Ex Parte Williams

Patent Trial and Appeal Board

Sep 29, 2014

11660570 (P.T.A.B. Sep. 29, 2014)

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.
11/660,570 02/16/2007 Timothy Richard Williams JR. PER001 P338 1142
277 7590 09/30/2014
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
CHU, KING M
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
09/30/2014 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 TIMOTHY RICHARD WILLIAMS, JR.
____________

Appeal 2012-002466
Application 11/660,5701
Technology Center 3700
____________

Before EDWARD A. BROWN, THOMAS F. SMEGAL, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Timothy Richard Williams, Jr. (Appellant) appeals under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1–12 and 15–32, which
are all the pending claims. Appeal Br. 2. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is L. Perrigo
Company. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a child-resistant
medicament package and particularly to an opening feature for a blister-type
package.” Spec., ¶ 2. Claims 1, 7, 15, and 25 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A child-resistant blister package2 comprising:
a first polymeric film defining a pocket for receiving a
medicament therein;
an impenetrable polymeric film sealed to said first
polymeric film for sealing a medicament in said pocket;
a covered unsealed area located between said first
polymeric film and said impenetrable polymeric film, said
unsealed area extending along one edge of said blister pack; and
a die cut extending at an acute angle toward adjacent
edges of said blister pack and having only one end intersecting
and extending into said unsealed area and an opposite end
extending toward one edge of said blister pack adjacent said
edge on which said unsealed area is located, wherein said
package can be opened by tearing the die cut to remove a corner
of the blister pack to define a gap between said first polymeric
film and said impenetrable film exposing a tab which can be
gripped for peeling the impenetrable polymeric film from said
package to allow a medicament to be pushed through a foil
layer.

2 We note that Appellant recites the terms “blister package” and “blister
pack” interchangeably within the claims. We understand these terms to have
the same meaning and to reflect the same structure (as have Appellant and
the Examiner); accordingly, we treat this discrepancy between terms as an
inadvertent and harmless error for the purpose of our analysis herein.
Should there be further prosecution of this application, Appellant should
amend the claims so that consistent terminology is used throughout.
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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Brunda US 3,899,080 Aug. 12, 1975
Compere US 3,921,805 Nov. 25, 1975
Margulies US 4,294,361 Oct. 13, 1981
Bitner US 5,310,060 May 10, 1994
Weiss US 6,251,489 B1 June 26, 2001

REJECTIONS
The following rejections are before us for review:3
I. Claims 1, 7, 15, 21, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Compere, Margulies, and
Brunda.
II. Claims 2–6, 8–12, 16–20, and 26–29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Compere,
Margulies, Brunda, and Bitner.
III. Claims 22–24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Compere, Margulies, Brunda, and Weiss.
IV. Claims 30–32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Compere, Margulies, Brunda, Bitner, and
Weiss.

3 We note that the rejection of claims 3–6, 9–12, 15–24, and 27–32
under 35 U.S.C. § 112, second paragraph, as being indefinite, has been
withdrawn by the Examiner and thus is not before us for review as part of
the instant appeal. Ans. 4.
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ANALYSIS
Rejection I – Claims 1, 7, 15, 21, and 25 as unpatentable
over Compere, Margulies, and Brunda
Appellant argues the rejection of claims 1, 7, 15, 21, and 25 together.
See Appeal Br. 9–12. We thus select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 7, 15, 21, and
25 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Compere discloses a child-resistant blister
package with certain features as recited in independent claim 1, including a
first polymeric film, an impenetrable polymeric film, a covered unsealed
area, and a die cut, where the package “can be opened” by tearing the die cut
to remove a corner of the blister pack to define a gap between films as
claimed. Ans. 5–6 (citing Compere, Figs. 4, 5; col. 3, ll. 49–57). The
Examiner also found that Margulies discloses design details of the die cut as
claimed, including the recited extension angle and end displacement. Ans. 6
(citing Margulies, Fig. 4). The Examiner then concluded that it would have
been obvious to one having ordinary skill in the art at the time the invention
was made to modify the die cut of Compere in view of Margulies “to
provide a more complex way to open the unsealed area” of the package “so
that one not understanding the procedure required to effect rupture of the
covering sheet . . . will not be able to open the package . . . thereby
improving child resistance.” Ans. 6 (citing Margulies, col. 3, ll. 20–24).
The Examiner further found that Brunda discloses a foil layer attached
to the package to allow a medicament to be pushed through a foil layer as
claimed. Ans. 7. The Examiner then concluded that it would have been
obvious to one having ordinary skill in the art at the time the invention was
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made to modify the combination of Compere and Margulies to include an
additional ruptureable foil layer “to add an additional rupture step to prevent
accidental opening by a child.” Ans. 7 (citing Brunda, col. 1, ll. 46–49).
Appellant argues that the tab 19 of Compere “is not removed from the
package as required of corner 30 defined by independent claims 1, 7, 15, 21
[sic], and 25 of Applicant’s structure.” Appeal Br. 9 (emphasis added). At
the outset, we note that Appellant’s subsequent arguments also hinge on the
same premise that the claims require removal of a corner of the package.
See Appeal Br. 9–12.
We are not persuaded by Appellant’s argument because the premise
relied upon is faulty. In particular, “the name of the game is the claim” and
it is well established that asserted features not appearing in the claim cannot
be relied upon for patentability. In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998) (citation omitted); see also In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Here, the claim only recites, in relevant part, that the package “can be
opened by tearing the die cut to remove a corner of the blister pack to define
a gap” between films. See Appeal Br., Clms. App. (emphasis added). So
long as the combination of teachings from Compere, Margulies, and Brunda
relied on by the Examiner in the rejection likewise “can be opened” by
tearing the die cut to remove a corner of the blister pack to define a gap
between films, then it meets the requirements of the claim. In other words,
claims directed to an apparatus, as here, must be distinguished from the prior
art in terms of structure rather than function. See In re Schreiber,
128 F.3d 1473, 1477–78 (Fed. Cir. 1997); see also Hewlett-Packard Co. v.
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Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus
claims cover what a device is, not what a device does”).
In this regard, the Examiner’s finding that Compere discloses the
structure of a package that includes the functional capability whereby the
package “can be opened by tearing the die cut to remove a corner of the
blister back to define a gap” between films as claimed is supported by a
preponderance of the evidence. In particular, the Examiner correctly
determined that the package of Compere can be opened by tearing the die
cut to remove a corner to define a gap between film layers 15 and 17 as
broadly recited in the claim. See Ans. 5–6, 26–27; Compere, Fig. 4.
Appellant provides no evidence or persuasive technical reasoning why the
structure of Compere would not be capable of being opened by tearing the
die cut to remove a corner of the blister pack to define a gap as claimed.
Regarding any degree of separation required by the capability of removing a
corner of the blister pack to define a gap, we note that an ordinary meaning
of “remove” is simply “to change the location, position, station, or residence
of.” See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2003).4
Thus, we agree with the Examiner that the capability to “remove . . . to
define a gap” as recited in the claim as part of a functional limitation does
not require the capability of complete separation. See Ans. 26–27.
Appellant also points to alleged shortcomings of each reference
individually, rather than addressing the combination used in the rejection of
record. See Appeal Br. 10–12. In particular, Appellant argues that “none of

4 We also note that the term “remove” is not given any special
definition in Appellant’s Specification; in fact, we did not find the term
“remove” in the Specification at all.
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the primary references relied upon by the Examiner teach[es] structure
which results in a tear-peel-push package as defined by Applicant’s claims
but rather suggest only a tear and peel (Compere), snap and peel
(Margulies), or a peel and push (Brunda) package.” Appeal Br. 11. We are
not persuaded by Appellant’s argument because nonobviousness “cannot be
established by attacking references individually” when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,
425 (CCPA 1981)). Here, the rejection is based on the combined teachings
of Compere, Margulies, and Brunda, as discussed in detail supra; thus,
Appellant’s allegations of shortcomings of each reference individually are
not responsive to the rejection as articulated by the Examiner.
As to the combination of teachings upon which the rejection relies,
and with particular regard to the modification of the die cut of Compere in
view of Margulies as applied by the Examiner, Appellant argues that the
rejection “offers no reason why one skilled in the art would make such a
modification.” Appeal Br. 10. We disagree. In support of the legal
conclusion of obviousness, the Examiner articulated detailed reasoning
based on rational underpinnings to explain why a person of ordinary skill in
the art would have been led to combine the teachings of Compere,
Margulies, and Brunda, as discussed supra. See Ans. 5–7, 27–28; see also
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We note that the
reason to modify a reference may often prompt a person of ordinary skill in
the art to do what the inventor has done, but for a different purpose or to
solve a different problem; it is not necessary that the prior art suggest the
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combination to achieve the same advantage or result discovered by an
applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1, and claims 7, 15, 21, and 25 falling with claim 1, under 35 U.S.C.
§ 103(a) as being unpatentable over Compere, Margulies, and Brunda.

Rejection II – Claims 2–6, 8–12, 16–20, and 26–29 as unpatentable
over Compere, Margulies, Brunda, and Bitner
Claim 2
Appellant argues that Bitner “is not employed for removing a corner
of a package as does the die cut defined in claim 2 of Applicant’s invention.”
Appeal Br. 12. We are not persuaded by Appellant’s argument, which is not
responsive to the rejection as articulated by the Examiner. Bitner is relied
upon for a teaching of a through die cut, and this finding is supported by a
preponderance of the evidence. Ans. 14, 28 (citing Bitner, col. 5, ll. 48–49;
col. 7, ll. 28–33; col. 16, ll. 9–12). Thus, we sustain the rejection of claim 2
under 35 U.S.C. § 103(a) as being unpatentable over Compere, Margulies,
Brunda, and Bitner.

Claim 3
Appellant argues that the die cuts of Margulies “extend to the edges of
the package and do not terminate before reaching the edges.” Appeal Br. 12.
We are not persuaded by Appellant’s argument because we agree with the
Examiner’s determination that the die cuts of Margulies “halt before
reaching the edge.” Ans. 14–15; 29–30 (citing Margulies, col. 3, ll. 20–24;
Fig. 4 (reproduced and annotated in the Answer). Thus, we sustain the
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rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Compere, Margulies, Brunda, and Bitner.

Claims 4–6
Appellant argues that the structure defined by the claims “is wholly
absent in Margulies” (claim 4), “is not shown or suggested by the prior art”
(claim 5), and “is not shown or suggested in any of the prior art cited” (claim
6). Appeal Br. 12–13. We are not persuaded by Appellant’s arguments,
which “require more . . . than a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found in the prior
art.” See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Thus, we
sustain the rejection of claims 4–6 under 35 U.S.C. § 103(a) as being
unpatentable over Compere, Margulies, Brunda, and Bitner.

Claims 8–12, 16–20, and 26–28
With respect to the rejection of these claims, Appellant does not set
forth any additional substantive arguments separate from the arguments
discussed supra. See Appeal Br. 13. Accordingly, for the same reasons, we
likewise sustain the rejection of claims 8–12, 16–20, and 26–28 under
35 U.S.C. § 103(a) as being unpatentable over Compere, Margulies, Brunda,
and Bitner.

Claim 29
Appellant argues that the claim “defines several additional features
not remotely shown or suggested by Brunda or the remaining references.”
Appeal Br. 13. We are not persuaded by Appellant’s argument, which
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“require[s] more . . . than a mere recitation of the claim elements and a
naked assertion that the corresponding elements were not found in the prior
art.” See In re Lovin, 652 F.3d at 1357. Thus, we sustain the rejection of
claim 29 under 35 U.S.C. § 103(a) as being unpatentable over Compere,
Margulies, Brunda, and Bitner.

Rejection III – Claims 22–24 as unpatentable
over Compere, Margulies, Brunda, and Weiss
Appellant argues that these claims define “preferable material and
thicknesses of the material.” Appeal Br. 13. More specifically, Appellant
argues that Weiss “does not suggest a gauge of from about 30 to about 60”
(claim 22), and that any of the references, including Weiss, “do[es] not
suggest a particular thickness for the foil” (claim 23). Appeal Br. 13–14.
We are not persuaded by Appellant’s arguments, which are not responsive to
the rejection as articulated by the Examiner, nor do they assert any error in
the Examiner’s determination that preferable thicknesses of the known
materials would have been obvious to one of ordinary skill in the art at the
time of the invention “since it has been held that it is not inventive to
discover the optimum or workable ranges by routine experimentation.”
Ans. 22–24 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Moreover,
Appellant does not contend that the recited thicknesses are critical to any
advantage or provide any unexpected result. Thus, we sustain the rejection
of claims 22–24 under 35 U.S.C. § 103(a) as being unpatentable over
Compere, Margulies, Brunda, and Weiss.

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Rejection IV – Claims 30–32 as unpatentable
over Compere, Margulies, Brunda, Bitner, and Weiss
With respect to the rejection of these claims, Appellant does not set
forth any additional substantive arguments separate from the arguments
discussed supra. See Appeal Br. 14. Accordingly, for the same reasons, we
likewise sustain the rejection of claims 30–32 under 35 U.S.C. § 103(a) as
being unpatentable over Compere, Margulies, Brunda, Bitner, and Weiss.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 7, 15, 21,
and 25 under 35 U.S.C. § 103(a) as being unpatentable over Compere,
Margulies, and Brunda.
We AFFIRM the Examiner’s decision rejecting claims 2–6, 8–12,
16–20, and 26–29 under 35 U.S.C. § 103(a) as being unpatentable over
Compere, Margulies, Brunda, and Bitner.
We AFFIRM the Examiner’s decision rejecting claims 22–24 under
35 U.S.C. § 103(a) as being unpatentable over Compere, Margulies, Brunda,
and Weiss.
We AFFIRM the Examiner’s decision rejecting claims 30–32 under
35 U.S.C. § 103(a) as being unpatentable over Compere, Margulies, Brunda,
Bitner, and Weiss.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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