C.R. Bard, Inc.

Patent Trials and Appeals Board

Dec 8, 2020

2020002448 (P.T.A.B. Dec. 8, 2020)

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.
15/675,718 08/12/2017 Christopher Brooks BMD01-MN010 1082
159553 7590 12/08/2020
Dorton & Willis LLP c/o BD
10260 Alliance Road
Suite 210
Cincinnati, OH 45242
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
ip.docket@bd.com
uspto@dortonwillis.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER BROOKS and KATHRYNE ECKERT
__________

Appeal 2020-002448
Application 15/675,718
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–4, 6, 7, 9–13, and 42, which constitute all the
claims before us for review.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “C.R. Bard Inc.”
Appeal Br. 4.
2 Claim 41 is withdrawn from consideration. Final Act. 1.
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CLAIMED SUBJECT MATTER
Appellant’s “disclosure is directed to product packaging and includes
product packaging allowing for opening of a sealed product by individuals
having limited appendage dexterity.” Spec. ¶ 1.
Claims 1 and 42 are independent and reproduced below.
1. A product package comprising:
an enclosure having at least one tear strip extending
across the enclosure and configured to at least partially sever
portions of the enclosure to form a permanent opening, the at
least one tear strip having a path embodying a change of
direction at least one of greater than 45 degrees across one side
of the enclosure and greater than 135 degrees across two or
more sides of the enclosure; and,
a loop operatively coupled to the tear strip, where the
loop has an available circumference between twelve and
twenty-four inches.

42. A product package comprising:
an enclosure defining an internal cavity;
a first loop operatively coupled to a first tear strip, the
first tear strip operatively coupled to the enclosure and
configured to be removed from the enclosure to permanently
open up the internal cavity.

(Appeal Br. 42, 44, Claims App.)

REJECTIONS
I. Claim 42 is rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Corridon (US 3,567,108, iss. Mar. 2, 1971).
II. Claims 1–4, 6, 7, 9, and 13 are rejected as anticipated under
35 U.S.C. § 102(a)(1), or, in the alternative unpatentable under 35 U.S.C.
§ 103 over Corridon.
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III. Claims 10 and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over Corridon and Baroody (US 4,126,245, iss. Nov. 21, 1978).
IV. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Corridon, Baroody, and Welchel et al. (US 2005/0189406 A1, pub.
Sept. 1, 2005) (“Welchel”).
OPINION
We address the contested rejections in the order presented by
Appellant.
Rejection I
In contesting the rejection of independent claim 42 as being
anticipated by Corridon, Appellant does not dispute the Examiner’s findings
of the limitations recited in the claim body. Instead, Appellant’s sole
argument against the rejection is directed at the preamble of claim 42, which
recites “[a] product package, comprising.” See Claim 42 supra. In
particular, Appellant argues that “the ‘product package’ language from the
preamble is a claim limitation entitled to patentable weight and construction
by the Office.” Appeal Br. 17. According to Appellant:
Properly construed, “product package” in claim 42 refers
to a closed container that, when opened, makes a product
available for use. Appellant’s proffered construction is
consistent with the specification, which always refers to a
“product package” as a closed container that, when opened,
makes a product available for use. At no time did Appellant’s
specification refer to a wrapping over a closed container
housing a product as a “product package.” Yet the Office never
sets forth an interpretation of “product package” in either Office
action. This omission reflects one of two actions on the part of
the Office. Either the Office erroneously omitted construing
“product package,” indicative of no patentable weight accorded
to this element, or the Office construed “product package” and
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applied an undocumented construction. Regardless of which
occurred, claim 42 is not anticipated by Corridon.
Id.; see also Reply Br. 2–3.
We are not persuaded by Appellant’s argument at least because
Appellant does not explain why the preamble of claim 42 should be afforded
patentable weight. However, for the purposes of this appeal only, even if we
were to agree with Appellant’s argument that the preamble of claim 42
should be afforded patentable weight, we disagree with Appellant as to the
meaning of “product package.” Infra.
“[A] claim construction analysis must begin and remain centered on
the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Although
Appellant construes product package as “a closed container that, when
opened, makes a product available for use” (see supra), Appellant’s
Specification does not provide a formal definition of the term product
package, and instead, only provides non-limiting examples of various types
of product packages. See Spec. ¶¶ 47–56. As such, “the words of a claim
‘are generally given their ordinary and customary meaning.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The word package is defined as “[a]n object or group of objects wrapped in
paper or packed in a box.”3 Therefore, a person of ordinary skill in the art
would interpret the term product package as an article manufactured for
sale4 wrapped in paper or packed in a box.

3 https://www.lexico.com/definition/package (visited 11/30/2020).
4 See id. at https://www.lexico.com/definition/product.
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The Examiner finds Corridon’s package 19 described as comprising
an “article wrapped in paper 20” (Corridon 2:24–25). Ans. 3 (“The product
can be interpreted to be (19) of Corridon which is enveloped by wrapping
paper/package (20).”). The Examiner’s finding implies an interpretation of
“product package” that is consistent with the ordinary and customary
meaning of the term. Supra. Appellant does not explain adequately why the
Examiner’s interpretation and finding is in error. Instead, Appellant
challenges the Examiner’s finding by comparing Corridon’s embodiments to
“Russian nesting dolls” and relies on examples in the Specification to more
narrowly define the term product package. Appeal Br. 18. Yet, claim 42
lacks any restrictive language (e.g., consisting of) that would preclude a
product package from being more than an enclosure and a first loop. And, it
is well established that limitations appearing in the specification, but not
recited in the claim, should not be read into the claim. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). See also In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989) (During patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow . . . . The reason is simply that during patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. . . . An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.).
We disagree that the term product package is required to be so
narrowly interpreted that “mandates a construction calling for a closed
container that, when opened, makes a product available for use” (Reply
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Br. 2). Notably, claim 42 fails to recite a container and merely recites “an
enclosure defining an internal cavity.” The claimed enclosure is broadly
described in the Specification as being “fabricated from at least one of a
metal foil, a polymer, and a paper.” Spec. ¶ 9 (emphasis added). As for the
shape of the product package, Appellant’s Specification states: “Exemplary
shapes of the product package 100 are virtually unbounded. While the
foregoing enclosure 108 embodies a cuboid shape, alternative shapes may be
readily utilized such as, without limitation, cylindrical, triangular, pyramidal,
spherical, envelope, and pouch.” Id. ¶ 32 (emphasis added); see also id. ¶ 42
(“The exemplary product package 200 may be fabricated from various
materials and take on various shapes and sizes.”). Under the broadest
reasonable interpretation and proper construction of claim 42, we agree with
the Examiner that Corridon describes the claimed subject matter.
Accordingly, we sustain the rejection of independent claim 42 as
anticipated by Corridon.
Rejection II
In contesting the rejection of independent claim 1 as unpatentable
over Corridon, first Appellant presents similar arguments as to the preamble
of the claim. See Appeal Br. 19–20. For the reasons discussed above, we
are not persuaded by those arguments.
Second, Appellant argues that
even if one presumed that Corridon’s tape corresponded
to Appellant’s tear strip, Corridon nonetheless fails to
teach a tear strip having a path embodying a change of
direction at least one of greater than 45 degrees across
one side of the enclosure and greater than 135 degrees
across two or more sides of the enclosure. Rather,
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Corridon’s tape does not change directions across any
side of the wrapping.
Id. at 20.
Responding to Appellant’s argument, the Examiner states:
It’s important to note that this claim limitation is in the
alternative. Corridon clearly discloses the strip (22)
encircling the product package. See Figs. 5-7. As such,
the strip is at least great than 135 degrees across two or
more sides (45 deg. multiplied by 4 edges equals 180
degrees). See Fig. 7. Additionally, applicant fails to
adequately claim “one side” of his enclosure. Fig. 5 of
Corridon can be considered “one side of the enclosure”
as claimed. Moreover, the wrapper of Corridon is capable
of encircling different shaped objects (e.g. football)
wherein the strip can have a “path embodying a change
of direction [….] greater than 45 degrees across one side
of the enclosure.”
Ans. 4 (brackets in original).
Appellant does not reply or dispute the Examiner’s interpretation of
the claim language. See Reply Br. 2–4.
We agree with the Examiner that claim 1 is recited in the alternative
and requires “the at least one tear strip having a path embodying a change in
direction at least one of greater than 45 degrees across one side of the
enclosure and greater than 135 degrees across two or more sides of the
enclosure” (Appeal Br. 42; Claims App. (emphasis added)), not both.
Indeed, Appellant indicates that each claimed alternative represents a
separate embodiment depicted in Figures 1 and 4 of the disclosure. See
Appeal Br. 6 (Figures 1A and 1B “embodying a change in direction greater
than 135 degrees across three sides of the enclosure” and Figure 4
“embodying a change of direction greater than 45 degrees across one side of
the enclosure”).
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Third, as to the limitation “a loop operatively coupled to the tear strip,
where the loop has an available circumference between twelve and twenty-
four inches,” Appellant argues that the Examiner’s reliance on
In re Rose5 and Gardner v. TEC Systems, Inc.6 do not
support a finding of obviousness. Rather, these cases are
inapplicable to Appellant’s claims because, unlike the
cited cases, the dimensional limitations in Appellant’s
claims do cause a change in performance of the claimed
article. To be sure, the dimensional limitation in
Appellant’s claims allow persons having limited
appendage dexterity to open a product package without
requiring finger gripping of the product packaging.
Appeal Br. 20. We are unpersuaded.
The Examiner finds “Corridon explicitly discloses that in order to
open the product package loop (1) engages a hand of a user.” Ans. 4 (citing
Corridon 1:19–25). The Examiner concludes Appellant’s “package operates
the same as Corridon, and it would have been an obvious matter of design
choice to have a loop of twelve to twenty-four inches, since such a
modification would have involved a mere change in the size of a component.
A change in size is generally recognized as being within the level of
ordinary skill in the art.” Id. This explanation, even without any cited case
law, constitutes an articulated reasoning with a rational underpinning to
support the conclusion of obviousness. See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Even though In re Rose concerns a change
in size of the entire device that does not negate the prima facie case

5 In re Rose, 220 F.2d 459 (C.C.P.A. 1955).
6 Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984).
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established by the Examiner. Appellant does not address or challenge this
aspect of the Examiner’s rejection.
Moreover, consistent with the Examiner’s position, it has been
generally held that ordinary changes in sizes of shapes of known elements
are within the level of skill in that art, especially in the absence of
unexpected results or criticality. Cf. Gardner v. TEC Sys., Inc., 725 F.2d at
1349 (holding that, where the only difference between the prior art and the
claims was a recitation of relative dimensions of the claimed device and a
device having the claimed relative dimensions would not perform differently
than the prior art device, the claimed device was not patentably distinct from
the prior art device); see also In re Dailey, 357 F.2d 669, 676 (CCPA
1966) (change in shape ordinarily prima facie obvious). We are not
persuaded that making a change in the size of the loop changes its
performance by “allowing a user’s arm/leg to open a product package is a
novel performance difference,” which “supports a conclusion of
nonobviousness.” Reply Br. 4; see Spec. ¶ 41 (“Exemplary loop 222 sizes
may be reconfigurable or may vary depending upon the size of a user’s
hands or appendage stub circumference, but generally include
circumferences ranging between twelve and twenty-four inches.”).
Appellant’s Specification indicates that the loop size is reconfigurable to
accommodate the size of the user’s hand, which is consistent with the
Examiner’s finding in Corridon that its product loop engages the hand of the
user. Here, one of ordinary skill in the art would have readily inferred that
the size of the loop could be varied to accommodate different hand sizes and
such a modification would have been obvious. Appellant has not provided
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any persuasive evidence or technical reasoning to show that the claimed loop
dimensions are critical or achieve any unexpected results.
Accordingly, we sustain the rejection of claim 1 as unpatentable over
Corridon, and dependent claims 2–4, 6, 7, 9, and 13, which are not argued
separately.
Rejections III & IV
We sustain the rejections of claims 10–12, which depend from claim 1
and are not argued separately, for the same reasons discussed above.
CONCLUSION
The rejection under 35 U.S.C. § 102(a)(1) is affirmed.
The rejections under 35 U.S.C. § 103 are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References(s)/Basis Affirmed Reversed
42 102(a)(1) Corridon 42
1–4, 6, 7,
9, 13
102(a)(1)/103 Corridon 1–4, 6, 7,
9, 13

10, 12 103 Corridon, Baroody 10, 12
11 103 Corridon, Baroody,
Welchel
11
Overall
Outcome
1–4, 6, 7,
9–13, 42

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

AFFIRMED