Ex Parte Anliker

Patent Trial and Appeal Board

Nov 25, 2013

10538168 (P.T.A.B. Nov. 25, 2013)

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.
10/538,168 04/08/2006 Markus Anliker TME-2217 2243
24131 7590 11/25/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
CHU, KING M
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
11/25/2013 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 MARCUS ANLIKER
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Appeal 2012-002331
Application 10/538,168
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002331
Application 10/538,168

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STATEMENT OF THE CASE
Marcus Anliker (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1 and 20 as
unpatentable over Voss (US 3,667,465, issued June 6, 1972) and Gordon
(US 3,967,728, issued July 6, 1976) and claim 4 as unpatentable over Voss,
Gordon, and Davidowitz (US 3,712,300, issued Jan. 23, 1973). Claims 2, 3,
and 5-29 have been canceled. Br. 2. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “a suppository packaging device.”
Spec. 1, para. [0005].
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A suppository package comprising:

a package having a chamber formed therein, said
chamber containing a suppository therein, said package having
a second chamber formed therein, said second chamber being
separate from said chamber and disposed within said chamber,
and said second chamber containing a lubricant therein.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The Obviousness Rejection Based Upon Voss and Gordon
Claim 1
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The Examiner found that Voss discloses a package 20 defining a
chamber for holding a suppository 16 and a lubricant. Ans. 5; see also Voss,
col. 4, ll. 34-35 and fig. 2. However, the Examiner found that Voss fails to
disclose a separate, second chamber containing a lubricant and disposed
within said chamber. Id. The Examiner then turned to Gordon which
discloses a second chamber (citing to cavity 33 of pouch 17 of package 11),
as called for by claim 1. Id.; see also Gordon, figs. 1 and 2. The Examiner
concluded that:
It would have been obvious to one of ordinary skill
in the art at the time of the invention to modify
Voss in view of Gordon so that a second chamber
of Gordon is provided within a primary package of
Voss since catheters or suppositories are preferably
lubricated prior to introduction into the patient and
the secondary chamber of lubricant allows
automatic lubrication when the secondary
chamber's seal is broken (col. 1 ll. 17-19 and col.
3, ll. 27-29) as well as providing a sterile agent for
a packaged device readily available for
sterilization, as taught by Gordon (col. 1, ll. 27-30
and col. 2, ll. 33-35).
Id at 5-6.
Appellant argues that because Gordon’s pouch 17 is not formed in
substrate 10 or transparent thermoplastic film 27, Gordon fails to teach that
“the pouch [17] is formed in the package” (emphasis added), but rather
teaches that “pouch (17) is merely an item that is placed within the package
(11).” Br. 6.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
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Application 10/538,168

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re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An
ordinary and customary meaning of the terms “form” and “therein” is “to
arrange themselves in . . . to give form or shape” and “in or into that place or
thing,” respectively. Merriam Webster’s Collegiate Dictionary (10th Ed.
1997). In this case, Appellant’s Specification describes “the suppository 11
and the lubricant 2” as “located in different chambers provided by a package
4.” Spec. 2, para. [0015]. Furthermore, as noted by the Examiner, claim 1
requires that the second chamber be “separate from” and “disposed within”
the chamber defined by the package 4. See Ans. 7. Thus, a person of
ordinary skill in the art, reading claim 1 in light of the Appellant’s
Specification would interpret the phrase “formed therein,” as used in claim
1, to mean that the second chamber is arranged in the package. As the
Examiner correctly found, Gordon discloses cavity 33 of pouch 17 formed
(arranged) in package 11. See Ans. 5.
In conclusion, because Gordon’s pouch 17 and cavity 33 are formed
in package 11 and are separate from package 11, the combined teachings of
Voss and Gordon discloses a second chamber, as called for by claim 1. We
thus sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Voss and Gordon.

Claim 20
Appellant argues that because in Gordon, the chamber of pouch 17 is
opened first and subsequently the chamber of package 11 is opened, the
combined teachings of Voss and Gordon fail to disclose a package wherein
the chamber and the second chamber “are constructed for being opened
simultaneously.” Br. 9; see also Br., Clms. App’x.
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In response, the Examiner opines that because “[t]he term
‘constructed to’ is interpreted as an intended use limitation,” the package of
Voss as modified by Gordon “is fully capable of being opened
simultaneously.” Ans. 9. We agree.
It is well established that while features of an apparatus may be
recited either structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Here, because Voss discloses a package with an opening notch
22 (see Ans. 9) and Gordon’s pouch 17 is easily opened at 26 (see Ans. 6),
we agree that the Examiner is on solid ground to conclude that the package
of Voss as modified by Gordon is capable of being opened simultaneously,
as called for by claim 20. See In re Spada, 911 F.2d 705, 708 (Fed Cir.
1990). Therefore, we likewise sustain the rejection of claim 20 over the
combined teachings of Voss and Gordon.

The Obviousness Rejection Based Upon Voss, Gordon, and Davidowitz
With respect to the rejection under 35 U.S.C. § 103(a) of claim 4 as
unpatentable over Voss, Gordon, and Davidowitz, Appellant relies on the
arguments made supra in the obviousness rejection based upon Voss and
Gordon. Br. 10. Therefore, for the same reasons, we likewise sustain the
rejection of claim 4 over the combined teachings of Voss, Gordon, and
Davidowitz.

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Application 10/538,168

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SUMMARY
The Examiner’s decision to reject claims 1, 4, and 20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh