Ex Parte Nagao et al

Board of Patent Appeals and Interferences

Jun 11, 2012

10509673 (B.P.A.I. Jun. 11, 2012)

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.
10/509,673 10/08/2004 Katsuyoshi Nagao 040520 6132
23850 7590 06/11/2012
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
WIEST, PHILIP R
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KATSUYOSHI NAGAO, TOSHIHARU YOKOYAMA, and
KIICHI KAWAKAMI
__________

Appeal 2011-001108
Application 10/509,673
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
multiple-chamber medical container. The Examiner has rejected the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1, 3, and 5-25 are on appeal. Claim 1 is representative and
reads as follows:
Appeal 2011-001108
Application 10/509,673

2
1. A multiple-chamber medical container comprising:
a container body having multiple chambers for containing
medicaments therein and a partitioning seal portion for separating the
multiple chambers from one another,
a medicinal outlet portion attached to the container body for
discharging the medicaments from the chambers therethrough, and
an openable additional small container formed of sheet material
located within at least one of the multiple chambers and having a
medicament enclosed therein;
wherein the partitioning seal portion is formed by separably bonding
opposing inner wall surfaces of the container body,
the small container is structured to open in response to external force,
the small container has a bonded portion bonded to the container
body, and
the bonded portion comprises opposing outer surfaces of the sheet
material, wherein the opposing outer surfaces are each bonded to the
opposing inner wall surfaces of the chambers in the vicinity of the
partitioning seal portion, and
the small container is opened in accordance with the separation of the
opposing inner wall surfaces of the container body.

The Examiner has rejected claims 1, 3, 5, 6, 9-12, 14-20, and 22-25
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious in view of Larkin.1 The Examiner has rejected
claims 7 and 8 under 35 U.S.C. § 103(a) as obvious in view Larkin and
Inoue;2 and claims 13 and 21 as obvious in view of Larkin and Becker.3
The Examiner finds that Larkin discloses a multiple-chamber medical
container that comprises a “partitioning seal 43 that separates the first and
second chambers from each other” (Answer 3), which “is formed by

1 Larkin, US 4,602,910, July 29, 1986
2 Inoue et al., US 5,423,421, June 13, 1995
3 Becker et al., US 6,319,243 B1, Nov. 20, 2001
Appeal 2011-001108
Application 10/509,673

3
separably bonding opposing inner wall surfaces of the container body” (id.
at 4). The Examiner finds that Larkin’s container also comprises a “small
container 36 … positioned within the first chamber 18” (id. at 3-4), and that
the small chamber “has a bonded portion 44 adjacent the partitioning seal 43
and bonded to the container body, wherein the bonded portion comprises
opposing outer surfaces of sheet material” (id. at 4).
Appellants argue, among other things, that Larkin’s container does not
have a structure that corresponds to the claimed “partitioning seal portion”
(Appeal Br. 16), because claim 1 requires that “the partitioning seal portion
is formed by separably bonding opposing inner wall surfaces of the
container body” and that there is no portion where the back and front walls
of Larkin’s container body are bonded together to form a partitioning seal
that separates chambers (id. at 17).
We agree with Appellants that the Examiner has not adequately
shown that Larkin discloses the container of claim 1. The container defined
by claim 1 comprises, among other things, a “container body having
multiple chambers,” separated from each other by a “partitioning seal
portion … formed by separably bonding opposing inner wall surfaces of the
container body,” and an “additional small container formed of sheet material
located within at least one of the multiple chambers” (claim 1).
Larkin discloses a “flexible container system … wherein one
container is seal[ed] within the other” (Larkin, col. 1, ll. 64-66). Figure 1 of
Larkin is shown below:
App
App

Figu
posit
Figu
(id. a
eal 2011-0
lication 10
re 1 shows
ioned cent
Figure 3
re 3 shows
t col. 2, ll
Figure 4
01108
/509,673
Larkin’s
rally with
of Larkin
“a view i
. 50-51).
of Larkin
“container
in the first
is shown b
n horizont
is shown b
4
system …
container”
elow.
al section
elow:
with the
(Larkin,
taken alon

second con
col. 2, ll. 4

g line 3-3
tainer
5-47).
of FIG. 1”

App
App

the s
clear
mean
sepa
cont
of a
cont
The
corre
corre
eal 2011-0
lication 10
Figure 4
eal portion
The Exa
ly teaches
s of a par
rably bond
ainer body
portion of
ainer (id.),
Examiner
sponding
sponding
01108
/509,673
shows an
(id. at co
miner reas
a small co
titioning s
ing oppos
” (Answer
Larkin’s F
which is s
has annota
to the “par
to the “bo
enlarged p
l. 2, ll. 52-
ons that “
ntainer th
eal 43, said
ing inner w
7). The E
igure 4 as
hown belo
ted the dra
titioning s
nded porti
5
artial view
54).
[r]egarding
at is separa
partitioni
all surfac
xaminer p
showing t
w.
wing to id
eal” and to
on” of the
of the co
the partit
ted from
ng seal be
es of shee
rovides an
he seal po
entify sea
identify
small cont

ntainer illu
ioning sea
a larger co
ing forme
ts 36 and 3
annotated
rtion of La

l potion 43
seal portio
ainer.
strating
l, Larkin
ntainer by
d by
7 of the
version
rkin’s
as
n 44 as

Appeal 2011-001108
Application 10/509,673

6
However, the walls of the container body in Larkin’s device are
elements 15 and 18, not elements 36 and 37. Larkin’s elements 36 and 37
correspond to the “sheet material” recited in claim 1 that forms the
“additional small container” (see claim 1). Thus, the bond portion 43, which
the Examiner relies on to meet the “partitioning seal” limitation, is a bond
between the sheet material that forms the small container; it is not “formed
by separably bonding opposing inner wall surfaces of the container body,”
as required by claim 1 for the partitioning seal.
Claim 3, the only other independent claim on appeal, includes the
same “partitioning seal” limitation as claim 1. We therefore reverse the
rejection of claims 1 and 3, as well as dependent claims 5, 6, 9-12, 14-20,
and 22-25, as anticipated by Larkin.
The Examiner alternatively rejected claims 1, 3, 5, 6, 9-12, 14-20, and
22-25 as obvious in view of Larkin (Answer 3). However, the Examiner did
not provide any separate reasoning on which to conclude that the limitation
not disclosed by Larkin would nonetheless have been obvious. Therefore,
we also reverse the rejection of these claims as being obvious in view of
Larkin.
We also reverse the rejections of claims 7, 8, 13, and 21 under 35
U.S.C. § 103(a) because these rejections rely on the findings with respect to
Larkin as discussed above, and the Examiner relies on Inoue and Becker
only to show the obviousness of dependent claim limitations.
Appeal 2011-001108
Application 10/509,673

7
SUMMARY
We reverse the rejection of claims 1, 3, 5, 6, 9-12, 14-20, and 22-25
under 35 U.S.C. § 102(b) and the rejection of claims 1, 3, and 5-25 under 35
U.S.C. § 103(a).

REVERSED

lp