Ex Parte Sowden et al

Patent Trial and Appeal Board

Jun 15, 2018

14282986 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/282,986 05/20/2014
27777 7590 06/19/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Harry S. Sowden
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.
MCP5237USNP 9473
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY S. SOWDEN, GERALD P. MCNALLY,
and R. SCOTT SHORTS
Appeal2017-008819
Application 14/282,986
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Harry S. Sowden et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' invention relates to tamper and child resistant packaging
for pharmaceutical and/or consumer products. Spec. para. 2.
Appeal2017-008819
Application 14/282,986
Claims 1 and 18 are independent. Claim 1 is illustrative and is
reproduced below:
1. A package comprising:
a container having a first section and a second section
connected at a breakable joint, wherein the first section
comprises a well; and
a cover sheet, wherein the cover sheet is adhered to at least
a portion of the first section and at least a portion of the second
section and the cover sheet covers the well;
wherein either the first section or the second section is
adapted to pivot at a fulcrum between the cover sheet and the
joint to assist in breaking of the breakable joint in order to
separate the first section and the second section, such that upon
the breaking, the first section and the second section are still
adhered to the cover sheet and wherein the second section serves
as a grip to remove the sheet from the first section to expose the
well.
THE REJECTIONS
The Examiner has rejected:
(i) Claims 1, 5, and 15-18 under 35 U.S.C. § 102(a)(2) as being
anticipated by Compere (US 3,921,805, issued Nov. 25, 1975);
(ii) Claims 2--4, 7, 8, 10-14, 19, and 20 under 35 U.S.C. § 103 as
being unpatentable over Compere;
(iii) Claim 6 under 35 U.S.C. § 103 as being unpatentable over
Compere in view of Le (US 8,333,280 B2, issued Dec. 18, 2012); and
(iv) Claim 9 under 35 U.S.C. § 103 as being unpatentable over
Compere in view of Haines (US 3,835,995, issued Sept. 17, 1974).
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Appeal2017-008819
Application 14/282,986
ANALYSIS
Claims 1, 5, and 15-18--Anticipation--Compere
The Examiner finds that Compere discloses all limitations set forth in
claims 1 and 18, including a package comprising a first section (blister sheet
15) and a second section ( tab 19), one of which is adapted to pivot at a
fulcrum (line of weakening 14) between a cover sheet (backing sheet 25)
and a breakable joint (also line of weakening 14) to assist in breaking of the
breakable joint in order to separate the first section and the second section.
Final Act. 2 ( citing Compere, col. 5, 11. 34--42); see also Compere, Fig. 1.
The Examiner's finding that line of weakening 14 in Compere is responsive
to both the claimed fulcrum and the claimed breakable joint is premised on
construing claims 1 and 18 as encompassing two different embodiments
disclosed in Compere. Specifically, a first embodiment shown in Figure 2
provides a fulcrum at the same location as the line of weakening, whereas a
second embodiment shown in Figure 4 provides a fulcrum 10 located at a
position between cover sheet 25 and breakable joint (line of weakening 14).
Appellants contest the Examiner's claim construction, and argue that
the claimed breakable joint cannot be the same as, or at the same position as,
the claimed fulcrum, because the claims require the fulcrum to be positioned
between the cover sheet and the breakable joint. Br. 7-8. In other words,
Appellants maintain that the claim language does not encompass their Figure
2 embodiment, as asserted by the Examiner. As such, Appellants contend
that the Examiner erred in finding that the line of weakening 14 of the
package of Compere corresponds to both the breakable joint and the
fulcrum, as claimed. Id. at 7.
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Appeal2017-008819
Application 14/282,986
Notwithstanding that the Examiner recognizes that "there is a
distinction between a separate fulcrum element positioned between two
points, and a fulcrum as defined by a position where pivoting occurs," the
Examiner maintains that it is "inaccurate" to limit the claims to defining a
fulcrum as being positioned between the cover sheet and the joint. Ans. 5.
In support of this position, the Examiner focuses on the disclosure in the
Specification directed to the embodiment of Figures 1-3, for which the
fulcrum is described or defined as a "point of engagement." Id. (quoting
Spec., para. 38). As such, the Examiner determines that "[t]here is no reason
to believe the claims preclude the embodiment where the fulcrum consists of
the breakable joint." Id. at 7.
Contrary to this position, there is indeed a reason to believe that the
claims preclude the embodiment where the fulcrum consists of the breakable
joint--the express language of the claims themselves. That language limits
or defines the location of the fulcrum as being "between the cover sheet and
the [breakable] joint," to the exclusion of a fulcrum being located at the
same position as the breakable joint. That the Specification discloses two
different embodiments does not compel a finding that the claims must
encompass both, nor does it entitle the Examiner to ignore the claim
language, which expressly does not include both.
The Examiner does not attempt to interpret Compere as disclosing a
construction in which either the first section or the second section is adapted
to pivot at a fulcrum between the cover sheet and the joint to assist in
breaking of the breakable joint in order to separate the first section and the
second section, as claimed. Accordingly, the Examiner has not established
that claims 1 and 18 are anticipated by Compere. The rejection of claims 1
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Appeal2017-008819
Application 14/282,986
and 18 as being anticipated by Compere is not sustained. The rejection of
claims 5 and 15-1 7, which depend from claim 1, is not sustained for the
same reason.
Claims 2-4, 7, 8, 10-14, 19, 20--0bviousness--Compere
The rejection of claims 2--4, 7, 8, 10-14, 19, and 20, which depend
from claim 1, relies on the same erroneous claim construction and findings
as for the rejection of claim 1. Final Act. 3--4. Thus, the rejection of these
claims is not sustained for the same reason.
Claim 6--0bviousness--Compere/Le
Claim 9--0bviousness--Compere/Haines
The Examiner does not rely on Le or Haines in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
claims 6 and 9 depend. Final Act. 4--5. For the same reasons discussed
supra, we do not sustain the rejections of claims 6 and 9.
DECISION
The rejections of claims 1-20 are reversed.
REVERSED
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