Medline Industries, Inc.

Patent Trials and Appeals Board

Mar 30, 2021

2020002941 (P.T.A.B. Mar. 30, 2021)

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.
14/828,272 08/17/2015 Megan Henken BPMDL0114MH (11399U) 9143
27939 7590 03/30/2021
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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):
kberry@burrusiplaw.com
pburrus@burrusiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEGAN HENKEN and STEVE MCNABB
Appeal 2020-002941
Application 14/828,272
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
CARL M. DEFRANCO, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 10–19 and 21–29. 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). The Appellant identifies the real party in interest as
Medline Industries, Inc. Appeal Br. 2.
Appeal 2020-002941
Application 14/828,272
2
CLAIMED SUBJECT MATTER
The claims are directed to a cleaning package assembly. Claim 10,
reproduced below, is illustrative of the claimed subject matter:
10. A cleaning package assembly, comprising:
a package;
one or more cleaning cloths disposed within the package,
each cleaning cloth defining a plurality of portions thereof; and
an instructional insert, disposed within the package with
the one or more cleaning cloths and instructing an order of using
the plurality of portions to clean a predefined area;
the instructional insert comprising a plurality of sequential
numerical indicia defining a cleaning order for the predefined
area; and
each portion of the plurality of portions comprising one of
the plurality of sequential numerical indicia to indicate the order
of using the plurality of portions.
Appeal Br. 32 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hutchison US 2006/0121423 A1 June 8, 2006
Weinberger US 2010/0133125 A1 June 3, 2010
Tiedmann US 2011/0114734 A1 May 19, 2011
Williams US 2014/0020710 A1 Jan. 23, 2014
REJECTIONS
1. Claims 10–18 and 21–28 under 35 U.S.C. § 103 as being
obvious over Weinberger in view of Williams. Non-Final Act. 3.
2. Claim 19 under 35 U.S.C. § 103 as being obvious over
Weinberger in view of Williams and Tiedmann. Non-Final Act. 9.
3. Claim 29 under 35 U.S.C. § 103 as being obvious over
Weinberger in view of Williams and Hutchison. Non-Final Act. 10.
Appeal 2020-002941
Application 14/828,272
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OPINION
The Examiner rejects the sole independent claim 10 as being obvious
over Weinberger in view of Williams. Non-Final Act. 3. The Examiner
finds that Weinberger discloses a cleaning package assembly substantially as
claimed, but fails to “explicitly teach each cleaning cloth defining a plurality
of portions thereof,” and fails to “explicitly teach instructing an order of
using the plurality of portions to clean a predefined area.” Non-Final Act.
3–4, 5. The Examiner relies on Williams for disclosing a cleaning cloth
defining a plurality of portions thereof, and disclosing instructing an order
for using the plurality of portions. Non-Final Act. 4–5 (citing Williams
¶¶ 16, 29; Fig. 1); see also Non-Final Act. 8–9. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to modify
the assembly of Weinberger “to include cleaning cloth defining a plurality of
portions thereof” with “sequential numerical indicia thereon to indicate the
order of using the plurality of portions,” and to instruct the order for use as
taught by Williams, “since doing so reduces cross contamination during
cleaning,” and that such modification would have been a “predictable
solution that one of ordinary skill in the art could have pursued with a
reasonable expectation of success.” Non-Final Act. 4, 5–6, 7, 8.
The Appellant argues that a person of ordinary skill in the art would
not “combine Williams’s bound cloth panels and/or any instructions for
using those panels with Weinberger’s compact fluorescent light bulb
cleaning kit” because the suggested modification would “increas[e] the risk
of contact with the heavy liquid metal mercury,” and would make
Weinberger’s kit unsuitable for its intended purpose. Appeal Br. 13, 18–19;
see also Weinberger ¶¶ 3, 5 (“The cleanup kit, according to an embodiment
of the present invention, advantageously provides the tools necessary to
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Application 14/828,272
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easily capture and properly dispose of the debris that can result from
damaged CFLs, without exposing the user to dangerous metal
contaminants.”).
Specifically, according to the Appellant, one of ordinary skill in the
art would not be led to “use the Williams bound panel cloth in place of the
two towelettes of Weinberger because it would put the user at increased
risk” of negative “health conditions that can result from even the briefest
contact with mercury or mercury vapor” as taught in Weinberger. Appeal
Br. 18; see also Weinberger ¶ 3. The Appellant argues that the Examiner’s
articulated motivation for the combination, i.e., to prevent cross-
contamination, “is suspect, as it does not appear relevant given the context
of the primary reference.” Appeal Br. 17. We generally agree with the
Appellant for the reasons argued.
The Examiner responds that:
The Appellant’s argument is irrelevant with regard to the
intended use of the bound cloth panels of Williams. What is
relevant is that the Williams reference discloses the same
structural limitations claimed by the Appellant and not taught in
the primary reference of Weinberger, and does so in an obvious
manner. Here, it is an obvious practical solution to avoid cross
contamination, since cross contamination is discussed
throughout Williams.
Ans. 6. The Examiner also asserts that “the intended use of Weinberger is
irrelevant, because Weinberger and Williams are cited for what they teach
structurally.” Ans. 6. The Examiner further explains that “a recitation of the
intended use of the claimed invention must result in a structural difference
between the claimed invention and the prior art in order to patentably
distinguish the claimed invention from the prior art.” Ans. 11.
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Application 14/828,272
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However, in accordance with the applied rejection, the Examiner is
modifying the kit of Weinberger to incorporate the bound cloth panels of
Williams for the alleged purpose of reducing cross-contamination. Thus, the
disclosed intended use or purpose of Weinberger is relevant to the
obviousness analysis because if proposed modification would render the
prior art invention being modified “inoperable for its intended purpose,”
then there is likely no suggestion or motivation to make the proposed
modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Moreover,
the issue at hand is not the “intended use of the claimed invention,” but
rather, how the suggested modification of the kit of Weinberger would
impact the intended use and operability thereof, and whether the Examiner’s
articulated reasoning for the suggested modification, i.e., to reduce cross-
contamination, is supported by rational underpinnings.
Weinberger provides a cleanup kit for cleaning up a broken compact
fluorescent light (“CFL”) bulb so as to “decrease the risk of exposure to
metal contaminants, such as Mercury, contained in CFLs.” Weinberger ¶ 6;
Abstr. As the Appellant points out, in the preferred embodiment,
Weinberger provides “two separate cleaning cloths to be used,” wherein
upon wiping down the breakage location with a moist cloth, the cloth is
deposited into a biohazard bag, and the breakage location is then wiped
using the dry cloth, which is also deposited into the biohazard bag. Appeal
Br. 16 (citing Weinberger ¶ 25). As the Appellant also points out, Williams
teaches using a bound panel cloth to avoid contamination by improper
flipping and folding different portions of the cloth. Appeal Br. 17 (citing
Williams ¶¶ 8, 36).
Accordingly, we find persuasive, the Appellant’s argument that with
Weinberger’s kit, “[t]he dry towelette can then be used without any risk of
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Application 14/828,272
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cross contamination . . . because the moist towelette is safely secured in the
biohazard bag,” prior to the use of the dry towelette, and “[a]n item secured
in a biohazard bag cannot cross contaminate an unused item outside the
biohazard bag.” Appeal Br. 17. We also find persuasive Appellant’s
argument that “using portions of a single item to clean,” such as disclosed in
Williams, would “not reduce cross contamination compared to using two
separate cloths, as required by Weinberger.” Appeal Br. 17.
The Examiner further responds that “the motivation to prevent cross
contamination is explicitly discussed throughout the [Williams] reference,”
including its title (Ans. 7), and that “[t]here is no requirement that a
motivation to make the modification be expressly articulated” (Ans. 12).
While that may be true, there must be an articulated reason with rational
underpinnings for the suggested modification. Ans. 12. Although Williams
may disclose reduction in cross contamination, as the Appellant points out,
this reduction is in comparison to using a single conventional cloth. Appeal
Br. 17. It is not apparent how using different portions of a single cloth
would further reduce the risk of cross contamination in the kit of
Weinberger, considering that such combination would “require[] the user to
physically handle a portion of the cleaning cloth after it has been used to
clean mercury.” Appeal Br. 18–19. Thus, we agree with the Appellant that
“[t]he Examiner’s stated motivation . . . fails to explain, with an articulated
reasoning with some rational underpinning tied to the references, how this
motivation would prompt one of ordinary skill in the art to combine the
references as claimed.” Appeal Br. 21.
The Examiner further states that:
Although Weinberger’s intended use is to clean up broken
compact florescent light bulbs, the real hazard pertains to
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Application 14/828,272
7
inhalation immediately after a CFL bulb breaks and mercury
vapor is released. Not when cleaning up the broken bulb. It is
common knowledge and adequately provided in Weinberger to
allow for proper ventilation in the affected area.
Ans. 7–8. According to the Examiner, “the intense danger the Appellant is
alleging is out of context” (Ans. 8), and “cleaning up a broken CFL bulb
after allowing proper ventilation provides a minimal exposure risk.” Ans. 9.
However, as noted by the Appellant, the Examiner makes these findings that
are contrary to the teachings of Weinberger without any supporting
evidence. Reply Br. 8–9.
The Examiner also states that “Weinberger discloses in para. [0012]:
‘at least one towelette 28, which may be provided as one pre-moistened
towelette and one dry towelette’” (Ans. 8), such that “the bound cloths could
have separate and distinct wet and dry portions.” Ans. 10. According to the
Examiner, “it is not out of the realm to envision a portion of a cloth to be
wet and another portion to be dry since para. [0033] provides ‘[t]he cloth
surface may also have an impregnated such as an anti-tarnish chemical
formulation or other surface modification means.’” Ans. 8. However, we
find more persuasive the Appellant’s argument that “wetting a portion of the
cloth would . . . cause the entire cloth to be equally wet at its equilibrium
state.” Appeal Br. 18. Mere disclosure of impregnating the cloth surface
does not support the Examiner’s assertion. Moreover, it is not apparent, and
the Examiner does not sufficiently explain, why a person of ordinary skill
would ignore the preferred teachings in Weinberger as to the wet and dry
towelettes, and use different portions of a single towelette.
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of independent claim 10, and dependent claims 11–18
and 21–28 ultimately depending from claim 10. The Appellant’s separate
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Application 14/828,272
8
arguments specifically directed to claim 11 are moot. Appeal Br. 24–25.
The Examiner’s rejections of claims 19 and 29 are also reversed as the
Examiner’s application of tertiary references does not remedy the deficiency
with respect to the combination of Weinberger and Williams.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10–18, 21–
28
103 Weinberger,
Williams
10–18, 21–
28
19 103 Weinberger,
Williams,
Tiedmann
19
29 103 Weinberger,
Williams,
Hutchison
29
Overall
Outcome
10–19, 21–
29
REVERSED