Ex Parte Adler et al

Patent Trial and Appeal Board

Sep 28, 2017

13552741 (P.T.A.B. Sep. 28, 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.
13/552,741 07/19/2012 Deborah Adler 9262-101479-US (10408U) 3247
19407 7590 09/29/2017
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
BUI, LUAN KIM
ART UNIT PAPER NUMBER
3728
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 DEBORAH ADLER and KIM HAINES
Appeal 2016-008050
Application 13/552,741
Technology Center 3700
Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal1 under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is Medline Industries, Inc. Appeal Br. 3.
Appeal 2016-008050
Application 13/552,741
THE INVENTION
Appellants’ claims are directed “generally to custom procedure kits
for use in medical procedures.” Spec. 11. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A kit comprising:
a plurality of medical-procedure tools;
a cover that is wrapped around the plurality of medical-
procedure tools to form wrapped tools;
an outer container fully disposed about the wrapped tools;
at least one sheet disposed between the outer container and
the wrapped tools, the at least one sheet including a listing of the
plurality of medical-procedure tools and, for at least some of the
medical-procedure tools, an unselected end-user selectable field.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reiss US 3,650,393 Mar. 21, 1972
Adler US 2003/0214129 A1 Nov. 20, 2003
Girzaitis US 2005/0029156 A1 Feb. 10, 2005
Gibson US 7,828,148 B2 Nov. 9, 2010
REJECTIONS
The Examiner made the following rejections:
Claims 1—9, 15—21, and 24—27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Reiss, Official Notice, and either
Girzaitis or Gibson. Ans. 2.
Claims 10-14, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Reiss, Official Notice, Adler, and either Girzaitis or
Gibson. Id.
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Application 13/552,741
ANALYSIS
In response to Appellants’ arguments over the prior art, the Examiner
states that an “unselected end-user selectable field is old and conventional in
the packaging art and it is directed to the printed matter.” Ans. 3. The
Examiner goes on to explain that “the content of the printed matter will not
distinguish the claimed product from the prior art.” Id. (citing In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004)). Accordingly, as a first step in
analyzing the rejections, we must determine whether the limitations relating
to an “unselected end-user selectable field” amount to printed matter that
may be given no patentable weight.
To be given patentable weight, recited printed matter must have a new
and nonobvious functional relationship to the substrate. See In re Gulack,
703 F.2d 1381, 1386 (Fed. Cir. 1983) (stating that, when dealing with
printed matter, “the critical question is whether there exists any new and
unobvious functional relationship between the printed matter and the
substrate'1'’ (emphasis added)). We first assess whether there is a functional
relationship at all between the recited printed matter and the substrate in
claim 1. Appellants “submit that the ‘unselected end-user selectable field’ is
functionally related to the product” because it “has a function of being a
place on the sheet where the user can do something.’” Reply Br. 3. The
inquiry, however, is not whether the printed matter is functionally related to
the product, but whether it is related to the substrate. In this case, the
substrate is not the kit or the instruments contained therein, but is merely the
“sheet”—e.g., a piece of paper (see Spec. 137)—included in the kit. In that
sense, the claimed field has no functional relationship to the substrate on
which it is printed. This unselected end-user selectable field is nothing more
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Application 13/552,741
than, for example, the instructions provided with the kit in In re Ngai, which
was not given patentable weight. Although the user could do something
with the printed matter in In re Ngai, namely use the chemicals in the kit
according to the instructions, this was not considered sufficient to
demonstrate the required functional relationship. Id. at 1339. Here, the fact
that a user may do something with the end-user selectable field does not
mean that the printed matter should be given patentable weight. As such, we
deem the unselected end-user selectable field of the claims to be printed
matter, which may be given no weight.
The remainder of Appellants’ arguments deal with the Examiner’s use
of prior art and official notice to teach this unselected end-user selectable
field and then incorporate it into the kit of Reiss. See, e.g., Reply Br. 3 6.
We appreciate Appellants’ argument that doing so would be improper with
regard to Reiss because, as Appellants state, “Reiss makes abundantly and
utterly clear, Reiss wants to ‘destroy’ the label,” thus making it useless to
incorporate such unselected end-user selectable fields. Reply Br. 5. In this
case, however, because the printed matter relating to the unselected end-user
selectable field may be accorded no patentable weight and the Examiner’s
rejection over Reiss includes all other aspects of the claim, we need not
address the deficiencies relating to the printed matter of the claims.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1—27.
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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)(l)(iv) (2015).
AFFIRMED
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