Ex Parte Wang et al

Patent Trials and Appeals Board

Jun 11, 2019

14095885 - (D) (P.T.A.B. Jun. 11, 2019)

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
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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
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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."
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[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
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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
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"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
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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.
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In summary: