Ex Parte Erickson et alDownload PDFPatent Trial and Appeal BoardMar 25, 201612570730 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/570,730 0913012009 28075 7590 03/29/2016 SEAGER, TUFTE & WICKHEM, LLP 100 SOUTH 5TH STREET SUITE 600 MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR Thomas E. Erickson 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. 1221.1118101 1700 EXAMINER COLLINS, RA VEN ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): GEN.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. ERICKSON, JAMES J. ERICKSON, and THOMAS SAURO Appeal2014-002546 Application 12/570,730 Technology Center 3700 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas E. Erickson et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-17. Claims 18-30 are withdrawn from consideration. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We REVERSE. THE INVENTION Appellants' invention relates generally to the distribution of unused medical sharps and the consolidation and return of used medical sharps. Appeal2014-002546 Application 12/570,730 Claim 1, the sole independent claim on appeal, is representative and is reproduced below: 1. A storing, dispensing, and receiving container for units for storing, dispensing, and receiving medical sharps compnsmg: an outer container further comprising: a plurality of compartments, said compartments each being capable of containing one unit for storing, dispensing, and receiving medical sharps, wherein the container is adapted to store and dispense units containing unused sharps; and wherein the container is adapted to receive and store units containing used medical sharps, further wherein the container is adapted to differentiate units containing unused sharps from units containing used sharps. THE REJECTIONS The Examiner has rejected: (i) claims 1, 3, 4, 9, 10, 14, and 15 under 35 U.S.C. § 102(b) as being anticipated by Vumbaca (EP 1 669 097 A2, pub. June 14, 2006); (ii) claims 2, 5-8, 11, 12, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Vumbaca and Nguyen (US 5,873,462, iss. Feb. 23, 1999); and (iii) claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Vumbaca and Keefe (US 5,230,426, iss. July 27, 1993). A rejection of claim 13 under 35 U.S.C. § 112, second paragraph, has been withdrawn by the Examiner. Ans. 4. 2 Appeal2014-002546 Application 12/570,730 The Examiner additionally objects to the drawings under 37 C.F.R. § 1.83(a). See Final Act. 2. This objection appears to be coextensive with the reason presented in the now withdrawn rejection of claim 13 under 35 U.S.C. § 112, second paragraph. As such, the objection does not relate to any particular issue in the rejections on appeal, and therefore, we do not have jurisdiction to determine the correctness of this objection, and any relief from the objection thought to be necessary must be sought via petition. ANALYSIS Claims 1, 3, 4, 9, 10, 14, and 15--Anticipation--Vumbaca The Examiner finds that Vumbaca discloses "a plurality of compartments 36, 37, 38, said compartments each being capable of containing one unit 49 for storing, dispensing, and receiving medical sharps." Final Act. 3--4, citing Vumbaca, Fig. 4. In the Response to Arguments section of the Answer, the Examiner notes that "recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art," otherwise, "[i]f the prior art structure is capable of performing the intended use, then it meets the claim." Ans. 5. Appellants assert that the Specification defines the term "unit" and that based on this definition, plural sharps are required in each unit. Appeal Br. 9-10, citing Spec. 6, 11. 5-10. Appellants point out that by contrast, Vumbaca's sterile packaging 49 is for a single unused syringe. Id. at 10; see also Reply Br. 4. Appellants thus argue that the Examiner erroneously asserts that Vumbaca's sterile packaging 49 "may be construed to correspond to a unit containing unused and/or used medical sharps (plural) 3 Appeal2014-002546 Application 12/570,730 as that term would be understood by one of ordinary skill in the art in view of the instant specification and drawings as discussed herein." Id. Appellants argue that moreover, "the plastic wrapping is not disclosed by Vumbaca as either containing sharp§ (plural) or as receiving sharp§ (plural), even in the much looser sense of 'capable of.'" Reply Br. 6. Claim 1 recites, in part, that each compartment is "capable of containing one unit for storing, dispensing, and receiving medical sharps," with the term "sharps" in the plural. Thus, although we do not agree with Appellants that the Specification explicitly defines the term "unit" to clearly require plural sharps in every unit, nevertheless, claim 1 explicitly requires that each compartment must be capable of containing one unit that stores, dispenses, and receives more than one sharp (i.e., sharps, plural). Based on the Examiner's findings, Vumbaca's compartment 36 contains one unit, i.e., plastic wrapping 49, containing a single unused syringe 48. Vumbaca i-f 24; Fig 4. Compartment 37 of Vumbaca contains a single used syringe 44 (see id. at i-f 23; Fig. 4), and even if one were to return used syringe 44 to wrapping 49 before placing it in compartment 37, as suggested by the Examiner (see Ans. 5---6), based on Figures 3 and 4 of Vumbaca, it does not appear that wrapping 49 is capable of containing plural syringes, whether used as in compartment 37, or unused as in compartment 36. Moreover, it is even less likely that wrapping 49 used in this manner would fit in each of compartments 36, 37, or 38. Given that the Examiner has not adequately explained why each of Vumbaca's compartments would be capable of such use, the preponderance of the evidence weighs against the Examiner's position that each of Vumbaca's compartments would be capable of 4 Appeal2014-002546 Application 12/570,730 containing one unit that stores, dispenses, and receives (plural) medical sharps. The rejection of claim 1 and of claims 3, 4, 9, 10, 14, and 15 depending therefrom, as being anticipated by Vumbaca is not sustained. Claims 2, 5-8, 11, 12, and 17--0bviousness--Vumbaca/Nguyen The Examiner does not rely on Nguyen in any manner that remedies the deficiencies of Vumbaca noted above. See Final Act. 4--5. Thus, for the same reasons presented above, the rejection of claims 2, 5-8, 11, 12, and 17 is not sustained. Claim 16--0bviousness--Vumbaca/Keefe The Examiner does not rely on Keefe in any manner that remedies the deficiencies of Vumbaca discussed supra. See Final Act. 5-6. Accordingly, the rejection of claim 16 is also not sustained. DECISION The rejection of 1, 3, 4, 9, 10, 14, and 15 under 35 U.S.C. § 102(b) as being anticipated by Vumbaca is reversed. The rejection of claims 2, 5-8, 11, 12, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Vumbaca and Nguyen is reversed. The rejection of claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Vumbaca and Keefe is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation