Yvan Corten

Patent Trials and Appeals Board

Oct 15, 2019

14401938 - (D) (P.T.A.B. Oct. 15, 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.
14/401,938 11/18/2014 Yvan Corten 642-072 1968
1009 7590 10/15/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
HOWELL, MARC C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YVAN CORTEN
____________

Appeal 2019-002342
Application 14/401,938
Technology Center 1700
____________

Before GEORGE C. BEST, BRIAN D. RANGE, and JANE E. INGLESE,
Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to reject claims 1, 3, 4, 8–10, 12, 13, 17, 18, 21, 23, 26,
28, and 74–79.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Pall Life Sciences Belgium as the real
party in interest. Appeal Brief filed August 21, 2018 (“Appeal Br.”) at 2.
2 Non-Final Office Action entered March 21, 2018 (“Office Act.”).
Appeal 2019-002342
Application 14/401,938

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CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal and is reproduced
below with contested subject matter italicized:
1. An apparatus for receiving an at least partially flexible
vessel adapted for receiving a fluid, comprising:
an overpack including a base having a floor and an upstanding
sidewall forming an interior for receiving the vessel; and
a partition removably positioned in the interior of the overpack,
the partition extending generally transverse to the sidewall and
generally aligned with the floor to form a compartment in the
interior of the overpack for receiving the vessel;
wherein the base of the overpack includes a door for providing
access to an exterior compartment of the base.
Appeal Br. 17 (Claims Appendix) (emphasis added).
Like claim 1, independent claims 74 and 75 both require the
recited apparatus to include a partition removably positioned in the
interior of an overpack to form a compartment in the interior of the
overpack.
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 29, 2018 (“Ans.”):
I. Claims 1, 3, 8, 9, 17, 18, 23, 26, and 28 under 35 U.S.C.
§ 102(b) as anticipated by Muise;3
II. Claims 4, 76, 78, and 79 under 35 U.S.C. § 103(a) as
unpatentable over Muise in view of Stephenson;4

3 Muise et al., US 2003/0183650 Al, published October 2, 2003.
4 Stephenson, US 2006/0180643 Al, published August 17, 2006.
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Application 14/401,938

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III. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Muise
in view of Yorn;5
IV. Claims 12, 13, 74, and 75 under 35 U.S.C. § 103(a) as
unpatentable over Muise in view of Terentiev;6
V. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Muise
in view of Ouillette;7 and
VI. Claim 77 under 35 U.S.C. § 103(a) as unpatentable over Muise
in view of Stephenson and Riley.8
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 3, 8, 9, 17, 18, 23, 26, and 28 under 35 U.S.C. § 102(b), and
rejections of claims 4, 10, 12, 13, 21, and 74–79 under 35 U.S.C. § 103(a),
for the reasons set forth in the Appeal Brief and below.
Rejection I
We first address the Examiner’s rejection of claims 1, 3, 8, 9, 17, 18,
23, 26, and 28 under 35 U.S.C. § 102(b) as anticipated by Muise. In so
doing, we limit our discussion to claim 1, which requires the recited
apparatus to include a partition removably positioned in the interior of an
overpack to form a compartment in the interior of the overpack.

5 Yorn et al., US 2003/0155372 Al, published August 21, 2003.
6 Terentiev, US 2005/0002274 Al, published January 6, 2003.
7 Ouilette, US 2010/0102112 Al, published April 29, 2012.
8 Riley, US 4,623,075, issued November 18, 1986.
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Application 14/401,938

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The Examiner finds that Muise discloses an apparatus comprising
container 2 (overpack) including upper and lower end portions closed by
opposing pairs of inner 6, 6, and outer 10, 12 flaps, and saddle-shaped part
28 (partition) removably positioned in the interior of container 2 (overpack)
to form a compartment in the interior of container 2 (overpack). Office Act.
4–5 (citing Muise ¶ 10, Figs. 1–3).
Appellant argues, however, that the Examiner does not explain how
saddle-shaped part 28 constitutes a partition that forms a “compartment,”
which, Appellant argues, “is ‘[a] separate room, section, or chamber.’”
Appeal Br. 6 (citing American Heritage Dictionary of the English Language
(2017)). In response to this argument, the Examiner does not question
Appellant’s definition of “compartment,” but asserts instead that the
definition does not require a “compartment” to be “fully sealed and enclosed
from its surroundings.” Ans. 14. The Examiner finds that Muise’s saddle-
shaped part 28 “clearly forms a barrier within the box [container 2
(overpack)] . . . [and] the definition cited by the Applicant indicates that a
compartment can be a separate section, which the barrier provided by the
saddle-shaped part of Muise clearly would form within the box, as shown in
figures 2 and 3.” Id.
The Examiner, however, does not provide a sufficient factual basis to
establish that Muise discloses a “partition” removably positioned in the
interior of an overpack that forms a compartment in the interior of the
overpack, as argued by Appellant and discussed below.
We point out initially that we find no definition or limiting description
of a “partition” in Appellant’s Specification, and we therefore interpret this
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Application 14/401,938

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term according to its plain meaning as “an interior dividing wall.9” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of a claim must be
given their plain meaning unless the plain meaning is inconsistent with the
specification.).
Muise discloses a shipping container that includes plastic bag 24
having spout 25 with screw cap 26, which is contained within outer
corrugated paper container 2 having body portion 4 with inner 6, 6 and outer
10, 12 flaps at the top. Muise ¶¶ 1, 10, 26; Fig. 1. Muise discloses that the
shipping container also includes saddle-shaped part 28 having wing portions
30, angled risers 32, and basal section 34 with opening 36 for spout 25 of
plastic bag 24. Muise ¶ 29; Fig. 1. Muise explains that saddle-shaped part
28 surrounds the base of spout 25 underlying cap 26 of plastic bag 24.
Muise ¶ 29; Fig. 2. Muise describes assembling the shipping container
components by placing plastic bag 24 with saddle 28 surrounding spout 25
in container 2, and closing side flaps 6, 6 so that wing portions 30 of saddle
28 rest on top of side flaps 6, 6. Muise ¶ 30; Fig. 2. Figures 2 and 3 of
Muise show that when wing portions 30 of saddle-shaped part 28 rest on top
of inner side flaps 6, 6 of container 2, angled risers 32, 32 and basal section
34 of saddle-shaped part 28 extend slightly into a small portion of the
interior of container 2.
Although the Examiner asserts that saddle-shaped part 28 forms a
barrier within container 2 (Ans. 14), the Examiner does not explain how
saddle-shaped part 28 constitutes an interior dividing wall—or “partition”—
positioned in the interior of container 2 to form a compartment in the interior

9 See, e.g., Merriam-Webster.com (accessed October 4, 2019),
https://www.merriam-webster.com/dictionary/partition.
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Application 14/401,938

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of container 2, in view of Muise’s disclosure that wing portions 30 of
saddle-shaped part 28 rest on top of inner side flaps 6, 6 of container 2,
while angled risers 32, 32 and basal section 34 of saddle-shaped part 28
extend only slightly into a small portion of the interior of container 2. The
Examiner, therefore, does not provide a sufficient factual basis to establish
that Muise discloses a partition removably positioned in the interior of an
overpack to form a compartment in the interior of the overpack, as required
by the claim 1.
We, accordingly, do not sustain the Examiner’s rejection of claim 1,
and claims 3, 8, 9, 17, 18, 23, 26, and 28, which each depend from claim 1,
under 35 U.S.C. § 102(b) as anticipated by Muise.
Rejections II–VI
Because the examiner does not rely on the additional prior art
references applied in Rejections II–VI for any disclosure that remedies the
deficiencies of Muise discussed above (Final Act. 7–13), we also do not
sustain these rejections of claims 4, 10, 12, 13, 21, and 74–79 under
§ 103(a).
CONCLUSION

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 8, 9, 17,
18, 23, 26, and
28
102(b)  Muise 1, 3, 8, 9, 17,
18, 23, 26, and
28
4, 76, 78, and
79
103(a)  Muise,
Stephenson
4, 76, 78, and
79
10 103(a)  Muise,
Terentiev
10
12, 13, 74, and
75
103(a)  Muise,
Terentiev
12, 13, 74, and
75
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Application 14/401,938

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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
21 103(a)  Muise,
Ouillette
21
77 103(a)  Muise,
Stephenson,
Riley
77
Overall
Outcome
1, 3, 4, 8–10,
12, 13, 17, 18,
21, 23, 26, 28,
and 74–79

REVERSED