Fontecchio, Anthony Michael.

Patent Trials and Appeals Board

Jun 18, 2020

2019003761 (P.T.A.B. Jun. 18, 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.
15/651,812 07/17/2017 Anthony Michael Fontecchio AMF01 5102
102393 7590 06/18/2020
Robert N. Rountree
70360 State Highway 69
Cotopaxi, CO 81223
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
06/18/2020 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 ANTHONY MICHAEL FONTECCHIO
Appeal 2019-003761
Application 15/651,812
Technology Center 3700
Before KEVIN F. TURNER, DANIEL S. SONG, and
BRANDON J. WARNER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the inventor,
Anthony Michael Fontecchio. Appeal Br. 1.
Appeal 2019-003761
Application 15/651,812
2
CLAIMED SUBJECT MATTER
The claims are directed to an insulin pen holder and storage device.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An injector pen holder, comprising:
a base plate having first and second opposing sides;
an attachment structure affixed to the first side of the base
plate;
a plurality of retaining members connected to the second
side of the base plate, each retaining member having a respective
pair of opposing sides, wherein each opposing side extends from
the second side of the base plate toward a respective opposing
side to a respective first edge parallel to a first edge of the
respective opposing side and to the second side of the base plate
forming a region there between configured to receive a
respective injector pen; and
a support member connected to the base plate and arranged
to support one end of each said respective injector pen.
Appeal Br. 22, Claims App. (emphasis added).
REJECTIONS
1. The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2.
2. The Examiner rejects claims 1–20 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 4.
3. The Examiner rejects claims 1, 3, 4, 6, 9–12, and 14–19 under
35 U.S.C. § 102(a)(2) as anticipated by Jesse (US 6,955,259 B1, iss. Oct. 18,
2005). Final Act. 6.
4. The Examiner rejects claims 2, 5, 7–9, 13, and 20 under
35 U.S.C. §103 as unpatentable over Jesse in view of Yakel (US 9,084,593
B2, iss. July 21, 2015) or Spilotro (US 8,955,697 B2, iss. Feb. 17, 2015).
Final Act. 7.
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Application 15/651,812
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OPINION
Rejection 1: Written Description
The Examiner rejects all of the pending claims for failure to comply
with the written description requirement. Final Act. 2. Each of independent
claims 1, 10, and 16 was amended by the Appellant to include the language
of claim 1 italicized above. Amendment filed September 21, 2018. The
Examiner finds that the subject matter of the amended claim language was
“not described in the written description so as to show possession.” Final
Act. 3. Specifically, the Examiner finds that the added text of the claims
“lack[s] any support whatsoever in the detailed written description text.”
Ans. 5.
The Appellant argues that the figures of the application provide
written descriptive support, and submits an annotated version of Figure 1,
which identifies the various recitations of the claim language at issue.
Appeal Br. 8, Figure 1 (annotated). The annotated Figure 1 is reproduced
below.

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Application 15/651,812
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The annotated Figure 1 reproduced above shows a perspective view of
an injector pen holder with numerous annotations with leading arrows
pointing to various features of the injector pen holder that correspond to the
added claim limitations. According to the Appellant, “[t]he annotated
FIG. 1 above shows every feature added to each independent claim in
Appellant’s amendment.” Appeal Br. 9. The Appellant also argues that the
rejection is improper because the Examiner “only relies on his own
subjective opinion” rather than considering the disclosure as it would be
understood by one of ordinary skill in the art. Reply Br. 5; see also Reply
Br. 7 (“The proper objective standard is whether a person skilled in the art
would recognize the inventor had possession of the claimed invention with
reference to the drawings and written description. It is not a subjective
standard where an examiner arbitrarily decides what constitutes sufficient
detail.”).
We agree with the Appellant that the drawings of the application as
filed sufficiently establish that the Appellant was in possession of the
claimed invention for the reasons argued, and address the Examiner’s
responses infra.
The Examiner points out that “[t]he annotations in annotated Fig 1 are
not part of the application disclosure as filed,” but instead, the annotations
“have been added by the applicant to show the same subject matter that was
added by amendment to the claims.” Ans. 9. The Examiner states that the
Appellant “cannot amend the claims and the drawings . . . to add therein
features that are not in the written description and argue convincingly that
the added features are a part of the application as filed.” Ans. 9.
However, one describes the invention to show “possession” of the
invention using descriptive means, which include figures and diagrams that
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Application 15/651,812
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fully set forth the claimed invention. See Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir.1991) (“drawings alone may
provide a ‘written description’ of an invention as required by § 112”). The
annotations to Figure 1 do not add to the subject matter disclosed in
Figure 1, but are provided to identify/point to the structure corresponding to
the added recitations of the claims, in response to the Examiner’s written
description rejection. We agree with the Appellant that Figure 1 illustrates
the claimed invention to sufficiently demonstrate possession.
The Examiner further responds that the drawings still fail to establish
written description because the claims require the opposing sides to extend
“from the second side of the base plate toward a respective opposing side”
but “it is apparent that the opposing sides 104 extend at least initially ‘away
from’, not ‘towards’ each other.” Ans. 5–6. However, as the Examiner’s
response implies, the drawings nonetheless disclose opposing sides that
extend toward each other. Spec., Fig. 1.
The Examiner also finds that the recitation “to a respective first edge
parallel to a first edge of the respective opposing side” is not supported by
the drawings because “there is no indication whatsoever from the drawings
that the edges are parallel.” Ans. 6. However, Figures 1 and 3 in
combination show that the edges of the opposing sides are parallel to each
other. See Figs. 1 and 3. According to the Examiner, “Fig 3, like the other
figures, does not point to any edges” so “by itself does not conclusively
show anything to be parallel.” Ans. 6. Although the originally filed
drawings do not include helpful annotations, this does not detract from what
Figures 1 and 3 actually show, which is that the illustrated edges of the
opposing sides are parallel.
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The Examiner further finds that the recitation “and to the second side
of the base plate” is also not supported by the drawings because this
recitation allows for two different interpretations, one of which is not
supported by the drawings. Ans. 6–7. In that regard, the Examiner initially
interprets the recitation “each opposing side extends from the second side of
the base plate toward a respective opposing side to a respective first edge
parallel to a first edge of the respective opposing side and to the second side
of the base plate” to mean that each opposing side extends from the base
plate to the first edge, and then “go[es] back down from the first edge” to the
base. Ans. 6–7. The Examiner finds that such configuration lacks written
descriptive support. Ans. 7. As to an alternative interpretation, the
Examiner concedes that “it is also possible that the final claim limitation
above is to be interpreted as if the word ‘parallel’ was inserted immediately
after ‘and’,” so that “the limitation requires is that the first edge is parallel to
the second side of the base.” Ans. 7. Accordingly, the Examiner explains
that “[g]iven that it is reasonable to interpret that last underlined claim
limitation in at least the indicated two ways with only the application
drawings in hand, it is apparent that a rejection for lack of adequate written
description for that claimed subject matter is also required.” Ans. 7.
However, we disagree that the Examiner’s initial interpretation of the
claims is reasonable. As argued by the Appellant, the Examiner’s initial
interpretation construes the limitations at issue in a piecemeal manner. See
Final Act. 6; Reply Br. 4 (“Examiner has intentionally omitted the words in
italics to justify his contention that ‘it is reasonable to interpret that last
underlined claim limitation in at least two ways.’”). We agree with the
Appellant that the limitations at issue “include two prepositional phrases in
the conjunctive case, which both modify parallel. Thus, each first edge is
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parallel to a first edge of an opposing side and to the second side of the base
plate.” Reply Br. 4. The Examiner’s initial interpretation is not reasonable
in view of the claim language itself, and the disclosure via the drawings.
Indeed, the Examiner even concedes that the initial interpretation results in a
limitation that is “redundant,” recites something that is not necessary, and
recites something not shown in the drawings or otherwise discussed in the
Specification. See Final Act. 6–7. Accordingly, we disagree with the
Examiner’s assertion that such interpretation is reasonable.
The Examiner also asserts that “there is no indication from the
drawings that the first edges are parallel to the base” and that the edges can
be sloped, and as such, determines that there is no written descriptive
support for the recitation that the first edges are parallel to the base. Ans. 7.
However, Figures 1–2D illustrate that the edges are parallel to the base, and
do not illustrate sloping or angling relative to the base. Spec., Figs. 1–2D.
The Examiner also states that “[s]ince the claim limitations were
added to the application disclosure by amendment to the claims, the
rejection is also one for new matter.” Final Act. 3. However, no disclosure
has been added to the Specification or the drawings, and a new matter
rejection was not was not made by the Examiner. Accordingly, this
statement of the Examiner is not pertinent to the present appeal.
Dependent claim 8 was also amended to recite “a first bracket fixture”
and “a second bracket fixture.” Amendment filed September 21, 2018. The
Examiner further determines that “features of claim 8 were also not
described in the application written description,” and that “it is not clear
from the description what is intended by ‘first mounting bracket’ and
‘second mounting bracket.’” Final Act. 3.
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However, as the Appellant points out, the Specification explicitly
discloses a “first bracket fixture 210” and a “second bracket fixture 212.”
Appeal Br. 10; Spec. ¶ 20. Although the claim may be broad in the sense
that it does not define in detail the configuration of the mounting brackets,
this does not mean that written descriptive support has not been provided.
Thus, we disagree with the Examiner’s assertion that the claim
limitations added by amendment lack written descriptive support, and we
reverse this rejection of claims 1–20.

Rejection 2: Indefiniteness
The Examiner also rejects claims 1–20 as indefinite, determining that
in view of the lack of adequate written description, the added recitations of
the independent claims “cannot be properly understood or interpreted.”
Final Act. 4. However, as discussed above, the added recitations are
sufficiently supported by the drawings.
The Examiner also determines that “it is not clear how each opposing
side can be said to extend from the second side of the base plate toward a
respective opposing side” because the drawings show each side extending
“at least initially from the second side of the base plate away from an
opposing side.” Final Act. 5. However, the fact that the opposing sides
initially extend away from each other before extending toward each other
does not make the explicit recitation indefinite. See also Appeal Br. 13
(Appellant arguing that the Specification and Figure 1 shows the sides
“formed in a semicircular configuration” such that the sides eventually
extend toward the opposing side, and that the claim recitation “is directed to
a part of each side that does extend toward a respective opposing side”).
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This recitation is sufficiently clear as to what it says and sets forth the
subject matter which the applicant regards as his invention.
The Examiner also determines that it is not clear how the limitations
“to a respective first edge,” and “and to the second side of the base plate”
further limit the claims. Final Act. 5. However, the initial claim
interpretation of the Examiner is unreasonable for the reasons already
discussed above relative to Rejection 1. As the Appellant argues, the
limitation “to a respective first edge” “defines the extent of a side of a
retaining member of the embodiment of FIG. 1,” and these limitations,
“require[] . . . ‘a respective first edge’ to be ‘parallel to a first edge of the
respective opposing side and to the second side of the base plate.’” Appeal
Br. 13.
The Examiner also determines that the Appellant is “relying solely on
the application drawings for interpretations of the claim limitations,” and “is
improperly relying on only appellant[’]s own interpretations of the
application drawings.” Ans. 11. However, the rejection at hand is that of
indefiniteness, and the question is whether the claims are ambiguous, vague,
incoherent, opaque, or otherwise unclear. See In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014). Although the Examiner has asserted that the added
limitations are amenable to two different interpretations, as discussed
relative to Rejection 1, we find the initial claim interpretation of the
Examiner to be unreasonable, and agree with the Appellant’s interpretation.
As to dependent claim 8, the Examiner determines that claim 8
“cannot be properly understood or interpreted given the deficiency in the
written description and drawings indicated above.” Final Act. 4. However,
as discussed above, the assertion of lack of written description is unfounded.
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See Appeal Br. 16 (Appellant arguing that adequate descriptive support has
been provided).
Accordingly, we agree with the Appellant that the limitations added to
the independent claims sufficiently define features in the drawing and
“particularly point out and distinctly claim the subject matter which the
Appellant regards as his invention.” Appeal Br. 12. Therefore, we reverse
the rejection of claims 1–20 for indefiniteness.

Rejection 3: Anticipation
The Examiner rejects claims 1, 3, 4, 6, 9–12, and 14–19 as anticipated
by Jesse. Final Act. 6. In particular, the Examiner finds, inter alia, that
Jesse discloses “each opposing side extend[ing] towards a respective
opposing side (note Fig 4 that shows each opposing side extending in an arc
towards a respective opposing side),” and “at the top and bottom of Fig 4,
each edge of a side extends parallel to an edge of the respective opposing
side.” Final Act. 7. The Examiner further explains that “[t]he end of the
lead line from numeral 18 in Fig 1 touches a first edge as shown in the
figure. It has an opposite in the other side (clip) and both edges are
parallel.” Ans. 13. Thus, the Examiner considers the edge surface of each
clip member 16, 18 extending perpendicularly to the second side of the base
12 in Jesse to correspond to the claimed “first edge.”
However, in accordance with the Examiner’s application of Jesse,
“[n]o first edge of member 16 of Jesse is parallel to a first edge of member
18 and to base 12. Likewise, no first edge of member 18 of Jesse is parallel
to a first edge of member 16 and to base 12.” Appeal Br. 18. Thus, we
agree with the Appellant that “Jesse DOES NOT disclose ‘a respective first
edge parallel to a first edge of the respective opposing side and to the second
Appeal 2019-003761
Application 15/651,812
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side of the base plate’ as required by independent claims 1, 10, and 16.”
Appeal Br. 18 (emphasis omitted).
According to the Examiner, the pertinent limitation of the claims is
met because “each member of the pair extends to the second side of the base
plate (in the same manner as each extended from the second side of the base
plate).” Ans. 13. However, this reasoning is based on the previously
discussed initial interpretation of this limitation, which, as explained above,
is unreasonable.
Moreover, we further note that it is not apparent how a clip member,
i.e., “opposing side,” can be reasonably considered to “extend[] from the
second side of the base plate toward a respective opposing side” as required
by the claims. In particular, we observe that in Jesse, the clip members,
although curved along the base plate, extend “from . . . the base plate”
perpendicularly outward such that the distance between the clip members is
not changed relative to each other as the clip members extend from the base
plate. Accordingly, the clip members of Jesse do not extend “toward a
respective opposing side” as they extend from the base plate, as the claims
require. See Jesse, Fig. 1.
Therefore, in view of the above considerations, we reverse this
anticipation rejection of the independent claims 1, 10, and 16, as well as of
claims 3, 4, 6, 9, 11–12, 14, 15, and 17–19. The remaining disputed issues
regarding the shelf 28 of Jesse are moot. See Final Act. 6; Appeal Br. 18–
19; Ans. 14.

Rejection 4: Obviousness
The Examiner rejects claims 2, 5, 7–9, 13, and 20 as unpatentable
over Jesse in view of Yakel or Spilotro. Final Act. 7. The Examiner relies
Appeal 2019-003761
Application 15/651,812
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on Yakel or Spilotro for disclosing the recited limitations of these dependent
claims pertaining to the gusset, suction cups, hook/loop fasteners, and
brackets, to conclude that these claims would have been obvious to one of
ordinary skill in the art. However, the Examiner’s application of these
secondary references does not address the above-discussed deficiencies of
Jesse as to the rejection of the independent claims from which these claims
ultimately depend. Accordingly, this obviousness rejection of claims 2, 5,
7–9, 13, and 20 is also reversed.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written
Description
1–20
1–20 112(b) Indefiniteness 1–20
1, 3, 4, 6,
9–12, 14–
19
102(a)(2) Jesse 1, 3, 4, 6,
9–12, 14–
19
2, 5, 7–9,
13, 20
103 Jesse and Yakel or
Spilotro
2, 5, 7–9,
13, 20
Overall
Outcome
1–20

REVERSED