12785064 (P.T.A.B. May. 17, 2016)

Ex Parte Lockwood

Patent Trial and Appeal BoardMay 17, 2016

12785064 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121785,064 05/21/2010 27939 7590 05/18/2016 Philip ff Bum1s, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 FIRST NAMED INVENTOR Robert Allen Lockwood 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. BPMDL0018RL (10212U) 1084 EXAMINER HAND, MELANIE JO ART UNIT PAPER NUMBER 3778 MAILDATE DELIVERY MODE 05/18/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT ALLEN LOCKWOOD Appeal2014-005094 Application 12/785,064 Technology Center 3700 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and JACQUELINE T. HARLOW, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL 1 This is an appeal under 35 U.S.C. Â§ 134 involving claims2 18-21, 24, 26, and 27 (Br. 2). Examiner entered rejections under 35 U.S.C. Â§102(e) and Â§103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellant identifies the Real Party in Interest as Medline Industries, Inc. (Br. 2). 2 Claims 22 and 23 are objected to as being dependent upon a rejected base claim, but would be allowable in independent form (Final Act. 6; Br. 2), and the rejection of claim 25 has been withdrawn (Ans. 2). Appeal2014-005094 Application 12/785,064 STATEMENT OF THE CASE Appellant's invention relates to "storage containers for medical devices, and more particularly to a stacked storage container for a long, flexible medical implement, such as a catheter, that can be unstacked and arranged in a side-by-side relationship" (Spec. i-f 2). Independent claim 18 is representative and reproduced in the Claims Appendix of Appellant's Brief. Claims 18, 21, 24, and 27 stand rejected under 35 U.S.C. Â§ 102(e)3 as being anticipated by Misra. 4 Claims 19 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Misra. Claim 26 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Misra and Fischer. 5 Anticipation: ISSUE Does the preponderance of the evidence relied upon by Examiner support Examiner's finding that Misra teaches Appellant's claimed invention? FACTUAL FINDINGS (FF) FF 1. Misra suggests "a medical procedure kit for performing an angiographic or other medical procedure. The kit comprises a housing having a central compartment and two side compartments that can be filled 3 We note that the instant Application has a filing date of May 21, 2010 and that Misra was issued more than one year before that filing date. 4 Misra, US 6,012,586, issued Jan. 11, 2000. 5 Fischer, US 5,031,768, issued July 16, 1991. 2 Appeal2014-005094 Application 12/785,064 with supplies and folded over the central compartment to form a sealed kit for shipment and storage" (Misra Abstract; see also Final Act. 3--4). FF 2. Misra's Figure 1 is reproduced below: 22 '1"'1 + 20 .. 1u: : 1'\ ~ i :i 13:/ : < i'4 22 i,:,.,1, .. Â·'I 4Â·'-Â· : : iv.,... ~n â€¢ j ............. f' :1Â· l} i\' ~,,_, _______ -----";'"------Â·Â· ' . 49 26 28 29 62 50 52 54 68 7G 34 Figure 1 shows a medical procedure kit designated generally by the numeral 10 which kit includes an outer housing 11 having a first side compartment 12 with a central divider 13, a central compartment 14 and a second side compartment 16 with a central divider 17, each of which compartments is surrounded by a number of flanges. First side compartment 12 includes a front flange 18, a side flange 20 having a pair of indentations 22, and a rear flange 24; central compartment 14 includes a front flange 26 having a centrally located indentation 28 and notch 29, and a rear flange 30 having a centrally located indentation 32 and notch 33; and second side compartment 16 includes a front flange 34, a rear flange 36 and a side flange 38 having a pair of indentations 40. Second side compartment 16 further includes a first knob 42 extending from the junction of flanges 36 and 38 and a second knob 44 extending from the junction of flanges 34 and 38. (Misra 4:2-18; see also Final Act. 3--4.) 3 Appeal2014-005094 Application 12/785,064 FF 3. Misra suggests that [k]it 10 includes a shelf or tray 50 having a lip 52 which lip includes a front portion 54, a rear portion 56, a first side portion 58 and a second side portion 60. Lip 52 overlies the front and rear flanges of central compartment 14 and land portions 46 and 48 to support shelf 50 over central compartment 14. (Misra 4:32-37; see also Final Act. 3--4.) FF 4. Misra's Figure 4 is reproduced below: ' ' FJ(; 4 , ............................................ ..,, i _1_9 ~ ~ ~' M ~ ~\".:_,,,;,,,,,,,,,,,,\,,,,,,,,,,,,,,,,,,,,,,,,'<"""'~~E),:~~~"""'~""!!!!;;;;;:;:::,,;;;i;'.~T""""':;_,, .... ! . ' â€¢' 26 28 --- / 62 , ... / 14 Figure 4 shows "a front elevational view of the kit shown in FIG. 1 showing one of the side compartments of the tray folded over the central compartment" (Misra 3 :49-51; see also Final Act. 3--4 ). ANALYSIS Appellant's independent claim 18 requires, inter alia, "a first tray having a first tray opening, a first tray base member, and first tray sidewalls," "a second tray having a second tray opening, a second tray base member and second tray sidewalls," and "wherein each of the first tray and the second tray are configured to transition from a two-layer, stacked configuration where the first tray base member is between the first tray 4 Appeal2014-005094 Application 12/785,064 opening and the second tray opening, to a single-layer, side-by-side configuration" (Appellant's claim 18). We recognize, but are not persuaded by Examiner's assertion that Misra discloses lip 52 (see Fig. 1) that extends all the way around the perimeter of compartment 14 and either or both collectively of front and back flanges 34 and 36 of compartment 16 functioning as, respectively, first and second tray base members. There is no claim language that precludes that lip or those flanges from meeting the limitations of the first and second tray base members. As the first tray opening lies below the lip (see Fig. 1 where it is shown that lip 52 has a ledge and overlies the flanges of compartment 14 that correspond to flanges 34 and 36 of compartment 16 [)]. It is the examiner's position that it is the flanges, not the lip, that define the plane of the first tray opening and thus the lip 52 overlying those flanges lies between the first tray opening and second tray opening as seen in Fig. 4 when the trays are in a stacked configuration. ('586, Col. 4, 11. 32--41)[.] (Ans. 3.) Claim 18 recites "a first tray having a first tray opening, a first tray base member, and first tray sidewalls" and "a second tray having a second tray opening, a second tray base member and second tray sidewalls" (emphasis added). Accordingly, Examiner's reasoning that the lips and flanges of Misra's trays are parts of the base members effectively reads these limitations, concerning the tray sidewalls, out of the claim (FF 1--4). In the context of an anticipation rejection, we cannot affirm the rejection of this claim. A prior art reference can only anticipate a claim if it discloses all the claimed limitations "arranged or combined in the same way as in the claim." Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012). Claims 21, 24, and 27 depend from claim 18. Therefore we reverse the rejection of claims 21, 24, and 27 as well. 5 Appeal2014-005094 Application 12/785,064 Obviousness: ISSUE Does the preponderance of the evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS Misra: Based on Misra, Examiner concludes that, at the time of Appellant's invention was made, it would have been obvious to "use a drape and/or towel to maintain the sterile field and protect the surface upon which the patient's buttocks are rested to prevent blood or other fluids from fouling the surface" and "while Misra does not disclose placing the single-layer, side- by-side configuration between a patient's legs atop the one or more layers of wrap, one of ordinary skill in the art would certainly be motivated to do so in the course of using the kit in the manner disclosed by Misra" (Final Act. 5). Examiner, however, failed to establish that Misra makes up for the deficiencies as discussed above. Misra and Fischer: Based on Misra, Examiner concludes that, at the time of Appellant's invention was made, it would have been obvious to modify Misra because "Fischer discloses a medical equipment tray comprising a latch means (retention mechanism), hinged flap 62, that holds the providing a retention mechanism configured to selectively retain the first tray 22 and the second tray 24 in the single layer, side-by-side configuration" (Final Act. 6). Examiner, however, failed to establish that Fischer makes up for the deficiencies of Misra as discussed above. 6 Appeal2014-005094 Application 12/785,064 CONCLUSION OF LAW The preponderance of the evidence relied upon by Examiner fails to support a finding of anticipation and a conclusion of obviousness. The rejection of claims 18, 21, 24, and 27 under 35 U.S.C. Â§ 102(e) as being anticipated by Misra is reversed. The rejection of claims 19 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Misra is reversed. The rejection of claim 26 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Misra and Fischer is reversed. REVERSED 7