Ex Parte DING

Patent Trial and Appeal Board

Apr 26, 2016

12851414 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/851,414 08/05/2010
45159 7590 04/28/2016
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
FIRST NAMED INVENTOR
NI DING
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
050623.01390 1674
EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
sfripdocket@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NI DING
Appeal2014-009457
Application 12/851,414
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-11 and 22-25. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant's invention is best illustrated by independent claim 1,
reproduced below (emphasis added):
Appeal2014-009457
Application 12/851,414
1. A method of packaging a medical device, comprising:
providing an antioxidant,
placing a medical device in a first packaging; and
placing the first packaging within a second packaging,
such that the antioxidant is present between the first packaging
and the second packaging,
wherein the first packaging is permeable to the
antioxidant and the second packaging is impermeable to the
antioxidant.
The Examiner presents the following new grounds of rejections in the
Answer of July 1, 2014 1:
(a) claims 1-6, 8, and 22-25 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pettersson et al. (US 6,065,597, issued May 23, 2000)
("Pettersson"), Cotterman et al. (US 2002/0153511 Al, published October
24, 2002) ("Cotterman"), Cook (US 3,429,717, issued February 25, 1969),
Mitsubishi ("Techbarrier S;" Mitsubishi Plastics; 6/11/2014;
http://www.techbarrier.com/type/category05/index.html), Home
("Introduction to Volatile Organic Compounds (VOCs)," Home Institute,
6/11/2014, http://www.homeinstitute.com/introduction-to-volatile-organic-
compounds-vocs.htm), FXI ("Discoloration of Polyurethane Foam," FXI
Industries, 6/11 /2014, http://fxi.com/assets/pdf/up 06 quality/Discoloration
Info Sheet - 11101 O.pdf) and Minnesota ("Volatile Organic Compounds in
1 The Examiner modified Rejection (a) by adding a number of technical
references to address issues raised by Appellant. Ans. 2; see Response After
Final Action dated October 23, 2013 and Advisory Action dated November
6, 2013. The Answer does not include the additional references in Rejection
(b) but the statement of rejection refers to the references applied in Rejection
(a) "above." Ans. 6. Thus, omission of the additional references from
Rejection (b) is a harmless error. Accordingly, the rejections before us on
appeal are limited to the new grounds of rejections in the Examiner's
Answer, as presented above.
2
Appeal2014-009457
Application 12/851,414
Your Home," Minnesota Department of Health, 6/11/2014,
http://www.health.state.mn. us/ divs/ eh/indoorair/voc ); and
(b) claims 7 and 9-11 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pettersson, Cotterman, Cook, Mitsubishi, Home, FXI,
Minnesota and Llanos (US 2005/0004663 Al, published January 6, 2005).
For Rejection (a), Appellant only argues claims 1, 3, 22, and 23. See
Appeal Brief, generally. Further, in addressing claims 3, 22, and 23,
Appellant relies on arguments similar to the one presented when discussing
independent claim 1. App. Br. 12; Reply Br. 8. Appellant also relies on the
arguments when discussing claim 1 in addressing the separate rejection of
claims 7 and 9-11 (Rejection (b ). App. Br. 12-13. Accordingly, we select
independent claim 1 as representative of the subject matter before us on
appeal. Claims 2-11 and 22-25 will stand or fall with independent claim 1.
OPINION2
Prior Art Rejections
We have reviewed each of Appellant's arguments for patentability.
However, we are in agreement with the Examiner that the subject matter of
claim 1 is unpatentable. Accordingly, we sustain the Examiner's prior art
rejections for the reasons explained in the Answer, and we add the following
primarily for emphasis.
2 We rely on the statements of the rejections on appeal as presented in the
Examiner's Answer. Ans. 3---6.
3
Appeal2014-009457
Application 12/851,414
We refer to the Examiner's Answer for a complete statement of the
rejections. Ans. 3-6. 3
With respect to representative claim 1, Appellant argues the Examiner
does not establish that the first packaging is permeable to the antioxidant and
the second packaging is impermeable to the antioxidant. App.Br. 5; Reply
Br. 6.
We are unpersuaded by these arguments. The Examiner found
Pettersson teaches packaging a medical device in a container having an
internal packaging permeable to one component and an external packaging
impermeable to another component, where the container includes a desiccant
or deodorizer between the two bags for the purpose of protecting the
packaged device from, for example, malodourous fumes. Ans. 3, 7-8;
Pettersson col. 3, 11. 1-5; col. 4, 11. 1-8, 57---61. The Examiner also found
Cotterman discloses the use of anti-fog agents (desiccants) and antioxidants
as common additives used in medical packaging designed to minimize the
impact of certain chemicals on a packaged article. Ans. 3--4; Cotterman
i-fi-1 4, 28. The Examiner determined it would have been obvious to one
skilled in the art to have incorporated the anti-oxidants of Cotterman into the
3 A discussion of Cook is unnecessary for disposition of the rejection of
representative claim 1. Cook was cited to teach specific antioxidants recited
in dependent claims 3, 22, and 23. As noted above, Appellant addresses
these claims using a line of argument similar to the one used in discussing
claim 1. App. Br. 12; Reply Br. 8. In addition, a discussion of the newly
applied references to Mitsubishi, Home, FXI and Minnesota is also
unnecessary for disposition of this appeal given Appellant treats the new
grounds of rejections as essentially reiterating the rejections presented in the
Final Action of August 23, 2013. Reply Br. 6.
4
Appeal2014-009457
Application 12/851,414
pouches of Pettersson in the same way that Pettersson uses his desiccants in
view of Cotterman's disclosure. Ans. 4.
Thus, the Examiner provided a reasonable basis for one skilled in the
art to use antioxidants in the container structure of Pettersson. Appellant has
not adequately explained why one skilled in the art, using no more than
ordinary creativity, would not have been capable of adapting the container of
Pettersson by using internal and external packagings that are respectively
permeable and impermeable to the particular antioxidant used, including the
specific antioxidants recited in claims 3, 22, and 23. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton.").
Therefore, we affirm the Examiner's prior art rejections of claims 1-
11 and 22-25 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1-11 and 22-25 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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