Ex Parte Danchisin et al

Patent Trial and Appeal Board

Sep 29, 2017

14531423 (P.T.A.B. Sep. 29, 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.
14/531,423 11/03/2014 Jennifer Ellis Danchisin 9262-133424-US (10390U) 1030
19407 7590 09/29/2017
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
MACKEY, PATRICK HEWEY
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
09/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER ELLIS DANCHISIN, THOMAS C. GREGORY SR.,
STEVE HENRIKSON, and DEBORAH ADLER
Appeal 2016-008505
Application 14/531,423
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jennifer Ellis Danchisin et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—6 and 8—20, which
are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Medline Industries, Inc., as the real party in
interest. Appeal Br. 3.
Appeal 2016-008505
Application 14/531,423
INVENTION
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A prophylactic kit apparatus configured to be used with
only a single patient, comprising:
a plurality of sealed modules, each of the sealed modules
containing at least one prophylactic agent to be used in service
of the patient and wherein the sealed modules are to be used in a
particular order in service of the patient;
a housing configured to conformally and loosely contain
the plurality of sealed modules and having a dispensing slot
configured and sized such that only one of the plurality of sealed
modules can be removed from the housing at a time and in a
particular order, the housing having no other openings of
sufficient size to accommodate removal of one of the plurality of
sealed modules, the housing further including an integral
removable flap that at least partially blocks the dispensing slot
and that, when removed from the dispensing slot, fully exposes
the dispensing slot to thereby permit no more than one of the
sealed modules to be removed from the housing therethrough at
a time.
Appeal Br. 22 (Claims App.).
REJECTIONS2
1. Claims 1—6 and 8—20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.3 4
2 A rejection of claims 1^4 under 35 U.S.C. 103(a) as unpatentable over
“Kimberly-Clark* KimVent* Oral Care q4 Kit & Individual
Components/Packs” has been withdrawn. Ans. 5; Final Act. 5 (rejection).
3 The heading of this rejection, and also the headings of each of rejections 2—
4 below, also lists claim 7. Final Act. 2—A (rejections); Ans. 2—A. We treat
the listing of claim 7 as a typographical error.
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Application 14/531,423
2. Claims 1—6 and 8—20 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
3. Claims 1—6, 8, 9, and 14—20 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Campbell (US 5,221,024, issued June 22, 1993).
4. Claims 1—4, 6, 10-15, 19, and 20 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Stone (US 4,382,526, issued May 10, 1983).
ANALYSIS
Rejection 1—Written Description
Claim 1 recites:
a housing configured to . . . contain the plurality of sealed
modules and having a dispensing slot configured and sized such
that only one of the plurality of sealed modules can be removed
from the housing at a time . . ., the housing having no other
openings of sufficient size to accommodate removal of one of the
plurality of sealed modules\.\
Appeal Br. 22 (Claims App. (emphasis added)). The Examiner determines
there is no support in the original disclosure for the limitation of “the
housing having no other openings of sufficient size to accommodate removal
of one of the plurality of sealed modules.” Final Act. 2.
For the written description requirement of 35 U.S.C. § 112, first
paragraph, “the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
See AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). In order to show “possession,” “the specification must
describe an invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.” Id. The Specification
need not describe the subject matter of a claim literally, or “in ipsis verbis,”
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Application 14/531,423
in order to satisfy the written description requirement. See, e.g., Cordis
Corp. v. Medtronic Ave., Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003).
Appellants contend that the Specification supports the disputed
limitation. Appeal Br. 8—9. As recited in claim 1, the “dispensing slot [is]
configured and sized such that only one of the plurality of sealed modules
can be removed from the housing at a time.” We understand that this
language means only one of the sealed modules contained in the housing can
be removed from the housing at a time, and, further, that this sealed module
is removed through the dispensing slot.
Our construction of this limitation is consistent with Appellants’
Specification. For example, the Specification describes that “dispensing
slot 103 has a height H and a length L that will readily permit one, but not
two or more, of the sealed modules 101 therethrough. So configured, only
one of the sealed modules 101 can be removed from the housing 100 at a
time.” See Spec. 125, Fig. 1; see also id. 127 (“Disposing these sealed
modules 101 within such a housing 100 will permit only one such sealed
module 101 to be removed from the housing 100 at a time ... to thereby
help assure that medical service providers employ only appropriate sealed
modules 101 at a time of service.”).
The Examiner determines that “a housing configured to contain
modules such that only one module can be removed from the housing at a
time does not preclude the presence of a plurality of openings of sufficient
size to accommodate removal of one of the plurality of sealed modules.'1'’
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Application 14/531,423
Ans. 8 (emphasis added). However, the Examiner does not identify any
disclosure that supports this construction.4
The Specification describes that housing 100 can include openings in
addition to the dispensing slot 103. As noted by Appellants, the
Specification describes that “the sidewalls, back, top, and bottom panels of
housing 100 “are closed,” but housing 100 can include “small apertures,”
“provided those apertures are not sufficiently large to accommodate removal
of one of the sealed modules 101 from within the housing 100.” Appeal Br.
8—9; Spec. 124 (emphasis added).
The Specification also describes that housing 100 includes a
“window 104 [which] is of insufficient dimensions to permit the sealed
modules 101 to readily pass therethrough.” See Spec. 126 (emphasis
added). The Examiner interprets this description to mean that “[t]he sealed
modules do not readily pass through window 104, but they may pass
through.” Ans. 6. We note, however, that sealed modules 101 are shown
stacked vertically inside housing 100, and have a length dimension, L,
extending horizontally to allow sealed modules 101 to be removed through
dispensing slot 103. See Spec. 123, Fig. 1. In contrast, Figure 1 shows that
the length (long) dimension of window 104 extends vertically, and the width
dimension of window 104 is significantly shorter than the dimension L.
Consequently, it is not apparent how sealed modules 101 could be removed
4 In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (One is not in a position
to determine whether the subject matter defined in a claim is described in the
specification in accordance with the first paragraph of35U.S.C. § 112 until
the definiteness of that claim is determined under the second paragraph of
this section of the statute.).
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Application 14/531,423
from housing 100 through window 104, in addition to through dispensing
slot 103.
The Specification repeatedly describes that only one sealed module
can be removed from the housing at a time. In addition, the Specification
describes only the dispensing slot as the opening that is of sufficient size to
accommodate removal of the one sealed module at a time from the housing.
Further, the Specification does not appear to describe any opening other than
the dispensing slot that is “of sufficient size to accommodate removal of one
of the plurality of sealed modules” contained in the housing and arranged to
be removed through the dispensing slot.
For these reasons, we do not sustain the rejection of claim 1, and
claims 2—6 and 8—20 depending therefrom, as failing to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph.
Rejection 2—Indefiniteness
As to claim 1, the Examiner determines that the limitations of “a
dispensing slot ‘sized such that only one of the plurality of sealed modules
can be removed from the housing’” and “no other openings ‘of sufficient
size to accommodate removal of one of the plurality of sealed modules’”
subjects the claim to a plurality of plausible claim constructions. Final
Act. 3. The Examiner states that the claim scope changes depending on the
size of the “sealed modules.” Id.
Appellants contest this rejection. Appeal Br. 10—12. Appellants
contend that “the essential relative limitations set forth in claim 1 do not
change even though the size of the sealed modules might change.” Id. at 10.
According to Appellants, “no matter how big or small the sealed modules
might be, claim 1 nevertheless requires that the housing have a dispensing
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Application 14/531,423
slot ‘sized such that only one of the plurality of sealed modules can be
removed from the housing at a time and in a particular order.” Id.
We agree with Appellants that the scope of claim 1 is not dependent
on the size of the sealed modules. As noted by Appellants, claim 1
positively recites the sealed modules as elements of the prophylactic kit
apparatus. Appeal Br. 10. Claim 1 further recites “a housing configured to .
. . contain the plurality of sealed modules.” Accordingly, the dispensing slot
of the housing is sized relative to the sealed modules that are contained in
the housing. As such, claim 1 implicitly imposes size limitations on the
dispensing slot relative to the sealed modules contained in the housing in
order to satisfy the limitation that “no more than one of the sealed modules
to be removed from the housing therethrough [i.e., through the dispensing
slot] at a time.” We disagree with the Examiner’s statement that “in order to
understand the scope of the claim, one must know the size of the modules.”
Ans. 11. Rather, we agree with Appellants that, “to the extent that the size
of the sealed module might vary, the housing itself is viewed with respect to
whatever size of sealed module might be involved.” Appeal Br. 10.
Appellants’ explanation why the language recited in claim 1 is
sufficiently clear with respect to providing adequate notice to the public as
to whether the requirements of claim 1 are met (i.e., whether infringement of
claim 1 occurs or does not occur) is also persuasive. Reply Br. 5—6.
For these reasons, we determine that the meaning of each disputed
limitation in claim 1 is sufficiently clear and would be understood by one of
ordinary skill in the art in view of the Specification. Thus, we do not sustain
the rejection of claim 1, and claims 2—6 and 8—20 depending therefrom, as
indefinite under 35U.S.C. § 112, second paragraph.
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Rejection 3—Anticipation by Campbell
The Examiner finds that Campbell discloses a prophylactic kit
apparatus comprising all elements of claim 1. Final Act. 3-A. Particularly,
the Examiner finds that Campbell’s apparatus comprises, inter alia, a
plurality of sealed modules 13 and a housing 10 configured to conformally
contain sealed modules 13 and having a dispensing slot 43 and an integral
removable flap 11. Id.
Appellants contest the Examiner’s finding that Campbell discloses all
limitations in claim 1. Appeal Br. 13—15. Particularly, Appellants contend
that, in Campbell, magazine 12, not housing 10, “conformally” contains
sealed modules 13. Id. at 13. Appellants also contend that door 11 is not
integral to magazine 12. Id. Appellants further contend that magazine 12 is
open at both its upper and bottom ends, and, hence, sealed modules can be
removed from either end. Thus, Appellants contend, Campbell fails to meet
the claim limitation of “the housing having no other openings [than the
dispensing slot] of sufficient size to accommodate removal of one of the
plurality of sealed modules.” Id. at 14.
Appellants also contend that if Campbell’s housing 10 is considered to
be the claimed “housing,” then housing 10 fails to “conformally” contain the
modules, and if magazine 12 is considered to be the claimed “housing,” then
magazine 12 fails to have a “flap,” as claimed. Id. at 14. Appellants assert
that there is no reasonable basis for conflating Campbell’s housing 10 and
magazine 12 into a single “housing” entity. Id.
Appellants’ contentions are persuasive. Campbell discloses a
medicine dispenser comprising “a cabinet 12 with a door 11, [and] a
magazine 12 for holding a large number of medicine canisters 13.”
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Campbell, col. 3,11. 57—62 (emphasis added), Fig. 1A. Claim 1 requires “a
housing configured to conformally and loosely contain the plurality of
sealed modules.” Appeal Br. 22 (Claims App. (emphasis added)). Campbell
shows that medicine canisters 13 have a similar size and configuration as the
interior of magazine 12 they are held in. Campbell, Fig. 1 A. Appellants
appear to acknowledge that magazine 12 can be considered to conformally
contain medicine canisters 13. Id. at 13. Although Campbell’s housing 10
can be considered to contain medicine canisters 13, we agree with
Appellants that housing 10 does not conformally contain medicine canisters
13.
Further, we agree with Appellants that because Campbell’s
magazine 12 is open at both its upper and bottom ends (see Fig. 1 A),
magazine 12 does not satisfy the claim limitation of a “housing having no
other openings [than the dispensing slot] of sufficient size to accommodate
removal of one of the plurality of sealed modules.” Appeal Br. 14.
Appellants contend correctly that canisters 13 can be removed from both the
upper end and bottom end of magazine 12 at a time. Reply Br. 6—7.
In addition, claim 1 recites, “the housing further including an integral
removable flap that at least partially blocks the dispensing slot and that,
when removed from the dispensing slot.'” Id. at 22 (Claims App. (emphasis
added)). Even assuming that Campbell’s dispensing port 43 corresponds to
the claimed dispensing slot, it is not apparent how Campbell’s “removable
flap” (i.e., door 11) is “removed from” dispensing port 43. Rather, Figure
1A of Campbell shows that door 11 overlies magazine 12 and, hence,
dispensing port 43.
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Application 14/531,423
As the Examiner’s finding that Campbell discloses all limitations of
claim 1 is not supported by a preponderance of the evidence, we do not
sustain the rejection of claim 1, and claims 2—6, 8, 9, and 14—20 depending
therefrom, as anticipated by Campbell.
Rejection 4—Anticipation by Stone
Claims 1, 6, 10-15, 19, and 20
The Examiner finds that Stone discloses all elements of claim 1. Final
Act. 4—5. Particularly, the Examiner finds that Stone’s apparatus comprises,
inter alia, a plurality of sealed modules and a housing 10 configured to
conformally contain the sealed modules and having a dispensing slot 12 and
an integral removable flap 68. Id.
Appellants contest the Examiner’s finding that Stone discloses all
limitations in claim 1. Particularly, Appellants contend that Stone discloses
a packet dispenser that provides two side-by-side columns of packets, where
each column is accessible via a dispensing port at the bottom of the
apparatus. Accordingly, Appellants contend, Stone fails to disclose a
dispensing port “configured and sized such that only one of the plurality of
sealed modules can be removed from the housing at a time,” as claimed. Id.
Appellants also contend claim 1 specifies that the dispensing slot is
configured and sized such that only one of the plurality of sealed modules
can be removed from the housing at a time, and, in a particular order. Id.
Appellants contend that Stone, in contrast, discloses a dispensing slot that
allows at least two modules to be withdrawn, either simultaneously or in any
order (i.e., from one side or the other). Id.
The Examiner responds that Stone discloses that “two parallel stacks
of articles may be loaded into the container,” but doesn’t require two parallel
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stacks and could be utilized and function with only one stack. Ans. 14
(citing Stone, col. 5,11. 10—12). The Examiner finds that Stone also
discloses that “[t]he support structure 16 provides underneath support for
one or more stacks of articles located within the container” {id. (citing Stone,
col. 3,11. 1—3)), and “the gate edge functions to permit removal of the
articles one at a time” {id. (citing Stone, col. 5, lines 62—63)). The Examiner
determines that because Stone is capable of operating with a single stack,
and explicitly states that the articles are removed one at a time, Stone
discloses “a housing configured to contain the plurality of sealed modules
such that only one of the plurality of sealed modules can be removed from
the housing at time.” Id.
Appellants reply that “the Examiner’s position is not based on what
Stone directly teaches but rather upon how Stone might be configured and
employed.” Reply Br. 9. Accordingly, Appellants contend, the Examiner’s
position “is based on a capability that the Examiner considers to be inherent
to Stone rather than anything that is directly taught in Stone.” Id.
Appellants’ contentions are not persuasive. Where the Patent Office
has reason to believe that a claimed functional limitation is an inherent
characteristic of the prior art, it has the authority to require Appellants to
show that the prior art does not possess that characteristic relied on. See In
re Best, 562 F.2d 1252, 1254—55 (CCPA 1977); In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (when the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not). Here, the Examiner articulates a
reasonable basis for finding that Stone’s dispensing container meets the
disputed limitations. In this regard, we note that Figure 5 of Stone shows a
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user removing a single bottommost article 154 from dispensing container 10.
Stone describes that:
Specifically, the gate edge functions to permit removal of the
articles one at a time. Normally, with the removal of the
bottommost article 154 there would be a tendency for the second
lowest packet 156 to be pulled out of the stack as well. However,
movement of the second packet 156 is restricted by the gate edge
32. This gating function may be enhanced in the case that the
articles are flexible, flat packets as illustrated. The vertical
clearance of the gate edge 32 may be reduced so that the
bottommost packet 154 cannot be removed along the straight line
path (indicated schematically by the arrow 158). Instead, the
packet must be removed by flexing it downward while exerting
an outward force as indicated schematically by the arrow 160. In
this way the packets may be removed in a simple outward motion
which neatly removes the packets one by one.
Stone, col. 5,11. 62—col. 6,1. 10, Fig. 5. Appellants do not apprise us of any
error in the Examiner’s findings.
Appellants’ contention that Stone’s free flap 68 does not correspond
to the claimed integral removable flap is not persuasive. Appeal Br. 18.
Appellants do not explain persuasively why the Examiner is incorrect.
For these reasons, we sustain the rejection of claim 1, and claims 6,
10-15, 19, and 20, which depend from claim 1 and not separately argued, as
anticipated by Stone.
Claims 2-A
Claims 2—\ depend from claim 1 and recite the contents of the
plurality of sealed modules. Appeal Br. 22 (Claims App.). The Examiner
determines that “[cjlaims 2-4 are apparatus claims reciting elements relating
to the material inside the ‘sealed modules’. Expressions relating an
apparatus to its contents do not distinguish over the prior art.” Final Act. 5
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(citing MPEP § 2115). According to the Examiner, MPEP § 2115 “states
that a claim recitation relating to the article worked upon in an apparatus
claim does not, by itself, distinguish the claim from the prior art.” Ans. 13
(emphasis added).
We agree that the Examiner’s reliance on MPEP § 2115 in rejecting
claims 2—A is misplaced. Appeal Br. 15—16. Claims 2—A positively recite
the contents of the sealed modules, which are elements of the claimed
prophylactic kit apparatus. Accordingly, the Examiner is required to find
that Stone discloses the contents recited in claims 2-4. Consequently, we do
not sustain the rejection of claims 2—\ as anticipated by Stone.
DECISION
We reverse the rejection of claims 1—6 and 8—20 under 35 U.S.C.
§112, first paragraph, written description requirement.
We reverse the rejection of claims 1—6 and 8—20 under 35 U.S.C.
§112, second paragraph.
We reverse the rejection of claims 1—6, 8, 9, and 14—20 under 35
U.S.C. § 102(b) as anticipated by Campbell.
We affirm the rejection of claims 1, 6, 10-15, 19, and 20, and reverse
the rejection of claims 2-4, under 35 U.S.C. § 102(b) as anticipated by
Stone.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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