Ex Parte Bailey

Patent Trial and Appeal Board

Feb 27, 2018

13965638 (P.T.A.B. Feb. 27, 2018)

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.
13/965,638 08/13/2013 Ryan A. BAILEY 22553-USPRIP 1496
66061 7590 03/01/2018
WESTROCK COMPANY
ATTN: IP LAW GROUP - PATENTS
501 South 5th Street, 3rd Floor
Richmond, VA 23219-0501
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
docketadministrator @ westrock. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN A. BAILEY
Appeal 2017-000691
Application 13/965,638
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejections2 under 35 U.S.C. § 102(b) of claims 12-15 and 17 as anticipated
by both Albrecht (US 2012/0234701 Al, pub. Sept. 20, 2012) and Clarke
(US 8,191,710 B2, iss. June 5, 2012); and under 35 U.S.C. § 103(a) of claim
16 as unpatentable over both Albrecht and Lee (US 2009/0134054 Al, pub.
1 Appellant is the Applicant, MeadWestvaco Calmar, Inc. According to the
Appeal Brief, WestRock Dispensing Systems,
Inc. is the real party in interest. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner, initially set
forth in the Final Office Action, dated December 3, 2015 (“Final Act.”), and
as modified in the Advisory Action dated March 11, 2016 (“Adv. Act.”).
Appeal 2017-000691
Application 13/965,638
May 28, 2009) and Clarke and Lee.3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 12, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
12. A blister package, comprising:
an outer sleeve, comprising:
a closed rear end;
an open front end; and
a cavity between the closed rear end and open front
end;
a blister receptacle, comprising:
a main body;
at least one blister formed in the main body; and
a supporting mechanism formed contiguously with
a blister proximate to a rear end of the main body;
wherein the supporting mechanism supports the
receptacle in the outer sleeve.
3 Claims 1-11 have been canceled by an Amendment filed November 9,
2015 and claims 18-20 have been cancelled by an Amendment filed
February 29, 2016. In an Advisory Action dated March 11, 2016, the
Examiner withdrew the rejection under 35 U.S.C. § 112, second paragraph,
of claims 12-17 as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventors regard as the
invention.
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Appeal 2017-000691
Application 13/965,638
ANALYSIS
Anticipation of claims 12—15 and 17 by Albrecht
We are persuaded by Appellant’s arguments that the Examiner fails to
establish anticipation of claims 12-15 and 17 by Albrecht. See Appeal Br.
6-8; Reply Br. 2-3.
The Examiner finds that Albrecht anticipates claim 12 by disclosing a
package assembly having all the limitations of the claim, including, inter
alia, “release button (162) (supporting mechanism) formed integrally with a
blister (152) proximate a fixed end (156) (rear end) of the main body,
resulting in the blister and release button (162) (supporting mechanism)
being contiguous.n Final Act. 3 (emphasis added) (citing Albrecht 44,
Figs. 2, 3, 8). The Examiner contends that “the rearmost blister (152) [of
Albrecht] is contiguous with the release button (162) (supporting
mechanism) as they are formed from the same material and next to each
other in sequence.” Id. at 8.
In contesting the rejection of claims 12-15 and 17 as anticipated by
Albrecht, Appellant observes while “the Office wishes to adopt a definition
for ‘contiguous’ as being ‘formed from the same material and next to each
other in sequence,”’ that “this is not the accepted definition of ‘contiguous.’”
Appeal Br. 7. Appellant explains “[t]he use of ‘contiguously’ in claim 12,
the Specification, and the Drawings specifically refers to a structure being in
actual contact with or sharing a boundary of the recited ‘blister,’” so that “‘a
supporting mechanism formed contiguously with a blister’ as recited in
claim 12 requires contact between the blister and the supporting mechanism
as described in the Specification and illustrated in the Drawings.” Id. at 7-8.
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Appeal 2017-000691
Application 13/965,638
In response, the Examiner contends that “no special definition of
‘contiguous’ was provided in the Specification,” referring to “original Figure
8 and paragraph [0045], to show [Appellant’s] intent was for the term to
encompass the broader definition of ‘contiguous’ as ‘next or near in time or
sequence.’” Ans. 5-6. However, the Examiner misreads the Specification.
Thus, we agree with Appellant’s contention that in the Specification, “that
‘contiguous’ refers to a structure being in actual contact with or sharing a
boundary of the recited ‘blister.’” Reply Br. 2.
As Appellant points out, the Specification “clearly states that
‘contiguous’ does not mean ‘next or near in time or sequence,”’ explaining
that “where a ‘supporting mechanism’ and a ‘product-holding blister’ are
‘spaced apart from’ each other, they are ’not contiguous.’ See, Specification
at [0048].” Id. Appellant is correct that “[t]he Specification references
Figure 8 as an example of such configuration where ‘one or more false
blisters ... are formed as a separate false blister that is not contiguous with,
and thus spaced apart from, a rear-most product-holding blister.’”4 Id.
Furthermore, we agree with Appellant that “when the Specification is
read as a whole, it is clear that the structures of Albrecht - ‘rearmost blister
(152)[’] and ‘release buttons (162)’ -. . . do not anticipate the recitations of
claim 12 because structures that are . . . ‘next or near in time or sequence’
are not ‘contiguous’ as recited by claim 12.” Id. at 3. Thus, Albrecht is
4 The Specification discloses that “According to some embodiments of the
invention, the supporting mechanism 80 may comprise one or more false
blisters that are formed as a separate false blister that is not contiguous with,
and thus spaced apart from, a rear-most product-holding blister 78c. For
example a lockable receptacle 70 having a supporting mechanism 80
separate from a blister 78 is illustrated in Figure 8.” See Spec. ^ 48.
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Appeal 2017-000691
Application 13/965,638
devoid of a supporting mechanism formed “contiguous” with a blister, as
recited by claim 12.
[Ujnless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
NetMoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
For the foregoing reasons, we do not sustain the Examiner’s decision
rejecting claims 12-15 and 17 as anticipated by Albrecht.
Anticipation of claims 12—15 and 17 by Clarke
We are persuaded by Appellant’s arguments that the Examiner fails to
establish anticipation of claims 12-15 and 17 by Clarke. See Appeal Br. 9;
Reply Br. 2-3.
The Examiner finds that Clarke anticipates claim 12 by disclosing a
package having all the limitations of the claim, including, inter alia, “second
blisters (44) (supporting mechanism) formed contiguously with one of the
first blisters (42).” Final Act. 5 (emphasis added) (citing Clarke, Figs. 1,
3b).
However, as we have found in not sustaining the rejection of claim 12
as anticipated by Albrecht, “[Appellant’s] definition of ‘contiguous’ is
consistent with the Specification . . . that “‘contiguous’ refers to a stmcture
being in actual contact with or sharing a boundary of the recited ‘blister.’”
Reply Br. 2. We agree with Appellant “it is clear that the stmctures of . . .
Clarke - ‘first blisters 42’ and ‘second blisters 44’ - do not anticipate the
recitations of claim 12 because stmctures that are ‘proximate’ to each other
. . . are not ‘contiguous’ as recited in claim 12.” Reply Br. 3. Thus, we find
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Appeal 2017-000691
Application 13/965,638
that Clarke is devoid of a supporting mechanism formed “contiguous” with a
blister, as recited by claim 12.
For the foregoing reasons, we do not sustain the Examiner’s decision
rejecting claims 12-15 and 17 as anticipated by Clarke.
Obviousness of claim 16 over Albrecht and Lee
Regarding the rejection of claim 16 over Albrecht and Lee, the
Examiner’s rejection is based on the same unsupported findings discussed
above with respect to the disclosure of Albrecht. See Final Act. 7. The
addition of Lee does not remedy the deficiencies of Albrecht, as discussed
supra.
Accordingly, for similar reasons as discussed above for claim 12, we
do not sustain the Examiner’s decision rejecting claim 16 over Albrecht and
Lee.
Obviousness of claim 16 over Clarke and Lee
Regarding the rejection of claim 16 over Clarke and Lee, the
Examiner’s rejection is based on the same unsupported findings discussed
above with respect to the disclosure of Clarke. See Final Act. 7. The
addition of Lee does not remedy the deficiencies of Clarke, as discussed
supra.
Accordingly, for similar reasons as discussed above for claim 12, we
do not sustain the Examiner’s decision rejecting claim 16 over Clarke and
Lee.
DECISION
We REVERSE the Examiner’s rejections.
REVERSED
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