Raymond Wooten

Patent Trials and Appeals BoardAug 20, 2021

2021002000 (P.T.A.B. Aug. 20, 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. 15/255,198 09/02/2016 Raymond T Wooten WOR-003 7456 52554 7590 08/20/2021 Southeast IP Group, LLC. P.O. Box 14156 GREENVILLE, SC 29610 EXAMINER PAGAN, JENINE MARIE ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 08/20/2021 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 RAYMOND T. WOOTEN Appeal 2021-002000 Application 15/255,198 Technology Center 3700 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 6, 9, 11, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Raymond T. Wooten. Appeal Br. 1. Appeal 2021-002000 Application 15/255,198 2 STATEMENT OF THE CASE Claimed Subject Matter The Appellant’s “invention is directed to a device that . . . retains medication in a secure, convenient, and protected manner, [and] fits within a wallet credit card slot.” Spec. 6:2–4. Claim 6, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 6. A medication information and storage device comprising: a first card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said first card; a second card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said second card; said first card and said second card being connected together in a hinging manner so that one of said surfaces of said second card can fold into contact with a portion of at least one of said surfaces of said first card; at least one cavity, for housing medication, disposed on a top third of said first card and protruding outwardly from at least one of said surfaces of said first card creating a raised protrusion away from said first card, wherein said front surface and said rear surface of said second card are flat and said second card includes a cut-out portion that corresponds to a position of said cavity so that when said first card and said second card are folded together, said cavity protrudes through said cut-out portion of said second card and said first and second cards lie flat against one another, and wherein said rear surface and bottom two thirds of said front surface of said first card are flat so that said medication information and storage device may slide into a pocket of a wallet so that said cavity protrudes outwardly, above said slot; and information regarding said medication printed on at least one of said surfaces of said cards. Appeal 2021-002000 Application 15/255,198 3 Rejection Claims 6, 9, 11, and 21 are rejected under 35 U.S.C. § 103 as unpatentable over Mellin (US 1,816,542, iss. July 28, 1931) and Vanders (US 3,526,317, iss. Sept. 1, 1970). ANALYSIS Rejection of independent claim 6 and dependent claims 9, 11, and 21 under 35 U.S.C. § 103 as unpatentable over Mellin and Vanders For the Examiner’s rejection of independent claim 6, the Examiner determines: Vanders teaches that it was known in the art to have a medication information and storage device have a cavity disposed on a top third of the first card and the bottom two thirds of the front surface of the first card are flat. The inventions of Mellin and Vanders are both drawn to the field of containers that are capable of holding items such as medication. Each container includes two cards hinged together and having a cavity formed on the first card. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the first card in Mellin by providing the cavity in the top disposed on a top two thirds of the first card and the bottom two thirds flat as taught by Vanders for the purposes of providing an alternative configuration of the storage device.[2] 2 We note that the Examiner’s rejection includes a statement that “[i]t appears the cavity of Mellin is disposed on a top third of said first card. However, if it is found to not be so, Vanders teaches . . . .” Final Act. 3. In this case, we deem it prudent to view the Examiner’s statement as one that alludes to a rejection that was never made on the record; namely, a rejection of claim 6 under 35 U.S.C. § 102 as anticipated by Mellin. Appeal 2021-002000 Application 15/255,198 4 Final Act. 3–4 (emphasis added). The Examiner clarifies that “Vanders was cited to teach that it was known in the art to have the location of the cavity, disposed in the top third of the first card.” Ans. 4 (footnote omitted). The Appellant argues that the Examiner’s rejection of claim 6 is improper because it fails to provide adequate reasoning to support the conclusion of obviousness. Appeal Br. 5–7 (citing MPEP § 2143 “Examples of Basic Requirements of a Prima Facie Case of Obviousness”). The Appellant’s argument is persuasive. In this case, the Examiner’s rejection does little more than explain the result of the combination. To the extent the Examiner’s rejection offers a reason for the modification, we determine that it is not adequate to support the conclusion of obviousness. Thus, we do not sustain the Examiner’s rejection of independent claim 6 and dependent claims 9, 11, and 21 under 35 U.S.C. § 103 as unpatentable over Mellin and Vanders. NEW GROUNDS OF REJECTION Rejection of independent claim 6 and dependent claims 9, 11, and 21 under 35 U.S.C. § 112(b) as indefinite Independent claim 6 recites, “wherein said rear surface and bottom two thirds of said front surface of said first card are flat so that said medication information and storage device may slide into a pocket of a wallet so that said cavity protrudes outwardly, above said slot.” Appeal Br., Claims App. (emphasis added). We determine that claim 6 is indefinite because “said slot” lacks antecedent basis. In our view, it is speculative to assume that every “pocket Appeal 2021-002000 Application 15/255,198 5 of a wallet” necessarily includes a “slot.” Claims 9, 11, and 21 are rejected due to their dependency on claim 6. See Appeal Br., Claims App. Rejection of independent claim 6 and dependent claims 11 and 21 under 35 U.S.C. § 103 as unpatentable over Higgins3 and Mellin In regards to independent claim 6, Higgins teaches a medication information and storage device (Higgins, Abstract, Figs. 1–5, ¶ 18) comprising: a first card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said first card (Higgins, Figs. 1–5, ¶ 18 (card 1)); at least one cavity, for housing medication, disposed on a top third of said first card and protruding outwardly from at least one of said surfaces of said first card creating a raised protrusion away from said first card4 (Higgins, Figs. 1, 3–5, ¶¶ 13, 18 (at least one sealed cavity 2 located on the top portion of card 1’s front surface for storage of oral medication)), 3 Higgins (US 2005/0056564 A1, pub. Mar. 17, 2005) is referenced in the Specification at page 2, lines 1–7, in the Information Disclosure Statement (filed Sept. 2, 2016), and in the Non-Final Office Action (mailed Oct. 3, 2019) at pages 2–3. 4 We understand “at least one cavity . . . disposed on a top third of said first card and protruding outwardly from at least one of said surfaces of said first card,” as recited in claim 6, to suggest that the at least one cavity may protrude outwardly from the first card’s front and/or rear surface. Appeal 2021-002000 Application 15/255,198 6 wherein said rear surface and bottom two thirds of said front surface of said first card are flat5 so that said medication information and storage device may slide into a pocket of a wallet so that said at least one cavity6 protrudes outwardly, above a slot (Higgins, Figs. 1–5, ¶¶ 18–19, 21 (Fig. 2 shows the rear surface of card 1 as flat; Fig. 1 shows bottom two thirds of front surface as flat; Figs. 3–5 show card 1 in a wallet credit card slot with the sealed cavity 2 protruding outwardly above a slot)); and information regarding said medication printed on at least one of said surfaces of said cards (Higgins, Figs. 1–2, ¶¶ 13, 14, 18 (writing 3, which is shown on the front of card 1, maybe for writing “such as advertisements, symptoms associated with medical conditions, ingredients, directions for use, or any other desired writing”; additional writing 4 may be placed on the back of card 1)). Higgins fails to teach a second card and its structural relationship to a first card, as required by claim 6. However, Mellin’s teachings remedy this deficiency. Specifically, Mellin teaches a medication information and storage device (Mellin, Figs. 1–4, p. 1, ll. 1–35), including: 5 We note that the Appellant’s arguments appear to conflate the flatness of some of the surfaces of the first card, which is claimed, and the flatness of the medication information and storage device, which is not claimed. See Reply Br. 2 (“Neither Mellin nor Vanders includes a device having a flat rear surface, as claimed by Applicant.”). 6 We understand the claim recitation “said cavity” to refer back to “at least one cavity.” Appeal Br., Claims App. Appeal 2021-002000 Application 15/255,198 7 a second card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said second card (Mellin, Fig. 4, p. 2, ll. 52–62 (sheet 25)); a first card and said second card being connected together in a hinging manner so that one of said surfaces of said second card can fold into contact with a portion of at least one of said surfaces of said first card (Mellin, Fig. 4, p. 2, ll. 52–62 (sheets 25, 26 are connected together in a hinging manner by being folded at 23, 24 so that a surface of sheet 25 folds into contact with a surface of sheet 26)); wherein said front surface and said rear surface of said second card are flat (Mellin, Fig. 4 (the front and rear surface of sheet 25 are flat)) and said second card includes a cut-out portion that corresponds to a position of said at least one cavity so that when said first card and said second card are folded together, said at least one cavity protrudes through said cut-out portion of said second card and said first and second cards lie flat against one another (Mellin, Fig. 4, p. 2, ll. 52–62 (sheet 25 includes opening 21 for tablet 13 held in a cavity disposed on sheet 26; when sheets 25, 26 are folded together the cavity protrudes through opening 21 and sheets 25, 26 lie flat against one another)). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Higgins’ medication information and storage device to add a second card, including its structural relationship to a first card, as taught by Mellin, to provide a greater surface area for writing additional information and/or providing the same or additional information at a larger font size so that a Appeal 2021-002000 Application 15/255,198 8 reader of the information would have been able to better understand all of the relevant information, including identification of the medication, directions for use, warnings, symptoms, etc., in an emergency situation (e.g., a heart attack) and manufacturers of the product may include advertising as well as the relevant information (see Mellin, Fig. 1, p. 2, ll. 48–51; Higgins, Figs. 1–2, ¶¶ 7, 9, 18). In regards to dependent claim 11, Higgins teaches that the cavity is sealed (Higgins, Figs. 1–5, ¶ 18 (at least one sealed cavity 2)). In regards to dependent claim 21, Higgins teaches that the cavity is positioned adjacent a corner of said first card, so that said medication information and storage device may be stored in a slot of a wallet in either a horizontal or vertical orientation while said cavity protrudes outwardly from said first card and above said slot in said wallet (Higgins, Figs. 1–5, ¶ 18 (Higgins teaches that cavity 2 is “at least one sealed cavity,” meaning cavity may be one or more in number; Higgins’ Figures 1 and 3 show a cavity positioned in a corner of card 1; Higgins’ Figures 3–5 show the medication information and storage device stored in a slot of a wallet; Higgins’ Figure 1 shows card 1 in a horizontal orientation and Figures 3–5 show card 1 in a vertical orientation while cavity 2 protrudes outwardly from card 1 and above the slot of the wallet)). CONCLUSION We REVERSE the Examiner’s rejection of claims 6, 9, 11, and 21 under 35 U.S.C. § 103 as unpatentable over Mellin and Vanders. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF REJECTION of claims 6, 9, 11, and 21 under 35 U.S.C. Appeal 2021-002000 Application 15/255,198 9 § 112(b) as indefinite and claims 6, 11, and 21 under 35 U.S.C. § 103 as unpatentable over Higgins and Mellin. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. In summary: Claim(s) Rejected 35 U.S.C. § Reference/Ba sis Affir med Reversed New Grounds 6, 9, 11, 21 103 Mellin, Vanders 6, 9, 11, 21 6, 9, 11, 21 112(b) Indefiniteness 6, 9, 11, 21 6, 11, 21 103 Higgins, Mellin 6, 11, 21 Overall Outcome 6, 9, 11, 21 6, 9, 11, 21 REVERSED; 37 C.F.R. § 41.50(b)