Ex Parte Milante

Patent Trial and Appeal Board

Dec 14, 2018

13860195 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/860, 195 04/10/2013
61650 7590 12/18/2018
MYERS WOLIN, LLC
100 HEADQUARTERS PLAZA
West Tower, Floor 7
MORRISTOWN, NJ 07960-6834
FIRST NAMED INVENTOR
Sandrine Milante
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.
ABFR4311 8489
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@myerswolin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRINE MILANTE
Appeal2018-004799
Application 13/860,195
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sandrine Milante ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 4, 6, 9-13, 15, 16, and 18-
22.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 EcoloPharm Inc. is the Applicant and is identified as the real party in
interest. Appeal Br. 3.
Appeal2018-004799
Application 13/860,195
THE CLAIMED SUBJECT MATTER
The claims are directed to a blister sheet holder for the verification of
the blister sheet's content. Spec. ,r 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A blister sheet holder comprising:
a frame defining an opening adapted for receiving a blister
sheet; and
verification receptacles in the frame, each adapted to
receive part of a content of at least one blister of the blister sheet;
each of the verification receptacles being positioned
adjacent to and outside of a boundary of the opening defined by
a length and width of the opening, and
wherein at least one of the verification receptacles
includes a bottom surface that has a depth that gradually
increases from a first side of the at least one of the verification
receptacles that is adjacent to and outside of the boundary of the
opening to another side of the at least one of the verification
receptacles.
REJECTIONS
1. Claims 1, 4, 6, 9, 10, 12, 13, 15, 16, 18, 19, and 22 are rejected
under 35 U.S.C. § 103 as unpatentable over Strand (US 3,461,643, issued
Aug. 19, 1969) and Totten (US 3,848,395, issued Nov. 19, 1974).
2. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Strand, Totten, and Keffeler (US 7,334,699 B2, issued Feb. 26, 2008).
3. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over Strand, Totten, and Vandiver (US 2012/0006950 Al, published Jan. 12,
2012).
4. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable
over Strand, Totten, and Van Handel (US 3,255,894, issued June 14, 1966).
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Application 13/860,195
DISCUSSION
Rejection 1
The Examiner finds that Strand discloses many of the features of
independent claims 1 and 22 including a receptacle, but relies on Totten to
disclose multiple verification receptacles positioned adjacent to and outside
of a boundary of an opening of a frame. Final Act. 2-3. The Examiner
considers that providing Strand with multiple receptacles instead of a single
receptacle is an obvious variant. Id. at 3. According to the Examiner, both
Strand and Totten disclose a receptacle having a bottom surface that has a
depth that gradually increases from a first side of the verification receptacle
to a second side of the verification receptacle. Id. at 2-3.
Appellant argues that the references do not disclose the claimed depth
of the receptacles because Strand's "taper is facing the wrong direction
relative to the boundary of the opening. Each angled wall of Strand directs
pills toward the central opening and has the greatest depth immediately
adjacent the opening." Appeal Br. 10. Appellant asserts that Totten's walls
slope in the wrong direction, because "the receptacles of Totten each have an
open end 66, and the bottom of each receptacle forms a funnel for directing
the contents of the receptacle out the open end." Id. at 11. According to
Appellant, Totten's "receptacles are symmetric when viewed in profile, and
therefore do not gradually increase from side to side." Id. at 12.
In response, the Examiner provides an annotated figure depicting the
Examiner's interpretation of the modified device of Strand, according to
Totten. Ans. 4. We reproduce below the Examiner's annotated figure.
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Appeal2018-004799
Application 13/860,195
Sectional view of S1'RA1VIJ in i1iew <~f TOTJ1i'l\l verijicatit>n receptacles
The Examiner's annotated figure modifies the transverse sectional
view of Figure 2 of Strand to include receptacles similar to the receptacles
depicted in Figure 8 of Totten. The Examiner determines that the annotated
figure depicts that the trough shaped receptacle of Totten slopes "similarly to
the sloped bottom surface of Appellant's verification receptacles." Ans. 4.
Appellant replies that the Examiner's annotated figure "does not show
a depth that gradually increases from a first side ... to another side of the at
least one of the verification receptacles. Instead, the '2nd depth' highlighted
by the Examiner is the exact center of the asserted 'receptacles."' Reply Br.
4. According to Appellant, "[t]he '[]other side' of the 'receptacle' is in fact
symmetric and has the exact same depth as the first side." Id. We do not
sustain the Examiner's rejection for the following reasons.
The Examiner does not explain adequately how the first and second
depth in the Examiner's annotated figure are on a "first side" and "another
side," as required by claim 1, or are on a "second side opposite the first
side," as required by claim 22. The Federal Circuit has established that the
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Appeal2018-004799
Application 13/860,195
proper construction is not just the broadest construction, but rather the
broadest reasonable construction in light of the specification. Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) ("A
construction that is unreasonably broad and which does not reasonably
reflect the plain language and disclosure will not pass muster.") ( citations
omitted). Here, the Specification states that "[e]ach recess 18 has a depth
that increases from a first side 50 of the recess 18 adjacent the shoulder 38
towards the opposite side 52 of the recess." Spec. ,r 37, Fig. 1. Thus, the
depth increases from a first side to another ( second) side, and in the
preferred embodiment, the first and second sides are two opposite sides. In
contrast, Totten discloses that "[r]eceptacles 58 each have a bottom 60, two
side walls 62 and one end wall 64 . ... The other end 66 of each receptacle is
open ... [t]he general configuration of the receptacles is trough-shaped
except for the open end." Totten, 4:57---66.
Although Totten discloses two side walls, in the Examiner's annotated
figure, the first and second depths are on the same side wall of the
receptacle. That is, as Appellant correctly notes, the trough of Totten is
symmetric and the Examiner's annotations are on the same side of the line of
symmetry. In view of the above, the Examiner's construction of "a depth
that gradually increases from a first side ... to another side of the at least one
of the verification receptacles" is based on an unreasonably broad
interpretation of "from a first side ... to another side" as recited in claim 1
because the Examiner compares depths on one side of the receptacle. See In
re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) ("[t]he protocol of giving
claims their broadest reasonable interpretation ... does not include giving
claims a legally incorrect interpretation."). This unreasonable claim
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Appeal2018-004799
Application 13/860,195
construction led to the Examiner's unsupported finding that Strand as
modified by Totten meets the claimed receptacle configuration. We do not
sustain the Examiner's rejection of independent claims 1 and 22, and of
claims 4, 6, 9, 10, 12, 13, 15, 16, 18, and 19 dependingfromclaim 1 as
unpatentable over Strand and Totten.
Rejections 2--4
Claims 11, 20, and 21 depend directly or indirectly from claim 1.
Appeal. Br. 16-17 (Claims App.). The Examiner rejects these claims as
unpatentable over Strand and Totten, and various additional disclosures from
Keffeler, Vandiver, and Van Handel. Final Act. 3-5. The Examiner does
not rely on the additional disclosures from Keffeler, Vandiver, and Van
Handel to cure the deficiencies in the Strand and Totten combination
discussed above in connection with the rejection of claim 1. Id. Therefore,
we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 11, 20,
and 21 for the same reasons stated in connection with the rejection of claim
1.
DECISION
The Examiner's decision to reject claims 1, 4, 6, 9-13, 15, 16, and
18-22 is reversed.
REVERSED
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