Michael Bucholtz et al.

Patent Trials and Appeals Board

Dec 26, 2019

12992749 - (D) (P.T.A.B. Dec. 26, 2019)

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.
12/992,749 02/08/2011 Michael Bucholtz CSP-0166US 9774
99350 7590 12/26/2019
CSP Technologies, Inc.
David Gornish c/o Eckert Seamans Cherin & Mellott
Two Liberty Place
50 South 16th Street, 22nd Floor
Philadelphia, PA 19102
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
ip2mail@eckertseamans.com
tberger@eckertseamans.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BUCHOLTZ, RONALD SUPRANOWICZ,
and JOHN BELFANCE
____________

Appeal 2018-002139
Application 12/992,749
Technology Center 3700
____________

Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 14–21, 23, 25, 27, 29, 33, and 36–46,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the
assignee of the instant application, CSP Technologies, Inc.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relates to containers that can be used, for
example, to house test strips, pills, capsules, particulate materials, liquids, or
other objects or materials and control the ingress and/or egress of moisture.”
Spec. ¶ 2. Particularly, the invention relates to “a moisture proof, resealable
non-cylindrical container and lid assembly.” Id. ¶ 4
Claims 14 and 38 are the independent claims. Claim 14 is illustrative
of the subject matter on appeal and is reproduced below:
14. A moisture-tight, re-sealable container comprising:
a. a body that is generally elliptical in cross-section having
a generally tubular sidewall with first and second axially opposed
ends, a base, and a dispensing opening axially spaced from the
base and at least adjacent to the second end;
b. an interior space disposed generally within the sidewall
and at least generally between the base and the dispensing
opening;
c. the generally tubular sidewall having a generally
elliptical cross-section having a major diameter and a minor
diameter, wherein the ratio between the major diameter and the
minor diameter of the sidewall cross-section is a value between
1.1 : 1 and 10 : 1, inclusive;
d. a generally elliptical body sealing surface located on an
exterior portion of the body and disposed about the dispensing
opening, the body sealing surface having a major diameter and a
minor diameter, wherein the ratio between the major diameter
and the minor diameter of the body sealing surface is a value
between 1.1 : 1 and 10 : 1, inclusive;
e. a lid configured to seat on the body, the lid being linked
to the body by a hinge;
f. a lid sealing surface located on an interior portion of the
lid, the lid comprising a lid sidewall extending from the lid
sealing surface and terminating at a lid underside;
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g. the body sealing surface and the lid sealing surface
being configured to mate to form a seal between the lid and the
body when the lid is seated on the body; and
h. the lid and lid sealing surface at least substantially
closing the dispensing opening and isolating the interior space
from ambient conditions, wherein the container is configured to
store test strips such that exposed ends of the test strips extend
beyond the entire dispensing opening of the body and wherein
the exposed ends are positioned within the lid when the lid is
seated on the body without damaging the exposed ends;
the container having a moisture ingress rate of 100–1000
micrograms per day, at 80% relative humidity and 22.2°C.
Appeal Br. 23 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Moon US 2,727,547 Dec. 20, 1955
Hagen et al.
(“Hagen”)
US 2003/0133847 A1 July 17, 2003
Giraud et al.
(“Giraud”)
US 7,059,492 B2 June 13, 2006
Boozer et al.
(“Boozer”)
US 2007/0080093 A1 Apr. 12, 2007
REJECTIONS
Claims 14, 27, 36–39, and 42–44 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hagen in view of Boozer.
Claims 14–21, 23, 25, 27, 33, and 36–46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Giraud in view of Hagen.2

2 We consider the Examiner’s inclusion of claim 47 as harmless error.
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Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giraud, Hagen, and further in view of Moon.
OPINION
Hagen in view of Boozer3
The Appellant argues claims 14, 27, 36–39, and 42–44 as a group.
See Appeal Br. 14–21. We select claim 14 as representative of the group
with the remaining claims standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Hagen teaches the limitations of the
moisture-tight, re-sealable container of claim 14 except for “the lid being
linked to the body by a hinge,” as recited in limitation e. Non-Final Act. 9.
The Examiner finds that Boozer cures this deficiency and determines that “it
would be known to one of ordinary skill in the art of moisture tight, non-
round containers to provide hinge connections between lids and caps while
maintaining the moisture-tight seal.” Id.
“The key to supporting any rejection under 35 U.S.C. 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious.” MANUAL OF PATENT EXAMINING PROCEDURE § 2142 (Jan. 2018)
(“MPEP”). “[R]ejections on obviousness cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

3 The rejections are considered in the order presented by the Examiner in
the Non-Final Action.
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Here, we agree with the Appellant’s contention that the Examiner
does not provide adequate reasoning why one of ordinary skill in the art
would combine Hagen and Boozer to reach the claimed invention. See
Appeal Br. 19; Reply Br. 2. The Examiner concludes that it would be
obvious to provide hinge connections, but does not identify a reason that
would have prompted a person of ordinary skill in the art to combine
Boozer’s living hinge element with Hagen’s container. See KSR, 550 U.S.
at 418 (the analysis of “whether there was an apparent reason to combine the
known elements in the fashion claimed . . . should be made explicit”).
Thus, based on the record before us, we are persuaded of Examiner
error, and we do not sustain the obviousness rejection over Hagen and
Boozer of claim 14 and of claims 27, 36–39, and 42–44, the rejection of
which falls with claim 14.
Giraud in view of Hagen
Claims 14–21, 23, 25, 27, 33, 36, and 374
The Appellant contends that the Examiner’s rejection of independent
claim 14 as obvious over Giraud and Hagen is in error because “Hagen
discourages a POSA [person of ordinary skill in the art] from using a hinge
(Flip-Top feature) with the disclosed vial due to concerns surrounding
achieving moisture tightness and is thus not properly combined with
Giraud.” Appeal Br. 11. After careful review of the record, including the

4 Although the Appellant combines the arguments for independent claims
14 and 38 (Appeal Br. 11–14), we note they recite different limitations (see
id. at 23 (Claims App.)). Thus, we separate the arguments based on our
understanding of which arguments relate to which limitations of each claim.
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Declarations, we are not persuaded that the Examiner erred for at least the
reasons below.
The Examiner finds that Giraud teaches a moisture-tight re-sealable
container with the claimed moisture ingress rate and having a body with a
sidewall and ends, a base, a dispensing opening, an interior space, a lid
sealing surface, and a body sealing surface as recited in limitations a
through g. See Non-Final Act. 4–6. The Examiner further finds that Giraud
teaches “the lid and lid sealing surface closes the dispensing opening and
isolates the interior space from ambient conditions,” as partially recited in
limitation h, but does not teach the remainder of limitation h reciting that
“the container is configured to store test strips such that the entire exposed
ends of the test strips extend beyond the dispensing opening of the vial body
and wherein the exposed ends are positioned within the lid when the lid is
seated on the body without damaging the exposed ends.” Id. at 6. The
Examiner finds that Hagen teaches “a similar vial for test strips” where “the
container is configured to store test strips such that exposed ends of the test
strips extend beyond the dispensing opening of the vial body and wherein
the ENTIRE exposed ends are positioned within the lid when the lid is
seated on the body without damaging the exposed ends.” Id. (citing Hagen
¶ 60); see also id. at 13 (“it is the Hagen reference which discloses the
positioning of the test strips and such is known in the art.”). The Examiner
determines that one of ordinary skill in the art would “modify the container
of Giraud with the configuration of test strips shown in Hagen that exposes
the entire ends of the test strip beyond the dispensing opening of the vial
body and are positioned within the lid, as such a configuration allows for
easy manipulation of individual test strips.” Id. at 6 (citing Hagen ¶ 60).
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The Appellant does not contest the Examiner’s findings. See Appeal
Br. 11 (“The issue is not that Hagen does not teach the Heightened Lid
feature,” which the Appellant identifies as “where test strip ends extend
beyond the dispensing opening and are positioned within the lid when closed
without damaging the strip ends”). Rather, the Appellant argues that Hagen
“teaches that a container having the features the Examiner purports are
disclosed (Elliptical and Heightened Lid) best not include a hinge, if
moisture tightness is desired.” Id.at 12 (citing Hagen ¶ 59). The Appellant
argues that, thus, the combination would not have been “predictably
capable of being combined to achieve moisture tightness.” Id.
The Examiner’s rejection is not based on a bodily incorporation of
Hagen’s test strip dispenser (see Hagen, Abstract) into Giraud’s “moisture
proof re-sealable non-cylindrical container and cap assembly” (Giraud,
Abstract). See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . Rather, the
test is what the combined teaching of those references would have suggested
to those of ordinary skill in the art.”). Here, the Examiner modifies Giraud’s
container with Hagen’s teaching of a container configured to store test strips
with exposed ends extending some amount beyond the body and not
damaged when then the lid is closed. Hagen’s “separable configuration”
(Appeal Br. 11 (quoting Hagen ¶ 59)) is not relied upon or combined into
Giraud’s device. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of the references does not involve an ability to
combine their specific structures.”).
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Thus, we are not persuaded of error by the Appellant’s argument (see
Appeal Br. 11–12; Reply Br. 6–7) that because Hagen’s paragraph 59
provides that its “separable configuration advantageously enables
substantially air and moisture tight seals to be created and maintained
between the cover and base by a variety of means,” one of ordinary skill in
the art would be discouraged from combining Hagen’s ability to store test
strips with exposed ends that are not damaged when the lid is closed with
Giraud’s container.
We are also not persuaded of error by the Appellant’s argument that
because “the accepted wisdom in the art at the time the application was filed
was that a POSA would not have reasonably expected to succeed in creating
a moisture-tight container having (i) an elliptical shape with (ii) a flip-top
and (iii) heightened lid,” it would not have been obvious to combine Giraud
and Hagen. Reply Br. 2 (citing Declaration of Michael Bucholz, Nov. 8,
2011); see also Appeal Br. 7–12. Here, the Examiner relies on Giraud for
teaching a moisture-tight container having the features of an elliptical shape,
a flip-top, and the lid as claimed. See Non-Final Act. 4–5. The Appellant
argues that the difficulties in combing a “heightened lid” feature with the
flip-top and elliptical features would have discouraged a person of ordinary
skill in the art “because (s)he would have not expected to achieve moisture
tightness with all Three Features.” Appeal Br. 11 (emphases omitted); see
also Reply Br. 6. The Appellant similarly argues that “[t]he Examiner’s
rejection failed to sufficiently articulate reasoning and evidence that a POSA
would have viewed all Three Features together as predictably capable of
being combined to achieve moisture tightness.” Id. at 12; see also Reply
Br. 2–3. However, the Appellant’s premises for these arguments are not
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commensurate with the scope of the claim. Claim 14 does not recite a
limitation of “a heightened lid.” Although the Appellant defines the
“Heightened Lid feature” as “where test strip ends extend beyond the
dispensing opening and are positioned within the lid when closed without
damaging the strip ends (id.), the Appellant describes the challenges with
having a “heightened lid” being “designed such that the strips would
somehow be rendered accessible and easily extractable, particularly by a
patient who has finger swelling and/or arthritis secondary to diabetes,” such
as by “vaulting the lid [to] reduce[] hoop strength (resistance to inward
deflection) in the lid, particularly around the longer arcs of the elliptical
cross-section” (id. at 10). And, these challenges are why “a POSA would
expect the combination of all Three Features to disrupt the delicate balance
maintained to achieve moisture tightness present in a container with only
one or two of the Three Features.” Id. (emphases omitted). However, claim
14 recites only that “the container is configured to store test strips such that
exposed ends of the test strips extend beyond the entire dispensing opening
of the body and wherein the exposed ends are positioned within the lid when
the lid is seated on the body without damaging the exposed ends.” Id. at 23
(Claims App.). The claim does not recite a specific part of the container and
how it is so configured or designed, such as the lid having a specific height
or structural vaulting designed to reduce hoop strength. Thus, the
Appellant’s Declaration and argument are unpersuasive because they are not
commensurate with the scope of claim 14.
The Appellant also argues that Giraud does not provide for a
heightened lid. See Appeal Br. 12–13. Notwithstanding that the claim does
not recite a heightened lid, see supra, we note that Giraud provides for a
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container that can hold glucose test strips (Giraud, col. 2, ll. 56–60) with a
cap having a seal that can be proportional to the height to the cap (id. at
col. 3, l. 65–col. 4, l. 13). In other words, Giraud provides for a cap capable
of many heights and having a recess of some height. See also Non-Final
Act. 13 (the Examiner “disagrees” with the Appellant’s contention “that
Giraud does not disclose a space between the lid sealing surface and the lid
underside” and points the Giruad’s gap 81 and skirt 87 as that space). As
such, Giruad teaches a lid as claimed that is capable of being able to store
test strip ends.
Thus, based on the record before us, we are not persuaded of
Examiner error, and we sustain the obviousness rejection over Giraud and
Hagen of independent claim 14 and of dependent claims 15–21, 23, 25, 27,
33, 36, and 37, the rejection of which was not argued separately and thus
stands with claim 14. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 38–46
The Appellant contends that the rejection of independent claim 38 is
in error for the same reason the rejection of claim 14 is in error, i.e., because
“Hagen discourages a POSA from using a hinge (Flip-Top feature) with the
disclosed vial due to concerns surrounding achieving moisture tightness and
is thus not properly combined with Giraud.” Appeal Br. 11; see also id.
at 12–13. For the same reasons as discussed with reference to claim 14
above, we are not persuaded of error by this argument. We note that claim
38 does not recite a “heightened lid” as defined by the Appellant. See id.
at 26 (Claims App.).
The Appellant also contends that Giraud, alone or in combination with
Hagen, does not teach “the lid having a lid underside that is axially spaced
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from the lid sealing surface and from the entire dispensing opening when the
lid is seated on the body,” as recited in limitation f of independent claim 38.
See Appeal Br. 12–13. Specifically, the Appellant argues that Giraud
teaches that “[t]he ridge (74), the gap (81) and the skirt (87) combine to form
an annular region for interlocking with the upper edge (62) . . . [such that]
when the container in the above figure is closed, the lid underside (70) is
flush with the upper edge (62) and the dispensing opening - not axially
spaced therefrom, as claims 14 and 38 require.”5 Id. at 12–13.
The Examiner finds that “Giraud discloses a moisture-tight, re-
sealable container comprising a body (Elements 10 and 12) having a
generally tubular sidewall with first and second axially opposed ends, a base
(Element 28), and a dispensing opening axially spaced from the base.” Non-
Final Act. 4. The Examiner relies on Hagen as “disclos[ing] an alternative
lid sealing surface (Element 8) located on an interior portion of the lid, the
lid having a closed surface, and at least a portion of the lid closed surface is
axially spaced from the dispensing opening when the lid is seated on the
body.” Id. at 6.
The Appellant’s argument is unpersuasive because it is an argument
against Giraud individually when the Examiner relies on the combination of
Giraud and Hagen for this limitation. The test for obviousness is not what
any one reference would have suggested, but rather what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d at 426. “[O]ne cannot show non-

5 Although the Appellant includes claim 14 in this argument (Appeal
Br. 13–14), claim 14 does not recite this limitation (see id. at 23 (Claims
App.)).
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obviousness by attacking references individually where, as here, the
rejections are based on combinations of [the] references.” Id. The
Appellant does not contest the Examiner’s finding regarding Hagen. Other
than the argument that one of ordinary skill in the art would not combine
Giraud with Hagen, which we find unpersuasive for the reasons discussed
above, the Appellant has not provided reasoning or argument why the
combination of Giraud and Hagen does not teach “the lid having a lid
underside that is axially spaced from the lid sealing surface and from the
entire dispensing opening when the lid is seated on the body,” as recited in
limitation f.
Thus, based on the record before us, we are not persuaded of
Examiner error, and we sustain the obviousness rejection over Giraud and
Hagen of independent claim 38, and of dependent claims 39–46, the
rejection of which was not argued separately and thus stands with claim 38.
See 37 C.F.R. § 41.37(c)(1)(iv).
Giraud in view of Hagen and further in view of Moon
The Examiner rejects claim 29, which ultimately depends from
independent claim 14, as obvious over Giraud, Hagen, and Moon. The
Appellant provides no separate argument for this rejection. Thus, for the
same reasons we sustain the rejection of claim 14 as obvious over Giraud
and Hagen, we also sustain the obviousness rejection of claim 29 over
Giraud, Hagen, and Moon.
CONCLUSION
The Examiner’s decision to reject claims 14–21, 23, 25, 27, 29, 33,
and 36–46 is sustained.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 27, 36–
39, 42–44
103(a) Hagen, Boozer 14, 27, 36–
39, 42–44
14–21, 23,
25, 27, 33,
36–46
103(a) Giraud, Hagen 14–21, 23, 25,
27, 33, 36–46

29 103(a) Giraud, Hagen,
Moon
29
Overall
Outcome
14–21, 23, 25,
27, 29, 33,
36–46

TIME PERIOD FOR RESPONSE
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)(l)(iv).
AFFIRMED