BLANCA NASKERDownload PDFPatent Trials and Appeals BoardNov 24, 20212021000795 (P.T.A.B. Nov. 24, 2021) Copy Citation 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. 16/052,498 08/01/2018 BLANCA NASKER NASB101 3260 21658 7590 11/24/2021 SHAVER & SWANSON, LLP P.O. BOX 877 BOISE, ID 83701-0877 EXAMINER BARNETT, DEVIN K ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 11/24/2021 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): bob@shaverswanson.com kinsey@shaverswanson.com swanson@shaverswanson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BLANCA NASKER ____________ Appeal 2021-000795 Application 16/052,498 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHELLE R. OSINSKI, and MICHAEL L. WOODS, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–15. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “[t]he named inventor, Blanca Nasker,” as the real party in interest. Appeal Br. 1. Appeal 2021-000795 Application 16/052,498 2 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. A syringe organizer rack, configured for securing a plurality of needleless syringes configured for orally delivering medicine, with each syringe comprising a tip dispenser, a cap, a plunger comprising a shaft, a medication tube, and a finger grip at the top of the medication tube, said organizer rack comprising: a base comprising a planar section having front side and a back side and comprising a width and a length, a first projection extending from said front side of said base, wherein said first projection comprising a plurality of cap receptacles aligned in a row in said first projection, said cap receptacles configured to receive and secure said caps when attached to said needleless syringes, said plurality of cap receptacles each comprising an opening in one side of said first projection and configured for insertion of a cap from a direction parallel to said width, wherein said first projection encircles said openings of said plurality of cap receptacles such that each of said openings are configured for insertion of each cap, respectively, from a direction parallel to said width; a second projection extending from said front side of said base, wherein said second projection is oriented generally parallel to said first projection, wherein said second projection comprises a plurality of second projection openings configured to receive said medication tubes of said plurality of needleless syringes and said second projection openings configured to retain said medication tubes of said plurality of needleless syringes when each medication tube is received therein respectively, wherein said second projection openings are generally aligned with said cap receptacles in said first projection; a third projection extending from said front side of said base, wherein said third projection is oriented generally parallel to said first projection, wherein said third projection comprises a plurality of third projection openings configured for passage of shaft of a plunger, wherein said third projection is positioned to be proximate to said finger grip of said needleless syringes when said needleless syringes are retained in said rack; Appeal 2021-000795 Application 16/052,498 3 a fourth projection, wherein said fourth projection is configured to prevent an object from depressing said plungers of said needleless syringes when said plungers are extended and when said needleless syringes are retained in said rack with said needleless syringes caps retained in said plurality of cap receptacles in said first projection, said medication tubes are retained in said third projection openings and said plunger of said needleless syringes passing through said third projection openings; wherein cap receptacles and said second projection openings are configured for retaining said plurality of needleless syringes when said base is in an upright position. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Huang US 4,971,200 Nov. 20, 1990 Wu US 5,597,070 Jan. 28, 1997 THE REJECTIONS2 I. Claims 1–8 and 10–15 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Wu. Final Act. 3–10. II. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Wu. Id. at 10–11. III. Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable over Wu and Huang. Id. at 11–13. 2 A rejection of claims 1–14 under 35 U.S.C. § 112(b) as being indefinite (Final Act. 2–3) is moot in view of corrections made by Appellant and entered by the Examiner (Adv. Act. (Apr. 13, 2020), 1). See Appeal Br. 7. Appeal 2021-000795 Application 16/052,498 4 OPINION Rejection I Claims 1, 3–8, and 10–15 Appellant argues claims 1, 3–8, and 10–15 as a group. Appeal Br. 7–10. We select claim 1 as the representative claim, and claims 3–8 and 10–15 stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Wu discloses the structure called for in independent claim 1 (Final Act. 3–7) and determines that it is (i) “capable of being used as a syringe organizer rack” and (ii) “configured for or capable of securing a plurality of needleless syringes” (id. at 3). In addition, the Examiner determines that Wu’s Examiner-identified “first projection” has “cap receptacles (Fig. 2, #74) configured to receive and secure said caps when attached to said needleless syringes” and “configured for insertion of a cap from a direction parallel to said width.” Id. at 4. The Examiner also determines that Wu’s Examiner-identified “second projection” has “openings (Fig. 2, #110) . . . configured to receive said medication tubes of said plurality of needle[le]ss syringes and . . . to retain said medication tubes.” Id. at 5. The Examiner further determines that Wu’s Examiner- identified “third projection” has “openings . . . configured for passage of [a] shaft of a plunger” and the “third projection . . . is positioned to be proximate to said finger grip of said needleless syringes when needleless syringes are retained in said rack.” Id. The Examiner additionally determines that Wu’s Examiner-identified “fourth projection (Fig. 2, #302) . . . is configured to prevent an object from depressing said plungers of said needleless syringes when said plungers are extended and when said needleless syringes are retained in said rack(Fig. 2) with said needleless Appeal 2021-000795 Application 16/052,498 5 syringe caps retained in said plurality of cap receptacles (Fig. 2, #74) in said first projection (Fig. 2, #306) or (Fig. 2 #306 & #26 lower), said medication tubes are retained in said third projection openings . . . and said plunger of said needle[le]ss syringes passing through said third projection openings.” Id. at 5–6. The Examiner also determines that Wu’s “cap receptacles (Fig. 2, #74) and said second projection openings (Fig. 2, #110) . . . are configured for retaining said plurality of needleless syringes when said base (Fig. 2, #22) (back wall) . . . is in an upright position.” Id. at 6. Appellant argues that “the claims include structural limitations not disclosed in Wu” and “Wu has no disclosure describing a rack configured to retain syringes and the respective portions of the syringe.” Appeal Br. 8. More particularly, Appellant argues that “[t]he recitation of the phrase ‘configured to’ requires more than ‘mere capability’” and is instead “synonymous with ‘made to’ and ‘designed to,’” when considering Appellant’s Specification “which repeatedly emphasizes the features of the syringe rack as being specifically designed to accommodate the features of a syringe to support the syringe in a particular orientation.” Id. at 8–9 (citing In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014)). Even assuming arguendo that the recitation of the phrase “configured to” within the claims requires more than “mere capability,” in our view, Wu’s holding container structure (see Wu, Title) is made to or designed to secure a plurality of needleless syringes and be used as a syringe organizer rack, even if such specific functionality was unintentional, because Wu’s holding container structure is designed to secure elongate objects inside a container structure. In other words, the Examiner is not proposing that Wu’s prior art device be used in a way that is contraindicated by Wu and/or for a Appeal 2021-000795 Application 16/052,498 6 different general objective than what it was designed to accomplish. Moreover, the Examiner is not proposing that Wu’s structure be modified in any way so as to secure a plurality of needleless syringes. Wu’s device is designed to secure elongate objects inside a container structure (e.g., through the use of V-shaped ridges, each having a plurality of holes). Appellant has not explained adequately why it is erroneous to find that Wu’s device, without modification, is made to or designed to secure a plurality of needleless syringes so as to be used as a syringe organizer rack in the manner claimed, especially because “the claim does not specify storing or organizing any specific size shape or shape syringes.” Ans. 10. This case is unlike Giannelli because, in Giannelli, the Examiner proposed that the prior art device be used for a different specified objective than what it was designed to accomplish and such objective was contraindicated by the prior art itself. Giannelli, 739 F.3d at 1380 (“Physical capability alone does not render obvious that which is contraindicated.”). In Giannelli, the question before the court was whether the patent application’s claim language reciting a “first handle portion adapted to be moved from a first position to a second position by a pulling force . . . in a rowing machine” was rendered obvious by a prior art chest press machine. Id. at 1379. The Federal Circuit in Giannelli determined that the prior art chest press machine did not have handles adapted to be pulled in a rowing motion because such a motion was contraindicated by the prior art itself, and that the proper inquiry the Board should have made was “whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.” Id. at 1380. Appeal 2021-000795 Application 16/052,498 7 The Schreiber case is significant here. In Schreiber, the Applicant argued to the court that the functional limitations of the claim (e.g., that the top of a popcorn dispensing device “allows several kernels of popped popcorn to pass through at the same time” and that the taper of the top is such “as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted on the container”) distinguished the claimed subject matter from the prior art. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The court stated that “choosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id. The court then explained that: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter, may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). The court determined that the Examiner correctly found that the prior art device inherently was of a size and shape sufficient to perform the recited functions, and found that “the burden shifted to Schreiber to show that the prior art structure did not inherently possess the functionally defined limitations of his claimed apparatus.” Id. Appellant’s contention that Wu’s holding container structure would not be configured for retaining a plurality of needleless syringes or “allow for the filled syringes to be positioned in an organized fashion within the rack” (Appeal Br. 9) is not persuasive. The Examiner reasoned, and we agree, that the claims do not include specific parameters for a needleless Appeal 2021-000795 Application 16/052,498 8 syringe (other than generally that it have a tip dispenser, a cap, a plunger comprising a shaft, a medication tube, and a finger grip at the top of the medication tube), and therefore, Wu’s holding container structure is made to or designed to retain a plurality of needleless syringes and allow the filled syringes to be positioned in an organized fashion, when utilized in connection with particularly dimensioned syringes. See Ans. 9–10 (emphasis omitted) (“Wu is sized appropriately to receive and store syringes in an upright manner similar to [A]ppellant’s invention. . . . [T]he [A]ppellant does not positive[ly] claim the syringes nor does the [A]ppellant positively claim the various portions of the syringes. . . . Wu is structurally capable of storing the syringes described in the claims in the manner described in the claims. It is known that syringes comes in a variety of sizes and diameters.”). In light of this, the burden shifted to Appellant to show that Wu’s holding container structure does not possess the characteristics of being able to retain a plurality of needleless syringes and allow the filled syringes to be positioned in an organized fashion. See Schreiber, 128 F.3d at 1478 (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show that this is not the case). Appellant does not provide persuasive reasoning or evidence as to why Wu’s holding container structure is not made to or designed to retain a plurality of needleless syringes and allow the filled syringes to be positioned in an organized fashion. Appellant first argues that “the openings of Wu would not be able to receive syringes” because “[t]he holes are substantially enclosed, with a connection slit extending between the two holes of each of the hole pairs” and “[a] syringe would not be able to be inserted into the Appeal 2021-000795 Application 16/052,498 9 lamp organizer.” Appeal Br. 9. The Examiner responds that “the rack of Wu is made from paperboard or paper blank which can be flexed or manipulated to receive various portions of syringes.” Ans. 9; see also id. at 13 (“Wu is made of paperboard or a paper blank which is flexible enough to receive medication tubes. For example, the lamp bases . . . of Wu have similar diameters as syringes . . . . The [E]xaminer maintains that the . . . openings . . . are sized appropriately to receive and retain shafts of plungers of syringes therein.). In our view, the Examiner has the better position, and the fact that the holes are substantially enclosed with a connection slit does not explain why Wu’s holding container structure is not made to or designed to hold appropriately dimensioned syringes. Appellant further argues that Wu’s holding container structure is not made or designed to receive a syringe cap, receive a medication tube, and retain a medication tube. Reply Br. 3. Appellant does not provide persuasive reasoning or explanation as to why Wu’s holding container structure is not made or designed to receive these elements in light of the Examiner’s reasoning that it is so made or designed when utilized in connection with appropriately sized syringes. Ans. 9–10, 12–13. Appellant also specifically focuses on the recitation in claim 1 that “the fourth projection is ‘configured to prevent an object from depressing said plungers of said needleless syringes when said plungers are extended . . .’” Reply Br. 3. Appellant takes the position that because “the third and fourth projection (the Examiner refers to this as 302) of Wu are immediately adjacent,” “[a]n extended syringe could not fit within this space.” Id. at 3–4; see also id. at 6 (“Wu would not hold a syringe that is extended, as the space between the third and fourth projections is not sufficient.”). Appellant adds Appeal 2021-000795 Application 16/052,498 10 that “[t]he plunger of a syringe must extend away from the finger grip of the barrel of the syringe in order for the barrel of the syringe to be filled with medicine” and “the ‘third projection is positioned to be proximate to said finger grip of said needleless syringes,’” such that the plunger must be extended between the third and fourth projections. Id. at 6. The Examiner responds that the fourth projection is configured to prevent an object from depressing the plungers of the syringes when the plungers are extended and when the syringes are retained in Wu’s holding container structure. Ans. 13. In our view, the Examiner again has the better position. Even if the plunger must extend away from the finger grip of the barrel in order for the barrel to be filled with medicine as explained by Appellant (Reply Br. 6), there is nothing in the claims that requires the entire volume of the barrel to be filled with medicine so as to, in turn, require the plunger to be fully extended outside the barrel. Because there is at least some amount of space between the Examiner-identified third and fourth projections of Wu (Wu Figs. 2, 3), Wu will accommodate at least some extension of the plunger where only a small portion of the volume of the barrel of the syringe is filled with medicine. In short, Appellant’s argument regarding the fourth projection not being configured to prevent an object from depressing the plungers of the syringes when the plungers are extended (Reply Br. 3–4) is not persuasive because Appellant does not adequately account for a situation in which only a small portion of the volume of the barrels of the syringes are filled with medicine, such that the plungers need only be partially extended a short distance. In such a situation, the third projection is proximate the finger grip of the syringes and the fourth projection is made to or designed to Appeal 2021-000795 Application 16/052,498 11 prevent an object from depressing the plungers of the syringes when the plungers are extended, in accordance with the broad language of claim 1. For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that Wu anticipates claim 1. Accordingly, we sustain the rejection of claim 1, and claims 3–8 and 10–15 falling therewith, under 35 U.S.C. § 102(a)(1) as anticipated by Wu. Claim 2 Claim 2 recites that the “first sides [of the plurality of third projection openings] are configured to impart friction on said finger grips of said needleless syringes to retain said plurality of needleless syringes in said rack.” Appeal Br. 14–15 (Claims App.). The Examiner finds that Wu discloses the structure called for in dependent claim 2 and determines that the “first sides (bottom sides) [of the third projection openings] are configured to impart friction on said finger grips of said needleless syringes to retain said plurality of needleless syringes in said rack.” Final Act. 7 (citing Wu Fig. 2). Appellant argues that “nothing is disclosed in Wu that anticipates ‘wherein [s]aid first sides are configured to impart friction on said finger grips of said needleless syringes to retain said plurality of needleless syringes in said rack.’” Appeal Br. 10. The Examiner “maintains that the first sides (bottom sides) of the third projection openings . . . are capable of imparting friction on finger grips of needless syringes.” Ans. 15. As in connection with claim 1, Wu’s holding container structure is structurally capable of imparting friction on finger grips of needless syringes when utilized in connection with particularly dimensioned syringes and is, consequently, made to or designed to accomplish this function without Appeal 2021-000795 Application 16/052,498 12 modification of Wu’s device or use of Wu’s device in a manner contraindicated by Wu. Appellant does not provide persuasive reasoning or evidence as to why Wu’s holding container structure is not made to or designed to impart friction on finger grips of needleless syringes. Merely arguing that Wu does not explicitly refer to the functionality of imparting friction on finger grips of needleless syringes is not sufficient to rebut the Examiner’s finding that Wu is made to or designed to do so. See Schreiber, 128 F.3d at 1477 (The court stating that although the prior art patent did not address the use of the disclosed structure specifically to dispense popcorn, “the absence of a disclosure relating to function does not defeat the Board’s finding of anticipation” because “[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”). For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s determination that Wu anticipates claim 2. Accordingly, we sustain the rejection of claim 2 under 35 U.S.C. § 102(a)(1) as anticipated by Wu. Rejections II and III Appellant relies on the same arguments and reasoning that we found unpersuasive in connection with independent claim 1 as the basis for seeking reversal of the rejection of claims 8 and 9. Appeal Br. 10–11. Accordingly, for the same reasons as set forth in Rejection I, we also sustain the rejection of claims 8 and 9 under 35 U.S.C. § 103 as unpatentable over Wu alone and in combination with Huang. Appeal 2021-000795 Application 16/052,498 13 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–8, 10–15 102(a)(1) Wu 1–8, 10–15 9 103 Wu 9 8, 9 103 Wu, Huang 8, 9 Overall Outcome 1–15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation