Ex Parte Yakel et al

Patent Trial and Appeal BoardSep 15, 2014

12647508 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/647,508 12/27/2009 Lindsay S. Yakel BPMDL0014LY (10118U) 2080 27939 7590 09/15/2014 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER COLLINS, RAVEN ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 09/15/2014 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 LINDSAY S. YAKEL, KIMBERLY M. HAINES, ALAN W. DYE, and MICHAEL S. MCMAHON ____________ Appeal 2012-008030 Application 12/647,5081 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL L. WOODS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s Final rejection of claims 1–8 and 18–20. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is Medline Industries, Inc. Br. 2. Appeal 2012-008030 Application 12/647,508 2 Claimed Subject Matter Claims 1 and 18 are independent. Representative claim 1 reads as follows: 1. A holder for medical implements, comprising: a base member; at least one medical implement receiver, the at least one medical implement receiver comprising a pair of retention members extending from the base member, wherein opposing faces of each retention member define an implement receiving recess therebetween, each retention member comprising a slot extending into each retention member from a face disposed along the implement receiving recess; and a mechanical stop wall extending from the base member, separated from the at least one medical implement receiver by at least a portion of a width of the base member; wherein each retention member is configured to receive either a first medical implement or a second medical implement, wherein the first medical implement and the second medical implement are different. Br. 22, Claims App. Claim 18 is directed to a medical tray and recites, inter alia, “each medical implement receiver comprising a pair of retention members having opposing faces that define an implement receiving recess, each opposing face comprising a slot extending into each retention member.” Br. 24, Claims App. (emphasis added). Appeal 2012-008030 Application 12/647,508 3 Rejections2,3 I. Claims 1–5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard (US 4,333,567, issued June 8, 1982), Chiang (US 7,240,798 B1, issued July 10, 2007), and Seiler (US 7,407,054 B2, issued Aug. 5, 2008). II. Claims 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard and Chiang. III. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard, Chiang, Seiler, and Jesse (US 6,955,259 B1, issued Oct. 18, 2005). IV. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard, Chiang, and Warnecke (US 4,767,008, issued Aug. 30, 1988). ANALYSIS Rejection I As to claim 1, the Examiner finds that Leonard discloses a holder for medical implements comprising, inter alia, base member 6 and medical 2 Appellants indicate that claims 11–17 were cancelled. Br. 2; see also id. at 23, Claims App. The Examiner states that claims 11–17 were withdrawn from consideration (see Office Action dated Nov. 29, 2010), but that no amendment cancelling them has been presented. Answer 3. We note, however, that claims 11–17 were cancelled. See Response to Restriction Requirement dated October 22, 2010, p. 3. 3 Appellants request review of the withdrawal of claims 9 and 10 from consideration as being directed to a non-elected invention. Br. 9–11. The Examiner correctly notes that the restriction requirement is a matter reviewable by petition (rather than by appeal to the Board). Answer 7. See 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure §§ 1002, 1002.02(c), and 1201 (8th ed. Rev. 8, July 2010)). Thus, we will not address this issue. Appeal 2012-008030 Application 12/647,508 4 implement receiver 5 comprising a pair of retention members, but does not disclose that “each retention member [comprises] a slot extending into each retention member from a face disposed along the implement receiving recess,” as claimed. Answer 5 (citing Figs. 1–4). The Examiner finds that Chiang discloses retention members 32, which comprise a slot, as claimed. Answer 5 (citing Fig. 1). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Leonard’s retention members to include Chiang’s slot “in order to secure the contents of the package during loading and unloading.” Id. (citing Abstract, ll. 9–12). Appellants contend that one skilled in the art would not have combined Chiang’s “‘slots’ extending from sidewalls” of element 32 shown in Figure 1 with Leonard’s retention members, “‘in order to secure the contents of the package during loading and unloading.’” Br. 14–15 (citation omitted). Appellants contend there is no evidence to suggest that Chiang’s element 32 “even functions to secure[] anything during loading and unloading.” Id. at 15. Rather, Appellants contend that Chiang’s disclosure regarding unloading and loading “[is] not with reference to the contents of a tray (no contents of trays are ever described in Chiang’s disclosure), but rather with reference to the unloading of the tray from a box.” Id. Appellants also state Chiang discloses that “the tray positioned at the upper end of the fastener is pressed against the recessed platform such that the tray is fastened at the cavity of the box body, whereby the loading and unloading of the tray are easy and the packaging is re-usable.” Id. (citing Chiang, Abstract, ll. 9–12). Appeal 2012-008030 Application 12/647,508 5 Appellants’ contentions are persuasive. Chiang discloses “a tray 30 which is used to keep items.” See col. 2, ll. 35–36. Chiang also states that “[a]fter an object is taken from the tray, the tray can be easily taken up and put back onto the box body.” Id. at col. 3, ll. 21–23. Chiang does not appear to describe that any particular items are kept in tray 30, or describe where any items are kept in tray 30. Appellants correctly contend that Chiang does not disclose that element 32 shown in Figure 1 secures any contents of tray 30 during loading or unloading. Br. 15. The only description of an element 32 in Chiang states that “[t]he side edge at the recessed platform is formed into protruded peg 32 such that the tray of the c-shaped fastener and that of the r-shaped fastener are formed with a faster 26, and the fastener hook is engaged with the tray (as shown in FIGS. 10 and 13) and is firmly secured.” See col. 3, ll. 1–6 (emphasis added). Figure 13 of Chiang shows protruded peg 32 engaged with tray pressing plate 23 and faster 26 of a fastener. Reference number 32 also appears in Figures 11 and 12 of Chiang. Chiang also describes that “the side edge of the recessed platform is a protruded peg.” Id. at col. 1, ll. 44–45. We understand that protruded peg 32 is on the side edge of recessed platform 31 of tray 30. We are unable to locate any description in Chiang pertaining to reference number 32 shown in Figure 1, or any description of any “slot” that “secure[s] the contents of the package during loading and unloading.” Rather, Appellants correctly note that Chiang discloses securing of the tray to the box body with the fastener makes loading and unloading of the tray easy. Br. 15–16 (citing Chiang, col. 1, ll. 26–39). Although we appreciate the Examiner’s position that tray 30 of Chiang holds items (see Answer 10), nonetheless, without a more thorough explanation of how the Examiner Appeal 2012-008030 Application 12/647,508 6 interprets Chiang’s disclosure, the Examiner’s reasoning to include Chiang’s slot into Leonard’s packaging plate 1 “in order to secure the contents of the package during loading and unloading” is based on mere speculation and conjecture. Hence, Appellants’ contention that the Examiner has not articulated an adequate reason with rational underpinnings to modify Leonard’s “retention members” in view of Chiang to include the claimed “slot” is persuasive. The Examiner also finds that Seiler teaches first or second medical implements that are different, and are capable of being held within retention members (Answer 5, citing Fig. 5), and concludes that it would have been obvious to modify the combination of Leonard and Chiang to include Seiler’s system of medical devices “to assist in targeting damaged internal areas of the body.” Id. (citing Seiler, col. 1, ll. 55–67). As such, the Examiner’s application of Seiler does not cure the deficiencies of Leonard and Chiang in regard to claim 1. Thus, we do not sustain the rejection of claim 1 and its dependent claims 2–5, 7, and 8. Rejection II The Examiner’s findings and rationale for the rejection of claim 18 based on the combination of Leonard and Chiang (Answer 6) are the same as those discussed above for the rejection of claim 1. Thus, we do not sustain the rejection of claim 18 and dependent claim 20 for the same reasons as those discussed above for the rejection of claim 1. Rejection III The Examiner’s application of Jesse for the rejection of claim 6, which depends from claim 1 (Answer 7), does not cure the deficiencies of Appeal 2012-008030 Application 12/647,508 7 the rejection of claim 1 as discussed above for Rejection I. Thus, we do not sustain the rejection of claim 6 for the same reasons as those discussed for claim 1. Rejection IV The Examiner’s application of Warnecke for the rejection of claim 19, which depends from claim 18 (Answer 7), does not cure the deficiencies of the rejection of claim 18 as discussed above for Rejection II. Thus, we do not sustain the rejection of claim 19 for the same reasons as those discussed for claim 18. DECISION We reverse the rejections of claims 1–8 and 18–20. REVERSED rvb