BLANCA NASKER

Patent Trials and Appeals Board

Nov 24, 2021

2021000795 (P.T.A.B. Nov. 24, 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.
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.
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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;
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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.
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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
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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
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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.
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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
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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
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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
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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
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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
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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.

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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