Ex Parte Erickson et al

Patent Trial and Appeal Board

Jun 30, 2014

11763949 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS E. ERICKSON and JAMES J. ERICKSON
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Appeal 2012-002016
Application 11/763,949
Technology Center 3700
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Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1–22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative of the claims on appeal, and is reproduced below:
1. A medical dispenser, comprising:
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a container body having a top, a bottom, and a number of
sidewalls defining an interior chamber adapted to contain one
or more unused medical instruments therein;
at least one opening mechanism on the container body
comprising a lid actuatable between a first position and a
second position for opening or closing one or more openings on
the container body, the one or more openings being sized and
adapted to permit the disbursement of one or more unused
medical instruments within the interior chamber; and
a gripping element adapted to receive a portion of a
medical instrument inserted therein, wherein said gripping
element includes an indentation on an exterior portion of the
container body configured to receive a portion of the unused
medical instrument;
wherein the lid associated with the at least one opening
mechanism is adapted to pivot towards and frictionally engage
a portion of the unused medical instrument when the unused
medical instrument is inserted into the indentation and when the
opening mechanism is in the first position.

REJECTIONS
1. Claims 1–5, 8–17, and 20–22 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Richardson (US 5,322,164; iss. June 21, 1994); and
2. Claims 6, 7, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
obvious over Richardson and Clegg (US 2007/0119740 A1; pub. May 31,
2007).

OPINION
Anticipation
Independent claims 1 and 13 are each directed to medical dispensers
requiring “a gripping element” including an indentation configured (claim 1)
or adapted (claim 13) to receive a portion of a medical instrument, and “a lid
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. . . adapted to pivot towards and frictionally engage” a portion of the
medical instrument, when the medical instrument is seated in the indentation
of the “gripper element.” The Examiner finds that closures 24 and 26 in
Richardson correspond to the claimed lid. Ans. 5–6. The Examiner asserts
that “the lid associated with the at least one opening mechanism [in
Richardson] is capable of pivoting towards and frictionally engaging a
portion of the unused medical instrument when the unused medical
instrument is inserted into the indentation and when the opening mechanism
is in the first position (i.e. closed position).” Id. at 5, 14. The Examiner
further asserts that “the recitation that an element is ‘adapted to’ perform a
function is not a positive limitation but requires the ability to so perform.”
Id. at 15. The Examiner additionally takes the position that the “adapted to”
language in the claim noted above is an intended use. Id.
Initially, we do not agree that the “adapted to” language is an intended
use. Rather, the claim language specifically requires the lid to “pivot” and
“frictionally engage.” With respect to the Examiner’s characterization of the
“adapted to” language only requiring that the prior art be capable of the
claimed pivoting and frictional engagement, Appellants contend that this
“adapted to” language in the claims “require[s] that the components be
sized, shaped, and located relative to each other in specified manner which
allows them to provide specific functions not anticipated by Richardson.”
App. Br. 11.
Even if we accept the Examiner’s characterization of the “adapted to”
language in the claims as only requiring a lid that is capable of pivoting and
frictional engagement as claimed, we agree with Appellants that Richardson
does not disclose any frictional engagement between closures 24 and 26 and
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a medical device (cannula holder 46). App. Br. 9, 13. Although the
Examiner repeatedly asserts that closures 24 and 26 are capable of the
claimed frictional engagement, the Examiner offers no explanation, and we
see no reason, why closures 24 and 26 are capable of such engagement.
Merely because closures 24 and 26 can touch holder 46 does not mean that
they are frictionally engaged, that is, frictionally interlocked or meshed
together1. For these reasons, the Examiner has failed to establish that
closures 24 and 26 in Richardson are capable of the claimed frictional
engagement.
Accordingly, we do not sustain the Examiner’s decision to reject
claims 1–5, 8–17, and 20–22 as anticipated by Richardson.
Obviousness
Claims 6 and 7 depend from claim 1 and claims 18 and 19 depend
from claim 13. The stated basis for the rejection of claims 6, 7, 18, and 19
does not cure the deficiency in the rejection of claims 1 and 13 noted above.
We also do not sustain the Examiner’s decision to reject claims 6, 7, 18, and
19.

DECISION
We REVERSE the Examiner’s decision to reject claims 1–5, 8–17,
and 20–22 under 35 U.S.C. § 102(b) as being anticipated by Richardson.
We REVERSE the Examiner’s decision to reject claims 6, 7, 18, and
19 under 35 U.S.C. § 103(a) as being obvious over Richardson and Clegg.

1 An ordinary and customary meaning of the term “engage” is “to come
together and interlock (as of machinery parts).” Merriam Webster’s
Collegiate Dictionary (10th Ed. 1997).
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REVERSED

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