Raymond Wooten

Patent Trials and Appeals Board

Aug 20, 2021

2021002000 (P.T.A.B. Aug. 20, 2021)

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.
15/255,198 09/02/2016 Raymond T Wooten WOR-003 7456
52554 7590 08/20/2021
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
EXAMINER
PAGAN, JENINE MARIE
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
08/20/2021 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAYMOND T. WOOTEN

Appeal 2021-002000
Application 15/255,198
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 6, 9, 11, and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

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
Raymond T. Wooten. Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
The Appellant’s “invention is directed to a device that . . . retains
medication in a secure, convenient, and protected manner, [and] fits within a
wallet credit card slot.” Spec. 6:2–4.
Claim 6, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
6. A medication information and storage device comprising:
a first card having a front surface, a rear surface opposite
said front surface, and edges disposed along said perimeter of
said first card;
a second card having a front surface, a rear surface
opposite said front surface, and edges disposed along said
perimeter of said second card;
said first card and said second card being connected
together in a hinging manner so that one of said surfaces of said
second card can fold into contact with a portion of at least one
of said surfaces of said first card;
at least one cavity, for housing medication, disposed on a
top third of said first card and protruding outwardly from at
least one of said surfaces of said first card creating a raised
protrusion away from said first card, wherein said front surface
and said rear surface of said second card are flat and said
second card includes a cut-out portion that corresponds to a
position of said cavity so that when said first card and said
second card are folded together, said cavity protrudes through
said cut-out portion of said second card and said first and
second cards lie flat against one another, and wherein said rear
surface and bottom two thirds of said front surface of said first
card are flat so that said medication information and storage
device may slide into a pocket of a wallet so that said cavity
protrudes outwardly, above said slot; and
information regarding said medication printed on at least
one of said surfaces of said cards.
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Rejection
Claims 6, 9, 11, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Mellin (US 1,816,542, iss. July 28, 1931) and Vanders
(US 3,526,317, iss. Sept. 1, 1970).

ANALYSIS
Rejection of independent claim 6 and dependent claims 9, 11, and 21 under
35 U.S.C. § 103 as unpatentable over Mellin and Vanders
For the Examiner’s rejection of independent claim 6, the Examiner
determines:
Vanders teaches that it was known in the art to have a
medication information and storage device have a cavity
disposed on a top third of the first card and the bottom two
thirds of the front surface of the first card are flat.
The inventions of Mellin and Vanders are both drawn to
the field of containers that are capable of holding items such as
medication. Each container includes two cards hinged together
and having a cavity formed on the first card. Therefore it
would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention to have
modified the first card in Mellin by providing the cavity in the
top disposed on a top two thirds of the first card and the bottom
two thirds flat as taught by Vanders for the purposes of
providing an alternative configuration of the storage device.[2]

2 We note that the Examiner’s rejection includes a statement that “[i]t
appears the cavity of Mellin is disposed on a top third of said first card.
However, if it is found to not be so, Vanders teaches . . . .” Final Act. 3. In
this case, we deem it prudent to view the Examiner’s statement as one that
alludes to a rejection that was never made on the record; namely, a rejection
of claim 6 under 35 U.S.C. § 102 as anticipated by Mellin.
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Final Act. 3–4 (emphasis added). The Examiner clarifies that “Vanders was
cited to teach that it was known in the art to have the location of the cavity,
disposed in the top third of the first card.” Ans. 4 (footnote omitted).
The Appellant argues that the Examiner’s rejection of claim 6 is
improper because it fails to provide adequate reasoning to support the
conclusion of obviousness. Appeal Br. 5–7 (citing MPEP § 2143 “Examples
of Basic Requirements of a Prima Facie Case of Obviousness”). The
Appellant’s argument is persuasive. In this case, the Examiner’s rejection
does little more than explain the result of the combination. To the extent the
Examiner’s rejection offers a reason for the modification, we determine that
it is not adequate to support the conclusion of obviousness.
Thus, we do not sustain the Examiner’s rejection of independent
claim 6 and dependent claims 9, 11, and 21 under 35 U.S.C. § 103 as
unpatentable over Mellin and Vanders.

NEW GROUNDS OF REJECTION
Rejection of independent claim 6 and dependent claims 9, 11, and 21 under
35 U.S.C. § 112(b) as indefinite
Independent claim 6 recites, “wherein said rear surface and bottom
two thirds of said front surface of said first card are flat so that said
medication information and storage device may slide into a pocket of a
wallet so that said cavity protrudes outwardly, above said slot.” Appeal Br.,
Claims App. (emphasis added).
We determine that claim 6 is indefinite because “said slot” lacks
antecedent basis. In our view, it is speculative to assume that every “pocket
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of a wallet” necessarily includes a “slot.” Claims 9, 11, and 21 are rejected
due to their dependency on claim 6. See Appeal Br., Claims App.

Rejection of independent claim 6 and dependent claims 11 and 21 under
35 U.S.C. § 103 as unpatentable over Higgins3 and Mellin
In regards to independent claim 6, Higgins teaches a medication
information and storage device (Higgins, Abstract, Figs. 1–5, ¶ 18)
comprising:
a first card having a front surface, a rear surface opposite said
front surface, and edges disposed along said perimeter of said first
card (Higgins, Figs. 1–5, ¶ 18 (card 1));
at least one cavity, for housing medication, disposed on a top
third of said first card and protruding outwardly from at least one of
said surfaces of said first card creating a raised protrusion away from
said first card4 (Higgins, Figs. 1, 3–5, ¶¶ 13, 18 (at least one sealed
cavity 2 located on the top portion of card 1’s front surface for storage
of oral medication)),

3 Higgins (US 2005/0056564 A1, pub. Mar. 17, 2005) is referenced in the
Specification at page 2, lines 1–7, in the Information Disclosure Statement
(filed Sept. 2, 2016), and in the Non-Final Office Action (mailed Oct. 3,
2019) at pages 2–3.
4 We understand “at least one cavity . . . disposed on a top third of said first
card and protruding outwardly from at least one of said surfaces of said first
card,” as recited in claim 6, to suggest that the at least one cavity may
protrude outwardly from the first card’s front and/or rear surface.
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wherein said rear surface and bottom two thirds of said front
surface of said first card are flat5 so that said medication information
and storage device may slide into a pocket of a wallet so that said at
least one cavity6 protrudes outwardly, above a slot (Higgins,
Figs. 1–5, ¶¶ 18–19, 21 (Fig. 2 shows the rear surface of card 1 as flat;
Fig. 1 shows bottom two thirds of front surface as flat; Figs. 3–5 show
card 1 in a wallet credit card slot with the sealed cavity 2 protruding
outwardly above a slot)); and
information regarding said medication printed on at least one of
said surfaces of said cards (Higgins, Figs. 1–2, ¶¶ 13, 14, 18 (writing
3, which is shown on the front of card 1, maybe for writing “such as
advertisements, symptoms associated with medical conditions,
ingredients, directions for use, or any other desired writing”;
additional writing 4 may be placed on the back of card 1)).
Higgins fails to teach a second card and its structural relationship to a first
card, as required by claim 6. However, Mellin’s teachings remedy this
deficiency. Specifically, Mellin teaches a medication information and
storage device (Mellin, Figs. 1–4, p. 1, ll. 1–35), including:

5 We note that the Appellant’s arguments appear to conflate the flatness of
some of the surfaces of the first card, which is claimed, and the flatness of
the medication information and storage device, which is not claimed. See
Reply Br. 2 (“Neither Mellin nor Vanders includes a device having a flat
rear surface, as claimed by Applicant.”).
6 We understand the claim recitation “said cavity” to refer back to “at least
one cavity.” Appeal Br., Claims App.
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a second card having a front surface, a rear surface opposite
said front surface, and edges disposed along said perimeter of said
second card (Mellin, Fig. 4, p. 2, ll. 52–62 (sheet 25));
a first card and said second card being connected together in a
hinging manner so that one of said surfaces of said second card can
fold into contact with a portion of at least one of said surfaces of said
first card (Mellin, Fig. 4, p. 2, ll. 52–62 (sheets 25, 26 are connected
together in a hinging manner by being folded at 23, 24 so that a
surface of sheet 25 folds into contact with a surface of sheet 26));
wherein said front surface and said rear surface of said second
card are flat (Mellin, Fig. 4 (the front and rear surface of sheet 25 are
flat)) and said second card includes a cut-out portion that corresponds
to a position of said at least one cavity so that when said first card and
said second card are folded together, said at least one cavity protrudes
through said cut-out portion of said second card and said first and
second cards lie flat against one another (Mellin, Fig. 4, p. 2, ll. 52–62
(sheet 25 includes opening 21 for tablet 13 held in a cavity disposed
on sheet 26; when sheets 25, 26 are folded together the cavity
protrudes through opening 21 and sheets 25, 26 lie flat against one
another)).
It would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention to have modified
Higgins’ medication information and storage device to add a second card,
including its structural relationship to a first card, as taught by Mellin, to
provide a greater surface area for writing additional information and/or
providing the same or additional information at a larger font size so that a
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reader of the information would have been able to better understand all of
the relevant information, including identification of the medication,
directions for use, warnings, symptoms, etc., in an emergency situation (e.g.,
a heart attack) and manufacturers of the product may include advertising as
well as the relevant information (see Mellin, Fig. 1, p. 2, ll. 48–51; Higgins,
Figs. 1–2, ¶¶ 7, 9, 18).
In regards to dependent claim 11, Higgins teaches that the cavity is
sealed (Higgins, Figs. 1–5, ¶ 18 (at least one sealed cavity 2)).
In regards to dependent claim 21, Higgins teaches that the cavity is
positioned adjacent a corner of said first card, so that said medication
information and storage device may be stored in a slot of a wallet in either a
horizontal or vertical orientation while said cavity protrudes outwardly from
said first card and above said slot in said wallet (Higgins, Figs. 1–5, ¶ 18
(Higgins teaches that cavity 2 is “at least one sealed cavity,” meaning cavity
may be one or more in number; Higgins’ Figures 1 and 3 show a cavity
positioned in a corner of card 1; Higgins’ Figures 3–5 show the medication
information and storage device stored in a slot of a wallet; Higgins’ Figure 1
shows card 1 in a horizontal orientation and Figures 3–5 show card 1 in a
vertical orientation while cavity 2 protrudes outwardly from card 1 and
above the slot of the wallet)).

CONCLUSION
We REVERSE the Examiner’s rejection of claims 6, 9, 11, and 21
under 35 U.S.C. § 103 as unpatentable over Mellin and Vanders.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW
GROUNDS OF REJECTION of claims 6, 9, 11, and 21 under 35 U.S.C.
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Application 15/255,198

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§ 112(b) as indefinite and claims 6, 11, and 21 under 35 U.S.C. § 103 as
unpatentable over Higgins and Mellin.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.

In summary:
Claim(s)
Rejected
35 U.S.C. § Reference/Ba
sis
Affir
med
Reversed New
Grounds
6, 9, 11, 21 103 Mellin,
Vanders

6, 9, 11, 21
6, 9, 11, 21 112(b) Indefiniteness 6, 9, 11, 21
6, 11, 21 103 Higgins,
Mellin
6, 11, 21
Overall
Outcome
6, 9, 11, 21 6, 9, 11, 21

REVERSED; 37 C.F.R. § 41.50(b)