Ex Parte Intini

Board of Patent Appeals and Interferences

Aug 9, 2011

10439948 (B.P.A.I. Aug. 9, 2011)

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.
10/439,948 05/16/2003 Thomas D. Intini 1901-15A 8917
7590 08/10/2011
Eric Fincham
316 Knowlton Road
Lac Brome, QC J0E 1V0
CANADA
EXAMINER
YU, MICKEY
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
08/10/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS D. INTINI
____________________

Appeal 2009-009662
Application 10/439,948
Technology Center 3700
____________________

Before WILLIAM F. PATE III, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas D. Intini (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-7. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

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THE INVENTION
Appellant’s claimed invention pertains to packaging that is suitable
for medicants and that is child resistant while also being senior-friendly.
Spec. 1. Claim 1, reproduced below with emphasis added, is representative
of the subject matter on appeal.
1, A child-resistant container comprising:
a bottom member adapted to receive and contain at least
one item to be packaged, said bottom member having a base
and at least one wall extending upwardly therefrom;
a cover member;
first, second and third cooperative locking devices on
both said cover member and said bottom member;
said first, second and third locking devices being
operative such that when said cover member is in a closed
position with respect to the bottom member, said locking
devices function to maintain the cover member and bottom
member in a locked relationship;
said first locking device permitting limited movement
between the cover member and bottom member while
maintaining a locking relationship such that the second and
third locking devices may be moved to an unlocked position
while said first locking device is locked; and
said second and third locking devices each further
including secondary locking means to prevent opening of the
container when only one of said second and third locking
devices is opened.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Intini (US 5,346,069, issued Sept. 13, 1994) and Official
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Notice (characterized by the Examiner in the Answer as “Admitted Prior
Art”); and
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Intini, Rebne (US 5,019,125, issued May 28, 1991) and
Official Notice.

OPINION
Independent claim 1 calls for three locking devices with the second
and third locking devices “each further including secondary locking means
….” Claim 7, the only other independent claim on appeal, similarly recites
“said second and third locking devices each including secondary locking
means ….” Appellant’s Specification describes an embodiment with two
side locking devices each in the form of a hook-type member on the
container’s bottom member that is received in an aperture in the cover
member. Spec. 6-7; figs. 9a, 9b. Also disclosed is “a second locking
projection 94” located at the cover’s aperture and which seats within a slot
86 in a horizontal portion of the hook-type member on the side of the
container bottom. Spec. 7; figs. 4, 5, 9a, 9b. According to Appellant:
Due to these locking projections, it becomes extremely difficult
to open only one side and have the other side disengaged.
Rather, the secondary locking effect makes the same very
difficult to achieve.
Spec. 7.
The Examiner found that the Intini reference substantially discloses
the claimed container except for the secondary locking means. Ans. 5; see
also id. at 4 (“Intini does not disclose a secondary tab member.”) The
Examiner further found that “it is notoriously known in the container art to
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provide a protrusion on a tab to engage a slot for securement of one member
to another.” Id. at 4, 5. The Examiner maintains that this finding constitutes
Admitted Prior Art as an untraversed taking of Official Notice. Ans. 3; Final
Rej. at 3. The Examiner reasons that “it would have been obvious in view of
Admitted Prior Art to provide a secondary tab member to engage a slot in a
wall ….” Ans. 4; see id. at 5-6. Appellant argues that “consideration has
not been given to the particular functioning of the present arrangement in
that a mere recitation that such protrusions are well known in the art does
not take into consideration the synergistic functioning of the locking
arrangement.” App. Br. 8.
It is not clear to us how the Examiner is proposing to modify Intini’s
container with the structure of the Official Notice finding. See, e.g., Ans. 3,
6 (finding that Intini’s second and third locking devices are elements 56 and
56ʹ, but also finding that the secondary locking means on the second and
third locking devices “can technically be” the very elements that comprise
those second and third locking devices (tab 58 and aperture 64) (see Intini,
col. 6, ll. 6-20; figs. 3, 5a)); see also Ans. 7 (referring generally to “a
protrusion or a secondary tab member formed on the first tab member to
engage a slot”). Therefore, even if Appellant has admitted that the
protrusion/slot structure was known in the art, the Examiner has failed to
adequately articulate how or why one would have combined that structure
specifically with Intini’s two side locking devices 56 and 56ʹ to arrive at the
claimed subject matter. Cf. Ans. 7 (the Examiner asserting that there is a
motivation to modify Intini’s container because, without a secondary locking
means, the container could easily be opened by a child, which is an assertion
contrary to Intini’s statement that “[t]he present invention provides a child
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resistant container ….” Abstr.) Without an articulated rationale based on
rational underpinning for modifying the reference, the Examiner’s rejection
appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007)) (“rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). As such, we cannot sustain the rejection of
claims 1 through 6 as unpatentable over Intini in view of Official Notice or
the rejection of claim 7 over Intini, Official Notice, and Rebne (relied on for
the teaching of a rupturable foil layer, Ans. 5).

DECISION
The decision of the Examiner to reject claims 1-7 is reversed.

REVERSED

mls