Ex Parte Hulliger

Patent Trial and Appeal Board

Sep 28, 2017

13185205 (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.
13/185,205 07/18/2011 Urs Hulliger 10139/22302 (T01335US1) 1869
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
09/28/2017 EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
09/28/2017 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 URS HULLIGER1
Appeal 2016-007170
Application 13/185,205
Technology Center 3700
Before DANIEL S. SONG, KEN B. BARRETT, and
SEAN P. O’HANLON, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—13 and 15—20 in the present application (App. Br. 1).
Claim 14 has been canceled. We have jurisdiction under 35 U.S.C. §§ 6(b)
and 134.
We AFFIRM-IN-PART.
1 Referred to as “Appellant” herein DePuy Synthes Products, Inc., and
Johnson & Johnson, Inc. are the real parties in interest (Appeal Brief
(hereinafter “App. Br.”) 2).
Appeal 2016-007170
Application 13/185,205
The claimed invention is directed to a multi packaging system for
packaging of sterile implants (Spec., Abstract). Independent claims 1 and 16
read as follows (App. Br. 11, 13—14, Claims App’x, (emphasis added)):
1. A multi packaging system for packaging of sterile implants,
comprising:
a carrier plate formed of a first sheet; and
a plurality of sealed packings including second sheets, the
plurality of sealed packings removably attached to the carrier
plate in a fixed position relative to the carrier plate such that the
second sheets are positioned on a surface of the first sheet of the
carrier plate, each of the plurality of packings containing an
implant and being individually removable from the carrier plate
such that each of the plurality of sealed packings is removable
from the carrier plate in a sealed configuration.
16. A packaging system for medical implants, comprising:
a first substantially planar carrier body having a first
surface and a second surface;
a first individually packaged medical implant removably
attached to the first surface of the first carrier body in a fixed
position relative to the first carrier body; and
a second individually packaged medical implant
removably attached to the first surface of the first carrier body
adjacent the first medical implant, wherein the first and second
medical implants are configured to prevent the second medical
implant from being removed until the first medical implant is
removed.
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Application 13/185,205
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
obvious as follows:
1. Claims 1—3, 9, and 15 as unpatentable over Dey (US 1,803,602;
iss. May 5, 1931) in view of Ignasiak (US 4,324,331; iss. Apr. 13,
1982) (Final Office Action (mailed June 24, 2015, hereinafter “Final
Act.”) 2).
2. Claims 4—6, 8, and 10-13 as unpatentable over Dey in view of
Ignasiak and Jodaitis et al. (US 2008/0200984 Al; pub. Aug. 21,
2008, hereinafter “Jodaitis”) (Final Act. 4).
3. Claim 7 as unpatentable over Dey in view of Ignasiak and J.D.
Bostrom (US 3,288,280; iss. Nov. 29, 1966, hereinafter “Bostrom”)
(Final Act. 6).
4. Claims 16, 18, and 20 as unpatentable over Peters (US
5,690,222; iss. Nov. 25, 1997) in view of Nittono et al. (US 6,938,770
B2; iss. Sept. 6, 2005, hereinafter “Nittono”) (Final Act. 6).
5. Claims 17 and 19 as unpatentable over Peters in view of
Nittono and Jodaitis (Final Act. 8).
ANAFYSIS
We initially observe that only those arguments actually made by the
Appellant have been considered in this decision. Arguments that the
Appellant could have made but chose not to make have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d
1072, 1075-76 (BPAI 2010) (precedential).
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Application 13/185,205
Rejection 1
The Examiner rejects claims 1—3, 9, and 15 as obvious over Dey in
view of Ignasiak (Final Act. 2—3). In particular, the Examiner finds that Dey
discloses the invention of claim 1 except for the limitation “a plurality of
sealed packings containing an implant.” (Final Act. 3). The Examiner relies
on Ignasiak for disclosing the missing limitation, and concludes that it would
have been obvious to one of ordinary skill to utilize the display device of
Dey with sealed packings containing an implant as taught by Ignasiak for
storage and display purposes (Final Act. 3 (citing Ignasiak, col. 4,1. 51; Fig.
2)). The Examiner explains that:
Dey discloses a carrier plate 10 with a plurality of items with
their own backing 15 which is attached onto the carrier plate 10
(see figure 1 of Dey) and Ignasiak teaches sealed packings with
sterile implants, in which sealed individual packages can be
punched out via perforations made between individual packages
to allow single packages to be dispensed (col. 4,11. 23—30 of
Igna[s]iak). Therefore, to replace one item with its own
packaging . . . with another item with its own packaging
(individual sealed packaging col. 4,11. 23—30 of Igna[s]iak)
would have been obvious to one skilled in the art at the time of
the invention as discussed above.
(Ans. 9; see also Final Act. 9).
The Appellant argues that the Examiner errs because “the packings in
each of the references, when removed from the carrier plates are in the
unsealed configuration.” (App. Br. 4). According to the Appellant,
modifying the packaging system of Dey to incorporate the
sealed packings of Ignasiak would not permit individual sealed
packings to be removed from the carrier plate in a sealed
configuration. That is, even if the packings were sealed while
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Application 13/185,205
attached [to] the carrier plates, they would become unsealed
upon removal, contrary to the recitation of the present claim.
(App. Br. 4).
In the above regard, the Appellant argues that the suggested
combination:
would require the smaller, second card of Dey to be replaced
with the multiple-unit container of Ignasiak described above.
Since the lid 6 [in Ignasiak] is formed of a single element,
however, removal of an individual unit results in unsealing the
unit via the removal of one of the multiple bottom assemblies 1.
(App. Br. 4—5 (emphasis added)).
We agree with the Examiner, and are not persuaded by the
Appellant’s arguments. Dey discloses smaller card 15 divided into a
plurality of sections 17 (i.e., “packings including second sheets”) via scoring
18, the smaller card being secured to foundation member 10 (i.e., “carrier
plate”) via staples 16 along its upper peripheral edge (Dey 2,11. 8—20; Figs 1,
2). Ignasiak discloses multiple, individually sealed units divided by
perforations to thereby allow each sealed unit to be separated (Ignasiak, col.
4,11. 23-30; Fig. 2).
As noted, the Appellant argues that because the lid portion in Ignasiak
is a single sheet that seals a plurality of bottom assemblies, “the product 5
must be removed in an unsealed fashion because of the single lid portion 6
covering multiple bottom assemblies.” (App. Br. 4, (citing Ignasiak, col. 2,
11. 23—24, 39-42; and Fig. 2)). In other words, the argument is that because
the lid portion (i.e., second sheet) is a single sheet, which is attached to the
foundation member 10 of Dey (i.e., carrier plate), the backing would have to
remain on the carrier plate in order to maintain the seal of the unused
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individually sealed units, and the removed unit of Ignasiak would have to be
unsealed upon removal from the carrier plate contrary to the recitation of
claim 1.
However, the Appellant overlooks the fact that in the context of
Figure 2 cited and relied upon by the Examiner, Ignasiak clearly illustrates a
peripheral top edge portion of “flat portion 8” that is outside the boundaries
of the perforations. This peripheral top edge portion shown in Figure 2 of
Ignasiak is analogous to the top edge portion of smaller card 15 in Dey, and
would have been used to secure the multiple sealed units to foundation
member 10 in the manner shown in Dey. Moreover, also in the context of
Figure 2 of Ignasiak, lid portion 6 that seals the multiple sealed units is
perforated to allow each individual sealed units (packages) to be separated.
In particular, Ignasiak specifically discloses that:
The package assemblies may be manufactured as individual
units or in multiple units. FIG. 2 illustrates a sheet of eight
bottom assemblies. If packages are manufactured as multiple
units, individual units can be punched out on a steel rule die by
a clicking press or perforations can be made between individual
assemblies to allow single packages to be dispensed.
(Ignasiak, col. 4,11. 23—29 (emphasis added)).
Thus, upon substituting smaller card 15 of Dey for the multiple unit
packaging of Ignasiak, and securing the same at the peripheral top edge
thereof to foundation member 10 of Dey, each of the individually sealed
units would have been separately removable from the foundation member in
its sealed configuration. Accordingly, the Appellant’s argument is
unpersuasive because it does not adequately address the disclosure in
Ignasiak with respect to Figure 2 and the rejection being applied.
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Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of claim 1. As to claims 2, 3, 9, and 15 that are also
subject to this rejection, the Appellant relies on their dependency for
patentability (App. Br. 5). Accordingly, these dependent claims fall with
claim 1.
Rejections 2 and 3
The Appellant relies on the dependency of the claims subject to these
rejections for patentability, and also argues that the tertiary references cited
in these rejections do not cure the deficiency of the combination of Dey and
Ignasiak relative to claim 1 (App. Br. 5—6). However, because we are not
persuaded of any deficiency in the combination of Dey and Ignasiak, and
affirm the rejection of claim 1, we likewise affirm Rejections 2 and 3.
Rejection 4
The Examiner rejects claims 16, 18, and 20 as obvious over Peters in
view of Nittono (Final Act. 6—8). In rejecting independent claim 16, the
Examiner relies on Peters for disclosing a first individually packaged
medical implant, and Nittono for the remaining limitations (Final Act. 6—7
(citing Peters, Fig. 1)). Specifically, the Examiner finds that Nittono
discloses the recited carrier body having first and second individually
packaged items attached to the surface of the carrier body, wherein the
second packaged item cannot be removed until the first packaged item is
removed (Final Act. 6—7 (citing Nittono, Figs. 1, 8)). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
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to “modify the packaging system of Peters with a plurality of packaged
items and a carrier body as taught by Nittono et al. in order to organize and
hold packages prior to use.” (Final 7, (citing Nittono, Abstract)).
The Appellant directs its arguments to Nittono, arguing that it does
not disclose or suggest individual packages attached to a carrier body in a
fixed position relative to the carrier body as required by claim 16, but
instead, discloses “a holding portion within which blister packs are slidably
received.” (App. Br. 7—8). The Appellant argues that “the blister packs [of
Nittono], by virtue of their ability to slide within the holding portions 3, are
in no way attached to a first surface of the back plate 2,” and are also not
attached in a fixed position. (App. Br. 8—9; see also Reply Br. 6).
According to the Appellant, the packages of Nittono “are simply held within
the holding portion 3” instead of being attached. (Reply Br. 7).
The Examiner disagrees, determining that the broadest reasonable
interpretation includes the dictionary definition of “attached,” which is
“attached: joined; connected; bound (Dictionary.com).” (Ans. 10).
Accordingly, the Examiner finds that “[cjlearly Nittono teaches the
provision of a carrier plate surface that is joined with a blister package
(figuresl [sic] and 8 of Nittono).” (Ans. 10). Moreover, the Examiner
further finds that “each package of Nittono is fixed within the holding
member until removal. When in use the packages are fixed relative the
carrier plate through the coupling member 3 and the other packaging. See
figure 1 and 8.” (Ans. 10; see also Final Act. 10).
We generally agree with the Appellant, and find the Examiner’s
interpretation to be unreasonably broad. The Specification discloses strap 3
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Application 13/185,205
as the manner in which individual packings are attached to the carrier plate.
(Spec. 8, 22, 23, 30 and Figs. 1—3). Accordingly, the limitation
“removably attached ... in a fixed position” is supported by the
Specification, and does not rely on a special, unconventional meaning of the
term “attached.” Thus, we do not construe the limitation as requiring any
specific form of attachment.
Nonetheless, we find persuasive the Appellant’s argument that in
Nittono, the packages “are simply held” instead of being “attached.” (Reply
Br. 7). Indeed, Appellant’s argument finds support in Nittono itself, which
describes its structure as “holding portion 3.” See, e.g., Nittono col. 3,1. 3.
Other terms also can be said to reasonably describe Nittono’s packages in
holding portion 3, including terms such as “retained” and “inserted.”
However, in our view, the terms “attached” and “joined,” as relied upon by
the Examiner, cannot be said to reasonably describe Nittono’s packages in
holding portion 3 thereof. While the Examiner is correct that the Patent
Office is obligated to give claims their broadest reasonable interpretation,
“any such construction [must] be ‘consistent with the specification, [] and . .
. claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Suitco Surface, Inc.,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010). We glean no basis in the record
to find that a person of ordinary skill in the art would have interpreted the
claim term “attached” in view of the Specification so expansively to
encompass Nittono’s packages held in holding portion 3.
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection relative to claim 16. Claims 18 and 20 depend from
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independent claim 16 and therefore include the “attached” limitation.
Accordingly, we reverse the rejection of these claims as well.
Rejection 5
The Appellant relies on the dependency of claims 17 and 19 for
patentability, and further argues that the tertiary reference Jodaitis does not
cure the deficiency of the combination of Peters and Nittono discussed
above relative to claim 16. (App. Br. 9). Indeed, the Examiner does not rely
on Jodaitis to cure the above noted deficiency with respect to the
combination of Peters and Nittono. Therefore, we reverse this rejection.
CONCLUSIONS
1. Rejections 1—3 are affirmed.
2. Rejections 4 and 5 are reversed.
DECISION
The decision of the Examiner to reject claims 16—20 is reversed. The
decision of the Examiner to reject claims 1—13 and 15 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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