Ex Parte Santos et al

Patent Trial and Appeal Board

Mar 17, 2017

12444000 (P.T.A.B. Mar. 17, 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.
12/444,000 04/02/2009 Cesario Dos Santos PAT903388-US-PCT 5672
26356
ALCON
IP LEGAL
7590 03/21/2017 EXAMINER
LEE, WENG WAH
6201 SOUTH FREEWAY
FORT WORTH, TX 76134 ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
patent, docketing @ alcon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CESARIO DOS SANTOS and ROBERT J. SANCHEZ JR.
Appeal 2015-005897
Application 12/444,000
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims 1, 2, and 4—
20 (Br. 10). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants’ “invention relates to a single-use medical device and
more particularly to a two-piece ophthalmic injection device with a
disposable tip end containing a temperature control device and temperature
1 Appellants identify “[t]he real party in interest [as] Alcon Research, Ltd.”
(Br. 2).
Appeal 2015-005897
Application 12/444,000
sensor assembly” (Spec. 1:15—17). Independent claims 1, 11, and 15 are
representative and reproduced in the Claims Appendix of Appellants’ Brief.
Claims 1, 2, and 4—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carballo.2
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Carballo suggests
A temperature-controlled laboratory heating apparatus
consisting of a flexible electrical heater wrapped around the
exterior surface of a conventional glass or metal beaker and
permanently encased within a rubber molding forming an
insulating ring around it.. . . A thermistor is mounted against the
outside surface of the beaker within the rubber molding and is
connected to the control panel to regulate the flow of current
through the electrical heater to reach and maintain the
temperature set by the user.
(Carballo Abstract; see also Ans. 2—3.)
2 Carballo, US 5,271,085, issued Dec. 14, 1993.
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Appeal 2015-005897
Application 12/444,000
FF 2. Figure 2 of Carballo is reproduced below:
FI&: Z
Figure 2 shows “a conventional cylindrical beaker 20 . . . combined with an
electric heater 30 wrapped around the external service of the beaker’s wall
22” along with “a temperature sensor 50” (Carballo 3:26—29, 50—51; see
also Ans. 2—3.)
FF 3. Figure 7B of the Specification is reproduced below:
Figure 7B shows that
[tjhermal sensor 460 is located a distance “d” from temperature
control device 450. This distance “d” is approximately equal to
450
Fig. 7B
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Appeal 2015-005897
Application 12/444,000
the thickness of the dispensing chamber housing 425 as shown
in Figure 6B. In this manner, thermal sensor 460 reads a
temperature that is approximately equal to the temperature on the
interior of dispensing chamber housing 425. Since the distance
“d” is the distance between the temperature control device 450
and both the thermal sensor 460 and the dispensing chamber 405,
thermal sensor 460 is located such that it reads a temperature that
approximates the temperature in dispensing chamber 405.
(Spec. 11:12—20; see also Br. 11.)
ANALYSIS
Each of Appellants’ independent claims 1,11, and 15 specifically
define the distance between a thermal sensor and a temperature control
device (see Appellants’ claims 1, 11, and 15). Appellants’ independent
claim 1 requires, inter alia, that the “distance between the electrical
temperature control device and the thermal sensor on the second area of the
substrate is approximately equal to the wall thickness of the dispensing
chamber housing” (Appellants’ claim 1; see also Appellants’ claim 15
(“distance between the electrical temperature control device and the thermal
sensor on the substrate is approximately equal to the wall thickness of the
dispensing chamber housing”)). Appellants’ independent claim 11 requires,
inter alia,
that a distance between the thermal sensor and the electrical
temperature control device on the substrate is approximately
equal to a distance between the temperature control device and a
substance whose temperature is to be altered by the temperature
control device.
(Appellants’ claim 11.)
Examiner finds that Carballo suggests a dispensing assembly
essentially as claimed except that it “fails to disclose wherein a distance
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Appeal 2015-005897
Application 12/444,000
between the electrical temperature control device and the thermal sensor on
the second area of the substrate is approximately equal to the wall thickness
of the dispensing chamber housing” (see Ans. 2—3). Nevertheless, Examiner
concludes that
it would have been an obvious matter of design choice at the time
the invention was made to modify the distance between the
electrical temperature control device and the thermal sensor of
Carballo in order to reduce the surface area of the substrate and
in turn allow the dispensing assembly to be more compact, since
[Appellants have] not disclosed that having a distance
approximately equal to the wall thickness of the dispenser
chamber housing would solve any particular problem and it
appears that the shape and dimensions as disclosed in the
reference will serve equally well with the same as claimed.
{Id. at 3^4 (emphasis added).) We are not persuaded.
Notwithstanding Examiner’s assertion to the contrary, Appellants do
disclose a reason for placing the thermal sensor a particular distance away
from the temperature control device (see FF 3 (“distance ‘d’ is
approximately equal to the thickness of the dispensing chamber housing
[and,] [i]n this manner, the thermal sensor [] reads a temperature that is
approximately equal to the temperature on the interior of the dispensing
chamber housing []”) (figure citations omitted); see also Br. 13). Thus,
Appellants disclose a relationship, i.e., a distance, between the thermal
sensor and the temperature control device that permits the thermal sensor to
specifically identify a temperature that approximates the temperature in the
dispensing chamber, as opposed to, for example, a temperature that may be
affected by the temperature control device’s interaction with the thermal
sensor itself or “a temperature [] of the dispensing chamber housing” (see
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Appeal 2015-005897
Application 12/444,000
Br. 13). As Appellants explain, “[n]o other distance is disclosed in the[ir]
[Specification” and “[o]ther distances would not provide such a temperature
reading” (Br. 10 and 13).
Examiner concedes that Carballo “fails to disclose [] a distance
between the electrical temperature control device and the thermal sensor on
the second area of the substrate [that] is approximately equal to the wall
thickness of the dispensing chamber housing” (see Ans. 3). Thus, Examiner
failed to establish an evidentiary basis on this record to support a conclusion
“that the shape and dimensions” of Carballo’s device “will [necessarily]
serve equally [as] well” as Appellants’ claimed device (see id. at 4).
For the foregoing reasons, we are also not persuaded by Examiner’s
assertion that “changing the distance between the electrical temperature
control device and thermal sensor of Carballo would be an obvious design
choice because doing so would effectively reduce the surface area of the
substrate and in turn allow the beaker to be more compact'' (Ans. 5
(emphasis added); see also id. at 3 4). In this regard, Examiner failed to
establish that a more compact beaker size will necessarily result in a
difference in beaker wall thickness or that by changing the size of Carballo’s
beaker will necessarily result in a distance between the thermal sensor and
temperature control device as is required by Appellants’ claimed invention.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”).
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Appeal 2015-005897
Application 12/444,000
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, and 4—20 under 35 U.S.C. § 103(a) as
unpatentable over Carballo is reversed.
REVERSED
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