Ex Parte Hawkes et alDownload PDFPatent Trial and Appeal BoardMay 22, 201814445561 (P.T.A.B. May. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/445,561 07/29/2014 26812 7590 05/24/2018 HA YES SOLOWAY P.C. 175 CANAL STREET MANCHESTER, NH 03101 FIRST NAMED INVENTOR Jason Hawkes 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SYMM 13.04 1394 EXAMINER ALLEN, JEFFREY R ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 05/24/2018 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): TSULLIV AN@HA YES-SOLOWAY.COM rchriston@hayes-soloway.com KStevens@hayes-soloway.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON HAWKES and ROBERT ZEUGE 1 Appeal2017-008466 Application 14/445,561 Technology Center 3700 Before JAMES P. CALVE, BENJAMIN D. M. WOOD, and ANNETTE R. REIMERS, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Symmetry Medical Manufacturing, Inc. is identified as the real party in interest and also is the applicant pursuant to 37 C.F.R. § 1.46. See Appeal Br. 3. Appeal2017-008466 Application 14/445,561 CLAIMED SUBJECT MATTER Claims 1, 16, and 20 are independent. Claim 1 is reproduced below. 1. A sterilization container comprising: a floor; a first sidewall connected to a first side of the floor and a second sidewall connected to a second side of the floor, wherein the first side is opposite the second side, wherein each of the first and second sidewalls has an elongated blind cavity formed along a length thereof; a first hinge positioned partially within the blind cavity of the first sidewall, and a second hinge positioned partially within the blind cavity of the second sidewall, wherein each of the first and second hinges are movable along a length of the first and second blind cavities, respectively; and a lid connected between the first and second hinges, wherein the lid is positionable between at least a first position substantially parallel with the floor on a third side of the floor, and a second position substantially parallel with the floor on a fourth side of the floor, wherein the third side is substantially opposite the fourth side, wherein the lid and the floor each define a plurality of holes adapted to allow a sterilization fluid to pass therethrough. Appeal Br. 22 (Claims App'x). REJECTIONS Claims 1, 2, 11, 12, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai (US 5,732,820, iss. May 31, 1998) and Youlden (US 3,342,343, iss. Sept. 19, 1967). Claims 3, 4, 7-10, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai, Youlden, and Frye (US 2,487,644, iss. Nov. 8, 1949). 2 Appeal2017-008466 Application 14/445,561 Claims 5, 6, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai, Y oulden, and Rhein (US 6,264,027 B 1, iss. July 24, 2001). Claims 13 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsai, Youlden, and Cross (US 2009/0236257 Al, pub. Sept. 24, 2009). ANALYSIS Claims 1, 2, 11, 12, 15, 16, 18, and 19 Rejected Over Tsai and Youlden Appellants argue claims 1, 2, 11, 12, 15, 16, 18, and 19 as a group. Appeal Br. 9--16. We select claim 1 as representative, and claims 2, 11, 12, 15, 16, 18, and 19 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner relies on Tsai to disclose sterilization container 1 with a floor and lid 2, as recited in claim 1, but acknowledges that Tsai's lid 2 and floor lack a plurality of holes. Final Act. 2-3. (citing Tsai, 2: 17-22, Figs. 1, 3, 4). The Examiner relies on Youlden to teach a storage container having holes in the walls. Id. (citing Youlden, Figs. 1-3). The Examiner determines it would have been obvious to place holes in the lid and floor of Tsai to make the container lighter and allow fluid to exit the container. Id. at 4. Appellants argue there is no motivation to modify Tsai's storage box with Youlden's openings 56 because floss sticks 3 would slide through the openings preventing cover 2 from sliding along grooves 11 to open/close the storage box. Appeal Br. 11. Appellants argue that the sanitary condition of floss sticks 3 is important to maintain for restaurant patrons who use floss sticks 3, and adding openings to Tsai's body I/sliding cover 2 would provide large holes for unsanitary matter to enter Tsai's storage box. Id. at 11-12. 3 Appeal2017-008466 Application 14/445,561 We agree with the Examiner that placing Youlden's openings 56 in cover 2 and body 1 of Tsai, as claimed, would not allow floss sticks 3 to slide through those openings. Ans. 8. The Examiner places openings on the lid (sliding cover 2) and floor opposite thereto, as claimed, rather than on side walls 20 or ends 15 of box 1. Final Act. 4. Thus, we are not persuaded that floss sticks 3 would pass through openings in body 1 or sliding cover 2 or interfere with cover 2 sliding on side walls 20, as Appellants allege. See Reply Br. 7-8; Appeal Br. 11. The Examiner reasons correctly that floss sticks 3 are much longer than the openings placed in Tsai's box 1 so adding Youlden's openings 56 to Tsai's lid and floor would not disrupt operation of Tsai's box 1. Ans. 8. For example, the Examiner does not propose to place holes in side walls 20 or groove 11 of Tsai's box 1, so we are not persuaded that floss sticks 3 would obstruct movement of sliding cover 2 in this regard. See Final Act. 4. Tsai also discloses top wall 12 as containing the ends of floss sticks 3, so we are not persuaded that the ends would protrude through top wall 12, sliding cover 2, or floor of Tsai as Appellants allege. A skilled artisan, who is a person of ordinary creativity and not an automaton, can add holes to the cover and floor to allow circulation without impeding the box's operation. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Nor are we persuaded that placing openings 56 on Tsai's cover 2 and body 1 would unduly allow unsanitary matter to enter Tsai's storage box or undermine the sanitary conditions of floss sticks 3 once the storage box is removed from its packaging and opened for use as shown in Figures 5 and 6 of Tsai. Tsai, 1 :28--42. As the Examiner correctly finds (Ans. 9), the large top opening 13 in box body 1 already exposes floss sticks 3 to contaminants when the box is opened and/or floss sticks 3 are removed. Id. at 2:40-57. 4 Appeal2017-008466 Application 14/445,561 We also agree with the Examiner that "[a] sterilization container" in the preamble of claim 1 is an intended use that does not distinguish over the modified storage box of Tsai, which includes all the claimed features of the sterilization container. See Ans. 9--10. Appellants do not cite any claimed features of the sterilization container that define over Tsai's storage box with Y oulden' s openings. Appeal Br. 13. The Specification discloses that the "sterilization process may sterilize the instruments with a sterilization material, such as water, steam, or another well-known sterilization material that penetrates through the container 10 via a plurality of holes to sterilize the instruments contained inside." Spec. 5: 10-13; Appeal Br. 13 (citing id. and arguing that Tsai and Youlden are not configured or intended to provide such capabilities). In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Even if "a sterilization container" imparts some limitation to claim 1, e.g., holes "to allow a sterilization fluid to pass therethrough," the Examiner has a sound basis for finding the modified Tsai storage box inherently has such capability because it includes all of the structure in claim 1, including holes. Ans. 9-10; see In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (patent applicants may recite features of an apparatus either structurally or functionally; however, if the PTO has a reason to believe that the prior art possesses that feature as an inherent characteristic, it has the authority to require the applicant to prove that the subject matter does not possess the claimed functional feature). Appellants do not explain why the modified Tsai storage box with Youlden's openings 56 is not be configured to serve as a sterilization container. See Appeal Br. 13; Reply Br. 5-6. It is well-settled that a new use of an apparatus does not distinguish over the prior art with the same claimed structure. See Schreiber, 128 F.3d at 1477. 5 Appeal2017-008466 Application 14/445,561 The Examiner reasons that a skilled artisan would have added holes 5 6 of Y oulden to Tsai' s box body 1 to lighten the container's weight and to allow fluid to exit the container. Final Act. 4; Ans. 9. This determination is supported by a rational underpinning based on Youlden's teachings that plural openings 56 permit air flow through a container. Youlden, 2:42--46. Holes also make the container lighter. As our reviewing court has held, Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the 'improvement' is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). This rationale does not presume, nor does it require, a prior art product with deficiencies in some regard, as Appellants argue. See Reply Br. 9; In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) ("The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables"). For all the foregoing reasons, we sustain the rejection of claims 1, 2, 11, 12, 15, 16, 18, and 19. Claims 3, 4, 7-10, and 14 Rejected Over Tsai, Youlden, and Frye Appellants argue that the rejection of claims 3, 4, 7-10, and 14 should be reversed because they depend from claim 1, and Frye does not cure the deficiencies of Tsai and Youlden as to claim 1. Appeal Br. 20. Because we sustain the rejection of claim 1, this argument is not persuasive, and we also sustain the rejection of claims 3, 4, 7-10, and 14. 6 Appeal2017-008466 Application 14/445,561 Claims 5, 6, and 17 Rejected Over Tsai, Youlden, and Rhein Appellants argue that the rejection of claims 5, 6, and 17 should be reversed because they depend from claim 1 or claim 16, and Rhein does not cure the deficiencies of Tsai and Y oulden as to claims 1 and 16. Appeal Br. 20. Because we sustain the rejection of claims 1 and 16, this argument is not persuasive, and we also sustain the rejection of claims 5, 6, and 17. Claims 13 and 20 Rejected Over Tsai, Youlden, and Cross Independent claim 20 recites a sterilization container with the features of claim 1 and "a tray insert removably connectable between the first and the second sidewalls." Appeal Br. 25-26 (Claims App'x). The Examiner relies on Cross to teach a tray insert and reasons that it would have been obvious to manufacture the container of Tsai with insert taught by Cross "in order to strengthen the container and protect contents of the container." Final Act. 7. The Examiner reasons "[i]t is well known in the art that applying additional layers to a container strengthens that container." Ans. 11. Appellants argue persuasively that such a modification would impede access to floss sticks 3 via top opening 13 in Tsai's box body 1 if insert 13 of Cross were connected between the first and second sidewalls of Tsai's body along a middle portion of the sidewalls, as claimed. Appeal Br. 18; Reply Br. 12. The Examiner is correct that Cross's insert 13 allows access to the contents of the dispenser and is added to the dispenser to enhance access to the contents of the dispenser. Ans. 10-11. In this regard, Cross teaches that optional insert 13 "holds the contents in place, such as in the event the cover is disengaged" and is placed beneath cover 12 "thereby preventing the depression of the cover onto the base." Cross i-f 29, Fig. 1. 7 Appeal2017-008466 Application 14/445,561 The Examiner also is correct that Cross's insert has openings so items in a container can be accessed. Ans. 10. In this regard, Cross teaches insert 13 includes aperture 34, which aligns with aperture 20 in base 11, to permit items to be dispensed therethrough. Cross i-f 30. However, Appellants are correct that adding such an insert to Tsai to strengthen the container and protect the contents therein, as taught by Cross, would impede access to Tsai's floss sticks 3 and undermine the purpose of Tsai's storage box. Appeal Br. 18; Reply Br. 12. This is so because Cross teaches to place insert 13 beneath cover 12 to prevent depression of cover 12 when a user depresses cover 12 onto base 11 to dispense items through the aperture in base 11. Placing such an insert beneath Tsai's sliding cover 2 to retain the contents of the container, as taught by Cross, would obstruct top opening 13 of Tsai's box body 1 through which floss sticks 3 are dispensed. In contrast to Tsai's configuration, Cross can place insert 13 beneath cover 12 and completely across the opening to base 11, as shown in Figure 1 of Cross, because insert 13 and base 11 include respective apertures 34, 20 at an end/side wall through which items are dispensed. In other words, Cross does not dispense items through the large opening in base 11. Instead, Cross dispenses items through front wall 16. However, Tsai dispenses and refills floss sticks 3 via top opening 13 of box body 1, unlike Cross. Tsai, 2:1-11. Therefore, adding an insert, as taught by Cross, to strengthen sliding cover 2 and retain floss sticks 3 in boxy body 1 would cover or interfere with the use of top opening 13 contrary to Tsai' s design. The Examiner does not propose to alter the design of Tsai to dispense floss sticks 3 through another opening. Ans. 1 O; Final Act. 7. Even if an insert strengthens Tsai, it still undermines the very purpose of Tsai to dispense floss sticks 3. 8 Appeal2017-008466 Application 14/445,561 Therefore, we are not persuaded that a skilled artisan would have been motivated to connect an insert of Cross between the sidewalls ofTsai's box body 1, as claimed, in order to strengthen box body 1 when doing so would cover top opening 13 of box body 1 and prevent access to the contents of the container. See Appeal Br. 18. Thus, we do not sustain the rejection of claim 20 or dependent claim 13, which recites a similar "membrane tray insert" that is "positioned between the first and second sidewalls" and "connected to each of the first and second sidewalls." Id. at 24 (Claims App'x). DECISION We affirm the rejections of claims 1-12 and 14--19, and we reverse the rejection of claims 13 and 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation