Ex Parte Rohrschneider et al

Patent Trial and Appeal Board

May 26, 2016

10943165 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/943,165 09/17/2004
25570 7590 05/31/2016
Roberts Mlotkowski Safran & Cole, PC
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
FIRST NAMED INVENTOR
Marc Rohrschneider
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.
740126-29 2105
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
lgallaugher@rmsclaw.com
docketing@rmsclaw.com
dbeltran@rmsclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC ROHRSCHNEIDER, WALDEMAR MASUR,
ELVIRA PIEL, CAMPBELL PA TRICK, RUDIGER BELAU,
and KARL-HEINZ LANGE
Appeal2013-010318
Application 10/943, 165
Technology Center 3700
Before LYNNE H. BROWNE, LEE L. STEPINA, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc Rohrschneider et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner's decision rejecting claims 1-5, 7, 8, 10, 11,
and 15. 1 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).2
We AFFIRM-IN-PART.
1 Claims 12-15 and 17 are listed in the Disposition of Claims as withdrawn.
Final Act. 1. However, the heading for Rejection (III) lists claims 1, 2, and
15. Final Act. 4. Further, claim 15 is treated on the merits by the Examiner
in Rejection (III) (Final Act. 4), and Appellants list this claim in the heading
for their arguments relating to this rejection (Appeal Br. 4). Accordingly,
we understand that claim 15 is one of the claims on appeal.
2 An oral hearing was conducted on May 10, 2016.
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Application 10/943, 165
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a spray head. Spec. 14
(Abstract). Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A spray head for an aerosol tank which is closed by a
fluid exit valve including one of a female fluid exit valve and a
male fluid exit valve, used for spraying a fluid from the aerosol
tank, the fluid exit valve defining an axial fluid exit direction,
the spray head comprising:
a bottom part;
a top part having an exposed actuating surface on the
outside thereof for actuating/opening the fluid exit valve, a
receiving space for receiving and holding said bottom part, and
a base part for seating on a rim of the aerosol tank;
a capillary tube for routing the fluid and for nozzle-less
spraying of the fluid, said capillary tube having an axially open
entry end within said spray head and an axially open exit end
within said spray head, said entry end of the capillary tube
arranged to be axially joined to the fluid exit valve \vhen the
spray head is seated on the aerosol tank, said exit end of the
capillary tube being open to ambient atmosphere, at least said
top part being formed with an arcuate guide surface for said
capillary tube running approximately in an arc of approximately
90° from the entry end to the exit end in the spray head, the
spray head having an exit opening from which fluid sprayed
from the exit end of the capillary tube is able to emerge
undisturbed;
at least one of a valve tappet and a valve receiver, formed
as part of at least one of said top and bottom parts of the spray
head, for, respectively, fluidically connecting to one of a
receiver of the female fluid exit valve and a valve tappet of the
male fluid exit valve such that both parts are moveable together
by said exposed actuating surface to operate the valve, the entry
end of said capillary tube extending into said at least one of the
valve tappet and the receiver while being positioned so as to
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Application 10/943, 165
remain out of contact with said one of the receiver of the female
fluid exit valve and the valve tappet of the male fluid exit valve,
wherein said at least one of the valve tappet and the receiver has
an exposed end directed from within the spray head toward the
open end of the bottom part of the spray head.
Appeal Br. 9.
REFERENCES RELIED ON BY THE EXAMINER
Paldanius
Singer
Blette
us 2,941,728
us 3,913,842
us 5,711,484
June 21, 1960
Oct. 21, 1975
Jan.27, 1998
THE REJECTIONS ON APPEAL
(I) Claims 1-5, 7, 8, 10, and 11 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
(II) Claims 1-5, 7, 8, 10, and 11 are rejected under 35 U.S.C. § 112,
second paragraph as indefinite.
(III) Claims 1, 2, and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Paldanius.
(IV) Claims 1-5, 7, 8, 10, and 11 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Blette and Singer.
(V) Claims 3-5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Paldanius.
ANALYSIS
Rejection(!)
The Examiner finds that Appellants' disclosure does not enable the
subject matter recited in claim 1, specifically, the requirement that "at least
said top part begin formed with an arcuate guide surface for said capillary
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tube running approximately in an arc of approximately 90° ." Final Act. 3.
The Examiner states, "[t]he specification discloses, in paragraph 40, an
outside guide 17 and an inside guide 20 for capillary tube 4. The disclosure
fails to disclose how the 'guiding' function is accomplished by the guide
surface in guiding the capillary tube in the embodiment of Species D, figure
4." Id.
Appellants assert that their original Figure 4 (filed on September 17,
2004) contains a drawing error, but that a person of ordinary skill in the art
would understand that the guides discussed in Appellants' Specification (see
i-f 40) operate in the same manner as the guides depicted in Appellants'
Figures 3 and 5. Appeal Br. 3. In support of this argument, Appellants
provided a declaration by Friedhelm Czeranski. 3
In reply, the Examiner finds that Appellants' original Figure 4 depicts
capillary "tube 4 suspended in the center of the channel formed by outside
guide 17 and inside guide 20. There is no contact shown between tube 4 and
guides 17 and 20. If there is no contact, guides 17 and 20 cannot perform
any guiding function for capillary tube 4." Ans. 8. The Examiner finds that
Figures 3 and 5 depict cross-hatching that is not depicted in Figure 4. See
Ans. 8-9. In this regard, the Examiner states, "[ w ]hat appellant calls error is
not merely a typographical error but a catastrophic error in disclosure based
on drafting mistakes, even if unintended by appellant." Ans. 9.
We are persuaded by Appellants' arguments. The test for compliance
with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is
whether the disclosure, as filed, is sufficiently complete to enable one of
ordinary skill in the art to make and use the claimed invention without undue
3 Filed on January 17, 2012.
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experimentation. Jn re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
"Enablement is not precluded by the necessity for some experimentation ....
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is 'undue,' not 'experimentation."'
Wands, 858 F.2d at 736-37 (footnotes omitted).
We have considered the Examiner's discussion in the Final Office
Action and the Answer, however, the Examiner has not adequately
addressed the Wands factors or otherwise explained why one of ordinary
skill in the art would have to engage in undue experimentation to practice
the claimed invention. Although the Examiner correctly finds that there is
an error in Appellants' original Figure 4 (see Final Act. 3; Ans. 8), the
Examiner has not provided an analysis of the quantity of experimentation
needed to determine what structure would be suitable for the guide recited in
claim 1 in light of the drawing error. Nor is it apparent that the Examiner
considered the nature of the invention, the state of the prior art, the relative
skill of those in the art, or the level of predictability in the art. In this regard,
we note that a person of skill in the art would also have available the
disclosure in Appellants' Figures 3 and 5. Based on this level of analysis by
the Examiner, we cannot sustain the rejection of claims 1-5, 7, 8, 10, and 11.
Rejection (II)
Appellants present arguments contesting the indefiniteness rejection
for the first time in the Reply Brief. Reply Br. 3--4. The rules applicable to
present appeal provide:
Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new
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ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.
37 C.F.R. § 41.41(b)(2) (2014). Appellants do not provide any explanation
for the failure to present arguments in the Appeal Brief contesting the
indefiniteness rejection. The arguments contesting the indefiniteness
rejection raised for the first time in the Reply Brief are not responsive to an
argument raised in the Examiner's Answer. As such, Appellants have not
shown good cause for the Board to consider these new arguments presented
for the first time in the Reply Brief. Accordingly, we summarily sustain the
rejection of claims 1-5, 7, 8, 10, and 11 under 35 U.S.C. § 112, second
paragraph.
Rejection (111)
Claim 1 recites, in part, "at least said top part being formed with an
arcuate guide surface for said capillary tube running approximately in an arc
of approximately 90° from the entry end to the exit end in the spray head."
Appellants assert, "[t]he portion of the guide tube 23 of Paldanius that
is located within the sleeve 22, not the top part 15, is straight, the arcuate
portion of the guide tube being located outside of the sleeve 22, and thus, is
also on the exterior of the top part 15." Appeal Br. 5. Figure 3 of Paldanius
is reproduced below:
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Application 10/943, 165
Figure 3 is a section view of a receiver and guide nozzle. Paldanius,
col. 1, 11. 56-58. It is evident from Figure 3 that Appellants are correct, the
portion of guide tube 23 inside sleeve 22 is straight. Accordingly, we do not
sustain the Examiner's rejection of claims 1, 2, and 15 as anticipated by
Paldanius.
Rejection (IV)
With respect to the "top part having ... a base part for seating on a
rim of the aerosol tank" recited in claim 1, Appellants argue
recess 164 of Blette et al. is not only incapable of seating on the
rim of anything, being solely for receiving tangs 159, but recess
164 is on the bottom part, not the top part as recited in claim 1
and as is the case for the base part 9' on the top part 9 m
accordance with the present invention.
Appeal Br. 7 (emphasis added).
In response, the Examiner finds that Blette teaches "a base part (the
underside outer rim of top part 152a[)] that accommodates recess 164 area of
the bottom part." Ans. 11. Thus, the Examiner's refers to a portion of top
part 152a for the recited base part. The Examiner further finds that this
region of top part 152a "has the capability to seat on a rim of an aerosol
tank. If the top part is removed from the bottom part, the top part can be
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placed on an aerosol tank rim that has the same shape and size as the bottom
part." Ans. 11 (emphasis added).
Appellants contend that a person of skill in the art would not use the
top part in Blette without also using the bottom part, and removal of the
bottom part as proposed by the Examiner would render the device in Blette
unsuitable for its intended use. Reply Br. 5---6. Appellants further assert that
the Examiner does not provide any rationale for modifying the device in
Blette so as to use the top part without the bottom part. Reply Br. 6.
Appellants' arguments are persuasive. The Examiner's finding that
the top part disclosed by Blette would be capable of seating on a rim of the
aerosol tank depends on a modification to the device Blette (removal of the
bottom part). However, the Examiner does not provide any persuasive
reason as to why removal of the bottom part in Blette so as to place the top
part on an aerosol tank would have been obvious. Rather, the Examiner
ends the discussion of Appellants' argument on this point by finding that the
top part in Blette is capable of the recited function. Accordingly, we do not
sustain the Examiner's rejection of claims 1-5, 7, 8, 10, and 11 as
unpatentable over Blette and Singer.
Rejection (V)
For the same reasons discussed above regarding Rejection (III), we do
not sustain the Examiner's rejection of claims 3-5 as unpatentable over
Paldanius.
DECISION
(I) We reverse the Examiner's rejection of claims 1-5, 7, 8, 10, and
11 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
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(11) We atlirm the Examiner's rejection of claims 1-5, 7, 8, 10, and
11 under 35 U.S.C. § 112, second paragraph as indefinite.
(III) We reverse the Examiner's rejection of claims 1, 2, and 15 under
35 U.S.C. § 102(b) as anticipated by Paldanius.
(IV) We reverse the Examiner's rejection of claims 1-5, 7, 8, 10, and
11 under 35 U.S.C. § 103(a) as unpatentable over Blette and Singer.
(V) We reverse the Examiner's rejection of claims 3-5 under 35
U.S.C. § 103(a) as unpatentable over Paldanius.
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-IN-PART
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