Ex Parte Macinnes et al

Patent Trial and Appeal Board

Oct 12, 2016

13153300 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,300 06/03/2011
27939 7590 10/12/2016
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.
BPMDL0005JT.P6
(10055U CI
EXAMINER
POON, ROBERT
8681
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
10/12/2016 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, JENNIFER E. TOMES, and
SARAH ZYBURT
Appeal2014-007582 1
Application 13/153,3002
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 decision rejecting claim 12.3
1 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Dec. 31, 2013) and Specification ("Spec.," filed June 3,
2011), and the Examiner's Answer ("Ans.," mailed Apr. 23, 2014) and Final
Office Action ("Final Act.," mailed Aug. 6, 2013). We note that Appellants
have filed requests for Inter Partes Review of related patents 8,448,786,
8,631,935, and 6,678,190. Supplementary Appeal Brief(Feb. 17, 2015).
2 According to the Appellants, the real party in interest is Medline
Industries, Inc. Appeal Br. 2.
3 The Appellants list only claim 12 under "Grounds of Rejection to be
Reviewed on Appeal" (Appeal Br. 9), state that only claim 12 is at issue (id.
Appeal2014-007582
Application 13/153,300
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and
ENTER a NEW GROUND OF REJECTION pursuant to our authority under
37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
The Appellants' invention is directed a medical procedure kit with a
"patient aid suitable for inclusion in a medical kit used for medical
procedures that ensures the information is delivered to the patient
undergoing the procedure." Spec. i-fi-14, 144.
Claim 12 is the only independent claim on appeal, is exemplary of the
subject matter on appeal, and is reproduced below:
12. A medical procedure kit, comprising:
a tray having at least one medical device disposed therein;
and
a patient aid disposed within the tray, the patient aid
• • -C • • -C • • ,..J • compnsmg a set 01 patient m1ormatwn carneu on an mner
portion of the patient aid;
wherein the patient aid comprises a greeting card
appearance disposed on an outward facing portion of the patient
aid.
Appeal Br. 21 (Claims App.)
REJECTIONS AT ISSUE ON APPEAL
I. Claim 12 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Roshdy (US 2004/0195145 Al, pub. Oct. 7, 2004). Ans. 2.
at 10), and present only arguments against the rejection of claim 12 (see id.
at 10-19). Thus, we consider only claim 12 as pending in this appeal.
2
Appeal2014-007582
Application 13/153,300
IL Claim 12 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Morelli (US 2010/0274205 Al, pub. Oct. 28, 2010). Id.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence. 4
ANALYSIS
Rejection I
The Appellants contend that the Examiner's rejection of claim 12 as
anticipated by Roshdy is in error because Roshdy does not disclose "wherein
the patient aid comprises a greeting card appearance disposed on an outward
facing portion of the patient aid," as recited by the claim. See Appeal Br.
10-12. Conversely, the Examiner finds Roshdy's main panel 46 of the
blister card 18 discloses the limitation in that the "indicia ( 66) provides a
visual indicator that the card is for a patient or user of the kit/syringe since
the indicia shows the medical device" and can function as a greeting card
appearance. See Ans. 6.
We find the Appellants' argument persuasive. Roshdy discloses that
the indicia "serv[ e] as a quick reminder to medical personnel on how to
perform one or more common tasks pertaining to the medical devices".
Roshdy i-f 25. Even though we agree with the Examiner's finding that the
broadest reasonable interpretation of "a greeting card appearance" consistent
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-007582
Application 13/153,300
with the Specification is an appearance "configured to provide a caregiver a
visual indicator that the patient aid [500] is intended for a patient," (Ans. 6
(citing Spec. i-f 74); see also Spec. i-f 23), Roshdy discloses the indicia
provide the medical personnel a visual indicator for them, and not that the
aid is intended for the patient. Thus, Roshdy does not expressly disclose the
limitation. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
For the above reason, we do not sustain the Examiner's rejection of
claim 12 as anticipated by Roshdy.
Rejection II
The Appellants contend that the Examiner's rejection of claim 12 as
anticipated by Morelli is in error because Morelli does not disclose the
patient aid comprising a greeting card appearance as recited by the claim.
See Appeal Br. 12-14. Conversely, the Examiner finds Morelli's indicia on
label 36 disclose the limitation in that the indicia "provide[] patient
information as well as a visual indicator that the label (36) [patient aid], is
for the patient or user of the kit." Ans. 7.
We find the Appellants' argument persuasive. Morelli discloses a
wound treatment kit comprising multiple containers. Morelli i-f 17. Each
container can comprise a label providing information to the user to use the
materials in a specific sequence. See id. i-f 26. However using the broadest
reasonable interpretation of "greeting card appearance" as discussed above,
Morelli does not expressly show that the indicia on the label provides an
indicator that the label is for the patient, as opposed to the treatment. See id.
i-f 32 (disclosing a method for a user to use the kit to treat a patient).
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Appeal2014-007582
Application 13/153,300
For the above reason, we do not sustain the Examiner's rejection of
claim 12 as anticipated by Morelli.
NEW GROUND OF REJECTION
Pursuant to our authority under 37. C.F.R. § 41.50(b), we reject claim
12 under 35 U.S.C. § 103(a) as being obvious over Morelli.
Although we find that the prior art Morelli does not explicitly disclose
that the aid provides a "greeting card appearance" in that the indicia do not
expressly indicate that the aid is for the patient, we find this difference
between the prior art and the claim limitation lies in the printed matter (non-
functional descriptive material), as opposed to in the functionality. See In re
Xiao, 462 Fed. Appx. 947, 905-42 (Fed. Cir. 2011).
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." Id.
Claim 12 is directed to a kit comprising a tray having a medical
device and an aid, the aid comprising information and having "a greeting
card appearance." Morelli discloses a kit comprising a tray having a medical
device and an aid in the form of one or more labels that provides information
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Appeal2014-007582
Application 13/153,300
directing a user on how to use the device. Morelli iii! 22, 26. The only
difference between the claim limitations and Morelli lies in the appearance
of the aid, i.e., whether the appearance of the label indicates it is for the
patient or has "any of a healing color, an inspirational phrase, or a[ n]
aesthetically pleasing image, such as a vase of flowers." Appeal Br. 12
(emphases omitted). Thus, the relevant question is whether the appearance
has a "new and unobvious functional relationship" with the aid. There is no
objective evidence of record that there is such a functional distinction in the
aid in the appearance. The function of the aid of educating and encouraging
patients (see Spec. if 108) would be the same regardless of the color,
phrasing, or images on the aid are healing, inspirational, or aesthetically
pleasing. 5 As such, the specific type of appearance constitutes non-
functional descriptive that may not be relied upon for patentability. See In
re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ans. 7-8.
Concluding otherwise would result not only in the Appellants'
descriptive appearance distinguishing over the prior art, but equally would
distinguish every other type of appearance of matter printed on a card or
label. To give effect to the Appellants' arguments, we would need to ignore
our reviewing court's concerns with repeated patenting. See, e.g.,
AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064---65 (Fed. Cir. 2010)
5 We find unpersuasive the Appellants' arguments to the contrary. See
Appeal Br. 14--18. The Appellants do not show that Morelli's indicia cannot
be for a patient who is self-treating (as discussed supra), cannot be in a
healing color, contain an inspirational phrase, or contain a pleasing image,
and cannot result in "reducing hospital readmissions, improving patient
satisfaction, promoting self[-]care and preventative healthcare, and
improving patient compliance with medical instructions." Id. at 18.
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Application 13/153,300
("As explained in Ngai, if this court concluded otherwise "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."); King Pharm., 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.
Thus, it would have been obvious to one of ordinary skill in the art for
Morelli's aid to comprise a "greeting card appearance" because the type of
appearance is non-functional descriptive material that does not patentably
affect the function of the aid of facilitating information to the patient.
DECISION
The Examiner's rejections of claim 12 under 35 U.S.C. § 102 are
REVERSED.
A NEW GROUND OF REJECTION has been entered for claim 12
under 35 U.S.C. § 103(a) as being obvious over Morelli.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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Application 13/153,300
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
REVERSED; 37 C.F.R. § 41.50(b)
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