Whitney Products, Inc.

Patent Trials and Appeals Board

Jan 16, 2020

14244885 - (D) (P.T.A.B. Jan. 16, 2020)

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.
14/244,885 04/03/2014 Steven G. Whitney 1053-004 7013
88360 7590 01/16/2020
Richards Patent Law P.C.
20 N Clark Street
Suite 3300
Chicago, IL 60602
EXAMINER
THEIS, MATTHEW T
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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):
docketing@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN G. WHITNEY,
ALLISON BEDELL, and SAAGAR PATEL
__________________

Appeal 2018-005206
Application 14/244,885
Technology Center 3700
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 3–6, 17, and 18. Br. 1. Claims 1 and 2 are
cancelled. Id. at 10 (Claims App.). Claims 7–16 are withdrawn. Id. at 10–
13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Whitney Products, Inc. as the real party in interest. Appeal Br. 3.
Appeal 2018-005206
Application 14/244,885

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CLAIMED SUBJECT MATTER
17. A sterile bag for containing non-sterile objects comprising:
a front surface including a front top edge;
a back surface including a back top edge;
a proximal sealed end; and
a distal end that provides for an open configuration and a
subsequent sealed configuration adjacent the front and back top
edges;
wherein, in the open configuration, the distal end
includes:
a cuff forming an opening to an interior of the bag
and including a visible demarcation identifying a sterile portion
and a non-sterile portion of the bag;
a tear guide adjacent to the cuff;
first and second fold lines adjacent to the tear
guide and distal to the cuff; and
a closure mechanism adjacent to the second fold
line and distal to the tear guide; and
an indicator including a first portion along the back
top edge and a second portion along the front top edge; and
wherein, in the sealed configuration and after a
user removes the cuff via the tear guide and folds the distal end
twice along the first and second fold lines, the distal end
includes a folded edge closed by the closure mechanism such
that the first and second portions of the indicator are aligned to
identify that the bag is sealed.

REJECTIONS
Claims 3, 4, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oliverius (US 5,178,278, iss. Jan. 12, 1993), Stecklein
(US 2006/0088450 A1, pub. Apr. 27, 2006), and Austreng (US 2008/
0056622 A1, pub. Mar. 6, 2008).
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Oliverius, Stecklein, Austreng, and Walchle (US 3,698,791, iss. Oct 7,
1972).
Appeal 2018-005206
Application 14/244,885

3
ANALYSIS
Claims 3, 4, 17, and 18
Rejected over Oliverius, Stecklein, and Austreng
Appellant argues claims 3, 4, 17, and 18 as a group. Appeal Br. 5–8.
We select claim 17 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 17, the Examiner relies on Oliverius to
teach a sterile bag for containing non-sterile objects with a cuff forming an
opening to an interior of the bag and a tear guide (perforation 57) adjacent to
the cuff, but finds that Oliverius lacks a visible demarcation identifying a
sterile portion and a non-sterile portion of the bag. Final Act. 2 (citing Figs.
2, 5, 6). The Examiner finds that Stecklein teaches a visible demarcation as
sterilization indicator 20, which identifies sterile and non-sterile portions of
the bag. Id. at 3. The Examiner finds that portion 20 is a line and may be
printed on the pouch interior close to the top of the pouch so the printed ink
is seen as soon as the product begins to be presented aseptically. Ans. 7.
The Examiner finds that this visual demarcation “would communicate to the
user, sterilization status of the portions of the bag” and “portion 20 is clearly
shown as a visible demarcation between portions of a bag (Fig. 5).” Id.
The Examiner finds that Oliverius also lacks a first and a second fold
line and indicator with first and second portions that align to identify that the
bag is sealed. Id. The Examiner finds that Austreng teaches first and second
fold lines 24, 26 adjacent to the distal end of the bag, a closure mechanism
(adhesive tape 28) adjacent to second fold line 26, and an indicator (tamper
evident tear tape 18) having a first portion along the back top edge and a
second portion along the front top edge where both halves of tamper evident
tape 18 align when the bag is closed. Final Act. 4; Ans. 7–8 (citing Fig. 6).
Appeal 2018-005206
Application 14/244,885

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Appellant argues that the sterilization indicator of the container of
Stecklein is merely an agent that is activated upon exposure to a non-sterile
environment, and it does not indicate portions of the bag that are sterile and
non-sterile. Br. 7. Appellant argues that the claimed indicator is attached to
or integral to the bag whereas Austreng’s tamper evident structure is applied
to the package after the package is sealed. Id. Appellant also argues that the
tamper evident structure of Austreng lacks the claimed first and second
portions that align to identify that the bag is sealed. Id. at 7–8.
Visible Demarcation Identifying Sterile and Non-Sterile Portions of Bag
Regarding Stecklein’s sterilization indicator, claim 17 recites “a cuff
. . . including a visible demarcation identifying a sterile portion and a non-
sterile portion of the bag.” Br. 13 (Claims App.). The cuff and its visible
demarcation are part of a sterile bag for containing non-sterile objects recited
in the preamble. The Specification describes this feature as follows:
As taught herein, it may be advantageous to provide a sterile
bag 100 that includes a visible demarcation 108 between the
sterile and non-sterile portions of the bag 100. The visible
demarcation 108 may enable users to quickly visually identify
which portion of the bag 100 they may handle (e.g., users with
scrubbed hands may handle the bag 100 on the proximal side of
the visible demarcation 108 and users with non-scrubbed hands
may handle the bag 100 on the distal side of the visible
demarcation 108). As used herein, the proximal side of the
visible demarcation 108 is the sterile portion of the bag 100 and
distal side of the visible demarcation 108 is the portion of the
bag 100 that may contact non-sterile materials or be touched by
the unscrubbed user.

Spec. ¶ 52. The non-sterile portion is the part of the sterile bag that may be
touched by persons with non-scrubbed (i.e., non-sterile) hands. The sterile
portion of the sterile bag may be handled by users with scrubbed hands. Id.
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Application 14/244,885

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Claim 17 does not, however, recite different properties for the “sterile
portion” and “non-sterile portion” of the bag. The Specification makes clear
that both portions have the same properties. They are different parts of the
same sterile bag separated by a “visible demarcation.” Id. ¶¶ 52, 54. Visible
demarcation 108 may be a solid line or a visible indication located around
protective cuff 106 to visibly separate a designated non-sterile part of sterile
bag 100 from a sterile part of bag 100. Id. ¶ 54. Thus, this visible indicia
essentially instructs parties with unscrubbed (non-sterile) hands where they
may touch the interior “non-sterile” portion of the bag. Id. Parties with
scrubbed hands may only touch the exterior “sterile” portion of the bag. Id.
The “sterile” and “non-sterile” portions thus indicate how different
portions of the bag are to be handled or used. The different suggested uses
of the bag do not impart different structure/properties to the sterile or non-
sterile portion of the sterile bag. Before the bag is used, the “sterile portion”
and the “non-sterile portion” of the bag have the same properties. They are
sterile. See id. ¶ 52. In use, visible demarcation 108 indicates the portion of
sterile bag 100 that a user should touch depending on whether the user’s
hands are scrubbed. Id. Only if users with non-sterile hands touch the “non-
sterile portion” does the “non-sterile portion” then become non-sterile. Id.
“It is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.” In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). Furthermore, a claim to an apparatus
cannot define that apparatus in terms of method steps of using the apparatus.
IPXL Holdings, L.L.C. v. Amaxon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
2005) (holding a claim that recites a system and method steps of using the
system is indefinite).
Appeal 2018-005206
Application 14/244,885

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We agree with the Examiner that Stecklein’s bag includes an integral
sterilization indicator 20 that provides a visible demarcation along a cuff to
divide the bag into an inner portion that receives an article 22 to be sterilized
and an outer portion that can be handled by users with unsterilized hands 27.
Stecklein ¶¶ 29–31, Figs. 4, 5. Similar to visible demarcation line 108 in
Appellant’s Specification, Stecklein’s sterilization indicator 20 (Fig. 5)
divides a sterilized bag into two portions. One portion contains sterilized
article 22. The other portion can be handled by a person with unsterilized
hands. Id. Stecklein thus discloses a sterile bag structure that satisfies the
intended use in claim 17 even if given patentable weight. Ans. 7.
Indicator with Portions that Align to Indicate the Bag is Sealed
We also agree with the Examiner that Austreng teaches an indicator as
tamper evident tape 18 that is attached to a bag with a first portion along a
back top edge and a second portion along a front top edge as claimed. Final
Act. 3. The two portions of tape 18 align when the bag is folded along first
and second fold lines to indicate the bag is sealed as claimed. Ans. 7–8.
Appellant’s argument that the claimed indicator is attached to the bag,
but the tamper evident seal of Austreng’s package is applied after a package
is sealed (Br. 7), is not persuasive because Austreng’s tamper evident tape
18 is attached permanently to the package. Austreng ¶¶ 34, 35, Figs. 5, 6.
Furthermore, claim 17 does not recite that the indicator is attached to, or
integral with, the bag. Nor does it recite any structure of the indicator that
distinguishes it over Austreng’s tamper evident tape 18. To the extent that
Appellant may be urging us to do so, we are not permitted to read unclaimed
features from the Specification into claim 17. See Spec. ¶ 63 (indicator 115
may be any suitable color, word, phrase, symbol, or sound among others).
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Application 14/244,885

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Nor has Appellant apprised us of error in the Examiner’s finding that
Austreng’s tamper evident tape 18 includes two portions that align when the
bag is closed to indicate that the bag is sealed as claimed. Br. 7–8; see Ans.
7–8; see also 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments [in the Appeal
Brief] shall explain why the examiner erred as to each ground of rejection
contested by appellant.”).
Thus, we sustain the rejection of claim 17 and claims 3, 4, and 18,
which fall therewith.
Claims 5 and 6
Rejected over Oliverius, Stecklein, Austreng, and Walchle
Appellant does not present arguments for this rejection. See Br. 5–8.
Thus, we summarily sustain this rejection.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference/Basis Affirmed Reversed
3, 4, 17, 18 103(a) Oliverius,
Stecklein, Austreng
3, 4, 17, 18
5, 6 103(a) Oliverius,
Stecklein,
Austreng, Walchle
5, 6
Overall
Outcome
3–6, 17, 18
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED