges that
Tinker varies from Appellants’ claimed invention in that the rod and flange
portion of the fluid connection of Tinker is located on the outlet connection
piece of the bottle adapter neck, rather than on the evaporator filling device
filling connection piece as claimed, and the opening and slots portion is
located on the evaporator filling device filling connection piece, rather than
on the bottle adapter neck outlet connection piece as claimed, but determines
that this distinction amounts to merely an obvious reversal of parts. Ans. 2—
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Application 13/213,710
4. Moreover, Appellants’ argument insists upon an explicit teaching,
suggestion, or motivation in Turker, and, such arguments have been
foreclosed by the Supreme Court. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (the Supreme Court stating that a rigid insistence on
teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness).
At times acknowledging that the Examiner’s rejection is premised on
a determination that it would have been obvious to invert the connection
arrangement disclosed by Turker, Appellants counter by submitting that
“there is no teaching that supports this position.” See, e.g., Appeal Br. 11,
14, 18, 20, 24. Appellants insist that “[a] reference must provide some
teaching or suggestion for the features recited in the claimed combination.”
Id. at 14; see id. at 18 (arguing same). As already noted, such arguments
premised on a rigid insistence on a teaching, suggestion, or motivation in the
prior art have been foreclosed by the Supreme Court. KSR, 550 U.S. at 419.
Appellants contend that Turker “is completely void of any disclosure
as to the advantages associated with providing an outlet connection piece of
a bottle adapter with a central opening and a plurality of slots extending in a
radial direction forming a continuation of the central opening” as claimed.
Appeal Br. 18—19. This argument is unavailing. “In determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR, 550 U.S. at 419-20. The Examiner reasons that
the difference between the claimed invention and Turker amounts to a
simple inversion of the connecting parts of the two-part connection between
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Application 13/213,710
the neck and the filling connection piece. Ans. 3. The Examiner finds that
Tiirker’s device, if modified as set forth in the rejection, by placing the
plurality of rods and the flange on the filling connection piece and placing
the slot structure on the bottle adaptor, would “perform identically” to the
unmodified device. Id. Appellants have not specifically explained why this
would not be the case.
Appellants submit that Tinker’s spokes 26 lack sufficient strength and
stiffness, and thus become damaged when the bottle adapter is applied to the
filling device, so that they are not able to protect the valve and other
elements located beyond spokes 26. Appeal Br. 23; see also Reply Br. 2
(asserting that Tinker’s “spokes 26 will bend if too much force is applied to
the bottle adapter”). Appellants contend that the claimed invention solves
this problem by connecting the plurality of rods/spokes to a central flange to
impart increased strength and stiffness to the rods. Appeal Br. 23; Reply
Br. 2. Appellants allude to “Appellants’] evidence regarding the weak
cantilever connection of the spokes 26 to the filling device of Tinker . . . and
the problems of the spokes 26 bending and breaking when too much force is
applied” (Reply Br. 10), but Appellants do not identify where such evidence
is located in the record of the present application. Rather, the only mention
of spokes 26 lacking adequate strength and stiffness in the record before us
appears to be contained in the attorney arguments in Appellants’ briefing.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (according little
weight to unsupported attorney argument).
With respect to claims 10, 14, and 19, Appellants contend that
Tinker’s spokes 26 “do not converge at a central punctiform portion or a
virtual connection point that is defined by a flange.” Appeal Br. 17, 22, 28.
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Application 13/213,710
This argument does not identify error in the rejection, which relies on
Tinker’s star shaped body 11, not spokes 26, for the rod and flange portion
of the connection. Ans. 2, 4. Appellants do not specifically contest the
Examiner’s finding that Tinker’s star shaped body 11 comprises a plurality
of rods connected to a flange at a central connection point. See Ans. 2.
For the above reasons, Appellants do not apprise us of error in the
rejection of claims 1, 2, 4, 7—15, and 17—19 under 35 U.S.C. § 103(a) as
unpatentable over Tinker, which we thus sustain.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 7—15, and 17—19 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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