Ex Parte Meliniotis et al

Patent Trial and Appeal Board

Mar 31, 2015

11919779 (P.T.A.B. Mar. 31, 2015)

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.
11/919,779 12/26/2007 Andreas Mark Meliniotis 478.1090 5382
23280 7590 04/01/2015
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
REYNOLDS, STEVEN ALAN
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
04/01/2015 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 ANDREAS MARK MELINIOTIS, PETER ALAN EVANS,
STEPHEN WILLIAM EASON, and QUENTIN JOHN HARMER
____________

Appeal 2013-001626
Application 11/919,779
Technology Center 3700
____________

Before JOHN C. KERINS, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andreas Mark Meliniotis et al. (“Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 8–16,
and 32–36, which are all the pending claims. Appeal Br. 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Vectura Deliver
Devices Limited, an English company. Appeal Br. 2.
Appeal 2013-001626
Application 11/919,779

2
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to a blister pack. See, e.g.,
Spec., p. 1, ll. 4–11. Claim 1, reproduced below with disputed limitations
italicized for emphasis, is the sole independent claim appealed and is
representative of the subject matter on appeal.
1. A blister pack comprising a plurality of spaced blister
cavities each configured to receive and store an individual dose
of medicament for inhalation by a user, wherein the pack
includes a base in which the blister cavities are formed and a
substantially planar lid portion sealing the blister cavities, the
base and the lid portion each comprising a laminate, the base
laminate including a foil layer, an outer polymer layer and, a
region of weakness formed by substantially removing a portion
of the outer polymer layer from the foil layer of the base
laminate, by altogether removing a portion of the outer polymer
layer or by thinning a portion of said outer polymer layer of the
base laminate, between each blister cavity, or a number of
blister cavities, without affecting the foil layer of said base
laminate.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Katzner US 6,155,423 Dec. 5, 2000
Givens US 2005/0199521 A1 Sept. 15, 2005

REJECTION
The following rejection is before us for review: Claims 1, 8–16, and
32–36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Katzner and Givens.

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Application 11/919,779

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ANALYSIS
Appellants argue the rejection of claims 1, 8–16, and 32–36 together.
See Appeal Br. 7–14. We select independent claim 1 as the representative
claim to decide the appeal of the rejection of these claims, with dependent
claims 8–16 and 32–36 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
The Examiner correctly found that Katzner discloses a blister pack
substantially as claimed, with the exception of specifics of the region of
weakness. Ans. 2 (citing Katzner, Figs. 1–3, 5). Next, the Examiner also
correctly found that Givens teaches a package with a region of weakness as
claimed, formed by removing at least a portion of outer layers and without
affecting an inner barrier layer. Id. at 2–3 (citing Givens, Figs. 1, 6; ¶ 34).
The Examiner then concluded that, given the teachings of the prior art, it
would have been obvious to a person having ordinary skill in the art at the
time of the invention to have substituted the perforations of Katzner with a
score line extending only though the outer layers (polymer layers 14 and 15
of Katzner), and without affecting the inner barrier layer (foil layer 16 of
Katzner), as taught by Givens, “in order to provide a controlled tear line that
requires little effort by the user while maintaining the moisture vapor
impermeability of the inner barrier layer.” Id. at 3.
Appellants contend that Givens does not teach or suggest a region of
weakness formed without affecting the foil layer of the base laminate. See
Appeal Br. 7–9. This contention is not persuasive because it does not
address the rejection presented, which does not bodily incorporate the
specific layers from Givens into the blister pack of Katzner, but rather
substitutes Givens’s teaching of a score line for the perforation in Katzner’s
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Application 11/919,779

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laminate structure, as discussed supra. See also Ans. 5–6. In particular, the
rejection relies on Givens for teaching a region of weakness formed without
affecting an inner barrier layer (10a′′′′ of Givens), which corresponds to the
unaffected foil layer (16 of Katzner) in the combination of teachings applied
in the rejection. See id. at 2–3, 5–6. As the Examiner correctly notes, “one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.” Id. at 6 (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986)).
Moreover, as the Examiner discusses in detail, where a claim recites
“a structure already known in the prior art [here, the laminate structure of the
blister pack in Katzner] that is altered by the mere substitution of one
element for another known in the field [here, the substitution of a score line
for a perforation], the combination must do more than yield a predictable
result.” Ans. 6 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (internal citation omitted)). Appellants do not provide any factual
evidence or persuasive technical reasoning to explain why the combination
as applied in the rejection would not be predictable to one of ordinary skill
in the art.
Appellants argue that there is no motivation to combine Katzner and
Givens (see Appeal Br. 9–11), and also argue that the Examiner does not
explain why a person of ordinary skill in the art would have combined the
teachings of Katzner and Givens (see Appeal Br. 13–14). We are not
persuaded by Appellants’ arguments. In this case, the Examiner articulated
reasoning based on rational underpinnings in support of the legal conclusion
of obviousness applied in the rejection of record, as discussed supra. See
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Application 11/919,779

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Ans. 2–3; KSR Int’l Co., 550 U.S. at 418. It is well established that the
reason to combine teachings need not necessarily come directly from the
cited references themselves. See KSR Int’l Co., 550 U.S. at 420.
Also, as the Examiner correctly notes, “the reason or motivation to
modify [a] reference may often suggest what the inventor has done, but for a
different purpose or to solve a different problem,” as “[i]t is not necessary
that the prior art suggest the combination to achieve the same advantage or
result discovered by [an] applicant.” Ans. 11 (citing In re Kahn, 441 F.3d
977, 987 (Fed. Cir. 2006)); see also KSR Int’l Co., 550 U.S. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). Here, the Examiner further bolsters the reasoning provided,
explaining in response that because Givens teaches “the advantage of
providing a controlled tear,” and whereas “[t]he conventional perforation
lines of Katzner may not always result in a clean straight tear since the
material between the perforation slits may result in tearing the blister pack
along non-perforated portions if the user attempts to tear too quickly,” then a
“constant score line as taught by Givens will ensure a more controlled tear.”
Ans. 7; see id. at 10–11; see also Givens, ¶ 34.
Appellants allege that Givens is in “a very different field of invention,
designed to suit a very different purpose and problem,” than that of Katzner.
Appeal Br. 10; id. at 13. We disagree, as this allegation stems from an
overly narrow reading of Givens, which may be properly relied upon for all
that it teaches one of ordinary skill in the art. Moreover, we agree with the
Examiner’s reasoned determination that Katzner and Givens “are considered
to be in the same field of invention since they are both directed toward
laminate packages for protecting contents, wherein the packages have lines
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Application 11/919,779

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of weakness for removing one portion of the package from another without
compromising the integrity of the content-accommodating cavity.”
Ans. 7–8; see also id. at 10.
Appellants also allege that the Examiner has improperly used the
present invention to define a problem that the invention solves, such that the
rejection must be an exercise of impermissible hindsight. See Appeal
Br. 12–13. This allegation is not persuasive because it rests on a premise set
forth by Appellants, namely “that solutions to a problem cannot be obvious
to try if the problem itself is not known or obvious” (id. at 12), that is
unrelated to the basis of the rejection as presented. Specifically, the
rejection is not based on an “obvious to try” rationale. See Ans. 2–3.
Moreover, Appellants do not identify any knowledge that the Examiner
relied upon that was gleaned only from Appellants’ disclosure and that was
not otherwise within the level of ordinary skill at the time of the invention.
See id. at 8–9 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)).
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning for the
conclusion of obviousness. We note that any arguments not specifically
addressed in detail herein have been thoroughly considered by the panel but
are not persuasive for the reasons discussed supra and those well expressed
in the Examiner’s Answer.
Accordingly, for the foregoing reasons, we sustain the rejection of
independent claim 1, and of claims 8–16 and 32–36 falling with claim 1,
under 35 U.S.C. § 103(a) as being unpatentable over Katzner and Givens.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 8–16, and
32–36 under 35 U.S.C. § 103(a) as being unpatentable over Katzner and
Givens.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED