Sallie Piering

Patent Trials and Appeals BoardJul 22, 2019

14550044 - (D) (P.T.A.B. Jul. 22, 2019)

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. 14/550,044 11/21/2014 Sallie Piering MSH-927 2411 8131 7590 07/22/2019 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER VAN BUSKIRK, JAMES M ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 07/22/2019 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 SALLIE PIERING Appeal 2019-000072 Application 14/550,044 Technology Center 3700 Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by GREENHUT, Administrative Patent Judge Opinion Dissenting filed by CAPP, Administrative Patent Judge GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant,1 Sallie Piering, appeals from the Examiner’s decision to reject claims 1 and 4–25. Non-Final Act. 1. 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 Sallie Piering. Appeal Br. 2. Appeal 2019-000072 Application 14/550,044 2 CLAIMED SUBJECT MATTER The claims are directed to a medicament container and dispenser. Claim 1, reproduced below, is the sole independent claim and is illustrative of the claimed subject matter: 1. A medicament container comprising in combination, a support band and a hollow medicament retainer, said hollow medicament retainer being supported on said support band said hollow medicament retainer having a top and an open bottom and said hollow in said hollow medicament retainer containing a blister pack having a bottom, said blister pack being supported in the hollow medicament retainer by elastomer projections said blister pack containing at least one solid medicament and said blister pack bottom having a breakable seal such that when the seal is broken, the solid medicament contained therein is dispensed wherein said medicament container is for single use. REFERENCES The prior art relied upon by the Examiner is: Hellstrom US 3,472,367 Oct. 14, 1969 Sherman Haston Eisner Colone US 2009/0108039 A1 US 2011/0127306 A1 US 2014/0110445 A1 US 2014/0117060 A1 Apr. 30, 2009 June 2, 2011 Apr. 24, 2014 May 1, 2014 REJECTIONS Claims 1, 4–7, and 12–22 are rejected under 35 U.S.C. § 103 as being unpatentable over Colone and Hellstrom. Non-Final Act. 3. Claims 8–11 are rejected under 35 U.S.C. § 103 as being unpatentable over Colone, Hellstrom, and Haston. Non-Final Act. 6. Claims 23 and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Colone, Hellstrom, and Sherman. Non-Final Act. 6. Appeal 2019-000072 Application 14/550,044 3 Claim 25 is rejected under 35 U.S.C. § 103 as being unpatentable over Colone, Hellstrom, and Eisner. Non-Final Act. 7. OPINION Appellant argues, “Cologne does not teach or suggest elastomer projections for supporting the blister pack.” Reply. Br. 2. Claim 1 calls for “projections,” which is the plural form of the term “projection.” Even assuming we were to agree with the Examiner that Colone’s lip 114 is reasonably regarded as a projection (i.e., “something that protrudes” (see Reply Br. 2)), the Examiner does not make of record any explanation as to why this single continuous lip 114 constitutes more than one projection sufficient to make a prima facie showing that the plural language “projections” recited in claim 1 is satisfied. Reply. Br. 2. The Examiner also does not make of record any evidence or analysis that would demonstrate that, based on the present Specification, or in the context of the present claims, this is an instance where the plural term “projections” can reasonably be construed to include retainers having only a single projection. See, e.g., Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325 (Fed. Cir. 2004) (citing Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001)). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). [T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness,[] clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103. Appeal 2019-000072 Application 14/550,044 4 In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). As the Examiner has not provided adequate evidence or reasoning to account for this difference between the subject matter of the independent claim and that of the prior art, we are constrained to reverse all the Examiner’s rejections on the record presently before us. DECISION The Examiner’s rejections are reversed. REVERSED Appeal 2019-000072 Application 14/550,044 5 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SALLIE PIERING Appeal 2019-000072 Application 14/550,044 Technology Center 3700 CAPP, Administrative Patent Judge. DISSENTING OPINION I respectfully disagree with the result and the underlying reasoning of the majority opinion. In particular, I disagree that the outcome of this case should be determined based on whether the singular or the plural form of the word “projection(s)” appears in the claim. In the English language, many nouns have a singular form that differs in spelling from a plural form, frequently by adding an “s” to the end of the word. This is merely an artifact of the English language and it places a burden on patent claim drafters, where brevity and economy in expression is valued, if not paramount. Perhaps with this in mind, the court in Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) recognized that: “in context, the plural can describe a universe ranging from one to some higher number, rather than requiring more than one item. Id. citing Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1328 (Fed. Cir. 2001)). In other words, in appropriate circumstances, the ordinary Appeal 2019-000072 Application 14/550,044 6 and customary meaning of a plural form of a word can also include the singular. In the instant case, claim 1 recites . . . “said blister pack being supported in the hollow medicament retainer by elastomer projections.” Claims App. (emphasis added). The majority determines that using the plural form of projection, i.e., projections, requires more than one projection to satisfy the claim term. I cannot reconcile this result with Versa and Dayco. The majority relies on the words “in context” from the above quoted passage from Versa to somehow place a burden on the Examiner to conduct an in-depth analysis of the context surrounding the use of projections in the claim and the accompanying Specification and drawings before reaching a conclusion that the claimed subject matter is obvious. I do not share this overly restrictive review of 35 U.S.C. § 132. Under the governing statute, the PTO meets its burden by notifying the applicant of a rejection and stating the reasons for such rejection together with such information and references as may be useful in judging the propriety of continuing the prosecution of the application. Id. In the instant case, the Examiner finds that Colone satisfies the “elastomer projections” limitations. Non-Final Action 3, citing Colone 114, Fig. 1. In my opinion, such is sufficient to place Appellant on notice of the rejection and “the reasons for such rejection” within the meaning of the statute. Thus, to me, the onus is on Appellant to raise and argue the singular versus plural issue to distinguish over the prior art if, indeed, Appellant even recognizes it as an issue. The PTO bears the initial burden of showing a prima facie case of obviousness. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). When a prima facie case of obviousness is made, the burden then shifts to the Appeal 2019-000072 Application 14/550,044 7 applicant to come forward with evidence and/or argument supporting patentability. Id. In the instant case, Appellant acknowledges that Colone has a lip 114, but merely argues that it is not a “projection” (singular form used by Appellant) because it is adapted to hold a cap, not a blister pack. Appeal Br. 5. The Examiner adeptly rebutted this argument in the Answer, pointing out that Colone expressly teaches an alternative embodiment with a blister pack. Ans. 3 (citing Colone ¶ 34). Indeed, paragraph 34 of Colone teaches that: In at least one embodiment, the cap 106 may be disposable or replaceable. In at least one embodiment, the cap 106 may be replaced with the pill, tablet, blister packet, or other form of medication already enclosed within. Colone, ¶ 34. Contrary to Appellant’s argument, Colone expressly teaches that cap 106 is “replaceable” and that it may be replaced with a blister pack. Id. Thus, a person of ordinary skill in the art would understand that retention lip 114 is capable of supporting a blister pack. A person of ordinary skill in the art would also recognize that Colone’s retention lip 114 is not strictly limited by the configuration depicted in the drawings. See e.g., Nystrom v. Trex Co. Inc. 424 F.3d 1136 (Fed. Cir. 2005) (explaining that reading precise proportions into patent drawings that are not expressly drawn to scale is disfavored).2 Thus, adapting Colone’s lip 114 to retain a blister pack must be considered within the scope of Colone’s disclosure. That brings us back to the question of whether the plural form of the word “projections” should be construed as “one or more” instead of “two or 2 See also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344-45 (Fed. Cir. 2001) (explaining that a patent need not describe every conceivable embodiment of an invention). Appeal 2019-000072 Application 14/550,044 8 more.” Versa and Dayco stand for the proposition that, depending on the context in which it is used, “projections” could mean “one or more.” Versa, 392 F.3d at 1330. If Appellant intended to distinguish the claimed invention from Colone on the basis that “projections” requires two or more projections, whereas Colone discloses a single lip 114, no such argument appears in the Appeal Brief. See generally Appeal Br. In preparing the Answer, the Examiner can hardly be faulted for not providing a detailed analysis of the context in which “projections” is used in the Specification and the claims where Appellant has not first even identified it as an issue in the Appeal Brief. Again, in the Reply Brief, Appellant does not attribute error to the Examiner’s findings because Colone’s lip is a singular entity. Reply Br. 2. Rather, Appellant argues that Colone’s lip is not “something that protrudes into the opening at the bottom of the chamber that supports the blister packet as in the instant invention.” Id. To me, this argument is decidedly unpersuasive in view of, for example, the depiction of lip 114 in Figure 3, which appears to be imminently capable of retaining a blister pack. However, the real point to be made is not just that Appellant’s arguments are not persuasive, but that the majority has sua sponte raised an issue (singular versus plural) that is not raised or addressed by either the Examiner or Appellant. Thus, if anything, the Examiner has been deprived of an opportunity to fully address and analyze the facts of this case in view of Versa and Dayco. Moreover, we do not even have any reason to believe that Appellant concurs in the position that the majority has sua sponte taken on its behalf. That brings us to the question of whether the context in which “projections” is used in the Specification and claims suggests a meaning of Appeal 2019-000072 Application 14/550,044 9 “one or more” or “two or more.” Claim 1 requires that a blister pack be supported by elastomer projections and that it contain a solid medicament. Claims App. In the Specification, the word “projections” appears in the description of Figure 3C in the context that the projections are “not shown.” Spec. 1.3 The only other appearance of “projections” in the Specification is in the following context. Another novel feature is that the blister pack 8 can be held in place virtually by friction of the blister pack 8 against the medicament retainer walls as illustrated in Figure 3C. Note that in this Figure, the elastomer projections 30 as shown in Figure 3A are missing in order to allow the frictional fit of the blister pack 8. Spec. 3. The significance of the foregoing passage is that the blister pack may be retained within the medicament retainer walls entirely by means of a friction fit, without using so much as even one projection. If embodiments of the invention can be practiced without any projections whatsoever, there is no context from which to arrive at a conclusion that more than one projection is required by claim 1. Taking into account the context in which the term is used in the claim and in the Specification, this is a proper case for application of Versa and Dayco so as to construe the ordinary and customary meaning of “projections” to be “one or more.” Versa, 392 F.3d at 1330. If “projections” is so construed, such would mandate an affirmance of the Examiner’s rejection. 3 Projections 30 are depicted only in Figure 3A of the drawings. Figure 3A is a cross-sectional view. The lateral extent of element 30 and whether, in fact, it represents a plurality of separately identifiable structures cannot be determined with certainty from the drawing. Appeal 2019-000072 Application 14/550,044 10 Finally, one other matter that deserves mention is that, even if “projections” is construed to be “two or more,” such does not necessarily render claim 1 patentable over Colone. An obviousness analysis, need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Section 103 expressly contemplates that there may be differences between the prior art and the claimed invention. 35 U.S.C. § 103. Thus, the issue is not whether there are differences, but whether the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Id. Consequently, a claim can be obvious even where all of the claimed features are not found in specific prior art references. See Randall Mfg. v. Rea, 733 F.3d 1355, 1361-62 (Fed. Cir. 2013); see also Broadcom Corp. v. Emulex Corp. 732 F.3d 1325, 1334 (Fed. Cir. 2013). Colone’s lip 114 operates to retain a medicament in a hollow space in a, more or less, identical manner to that of Appellant’s projections even if it is a singular structure rather than a plurality of separate structures. Colone’s lip 114 performs substantially the same function as Appellant’s projections and retains a medicament in place in substantially the same way. There is nothing in the record that suggests to me that retaining a medicament in place with a plurality of projections instead of a solitary lip structure requires more than ordinary skill or achieves unexpected results. To me, subdividing Colone’s lip 114 into a plurality of separate projections is no Appeal 2019-000072 Application 14/550,044 11 more than an obvious and predictable variation of Colone. KSR, 550 U.S. at 417. [T]he results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. Id. at 427. The advance of Appellant’s invention over Colone, in my opinion, amounts to no more than “ordinary” innovation. Id. I would affirm the Examiner’s rejections and, therefore, I respectfully dissent.