11369428 (B.P.A.I. Jun. 21, 2012)

Ex Parte Riley

Board of Patent Appeals and InterferencesJun 21, 2012

11369428 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/369,428 03/07/2006 Edward D. Riley POLYVAC.1006 9668 7590 06/21/2012 HAYES SOLOWAY PC 175 Canal Street Manchester, NH 03101 EXAMINER YOO, REGINA M ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 06/21/2012 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 EDWARD D. RILEY ____________ Appeal 2011-004110 Application 11/369,428 Technology Center 1700 ____________ Before CHARLES F. WARREN, PETER F. KRATZ and JEFFREY T. SMITH, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL Appeal 2011-004110 Application 11/369,428 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 16-28. We have jurisdiction under 35 U.S.C. § 6. We refer to the Appeal Brief for the rejections to be reviewed on appeal. OPINION The dispositive issue on appeal is: Did the Examiner err in determining that the combination of Mönch (US 5,840,261 issued Nov. 24, 1998), Dorin (US 6,599,482 B1 issued July 29, 2003) and Berry (US 5,918,740 issued July 6, 1999) would have led one skilled in the art to a container system for medical instruments with a tray base having a plurality of perpendicularly intersecting ribs, the intersecting ribs having a circular cross-section and central axes configured in a plane as required by the subject matter of independent claim 16?1, 2 We answer this question in the affirmative and we REVERSE. Appellant argues that neither Mönch, Dorin or Berry provide motivation to one skilled in the art to combine the references because neither of the references, either alone or combined, teach the structural limitations of a plurality of perpendicularly intersecting ribs, the intersecting ribs having a circular cross-section and central axes configured in a plane as required by the subject matter of independent claim 16. App. Br. 18; Reply Br. 6. 1 We will limit our discussion to independent claim 16. 2 A discussion of the references to Riley ‘237, Abercrombie, Ostrowsky, Riley ‘901, Purushothaman and Miller is unnecessary for disposition of these rejections. The Examiner relied upon these references for describing features not related to the dispositive issue. Appeal 2011-004110 Application 11/369,428 3 We agree with Appellant that the Examiner does not adequately explain where the motivation to combine the teachings of Mönch, Dorin or Berry is derived from the prior art. The Examiner’s reasoning (Ans. 9, 10) does not provide an adequate explanation of how one skilled in the art would modify the tray base of Mönch in view of the teachings of Berry to arrive at the subject matter of independent claim 16 The Examiner has also failed to explain why the construction techniques of Möonch, Dorin and Berry are compatible with one another. For the foregoing reasons and those presented by Appellant, we determine that the Examiner’s conclusion of obviousness is not supported by the facts. “Where the legal conclusion [of obviousness] is not supported by facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, the Examiner’s rejection of claims 16, 17, 19, 22, 23 and 25 over Mönch, Dorin and Berry is reversed.3 ORDER The Examiner’s decision to reject claims 16-28 under 35 U.S.C. § 103(a) is reversed. REVERSED bar 3 We also reverse the rejections of dependent claims 18, 20, 21, 24 and 26- 28 under 35 U.S.C. § 103(a). The additionally cited references do not disclose or suggest the features of the claimed invention discussed above. Accordingly, we reverse these rejections as well for the reasons given above.