Ex Parte Bowers et al

Patent Trial and Appeal Board

Mar 9, 2015

11800058 (P.T.A.B. Mar. 9, 2015)

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.
11/800,058 05/03/2007 Paul K. Bowers 1421-207 RCE II 5951
23869 7590 03/09/2015
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
03/09/2015 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 PAUL K. BOWERS and ALEJANDRA BUITRAGO
____________

Appeal 2012-011076
1,2

Application 11/800,058
3

Technology Center 3700
____________

Before MICHAEL C. ASTORINO, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

1
The record includes a transcript of the oral hearing held
February 19, 2015.
2
Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Apr. 5, 2012) and Reply Brief (“Reply Br.,” filed July 24, 2012), and the
Examiner’s Answer (“Ans.,” mailed May 25, 2012) and Non-Final Rejection
(“Office Action,” mailed Sept. 6, 2011).
3
According to Appellants, the real party in interest is Kraft Foods Global
Brands LLC (Appeal Br. 2).
Appeal 2012-011076
Application 11/800,058

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 13, 16–18, 20–24, 35, 37, and 39–43, which
constitute all pending claims in the application. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b). Appellants appeared for oral hearing on
February 19, 2015.
We REVERSE.
Introduction
Appellants’ disclosure relates to a blister package assembly “to house
and support a plurality of consumable products such as candy, gum, mints,
as well as pharmaceutical products such as capsules, tablets and the like.”
(Spec. ¶ 3). The package assembly stores the consumable products in a tray
(which has a plurality of upwardly opening compartments), such that the
compartments can be sealably covered and later opened for dispensing the
consumable products (Id. at ¶¶ 3–4).
Claims 1 and 40 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A blister package assembly comprising:
a blister tray having a plurality of spaced open ended
blister compartments opening to a common planar surface;
a plurality of consumable products, each of said blister
compartments containing one of said plurality of consumable
products; and
a separately formed resilient single layer plastic blister
film directly overlying said planar surface of said blister tray
and adjacently closing said open ends of said compartment, said
blister film including a pattern of rupturable locations extending
across and partially through said blister film overlying said
planar surface, at least portions of said rupturable locations
being in overlying registry with said open ends of said blister
compartments so as to permit rupturable puncturing of said
Appeal 2012-011076
Application 11/800,058

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blister film at said location of said overlying registry to permit
dispensing of said product through said location.

Appeal Br., Claims App.

Rejections on Appeal
1. Claims 1–4, 16–18, 20–24, 35, 37, and 39
4
stand rejected under
35 U.S.C. § 103(a) as unpatentable over Marks (US 3,759,371, iss. Sept. 18,
1973), Bobbett (WO 2005/056419 A1, pub. June 23, 2005), Bunin (US
4,911,304, iss. Mar. 27, 1990), and Inoue (JP 07-149367 A, pub. June 13,
1995);
2. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Marks, Bunin, Bobbett, Inoue, and Fuller (US 6,516,949 B2, iss. Feb.
11, 2003);
5
and
3. Claims 40–43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Marks, Bunin, and Inoue.

OPINION
Independent claim 1 and dependent claims 2–4, 16–18, 20–24, 35, 37,
and 39
We are persuaded by Appellants’ argument that:
The Examiner has not identified a reason that would have
prompted a person of ordinary skill in the art to provide a single
layer resilient plastic blister film with a pattern of rupturable

4
We understand the Examiner’s reference to claims 35–39 to refer to claims
35, 37, and 39, which are currently pending (see Office Action 1; Appeal Br.
2).
5
The phrase “as applied to claim 1 above” in the Examiner’s rejection of
claim 13(Ans. 8–9) would refer to Marks as well (see Ans. 6). The failure
to include Marks appears to be a minor oversight.
Appeal 2012-011076
Application 11/800,058

4
locations partially therethrough to permit push through
dispensing of the products therethrough without impermissible
hindsight resort to [Appellants’] own disclosure.

(Appeal Br. 11; see also Reply Br. 2–3). In particular, we are persuaded by
Appellants’ argument that the Examiner’s proposed combination would
require selecting individual layers from several multilayer layer prior art
references, or features thereof, for a single layer film cover. (See Appeal Br.
9–10).
The Examiner proposes to modify Marks, inter alia, to create a
rupturable, resilient film, with certain teachings of Bunin, Bobbett, and
Inoue. (Ans. 5–6). It is undisputed on the record that Bunin, Bobbett, and
Inoue describe multilayer compositions. The Examiner reasons that “[a]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” (Ans. 6 (citing
KSR Int‘1 Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (citation omitted))).
However, the Examiner has not explained why a person of ordinary skill in
the art would have selected the particular layers of Bunin, Bobbett, and
Inoue, or selected features thereof, as relied on by the Examiner in the
proposed modification.
The Examiner’s further reliance on the teaching of Bunin (col. 1, l.
41–43), which states that plastic film can “protect the aluminum foil ply and
prevent it from being torn or punctured” does not itself explain why
particular layers would be selected in a single layer format (Ans. 5–6). This
passage from Bunin simply restates one problem addressed in the art which
is to prevent tearing of the covering prior to dispensing. Bunin addresses
this problem with a multilayered film. We are persuaded by Appellants’
argument that the Examiner has not provided sufficient articulated basis for
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Application 11/800,058

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the combination of references, or of certain features thereof. See KSR Int‘1
Co., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness”)).
We, therefore, do not sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a). For the same reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 2–4, 16–18, 20–24, 35, 37, and 39, which
ultimately depend from claim 1.

Dependent claim 13
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Marks, Bunin, Bobbett, Inoue, and Fuller. The Examiner’s rejection of
claim 13 does not contain additional evidence or reasoning that would
remedy the deficiency in the rejection of claim 1, from which claim 13
depends. We do not sustain the rejection of dependent claim 13 under
35 U.S.C. § 103(a), for similar reasons as for independent claim 1.

Independent claim 40 and dependent claims 41–43
Independent claim 40 contains similar limitations as independent
claim 1. We do not sustain the rejection of claim 40 under 35 U.S.C.
§ 103(a), for similar reasons as for claim 1.
For the same reasons, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of claims 41–43, which ultimately depend from claim 40.

Appeal 2012-011076
Application 11/800,058

6
DECISION
The decision of the Examiner to reject claims 1–4, 13, 16–18, 20–24,
35, 37, and 39–43 is reversed.

REVERSED
rvb