Ex Parte Macinnes et al

Patent Trial and Appeal Board

Oct 21, 2016

13374509 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/374,509 12/30/2011
27939 7590 10/24/2016
Philip H. Bum1s, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Susan E. Macinnes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BPMDL005JT.P4(10055UCIP4) 4336
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
10/24/2016 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 SUSAN E. MACINNES and JENNIFER E. TOMES
Appeal2014-007096 1
Application 13/374,5092
Technology Center 3700
Before ANTON W. PETTING, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Dec. 17, 2013), Reply Brief ("Reply Br.," filed June 6,
2014), and Specification ("Spec.," filed Dec. 30, 2011), and the Examiner's
Answer ("Ans.," mailed Apr. 10, 2014), and Final Office Action ("Final
Act.," mailed Aug. 6, 2013).
2 According to the Appellants, the real party in interest is Medline
Industries, Inc. Appeal Br. 2.
Appeal2014-007096
Application 13/374,509
STATEMENT OF THE CASE
The Appellants' invention is directed "generally to storage containers
for medical devices, and more particularly to a storage container for a long,
flexible medical implement, such as a catheter, and related medical devices,
as well as an instruction manual included therewith." Spec. i-f 4.
Claims 1, 14, and 20 are the independent claims on appeal. Claims 1
and 14 are exemplary of the subject matter on appeal, and are reproduced
below:
1. A medical procedure kit, comprising:
at least one tray having a medical assembly disposed
therein;
a layer of packaging material enclosing the at least one
tray; and
a printed label adhesively affixed to the outer packaging,
wherein the printed label comprises:
a peelable label that is separable from the printed label;
wherein the peelable label comprises:
a red banner having a warning thereon; and
at least one yellow panel comprising checkable
boxes corresponding to elements associated with the
wammg.
14. A medical procedure kit, comprising:
at least one tray having a medical assembly and
corresponding implements disposed therein;
a layer of packaging material enclosing the at least one
tray; and
a printed label adhesively affixed to the outer packaging,
wherein the printed label comprises:
2
Appeal2014-007096
Application 13/374,509
a colored banner comprising a description of the
medical assembly; and
a panel disposed adjacent to the colored banner, the
panel comprising:
a color photograph of the medical assembly
and the corresponding implements; and
a textual listing of the medical assembly and
the corresponding implements.
Appeal Br. 20, 22 (Claims App.)
REJECTIONS
Claims 1-3, 5-15, and 17-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Paikoff (US 4,523,679, iss. June 18, 1985) in
view of Primer (US 2008/0283426 Al, pub. Nov. 20, 2008). Final Act. 3.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable Paikoff, Primer, and Erisalu (US 6,659,506 Bl, iss. Dec. 9,
2003). Final Act 7.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence. 3
ISSUE
Did the Examiner err in rejecting claims 1, 14, and 20 because the
claimed printer matter is non-functional descriptive material?
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2014-007096
Application 13/374,509
ANALYSIS
The Appellants argue claims 1, 14, and 20 as a group. See Appeal
Br. 10-11. The Examiner finds that the combination of Paikoff and Primer
discloses the kit of claims 1 and 14 and the method of claim 20 except for
the "graphics as recited." Final Act. 3, 5, 7. The Examiner determines that
"it would have been obvious to change the graphics of the modified Paikoff
peelable label as recited," because the content of the printed matter is not
functionally related to the product and does not distinguish the claimed kit
and method from the prior art. Id. at 3-5, 7; see also Ans. 8-9.
Upon careful review of the Appellants' Appeal and Reply Briefs, we
disagree with the Appellants' contention that the Examiner erred in the
rejection of claim 1.
We find unpersuasive the Appellants' argument that the claim
limitations of a red banner and yellow checklist are functionally related to
the substrate. 4 See Appeal Br. 11-17. We disagree that the printed matter is
functionally related to the claimed substrate because the banner and
checklist are "functional tools that enable a user to know not how to use the
kit, but rather whether to use the kit." Id. at 14 (emphases omitted). Rather,
we agree with the Examiner that any differences between the prior art and
the claim limitations lie in the printed matter (non-functional descriptive
material), as opposed to in the functionality. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); see also Ans. 8.
4 We note the Appellants do not specifically argue the functionality of claim
14's color photograph and textual listing. For purposes of this appeal, we
consider the photograph and listing akin to the argued banner and checklist.
4
Appeal2014-007096
Application 13/374,509
We note that non-functional descriptive material cannot render
patentable an invention that is otherwise not patentable over the prior art.
See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability.)
Although we will not disregard any claim limitations and will assess the
claimed invention as a whole, we will follow the Federal Circuit's guidance
as in the Gulack decision and "will not give patentable weight to printed
matter absent a new and unobvious functional relationship between the
printed matter and the substrate." In re Lowry, 32 F.3d 1579, 1582
(Fed. Cir. 1994).
Claims 1, 14, and 20 recite limitations requiring a kit to comprise at
least one tray with a medical assembly, a layer of packaging material, and a
printed label affixed to the packaging. See Appeal Br. 20, 22-24 (Claims
App.). Claims 1 and 20 recite a peelable label comprising a red banner with
a warning and a yellow panel with checkable boxes. See id. at 20, 24.
Claims 14 and 20 recite a printed label comprising a colored banner with a
description and a panel with a colored photograph and textual listing. See id.
at 22, 24. Paikoff discloses a kit comprising a tray with a medical assembly,
a layer of packaging material, and printed matter on a wrap. See Final Act.
3; see also Paikoff, Figs. lB, 4, col. 4, 11. 25-29, 37--48, col. 4, 1. 64---col. 5,
1. 19. Primer discloses a kit with a peelable label affixed to the kit, the label
having printed information such as descriptive information, an image, and
markable boxes. See Final Act. 3; see also Primer, Figs. 2, 3, i-fi-149-51).
The only differences between the claimed label and Paikoff' s label as
modified by Primer lie in the color and type of information printed thereon.
5
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Application 13/374,509
Thus, the relevant question is whether the claimed color and type of
information (i.e., a warning, colored photograph, and checkable boxes) have
a "new and unobvious functional relationship" with the kit. There is no
objective evidence of record that there is a functional distinction in the kit or
label in the color of the label or type of information. See AstraZeneca LP v.
Apotex, Inc., 633 F.3d 1042, 1064---65 (Fed. Cir. 2010) ("whether the
'substrate' is the label or the drug is immaterial, for in both cases the
instructions do nothing more than explain how to use the known drug.") As
our reviewing court found in Ngai, the claimed color and type of information
here are not entitled to patentable weight; they do not function with the kit to
create a new, unobvious product. 367 F.3d at 1339. Although the color and
warning may aid a user in determining whether to use the kit (see Appeal Br.
14), or "as a codification of the decision in the patient's file" (id. at 17),
having a different color or removing the warning from the claimed kit does
not change the ability of the kit to store a medical device, the ability of the
user to use the kit, or the ability of the label to provide relevant information. 5
Concluding otherwise would result not only in the Appellants' color
and type of information distinguishing over the prior art, but equally would
distinguish every other color and type of information printed on a label. To
give effect to the Appellants' argument, we would need to ignore our
reviewing court's concerns with repeated patenting. See, e.g., AstraZeneca,
633 F.3d. at 1065 ("As explained in Ngai, if this court concluded otherwise
5 Appellants do not show that the indicia on the label of Paikoff/Primer
cannot be red or yellow or comprise checkable boxes or a colored
photograph.
6
Appeal2014-007096
Application 13/374,509
'anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.' 367 F.3d at 1339. Neither the
Patent Act nor our precedent countenances such an outcome."); and King
Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations."). We decline to do so.
In view of the foregoing, we are not persuaded of error on the part on
the Examiner in the rejection of claims 1, 14, and 20. 6 Thus, we sustain the
Examiner's rejection of the independent claims 1, 14, and 20 under 35
U.S.C. § 103(a). The Appellants provide no separate arguments for the
dependent claims (see Appeal Br. 10-11), and we thus also sustain the
rejections of the dependent claims 2-13 and 15-19 for the same reasons as
for independent claims 1 and 14.
DECISION
The rejections of claims 1-20 under 35 U.S.C. § 103(a) are
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)(l )(iv).
AFFIRMED
6 Finding no deficiency in the Examiner's rejection, we need not address the
Appellants' Grounds 2 and 3. See Appeal Br. 18
7