Ex Parte Wang et alDownload PDFPatent Trials and Appeals BoardJun 11, 201914095885 - (D) (P.T.A.B. Jun. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/095,885 12/03/2013 YipingWang 64046 7590 06/13/2019 Mintz Levin/San Diego Office One Financial Center Boston, MA 02111 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. 0544l8-5l7D01US 1000 EXAMINER SORKIN, DAVID L ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 06/13/2019 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): IPDocketingBOS@mintz.com IPFileroombos@mintz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YIPING WANG, WILLIAM S. WEI, and DAINIEL W. FRANK Appeal2017-010016 Application 14/095,885 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision to reject claims 9-17 under 35 U.S.C. § 103(a) as obvious over Hain. The Examiner also maintains a rejection of claims 9-17, 1 In explaining our Decision, we cite to the Specification of December 3, 2013 (Spec.), Final Office Action of June 7, 2016 (Final), Appeal Brief of November 21, 2016 (Appeal Br.), Examiner's Answer of May 19, 2017 (Ans.), and Reply Brief of July 18, 2017 (Reply Br.). 2 N exMed Holdings, Inc. is the applicant under 3 7 C.F .R. § 1.46, and is identified as the real party in interest. Appeal Br. 2. Appeal2017-010016 Application 14/095,885 19, and 20 on the ground of non-statutory double patenting over claims 1---6 of U.S. Patent 8,596,859. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a mixing device. See, e.g., claim 9. According to the Specification, the mixing device may be a syringe having an integral mixing chamber. Spec. 1:5-12. The mixing chamber includes an interior structure that cooperates with the mixing chamber's internal walls to define multiple passageways. See, e.g., claim 9; Spec. 5:3-21. Claim 9, with the limitations most at issue highlighted, is illustrative: 9. A mixing device comprising: an integrally constructed body having a housing and a mixing chamber integrally connected to a distal end of the housing, the mixing chamber having a distal open end; a plunger having a plunger body fitted at least partially within the housing, the plunger axially moveable relative to the housing; and an interior structure disposed within the mixing chamber, wherein the interior structure cooperates with internal walls of the mixing chamber to define multiple flow passageways. Appeal Br. 10. OPINION Obviousness In addressing the Examiner's rejection of claims 9-17 as obvious over Hain, Appellant does not argue any claim apart from the others. Appeal Br. 5-9. We select claim 9 as representative to resolve the issues on appeal for the obviousness rejection. The issue is: Has Appellant identified a reversible error in either ( 1) the Examiner's finding that the Hain teaches an interior 2 Appeal2017-010016 Application 14/095,885 structure (screen 40) that cooperates with the interior walls of Rain's mixing chamber (worker section 30) to define multiple flow passageways or (2) the Examiner's finding that Hain' s mixing chamber is either integrally connected, or it would have been obvious to make it integrally connected, to the distal end of the mixing chamber housing? Appellant has not identified such an error. This is due, in large part, to the breadth of the words "passageway" and "integral" as used by Appellant. The Passageway Limitation As shown in Figure 1, Hain teaches a greaseworker including two plungers 12 that fit into respective cylinders 10. Hain col. 1, 11. 37-55. As shown in Figure 2, the end of cylinder 10 opposite plunger 12 has a lock tip 14, which includes tubular tip 16 partly surrounded by hood 18. Hain col. 1, 11. 37-55. As shown in Figure 1, between the two cylinder-plunger assemblies is a worker section 30 that functions as an adapter to connect the two cylinders. Hain col. 2, 11. 1--4. As shown in Figure 3, the worker section 30 includes a screen 40 placed between hubs 36, which are rigidly fastened together as by soldering. Hain col. 2, 11. 11-14. Worker section 30 includes flanges 34 that engage thread 26 on the internal surface of hood 18. Hain col. 2, 11. 19-24. The Examiner finds worker section 30 is a mixing chamber and that screen 40 within the worker section 30 contains the passageways required by claim 9. Final 2. In the Appeal Brief, Appellant contends that Hain' s screen 40 does not define "passageways." According to Appellant, based on the disclosure and the drawings of the present application, a skilled artisan understands that a passageway is 3 Appeal2017-010016 Application 14/095,885 "a long, narrow space that connects one place to another." Accordingly, the broadest reasonable interpretation of the term "passageway" in the present claims cannot include pores or holes, as taught by Hain. Appeal Br. 5. Appellant's Appeal Brief does not cite to any particular portion of the written description or any dictionary to support this definition. Id. In response, the Examiner determines that "the term 'passageway' is not limited to passageways which are 'long'. Instead, the definition of 'passageway' in Webster's Collegiate dictionary is 'a way that allows passage'." Ans. 4. Under this definition, the Examiner finds that the spaces between the wires of the Hain' s screen and chamber walls, as well as the other openings between the wires themselves are passageways as required by claim 9. Id. Appellant responds in the Reply Brief by citing three portions of the written description that use the word "passageway" to support the argument that Rain's openings are not passageways and that Rain's interior structure (screen 40) does not cooperate with internal walls of the mixing chamber to define multiple passageways. Reply Br. 6 ( citing Spec. 3: 5-10 ( cited as Summary of Invention), Spec. 5:3-15 (cited as Spec. ,r 20), and Spec. 8:20- 24 ( cited as Spec. ,r 31) ). Appellant does not dispute that Webster's Collegiate Dictionary contains the definition cited by the Examiner. Reply Br. 8-9. Instead, Appellant contends that the dictionary definition is of lesser controlling weight given the guidance in the Specification and Drawings. Id. A preponderance of the evidence supports the Examiner's interpretation of "passageway." 4 Appeal2017-010016 Application 14/095,885 [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Specification contains no definition of "passageway." On page three, in the Summary of Invention, the Specification mentions "a unitary nozzle defining one or more emulsifying passageways" as an example of a mixing chamber, but claim 9 is not limited to a unitary nozzle. Spec. 3:5-10 ("The distal end portion [of the tubular housing] terminates in a mixing chamber such as a unitary nozzle defining one or more emulsifying passageways."). The third portion of the Specification cited by Appellant merely uses similar language to that of claim 9. Spec. 8:20-24. The second portion of the Specification cited by Appellant is the most helpful. This portion describes the embodiment of Figure 1, which is termed, a particularly preferred embodiment. Spec. 5: 5-21. It talks of an internal structure 40 having multiple passageways with flared ends and located adjacent the tubular housing 14 and spaced from open end 30. Id. But Appellant leaves out an important part of the paragraph when reproducing the discussion in the Reply Brief. After disclosing that the mixing chamber is dimensioned so as to cooperate with the mixing chamber walls to form a high shear flow to emulsify the contents, the paragraph states that "[t]he present invention also contemplates mixing to achieve results other than emulsification, and accordingly, a wide variety of interior structures, e.g., static mixers, or arrangements with no intermediate interior structure, are contemplated as well by the present invention." Id. The 5 Appeal2017-010016 Application 14/095,885 Specification continues in the next paragraph: "The present mixing chambers can be of virtually any length, internal dimensions and constructions as may be desired." Spec. 5:22-23. Given the broadening language used in the Specification and the ordinary and accustomed meaning of "passageway" as encompassing "a way that allows passage," we determine a preponderance of the evidence supports the Examiner's interpretation of "passageway" as encompassing the openings in Hain' s screen. Appellant contends that Hain' s screen openings fail to cooperate with internal walls of the mixing chamber to define the multiple flow passageways. Appeal Br. 5; Reply Br. 8. But the Examiner finds that Rain's screen would have multiple flow passageways defined between the wires of the screen and the internal walls of mixing chamber 30 and the portions of Hain cited by the Examiner support the finding. Ans. 3 ( citing Fig. 3 (depicting the wires of the screen) and col. 3, 11. 3-6 (disclosing the forcing of grease "rapidly through the tiny orifices of the screen")). Where the walls of the chamber 30 cut off the openings in the screen, the screen and walls cooperate to define passageways. The "Integrally Connected" Limitation Turning to the Appellant's argument directed to the limitation "a mixing chamber integrally connected to a distal end of the housing," we agree with the Examiner that "integrally connected" does not require a one- piece or unitary structure. It is well settled that "integral" can cover more than a unitary construction. See Morris, 127 F.3d at 1055-56 (absent express definition in the specification, it is reasonable to interpret "integral" to cover more than a unitary construction.). Appellant does not expressly define "integral" or 6 Appeal2017-010016 Application 14/095,885 "integrally connected." Nor does the Specification make the meaning explicitly clear. Instead, the Specification uses the word "integral" in several different contexts by, for instance, using it alone before "mixing chamber" (Spec. 1:5---6), as modified by "one-piece" (Spec. 4: 19-20 (a body made of one-piece integral construction)) and alternatively with "unitary" (Spec. 4: 26-27 ("unitary or integral mixing chamber 20")). The Specification states "[m]ost preferably, the interior structure is integral with the mixing chamber housing and the remainder of body 12, but can be added during or after molding of body 12, if desired." Spec. 5:26-28. This last usage arguably uses "integral" as a synonym for "one-piece" or "unitary," but the use is not so clear that we can say that the Examiner erred in constructing the term more broadly. As stated in In re Morris: We decline to attempt to harmonize the applicants' interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicants' burden to precisely define the invention, not the PTO's. Morris, at 1056. We note that Appellant includes claim 19, a claim not rejected as obvious by the Examiner, which uses the word "unitary" to narrow the scope of the claim. "[A] patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application." In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Because Appellant has not so limited claim 9, it remains obvious over Hain. We also agree with the Examiner's determination that to the extent that the threaded connection of Hain is not an integral connection, making a connection between one of the housings ( cylinders 10) and mixing chamber (worker 30) of Hain integral, such as by fastening, welding, using another 7 Appeal2017-010016 Application 14/095,885 rigid-type connection, or making it unitary, would have been obvious to one of ordinary skill in the art. See In re Hotte, 475 F.2d 644, 647 (CCPA 1973) ("'integral' is sufficiently broad to embrace constructions united by such means as fastening and welding."). This is because whether the connection is threaded, fastened in another manner, or unitary, the mixing chamber will perform its intended function of mixing and there is no persuasive evidence that forming the connection as an integral connection would involve more than routine skill. As in the case of Lockhart, Although it is true that invention may be present under some circumstances in making integral that which was separate before, we do not feel that such is the case here. Improved results only will not take the case out of the general rule. There is also a requirement that the unification or integration involve more than mere mechanical skill. In re Lockhart, 190 F .2d 208, 210 (CCP A 1951 ). The problem here is that Appellant's claim 9 is too broad as it sweeps in what was known or obvious from the prior art. Thus, we sustain the rejection. Non-statutory Double Patenting Appellant does not dispute the Examiner's rejection of claims 9-17, 19, and 20 on the ground of non-statutory double patenting, but instead requests this rejection be held in abeyance until allowable subject matter is identified in the application. Appeal Br. 5, n.1. Thus, we summarily affirm the non-statutory double patenting rejection. 8 Appeal2017-010016 Application 14/095,885 In summary: Copy with citationCopy as parenthetical citation