PERFORMANCE CREATIONS LLC

Patent Trials and Appeals BoardDec 2, 2021

2021002961 (P.T.A.B. Dec. 2, 2021)

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. 15/666,908 08/02/2017 Gabriel WERNER JR-6474-3 2228 23117 7590 12/02/2021 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER KASTURE, DNYANESH G ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GABRIEL WERNER and NATHAN WAGENER Appeal 2021-002961 Application 15/666,908 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and CARL M. DEFRANCO, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4–15, and 18–22. See Final Act. 1 (Office Action Summary). Claims 2 and 3 are objected to. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Performance Creations LLC.” Appeal Br. 3. Appeal 2021-002961 Application 15/666,908 2 CLAIMED SUBJECT MATTER The disclosed subject matter relates “to pumps for inflating objects.” Spec. ¶ 2. Apparatus claims 1 and 11, and method claim 20, are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A manually-driven hand-pump, comprising: an elongate body; a base located within the body; a reusable needle connected to the base; a plunger, located within the body and movable therein to compress ambient air to increase pressure of the air within the body of the hand-pump and force the air through the needle and into multiple inflatable objects; a guide along which the plunger and base are arranged to travel; and a locking mechanism; wherein the base is repeatably movable between extended and retracted positions as desired, the extended and retracted positions being disposed along a common axis corresponding to directions of travel facilitated by the guide, wherein the needle extends outwardly from an end of the body when the base is in the extended position, and wherein the needle and base are entirely stowed within the body when the base is in the retracted position; and wherein the locking mechanism is configured to engage and lock the base in the extended position each of plural times the base is moved to the extended position to enable pumping of air, and to restrict movement in the opposite direction until disengaged. EVIDENCE Name Reference Date Bieri US 3,313,215 Apr. 11, 1967 Doyle (“Doyle ’401”) US 2003/0187401 A1 Oct. 2, 2003 Appeal 2021-002961 Application 15/666,908 3 Knepshield US 2007/0060886 A1 Mar. 15, 2007 Frost US 7,278,986 B1 Oct. 9, 2007 Doyle (“Doyle ’161”) US 2012/0073161 A1 Mar. 29, 2012 Holt US 8,522,665 B2 Sept. 3, 2013 REJECTIONS Claims 1, 7, 8, 11, 13, and 18–20 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Frost. Claims 4–6 and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Frost and Bieri. Claims 9 and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Frost and Knepshield. Claims 10 and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Frost and Doyle ’401. Claims 1, 7, 8, 11, 13, and 18–21 are rejected under 35 U.S.C. § 103 as unpatentable over Doyle ’161 and Frost. Claims 4–6 and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Doyle ’161, Frost, and Bieri. Claims 9 and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Doyle ’161, Frost, and Knepshield. Claims 10 and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Doyle ‘161, Frost, and Doyle ’401. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over Doyle ’161, Frost, and Holt. Appeal 2021-002961 Application 15/666,908 4 ANALYSIS The rejection of claims 1, 7, 8, 11, 13, and 18–20 as anticipated by Frost Appellant argues these claims together.2 See Appeal Br. 9–17. We select claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appellant initially contends that “Frost is not even analogous art” because “Frost clearly relates to a safety syringe, not a ball/tire pump.” Appeal Br. 11; see also Reply Br. 2, 4. Appellant’s contention is not persuasive because we have been instructed that the question of analogous art is not applicable in an anticipation rejection. See State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003). Furthermore, the Examiner notes “that the independent claims do not recite a ball/tire pump” (Ans. 25) and that “[t]he phrase ‘pump for balls/tires’ does not exist in the independent claims” (Ans. 33). Thus, even if the analogous art test were applicable to an anticipatory rejection, Appellant’s argument above attempting to distinguish the recited “hand pump” of claim 1 from Frost is faulty. Claim 1 also recites the limitation that the base and attached needle “is repeatably movable between extended and retracted positions” with respect to the body of the pump. Appellant contends that, instead, Frost teaches “one extension, multiple uses of the needle, and permanent retraction of the needle.” Appeal Br. 11; see also Reply Br. 5–9. In other words, the needle “can be extended once and only once.” Appeal Br. 11; see also Reply Br. 5 2 Independent “[c]laims 11 and 20 therefore define over Frost for substantially the same reasons as those set forth above in connection with claim 1.” Appeal Br. 17. Appeal 2021-002961 Application 15/666,908 5 (“[e]xtend once, deliver multiple doses, then retract and become inoperable”). The Examiner disagrees identifying where Frost states, “[t]he syringe can be used for more than one use.” See Final Act. 4 (referencing Frost 4:7– 11); see also Frost Abstract (“[a] multi-use safety syringe has a retractable needle”), 1:33 (“[a] need exists for a multiple use retractable syringe”). Appellant instead, relies on language from Frost’s Background portion which teaches how a user “can retract the needle when finished and render the device inoperable.” See Appeal Br. 12 (replicating Frost 1:51–60). Appellant focuses on this “render[s] the device inoperable” language and contends that such a result is equally applicable to Frost’s device. See Appeal Br. 12–13; see also Reply Br. 5, 7, 8. This is because Frost follows that language with “[t]he present invention is designed to accomplish these goals and more.” Frost 1:61–62 (italics added); see also Ans. 28. Thus, as per Appellant, “it is a ‘goal’ of Frost’s invention to render the device inoperable.” Appeal Br. 13; see also Reply Br. 5, 7, 8. We disagree with Appellant’s contentions because Appellant appears to not only be disregarding Frost’s disclosure of “and more,” but also where Frost explicitly discusses the multi-use nature of Frost’s syringe, or the need for one. See, e.g., Frost Abstract, 1:33, 1:52–53, 4:7–11; see also Ans. 25 (“Frost teaches a multiple use syringe (Abstract: ‘multi-use’ and Column 4, lines 7–11”)). There is no indication that Frost’s multi-use, retractable and extendable syringe can only be used in the manner proffered by Appellant, or that once the needle is retracted, Frost teaches that the syringe becomes inoperable as asserted. Appellant’s incorporation of Frost’s Background section into Frost’s syringe is at odds with Frost’s explicit teaching that Appeal 2021-002961 Application 15/666,908 6 “[t]he syringe can be used for more than one use.” Frost 4:8; see also Ans. 25–32. Furthermore, and specifically addressing the syringe becoming “inoperable,” what Frost actually teaches is that the drug user “can retract the needle when finished and render the device inoperable.” Frost 1:59–60. We agree that a syringe with a retracted needle is no longer operable as a syringe. Further, the Examiner states, “[t]he word ‘inoperable’ simply means that medication cannot be dispensed by the syringe (since the needle is retracted into the syringe).” Ans. 27. However, Figures 9–11 of Frost readily depict how Frost’s needle can be repeatedly extended and retracted, giving support to Frost’s teaching of “multi-use.” Frost Abstract; see also Ans. 27, 28. As such, Appellant’s contentions to the contrary (see Appeal Br. 11–13, Reply Br. 5–9) are not persuasive of Examiner error. Appellant also contends that the Examiner relied “on inherency in justifying the rejection of claim 1.” Appeal Br. 14; see also Reply Br. 9. This is because the Examiner stated that when the needle is stowed within the syringe, such a state becomes “inherent to ‘prevent any risk or harm’ from the needle to others.” Final Act. 4 (referencing Frost 4:5–6 (“where the needle 14 remains safety [sic.] retracted within barrel 12”). Hence, the Examiner’s use of inherency was with respect to the stowed needle preventing risk or harm, and Appellant contends such reliance thereon is improper because there are other ways to ensure safety. See Appeal Br. 14. For example, “one could easily prevent risk of harm by capping a needle, disposing of it in a sharps container, etc.” Appeal Br. 14. We would agree that there may be other ways to prevent risk or harm from an exposed needle, however, there is no recitation to safety (or the avoidance of risk or Appeal 2021-002961 Application 15/666,908 7 harm) in claim 1 such that the Examiner’s reliance on inherency as teaching that a retracted needle prevents harm is not fatal to the Examiner’s rejection. In other words, in an anticipation rejection, the inherent property is to relate to a claim limitation and here, there is no limitation directed to preventing risk or harm. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (an inherent disclosure requires that the prior-art reference “necessarily include the unstated limitation”). As a consequence, Appellant’s focus on “inherency” is not persuasive of Examiner error. Appellant’s further discussion regarding the Examiner’s reliance upon an apparatus that “is ‘capable of’ performing a recited function” is likewise not persuasive of Examiner error. Appeal Br. 15. This is because the Examiner stated that “[i]f the prior art structure is capable of performing the intended use, then it meets the claim.” Final Act. 3. Here, Appellant has not explained how Frost’s syringe is structurally or functionally incapable of alternately extending and retracting the needle, as recited in claim 1. See Appeal Br. 15. In summation, and based on the record presented, we sustain the Examiner’s rejection of claims 1, 7, 8, 11, 13, and 18–20 as anticipated by Frost. The rejection of claims 4–6 and 12 as unpatentable over Frost and Bieri Each of these claims were rejected based upon the combination of Frost and Bieri. The Examiner justified their combination because it would have been obvious “to incorporate a notch as taught by Bieri for the purpose of preventing rotation of the base and plunger.” Final Act. 8. The Examiner explains that “[i]t would be easier to depress the plunger via the thumb if the Appeal 2021-002961 Application 15/666,908 8 plunger was not free to rotate.” Final Act. 8. The Examiner also states that if an anti-rotation feature were not incorporated, the “user’s thumb which is on the plunger would twist with the plunger when the plunger is pressed, which would be uncomfortable for the user.” Ans. 34 (support citation omitted). Appellant challenges this reason to combine stating “[t]here is no logical reason to solve a problem that has not been shown to exist.” Appeal Br. 20; see also Reply Br. 10. Appellant states, “given the way seals typically work in syringes generally, and because of [Frost’s] plunger’s connection with the carriage described . . . one would expect that Frost would not have a problem with unwanted rotation of the plunger.” Appeal Br. 20 (referencing Frost 3:45–47). Appellant’s contentions are supported by Frost explicitly stating, “[t]he syringe of the invention allows a one hand operation” and that “[t]his allows the user to have one hand free.” Frost 4:12–14. Appellant also states that there “is no evidence that Frost suffers from the problems [described] or would benefit from the solution that Bieri proposes.” Reply Br. 10. There is merit to Appellant’s contentions. The rationale relied upon by the Examiner appears subjective in nature (i.e., “easier” and “uncomfortable for the user”). Such justification is also premised on Frost’s plunger rotating when depressed, when there is no evidence that such rotation would or is likely to occur, or that Frost’s one-handed operation is insufficient such that the teachings of Bieri are warranted. In other words, it is not clear that in combining Frost and Bieri, the Examiner has provided “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, Appeal 2021-002961 Application 15/666,908 9 418 (2007). Accordingly, we do not sustain the Examiner’s rejection of claims 4–6 and 12 as unpatentable over Frost and Bieri. The rejection of claims 9 and 14 as unpatentable over Frost and Knepshield The parent of claim 9 recites a locking mechanism that is “configured to engage and lock the base in the extended position each of plural times the base is moved to the extended position” (italics added). The parent of claim 14 recites a locking mechanism that is “configured to engage and lock the base in the fully extended position . . . and to restrict movement in the opposite direction until disengaged” (italics added). In rejecting these claims, the Examiner “substitute[s] the locking mechanism of Frost with the locking mechanism of Knepshield.” Final Act. 10. Appellant contends that when doing so, the limitations of the parent claims are no longer met. See Appeal Br. 21–22; see also Reply Br. 11 (“the Examiner’s Answer assume[s] that Knepshield will be broken to enable certain claim features to allegedly be met in the combination”). We agree with Appellant. Regarding claim 9, Knepshield discloses a locking mechanism that, once engaged, is not to be disengaged. See Knepshield ¶ 19 (discussing insert 60 and annulus 62 that limit further movement of the plunger once the needle has been retracted). As can be seen from Figures 1–3 of Knepshield, prior to use, the needle is locked to the body via projection 52 extending into recess 54. As the plunger is depressed, finger 36 extending therefrom engages a like finger 48 extending in the opposite direction from the needle 30. See Knepshield Figs. 1, 2. Such engagement deflects projection 52 from recess 54. See Knepshield Fig. 2, ¶ 18. The needle (which is no longer restrained by projection 52) can Appeal 2021-002961 Application 15/666,908 10 now be withdrawn into the body, but this is a one-time operation because there is no indication or teaching that the two coupled fingers 36, 48 are to be uncoupled thereby possibly allowing projection 52 to be reinserted within recess 54. Consequently, there is no such coupling “each of plural times the base is moved to the extended position” as recited in claim 9. Regarding claim 14, once Knepshield’s fingers 36, 48 are engaged, the needle can be withdrawn (see Knepshield Fig. 3, ¶ 18). However, claim 14 recites the limitation of restricting withdrawal of the needle “until disengaged.” On the other hand, Knepshield can only withdraw the needle when the needle is engaged, not vice-versa. See Knepshield ¶ 18, Figs. 1–3. The Examiner does not explain how the “needle/base can be re-installed by re-engaging projection (52) with recess (54)” as asserted. Ans. 35. This is because there is no disclosure in Knepshield of how the bias on finger 48 is to be removed (i.e., how face 46 of projection 40 is to be uncoupled from notch 56 in finger 48) so that projection 52 on finger 48 can once again reside within recess 54. See Knepshield Figs. 1–3. The Examiner fails to offer an explanation as to how this bias is to be released in order to enable subsequent re-engagement of the needle within the syringe body. Hence, for the above reasons, we do not sustain the Examiner’s rejection of claims 9 and 14 as being obvious in view of Frost and Knepshield. The rejection of claims 10 and 15 as unpatentable over Frost and Doyle ’401 Appellant argues these claims together. See Appeal Br. 22. Appellant contends that Doyle ’401 “even if appropriate, would not compensate” for the deficiencies of Frost discussed above. Appeal Br. 22. Regarding being Appeal 2021-002961 Application 15/666,908 11 “appropriate” or not, Appellant contends that both Frost and Doyle ’401 are non-analogous art because they both pertain to syringes. See Appeal Br. 22 (“one skilled in this art would not have looked to either reference”). Appellant also relies on the arguments in “Section A.2 above” for support. Appeal Br. 22. We disagree with Appellant and do not fault the Examiner for relying on these syringe references. See Ans. 36, 37. In Section A.2 of Appellant’s Appeal Brief, Appellant states, “it is assumed that there is agreement on Frost addressing a completely different problem that is not reasonably pertinent to the issues here.” Appeal Br. 17. Appellant thereafter discusses problems Frost faces such as “clearing air bubbles” as well as problems relating to “complexity, reliability, repeatability, cost and ease of use.” Appeal Br. 17 (referencing Frost 1:17–19, 1:25–60). Appellant seems to completely disregard the problems faced when attempting to design a needle/body combination wherein the needle can be retracted back into the body (i.e., stored) for later re-use. Frost addresses this problem (see above) as does Appellant (see Spec. ¶ 2). Hence, on this basis alone, Frost would be analogous art because Frost is relevant to the particular problem Appellant addresses. Additionally, as noted above, Appellant equates the field of their invention as being “used to inflate a ball/tire” and hence a ball/tire pump. Appeal Br. 18; see also Reply Br. 2. Appellant states, “[a] safety syringe with a needle is not a ball/tire pump.” Appeal Br. 18. However, as also noted above, Appellant is not claiming a “ball/tire pump,” but instead a “hand pump.” See Ans. 25, 33. Thus, Appellant’s premise, upon which Appellant seeks to distinguish Frost’s field of endeavor, is faulty. Appeal 2021-002961 Application 15/666,908 12 Furthermore, there is no indication that a syringe is not also a hand pump. See also Ans. 33. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 10 and 15 as being unpatentable over Frost and Doyle ’401. The rejection of claims 1, 7, 8, 11, 13, and 18–21 as unpatentable over Doyle ’161 and Frost Appellant argues these claims together. See Appeal Br. 23–24. We select claim 1 for review, with the remaining claims standing or falling with claim 1. Here, Doyle ’161 is the primary reference with Frost being combined with the teachings of Doyle ’161. See Final Act. 12–15. Appellant contends, as argued above, that “Frost is non-analogous art.” Appeal Br. 23; see also Reply Br. 11 (“[s]afety syringes simply are the wrong starting place”). We are not persuaded by such argument for the reasons previously discussed. Appellant also contends that “[t]here is absolutely no logical reason” to have combined Frost with Doyle ’161. Appeal Br. 24. The Examiner reasons that it would have been obvious “to modify the pump of Doyle [’161] by incorporating [Frost’s retractable and locking features] in order to provide an easy way of stowing away the pump needle without the need to remove the needle from the pump.” Final Act. 15. Appellant does not explain why the ability to stow the needle within the body as taught by Frost, and thereby also “avoiding using an extra bag to store the removed needle” (Final Act. 15), lacks rational underpinning. We are not persuaded the Examiner failed to provide a “logical reason” for the combination of Doyle ’161 and Frost as Appellant asserts above. Appellant further contends that the cited combination “appears to be gleaned from the Appeal 2021-002961 Application 15/666,908 13 instant specification” (Appeal Br. 24; see also Reply Br. 11 (“improper hindsight”)) but Appellant does not identify that which was gleaned only from Appellant’s Specification, and not from the cited art. Accordingly, and based on the record presented, we sustain the Examiner’s rejection of claims 1, 7, 8, 11, 13, and 18–21 as unpatentable over Doyle ’161 and Frost. The rejection of claims 4–6 and 12 as unpatentable over Doyle ’161, Frost, and Bieri The Examiner provides the same reason for combining Bieri with that of Doyle ’161 and Frost as those discussed above (i.e., “for the purpose of preventing rotation of the base and plunger”). Final Act. 19. Appellant incorporates previous arguments stating, “[t]he further introduction of Bieri, even if appropriate, would not compensate for these issues.” Appeal Br. 24. For similar reasons previously expressed, we do not sustain the Examiner’s rejection of these claims because the Examiner’s stated reason for combining with Bieri lacks rational underpinning. The rejection of claims 9 and 14 as unpatentable over Doyle ’161, Frost, and Knepshield The Examiner relies on the teachings of Knepshield for the same reasons as those discussed above, and also repeats that it would have been obvious “to substitute the locking mechanism of Doyle/Frost with the locking mechanism of Knepshield.” Final Act. 21. We outlined above the problematic nature of substituting Knepshield’s locking mechanism for that of the Doyle/Frost combination. The same problems remain here. Thus, for similar reasons, we do not sustain the Examiner’s rejection of these claims. Appeal 2021-002961 Application 15/666,908 14 The rejections of: (a) claims 10 and 15 as unpatentable over Doyle ’161, Frost, and Doyle ’401; and, (b) claim 22 as unpatentable over Doyle ’161, Frost, and Holt Appellant presents no arguments other than that these combinations include deficiencies previously addressed. See Appeal Br. 25. Addressing the additionally cited art (i.e., Doyle ’401 and Holt), Appellant states, “[t]he further introduction of [Doyle ’401 or Holt], even if appropriate, would not compensate for these issues.” Appeal Br. 25. Appellant’s contentions are not persuasive of Examiner error. We sustain the Examiner’s rejections of claims 10, 15, and 22 based on the art cited. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 8, 11, 13, 18–20 102 Frost 1, 7, 8, 11, 13, 18–20 4–6, 12 103 Frost, Bieri 4–6, 12 9, 14 103 Frost, Knepshield 9, 14 10, 15 103 Frost, Doyle ’401 10, 15 1, 7, 8, 11, 13, 18–21 103 Doyle ’161, Frost 1, 7, 8, 11, 13, 18–21 4–6, 12 103 Doyle ’161, Frost, Bieri 4–6, 12 9, 14 103 Doyle ’161, Frost, Knepshield 9, 14 10, 15 103 Doyle ’161, Frost, Doyle ’401 10, 15 22 103 Doyle ’161, Frost, Holt 22 Overall Outcome 1, 7, 8, 10, 11, 13, 15, 18–22 4–6, 9, 12, 14 Appeal 2021-002961 Application 15/666,908 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART