Ex Parte Erickson et alDownload PDFPatent Trial and Appeal BoardApr 14, 201412247684 (P.T.A.B. Apr. 14, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS E. ERICKSON, JAMES J. ERICKSON and THOMAS SAURO ____________ Appeal 2012-000306 Application 12/247,684 Technology Center 3700 ____________ Before NEAL E. ABRAMS, ANNETTE R. REIMERS, and FRANCES L. IPPOLITO, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1,2 1 The Examiner objected to the drawings. See Final Rej. 2-3, Ans. 16-17; see also App. Br. 7-10, Reply Br. 1-3. An objection to the drawings is a matter reviewable by petition and is not within the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967). 2 The Examiner provisionally rejected claims 1, 3-15, 17 and 20-23 under the judicial doctrine of non-statutory obviousness-type double patenting over the claims of co-pending Application No. 12/392,200 (’200 application). See Ans. 15-16. We note that claims 18 and 19 of the instant application have been canceled. See App. Br. 21, Clms. App’x. The claims of the ’200 Appeal 2012-000306 Application 12/247,684 2 Thomas E. Erickson et al. (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3-15, 17 and 20-23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION The claimed invention is directed to a container for the dispensing and safe storage of medical or laboratory sharps. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A multifunctional container for safe storage of sharps such as medical or laboratory sharps comprising: a first compartment and a second compartment and a liquid impermeable partition therebetween, wherein said liquid impermeable partition is affixed to the container along its perimeter; said first compartment sized and configured to contain an initial quantity of unused sharps, said sharps selected from pen needles, hypodermic needles, and syringes with attached hypodermic needles at a first time, wherein the first compartment further comprises a first aperture which may be opened to remove one or more sharp; and application that were relied upon by the Examiner in the rejection are still pending and accordingly, the Examiner’s rejection remains provisional. We note that the Board has flexibility to reach or not reach provisional obviousness-type double patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). In this case, we decline to reach the rejection, because the claims of the ’200 application may be amended prior to the issuance, if any, of the ’200 application. Appeal 2012-000306 Application 12/247,684 3 said second compartment sized and configured to contain a similar quantity of used sharps at a second time, said sharps selected from pen needles, hypodermic needles, and syringes with attached hypodermic needles, wherein the second compartment further comprises a second aperture which has associated therewith a one-way mechanism for conveying a used sharp from the exterior of the multifunctional container to the interior of the second compartment. THE PRIOR ART The Examiner relied upon the following as evidence of unpatentability: Withers US 5,245,117 Sep. 14, 1993 Fontenot Erickson US 2002/0182102 A1 US 2005/0269320 A1 Dec. 5, 2002 Dec. 8, 2005 THE REJECTIONS Claims 1, 3-15, 17 and 20-233 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1, 3-15 and 20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Withers. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Withers and Erickson. Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Withers and Fontenot. 3 Claims 18 and 19, which were previously canceled, were erroneously listed in the Examiner’s statement of this rejection. See Ans. 3 and 5; see also App. Br. 21, Clms. App’x. Appeal 2012-000306 Application 12/247,684 4 OPINION Claims 1, 3-15 and 17-23 Indefiniteness The Examiner has taken the position that the limitations in claim 1 of the “first compartment sized and configured to contain an initial quantity of unused sharps” and the “second compartment sized and configured to contain a similar quantity of used sharps at a second time” are vague and indefinite “since they reference to objects are variable. . . . Applicant’s limitation is modifying the container based upon an unclaimed object, where the size of that object is variable and unknown.” Ans. 5-6. Appellants argue that “[c]laim 1 refers to the size and configuration of a first compartment as it relates to the size of a second compartment and not as an isolated property of the first compartment.” Reply Br. 3. By way of example, Appellants explain that the claim properly equally encompasses both a first multifunctional container in which the first compartment is sized and configured to contain two unused sharps at a first time and the second compartment is sized and configured to contain two used sharps at a second time and a second multifunctional container in which the first compartment is sized and configured to contain one hundred unused sharps at a first time and the second compartment is sized and configured to contain one hundred used sharps at a second time. Reply Br. 3. Thus, Appellants assert, the claim references “a first time” and “a second time” in the defining relationship and “the limitations which apply to the multifunctional container are independent of the size and nature of the used and unused sharps,” expressing them “’as accurate[ly] as the subject matter Appeal 2012-000306 Application 12/247,684 5 permits’ given the subject matter for which protection is sought,” citing Orthokinectics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986). Reply Br. 3. Claim 1 states that the first compartment is “sized and configured to contain an initial quantity of unused sharps . . . selected from pen needles, hypodermic needles, and syringes with attached hypodermic needles at a first time,” and that the second compartment is “sized and configured to contain a similar quantity of used sharps at a second time, the sharps selected from pen needles, hypodermic needles, and syringes with attached hypodermic needles” (emphasis added). Thus, the size and configuration of each of the first and second compartments are separately established based upon the quantity of the sharps deposited therein, as selected from each of the categories of pen needles, hypodermic needles, and syringes with hypodermic needles attached. The number of sharps selected from each category is variable, and is a factor that affects the size and configuration of the compartments because pen needles, hypodermic needles, and syringes with hypodermic needles attached are themselves of different sizes and configurations, which also are variables. Claim 1 does not require that the second compartment be sized and configured to receive as used sharps the same collection of sharps that constituted the initial quantity new sharps that were contained in the first compartment. The only relationship between the size and configuration of the first and second compartments is that that the second compartment is sized and configured to contain a “similar” quantity of used sharps at a second time apparently, but not explicitly, referring to the quantity of new sharps, which established the size and configuration of the first Appeal 2012-000306 Application 12/247,684 6 compartment at a first time. “Similar” is a term of degree which appears only once in Appellants’ Specification to describe the quantity of used sharps in the second compartment (p. 5, l. 18), and the Specification provides no guidance or standard for measuring that degree. We therefore look to the common and ordinary meaning of “similar,” which is “almost the same as something else.”4 Thus, claim 1 defines the quantity of “used” sharps contained in the second compartment as being “almost the same” as the quantity of “new” sharps initially contained in the first compartment, which means it may differ by some unknown and variable amount. “A claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). For the reasons set forth supra, it is our view that this is the case with claim 1, and therefore this rejection of independent claim 1 and dependent claims 3-15 and 17-23 is sustained. Claims 1, 3-15 and 20 Anticipation – Withers Notwithstanding the indefiniteness present in claim 1, the rejection of claim 1 as being anticipated by Withers is in error, on other grounds. Among the findings made by the Examiner in this rejection are that Withers discloses a first compartment 19, a second compartment 20, and “a liquid impermeable partition therebetween (spiral core surrounding 42 [44] in Figure 4, made from plastic), wherein said liquid impermeable partition is affixed to the container along its perimeter (see Figure 2 where the spiral core is affixed to the top 21 and bottom 18).” Ans. 6. 4 See, for example, www.merriam-webster.com/dictionary/similar. Appeal 2012-000306 Application 12/247,684 7 Appellants argue that there is no evidence to support the Examiner’s conclusions that spiral core 44 is liquid impermeable or is affixed to the container along its perimeter. App. Br. 12. Appellants assert that the gap between overlapping portions of spiral core 44 allows free movement of potentially contaminated liquid throughout chamber 40. App. Br. 11. Appellants also point out that in order for spiral core 44 to perform its function of separating unused needle syringes from used syringes that have been returned to the interior of the container, it must be able to expand radially and therefore cannot be affixed to the container along its perimeter. App. Br. 11-12. Absent a teaching to the contrary, the presence of a gap in Withers’ spiral core 44, which would allow contaminated materials to flow from the portion of the container in which the used sharps are deposited into the portion containing the new sharps (Fig. 4), and the fact that the new sharps are individually packaged (col. 2, ll. 25-30) and therefore are protected, support the conclusion that spiral core 44 is not liquid impermeable. There also is no explicit teaching in Withers that spiral core 44 is attached to the container, and Withers’ teaching that “the spiral core member is radially expandable to accept more used needle syringes as the strip pack of syringes is dispensed from about the core member in the syringe storage chamber” (col. 3, ll. 9-12) suggests that spiral member 44 is not attached to the container. Withers therefore fails to anticipate the structure recited in independent claim 1, and this rejection of claim 1 and dependent claims 3-15 and 20 is not sustained. Appeal 2012-000306 Application 12/247,684 8 Claim 17 Obviousness – Withers and Erickson Erickson has been cited for its teaching of including in the container of claim 1 a sliding door in the one-way mechanism associated with the aperture through which used needles are placed in the second compartment of the container. Ans. 13. However, the cited sections of Erickson do not overcome the deficiencies in Withers, and this rejection of dependent claim 17 is not sustained. Claims 21-23 Obviousness – Withers and Fontenot Claims 21- 23 add liquid absorbent material having particular capacities to the container of claim 1, and Fontenot was cited as evidence that this feature was known in the art. Ans. 14. Nevertheless, the cited sections of Fontenot fail to overcome the deficiencies in Withers, and this rejection of dependent claims 21-23 is not sustained. DECISION We decline to reach the merits of the provisional rejection of claims 1, 3-15, 17 and 20-23 on the ground of non-statutory obviousness-type double patenting. The rejection of claims 1, 3-15 and 17 and 20-23 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, is affirmed. The rejection of claims 1, 3-15 and 20 under 35 U.S.C. § 102(b) as being anticipated by Withers is reversed. The rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Withers and Erickson is reversed. Appeal 2012-000306 Application 12/247,684 9 The rejection of claims 21-23 under 35 U.S.C. § 103(a) as being unpatentable over Withers and Fontenot is reversed. A rejection of each of the claims having been affirmed, the decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Klh Copy with citationCopy as parenthetical citation