Ex Parte Balteau et al

Patent Trial and Appeal BoardSep 10, 2014

11381041 (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PATRICK BALTEAU, JEAN-PIERRE HARTMAN, PAUL VIDREQUIN, SILVANO SFORACCHI, JOHN DOHERTY, CHARLIE MULVIHILL, NOEL SMITH, and MARC COUSIN ____________ Appeal 2012-003380 Application 11/381,0411 Technology Center 3700 ____________ Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and THOMAS F. SMEGAL, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE The Appellants have filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated May 23, 2014. The Request seeks reconsideration of a decision (hereinafter “Decision”), mailed April 1, 2014, reversing the Examiner’s rejection of claims 1–12, 14, 16–24, and 27–33. 1 According to the Appellants, “[t]he real parties in interest . . . are Baxter International Inc. and Baxter Healthcare S.A.” App. Br. 2. Appeal 2012-003380 Application 11/381,041 2 More specifically, the Examiner rejects: claims 1–3, 6–12, 14, 16–24, and 27–33 under 35 U.S.C. § 103(a) as unpatentable over Inoue (US 2004/0134802 A1, pub. July 15, 2004) in view of Gollier (US 2004/0078023 A1, pub. Apr. 22, 2004) and Oka (US 2005/0087456 A1, pub. Apr. 28, 2005)2; and claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Inoue in view of Gollier, Oka, and Shang (US 2002/0115795 A1, pub. Aug. 22, 2002). We have jurisdiction over the Request under 35 U.S.C. § 6(b). The Appellants’ Request alleges “that the Board mischaracterized the claimed invention while elaborating on their rationale for reversing the rejection of the claims” (Req. Reh’g 2) because “the Board’s statement that the claimed first and second peel seals are distinguishable from Inoue and Oka because they open at the same time is not entirely correct as the first peel seal may activate before the second peel seal” (Req. Reh’g 3). Upon reconsideration, we agree with the Appellants that the Board’s statement was not entirely correct. Further, we provide the following analysis for the reversal of the Examiner’s rejection of claims 1–12, 14, 16– 24, and 27–33 as a replacement for the analysis in the Decision. ANALYSIS All of the appealed claims call for a first peel seal having a first projecting portion and a second peel seal having a second projecting portion and recites, “wherein the first projecting portion projects toward the second 2 As noted in the Decision, “[a]lthough the Examiner sets forth separate rejections for claims 1–3, 6, 11, 12, 16–24, and 27–33 (see Ans. 5–9) and claims 7–10 (see Ans. 10–12), we have consolidated these two rejections because they are both based upon the combination of Inoue, Gollier, and Oka.” Decision 2, n. 1. Appeal 2012-003380 Application 11/381,041 3 projecting portion and the second projecting portion projects toward the first projecting portion substantially symmetrically about an axis of symmetry A that is substantially parallel to at least one of the first peel seal and the bottom peripheral edge.” Br., Claims App. Among other things, the appealed claims require “the first projecting portion” and “the second projecting portion” to project towards one another. The Appellants contend that the combined teachings of Inoue, Gollier, and Oka, as provided by the Examiner, fail to disclose, alone or in combination, the “wherein clause” of the appealed claims. See Br. 12–14. In other words, the Appellants are contending that the Examiner does not adequately support the determination that the combined teachings of Inoue, Gollier, and Oka, would render “the first projecting portion” and “the second projecting portion” to project towards one another. Further, the Appellants assert that each of Inoue and Oka fail to “teach or suggest any first peel seal having projecting portion and a second peel seal having a projecting portion in the same container.” Br. 13. The Appellants’ contention is persuasive. Notably, the Examiner relies on two figures of Inoue when applying Inoue disclosure to the claims. See Ans. 5. However, the two figures represent separate embodiments, and the Examiner has not set forth any rationale for combining discrete features of those separate embodiments. “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000); compare Boston Scientific Scimed, Inc. v. Cordis Corp., 55 F.3d 982, 991 (Fed. Cir. 2009) (where two separate embodiments were pictured side by side in a prior art reference, analysis was provided as to why it would have been Appeal 2012-003380 Application 11/381,041 4 obvious to combine features of those separate embodiments). Figure 7 of Inoue is a depiction of Inoue’s second embodiment and Figure 4 of Inoue is a depiction of Inoue’s first embodiment. Inoue, para. 24, 27. The Examiner’s rejection does not suggest a combination of the separate embodiments or explain why a combination of the separate embodiments would have been obvious. The Examiner relies on Figure 7 of Inoue to find a first peel seal (weak partition seal) 20. See Ans. 5, Inoue, para. 57. Figure 7 depicts weak partition seal 20 with a V-shaped projecting part 20a in its middle. V- shaped projecting part 20a projects towards seal 21, however seal 21 lacks a projection. See Inoue, Fig. 7. The Examiner relies on Figure 4 of Inoue to find a second peel seal (weak discharge control seal) 21. See Ans. 5, Inoue, para. 50. Although seals 20 and 21 of Figure 4 are formed arcwise (Inoue, para. 50) and can be understood as projections, seals 20 and 21 do not project towards one another. Further, as part of the Examiner’s conclusion that the subject matter of the appealed claims is obvious, the Examiner concludes “[i]t would have been obvious . . . to make the projecting portion of the second peel seal of Inoue . . . triangular in shape as taught by Oka” (see Oka, Fig. 4, para. 45, “V-shaped projection 21a). Ans. 6 (emphasis added). Accordingly, the Examiner modifies Inoue’s second peel seal 21 in Figure 4, i.e., the arcwise projection, to be triangular. However, after this modification, Inoue’s seal 20 and seal 21, do not project towards one another. As for Gollier, the Examiner finds Gollier “teaches a serrated seal (Figure 4) that improves the use of the seal by permitting a user to easily Appeal 2012-003380 Application 11/381,041 5 initiate the peeling process.” Ans. 5 (citing Gollier, para. 69). As such, the Examiner’s modification of Inoue’s peel seals with Gollier’s teaching of serrated seals does not orientate Inoue’s seal 20 and seal 21, in either Figure 7 (second embodiment) or Figure 4 (first embodiment), to project towards one another. Furthermore, the remainder of the Examiner’s proffered combination does not remedy lack of support for the Examiner’s determination that the modification of Inoue, in view of Gollier and Oka, teaches “the first projecting portion” and “the second projecting portion” projecting towards one another. For example, the Examiner further determines that “the different portions of the chamber or seals of whatever form or shape was desired or expedient” is an obvious matter of design choice (see Ans. 6). However, the context of the Examiner’s reasoning seems to overlook the fact that Inoue’s Figure 7 (second embodiment) and Figure 4 (first embodiment) represent distinct embodiments. Additionally, changing the shape of the chamber or seals does not necessarily explain why it would have been obvious to modify Inoue’s first peel seal 20 and second peel seal 21 to project towards one another. As such, it is apparent that the Examiner’s reasoning fails to explain why a modification of the shape of either or both of Inoue’s first and the second peel seals, in either Figure 7 (second embodiment) or Figure 4 (first embodiment), would render Inoue’s first and second peel seals to project towards one another. Thus, in view of the Appellants’ contention, we grant the request and reverse the Examiner’s rejection of claims 1–3, 6–12, 14, 16–24, and 27–33 under 35 U.S.C. § 103(a) as unpatentable over Inoue, Gollier, and Oka. Additionally, the remaining rejection based on Inoue, Gollier, Oka, in Appeal 2012-003380 Application 11/381,041 6 combination with Shang relies on the same deficiency discussed above. As such, we cannot sustain the rejection under 35 U.S.C. § 103(a) of claims 4 and 5 as unpatentable over Inoue, Gollier, Oka, and Shang. DECISION We REVERSE the Examiner’s decision rejecting claims 1–12, 14, 16–24, and 27–33. GRANTED mls