Ex Parte Mermet

Patent Trial and Appeal Board

Dec 20, 2016

12600167 (P.T.A.B. Dec. 20, 2016)

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.
12/600,167 11/13/2009 Emeric Mermet 4684-152689 (P-8172) 6375
32182 7590 12/22/2016
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(The Webb Firm)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07414-1880
EXAMINER
NEW AY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
lorraine_kow alchuk @ bd .com
ip_docket @bd.com
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMERIC MERMET
Appeal 2015-000674
Application 12/600,167
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Emeric Mermet (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1, 3—8,
and 12 as unpatentable over Mish (US 5,086,914; iss. Feb. 11, 1992) and
Gaskell (US 7,938,580 B2; iss. May 10, 2011). Claims 9—11 have been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Examiner rejected claim 2 as unpatentable over Mish, Gaskell, and
Garrill (US 6,315,112 Bl; iss. Nov. 13, 2001) and claim 13 as unpatentable
over Mish, Gaskell, and Pilaro (US 3,768,725; iss. Oct. 30, 1973). See Non-
Final Act. 6—7. Appellant states: “Claims 2 and 13 depend from claim 1. The
rejections of claims 2 and 13 are not on appeal.” Br. 3, note 1. Accordingly,
claims 2 and 13 are not before us for review.
Appeal 2015-000674
Application 12/600,167
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a sterile packing.” Spec. 1:2,
Figs. 1, 4, 5.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. Sterile packing for containing at least one object to be
sterilized by a sterilizing fluid, characterized in that it includes:
a first part made of flexible and airtight material, defining
a first portion and a second portion, said first portion being
separated from said second portion by an area suitable to be
folded; and
at least a second part, made of material porous to the
sterilizing fluid, said second part being connected to said first
portion of said first part so as to form a pocket with said first
portion, said pocket being contiguous with said area suitable to
be folded, said pocket being completely overlapped by said
second part, said second part being dimensioned so that its edges
are, when said second part is connected to said first portion, set
back of the edges of said first portion so as to define side
assembly areas on said first portion,
wherein, said side assembly areas being configured to be
connected to said second portion of said first part with said first
part being folded over said area suitable to be folded and with
heat-sealed areas extending continuously about multiple sides,
but not the entirety, of said pocket and between first and second
locations of said area suitable to be folded such that said pocket
is completely bounded by a combination of i. said heat-sealed
areas extending continuously between said first and second
locations and ii. a portion, which is completely free of heat
sealing, of said area suitable to be folded extending between said
first and second locations.
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Appeal 2015-000674
Application 12/600,167
ANALYSIS
Appellant argues claims 1, 3—8, and 12 as a group. Br. 4-9. We
select claim 1 as representative of the group. Claims 3—8 and 12 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 recites, in relevant part, sterile packing including a pocket,
“said pocket being contiguous with said area suitable to be folded” and
“said pocket [being] completely bounded by a combination of i. said heat-
sealed areas extending continuously between said first and second locations
and ii. a portion, which is completely free of heat sealing, of said area
suitable to be folded extending between said first and second locations.” Br.
11, Claims App. Appellant contends: “As applied by the Examiner, the
‘contiguous’ limitation and the ‘ii’ portion of claim 1 are not achievable with
Mish or Gaskell or a combination thereof.” Id. at 8. In particular, Appellant
contends:
With the hypothetical combination of Mish and Gaskell, as
provided for by the Examiner, the sheets 10, 90 of Figure 14 of
Mish would be formed from one sheet with a fold being defined
therebetween. However, based on Mish and Gaskell, a bonded
portion would be provided inside of the fold with the
Mish/Gaskell structure, consistent with Figure 6F of Gaskell.
Id. According to Appellant, (1) “Gaskell, like Mish, requires an intervening
seal be provided about a pocket - even when a fold is utilized, such as that
shown in Figure 6F of Gaskell” {id.); and (2) “Figure 6F [of Gaskell] is in
the context of Figure 1. Figure 6F is a side view of Figure 1. The Examiner
has in fact relied on Figure 1 of Gaskell. Thus, contrary to the Examiner’s
assertion, the seal 18 of Figure 1 of Gaskell must be taken into
consideration” {id. at 9; see also Final Act. 7—8). Appellant concludes:
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Appeal 2015-000674
Application 12/600,167
[T]he Examiner at best has shown that the sheets 10, 90 of Mish
can be formed from one folded sheet, which is subsequently
bonded on all sides of the cavity 11. The Examiner, however,
has not shown that a folded sheet can eliminate a portion of the
bonding between the bonded sheets 10, 90 of Mish. Even taking
the assertion of interchangeability of two stacked sheets versus a
single folded sheet [of Figures 6E and 6F of Gaskell], the sheets
10, 90 of Mish are fully bonded on all sides of the cavity 11.
Br. 9.
In response to Appellant’s contention regarding the “contiguous”
limitation not being achievable with Mish or Gaskell or a combination
thereof, the Examiner reasonably finds that “the pocket 11 of Mish is
contiguous i.e., in close proximity without actually touching (as defined in
dictionary.com) with the area to be folded (i.e. the area around the fold line
of Gaskell).” Ans. 2. Appellant does not apprise us of error in the
Examiner’s finding.
Further, in response to Appellant’s contention that the Examiner has
not shown that a folded sheet can eliminate a portion of the bonding between
the bonded sheets 10, 90 of Mish, the Examiner correctly notes that
“Gaskell, in Col. 3, lines 43-47, clearly states a folded edge 13 replaces the
seal or top portion 26 in Fig. 6F.”2 Ans. 2. In other words, the Examiner’s
proposed modification of Mish with Gaskell would not result in “the sheets
10, 90 of Mish [being] fully bonded on all sides of the cavity 11,” as asserted
by Appellant. See Br. 9; see also Non-Final Act. 4, 7—8; Ans. 2. Moreover,
2 Gaskell states, “When the first layer 12 and the second layer 14 are formed
from one continuous sheet, the outer seal 18 comprises the first portion 24 and
the second portion 28, and a folded edge 13 (see FIG. 6F) replaces the top
[continuous] portion 26 [of Figure 1]. Gaskell, 3:43-47 (emphasis added),
Figs. 1, 6F.
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Appeal 2015-000674
Application 12/600,167
Appellant acknowledges that Figure 6F of Gaskell is an alternative
embodiment of Figure 1 of Gaskell. See Br. 7; see also Gaskell, 3:6 (“FIG.
6F is a side view of a second embodiment of FIG. 1.”) (emphasis added); id.
at 4:4—14; Non-Final Act. 4, 7. A reference disclosure is not limited only to
its preferred embodiments, but is available for all that it discloses and
suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747,
750 (CCPA 1976). Consequently, based on the foregoing reasons, Appellant
does not provide persuasive evidence or arguments that the Examiner’s
findings and conclusions regarding the combined teachings of Mish and
Gaskell are in error.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
unpatentable over Mish and Gaskell. We further sustain the Examiner’s
rejection of claims 3—8 and 12, which fall with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 3—8, and
12 as unpatentable over Mish and Gaskell.
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
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