Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 6, 2014

12145355 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOM Y. WANG, RICHARD A. YOUNG, and
DAVID TRUONG
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Appeal 2012-003640
Application 12/145,355
Technology Center 3700
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/145,355

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STATEMENT OF THE CASE
Tom Y. Wang et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 3-5, 8, and 10-12. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 8 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A medicine container comprising:
a container body having a cylindrical shaped side wall
and a flat bottom panel disposed at one end of the cylindrical
shaped side wall, the container body further defining an
opening opposite the flat bottom panel, wherein the side wall
and the flat bottom panel define an interior space which is
accessible from the opening for containing a content, and
wherein a Fresnel lens is formed on the flat bottom panel for
magnifying the content within the interior space of the
container; and
a closing member for engaging the container body to
close the opening.
App. Br. 8, Claims App’x.
References
The Examiner relies upon the following prior art references:
Nelson US 3,367,484 Feb. 6, 1968
Vogel US 3,409,347 Nov. 5, 1968
Gach US 4,747,500 May 31, 1988
Travisano US 4,877,143 Oct. 31, 1989
Bayliss US 6,036,017 Mar. 14, 2000
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Rejections
Appellants seek review of the following rejections:
I. Claims 1 and 3-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nelson, Bayliss, and Vogel; and
II. Claims 8 and 10-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gach and Travisano.
SUMMARY OF DECISION
We AFFIRM-IN-PART.
OPINION
Rejection I
The Examiner concluded that the combination of Nelson, Bayliss, and
Vogel would have rendered the subject matter of claims 1 and 3-5 obvious to
one of ordinary skill in the art at the time of invention. Ans. 6-7. The
Examiner found that Nelson discloses the elements of the claims, except that
Nelson does not disclose “a Fresnel lens formed on the flat bottom panel for
magnifying the content within the interior space of the container.” Id. at 6.
The Examiner found that Bayliss discloses a lens in combination with a
medication container wherein the lens is “located in the bottom wall of the
medication container.” Id. at 7. The Examiner further found that Vogel
“discloses a pocket magnifier formed of a transparent plastic material having
[F]resnel lens formations.” Id. (citing Vogel, col. 2, l. 66). The Examiner
stated that “Vogel teaches a case having a Fresnel lens that magnifies objects
for enhanced viewing . . . . [and] Fresnel lenses are beneficial for use in
situations where a flat surface would be desirable.” Id.
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The Examiner concluded that “[i]n view of the teachings of Bayliss
. . . one skilled in the art would have been motivated to provide the bottom
wall of Nelson with a magnifying lens in order to permit enhanced viewing
of medication pieces.” Id. (citing Nelson, fig. 4). The Examiner further
concluded that in view of the combined teachings of Bayliss and Vogel,
“providing the bottom wall of Nelson with . . . [a] Fresnel lens would have
been an improvement of Nelson[’s] medication bottle, i.e., a compact lens is
formed in the bottom wall that not only magnifies the medication pieces, but
is light weight, thin, less expensive and easily manufactured.” Id.
Appellants assert that the Examiner’s combination relies upon a “two-
step modification process.”1 App. Br. 4. Appellants contend that the
Examiner starts with Nelson and then adds Bayliss’s teaching to “change the
bottom panel of Nelsen’s container 12 into a convex lens, without adding a
horizontal spacer wall above the lens.” Id. Appellants assert that the
Examiner’s second step was to then “change the convex lens to a Fresnel
lens based on . . . Vogel.” Id.
Appellants then posit that the first step of the Examiner’s modification
process would not have been obvious to one of ordinary skill in the art
because “Bayliss specifically teaches away from directly converting the
bottom panel to a convex lens without adding a horizontal spacer wall
[support wall 92] above the lens.” Id.; see Reply Br. 2. Appellants further
contend that the support wall is important in Bayliss’s disclosure because it

1 Appellants do not separately argue claims 1 and 3-5. See App. Br. 3-6;
Reply Br. 2-4. We select claim 1 as representative. Accordingly, claims 3-5
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also
In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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allows the lens to “achieve the desired magnification.” App. Br. 4 (quoting
Bayliss, col. 7, ll. 22-23); see Reply Br. 2.
Thus, according to Appellants, if one were combining Bayliss’s lens
with Nelson’s container, one would also employ Bayliss’s support wall and
the Examiner has not explained why “one skilled in the art would go directly
against Bayliss’[s] teaching by removing the spacer wall.” App. Br. 6; see
Reply Br. 3 (“The issue is not whether there is suggestion of the need for a
spacer wall; the issue is whether there is any suggestion to remove the spacer
wall that is such an important element of Bayliss or Bayliss-modified
Nels[o]n.”).
Appellants’ argument reflects a misunderstanding of the Examiner’s
rejection. The Examiner did not specifically rely upon Bayliss for the
teaching of a convex lens or a support wall. Rather, the Examiner simply
relied upon Bayliss as disclosing a magnifying lens in the bottom wall of a
medication container. See Ans. 7. In other words, the Examiner’s proposed
combination did not rely upon the particular type of lens disclosed by
Bayliss.
The Examiner relied upon Vogel as disclosing the specific type of
lens—a Fresnel lens. Id. Therefore, the Examiner had no need to explain
why one of ordinary skill in the art would remove Bayliss’s support wall
when combining Bayliss’s lens with Nelson’s container because the
Examiner never combined Bayliss’s specific lens with Nelson’s container.
The Examiner simply combined Bayliss’s general teaching of including a
lens at the bottom of a medicine container. As such, whether Appellants
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couch their argument as a teaching away2 or as a lack of reason to
modify/remove Bayliss’s support wall is inapposite as the Examiner’s
combination did not rely upon the specific lens disclosed by Bayliss at any
step of the modification process.3
Accordingly, because Appellants’ argument is not persuasive, we
sustain Rejection I.
Rejection II
The Examiner concluded that the combination of Gach and Travisano
would have rendered the subject matter of claims 8 and 10-12 obvious to one
of ordinary skill in the art at the time of invention. Ans. 8. The Examiner
found that Gach discloses the elements of the claims, except that Gach does
not disclose “a Fresnel lens . . . formed on the middle component for
magnifying content within the container.” Id. The Examiner found that
Travisano “discloses a tamper evident indicating means [in which] a
container . . . is provided with a Fresnel lens that enhances viewing of

2 Because the Examiner did not rely upon the specific lens disclosed in
Bayliss we see no reason why Bayliss would lead one of ordinary skill in the
art “in a direction divergent from the path that was taken by the applicant.”
In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v.
Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). We also note
that “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see
also Ans. 9-10 (“It would respectfully appear myopic that one skilled in the
art would only be constrained to that specific type of magnifier
construction.”).
3 While the Examiner acknowledges that the rejection relied “in a broader
sense” upon a two-step modification process, the Examiner reiterated that
Bayliss was relied upon for disclosing a “magnifying lens” in a medication
container. See Ans. 9. Bayliss was not relied upon for the specific type of
lens disclosed.
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indicia . . . thereunder.” Id. The Examiner concluded that it would have
been obvious to one of ordinary skill in the art at the time of invention “to
modify the closure of Gach . . . by forming the component 80 with [a]
Fresnel lens for the reason of enhancing viewing of the indicia.” Id.
Appellants assert that Travisano discloses a negative Fresnel lens,
which is not a magnifying lens and thus “cannot magnify the content of the
container.” App. Br. 7. As such, Appellants contend that the negative
Fresnel lens of Travisano cannot perform the magnifying function claimed.
Id.
Claim 8 is directed to a medicine container comprising, inter alia, “a
Fresnel lens . . . formed on the middle component for magnifying a content
within the container.” App. Br. 8, Claims App’x (emphasis added). Thus,
claim 8 positively recites that the Fresnel lens performs the function of
“magnifying a content within the container.”
The Examiner relied on Travisano’s preference for the Fresnel lens
disclosed therein as compared to Travisano’s alternative embodiment of a
“matte surface” because the Fresnel lens “is more efficient in transmitting
light, and hence the warning indicia on member 12 will be more readily
readable, especially by persons with vision problems.” Ans. 12-13 (citing
Travisano, col. 3, ll. 46-52). The Examiner presents the following rationale:
“If the negative Fresnel lens disclosure in Travisano does not magnify a
component, then it is not seen how the indicia would be more readily
readable by persons with vision problems.” Ans. 13.
Travisano relates to tamper evident containers, specifically to an
indicator that provides an irreversible warning when the integrity of the
container has been violated. Travisano, col. 1, ll. 5-9. As shown in
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Travisano’s Figures 1, 3, and 4, resilient member 12 is secured to member
11. Travisano, fig. 1; col. 3, ll. 24-25. Member 12 “may be imprinted with a
mark or the word ‘OPENED’ thereon.” Id. at col. 3, ll. 32-33. Member 11,
or at least a portion of it, is a light diffusion element such that when member
12 is in contact with member 11, the indicia on member 12 are clearly
visible. Id. at col. 3, ll. 47-52.
In use, the container is vacuum sealed, resulting in a separation
between members 11 and 12. Id. at col. 3, ll. 61-65. When members 11 and
12 are separated by a certain distance, one cannot see the printed mark or
word. Id. at col. 4, ll. 23-27. But, when the vacuum seal is broken,
members 11 and 12 come into contact and the message is “clearly
discernible and readable through member 11.” Id. at col. 4, ll. 27-31.
Travisano does not expressly disclose that its negative Fresnel lens
magnifies. Travisano’s statement that the lens “is more efficient in
transmitting light” (id. at col. 3, ll. 49-50), explicitly means that more light
can transmit through the lens as compared to Travisano’s alternative
embodiment of a matte surface. The Examiner has not explained why one of
ordinary skill in the art would understand this statement to necessarily mean
that the lens magnifies. An alternative, yet reasonable, understanding of this
disclosure, in light of the record before us, is that by allowing more light
through the diffusion surface (i.e., the negative Fresnel lens in this context),
the indicia are brighter and hence more readily readable by persons with
vision problems.4

4 We also note that a negative Fresnel lens has a negative focal length, and
the Examiner has not explained how or to what extent this characteristic
impacts whether Travisano’s lens magnifies.
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Accordingly, because the Examiner has not established by a
preponderance of the evidence that the negative Fresnel lens disclosed by
Travisano necessarily performs the claimed magnifying function, we do not
sustain Rejection II.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1 and 3-5.
We REVERSE the Examiner’s decision rejecting claims 8 and 10-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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