Ex Parte Perot

Patent Trial and Appeal Board

Jun 25, 2013

12008024 (P.T.A.B. Jun. 25, 2013)

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.
12/008,024 01/08/2008 Frederic Perot P-7492 / 292846 8459
62648 7590 06/25/2013
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
1 Becton Drive, MC-110
(Cozen, O''Connor)
Franklin Lakes, NJ 07417-1880
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
06/25/2013 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 FREDERIC PEROT
________________

Appeal 2011-006266
Application 12/008,024
Technology Center 3700
________________

Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006266
Application 12/008,024

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-12. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a packaging for products that
is to be decontaminated by radiation.” Spec. para. [0001]. Sole independent
claim 1 is illustrative of the claims on appeal and is reproduced below:
1. Packaging for products, that is to be decontaminated by
radiation, comprising:
at least one tub having an opening and a peripheral zone
defined about said opening;
a cover sheet made of a selectively impervious material
and fixed to the peripheral zone of the tub so as to seal said
opening imperviously; and
at least one screen against electron radiation dimensioned
to substantially cover said products, said screen comprising a
first layer and a second layer, of material fixed on said cover
sheet, said screen being located on top of said cover sheet,
outside of the tub, one of the two layers of said screen has its
shape and/or dimension different from the shape and/or
dimension of the other layer of said screen.

REFERENCE RELIED ON BY THE EXAMINER
Porret US 2006/0054523 A1 Mar. 16, 2006

THE REJECTION ON APPEAL
Claims 1-12 are finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porret. Ans. 3.

Appeal 2011-006266
Application 12/008,024

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ANALYSIS
Appellant argues claims 1-12 together. App. Br. 3-5, Reply Br. 1-5.
We select independent claim 1 for review with dependent claims 2-12
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 is directed to packaging that comprises a tub, a cover sheet
and at least one screen and further includes the limitation of “said screen
being located on top of said cover sheet, outside of the tub.” The Examiner
relies on Porret for disclosing the limitations of claim 1 but acknowledges
that “Porret does not show a screen being located on top of said cover sheet,
outside of the tub.” Ans. 3-4. However, the Examiner finds that it would
have obvious
to provide [a] screen on the top of the cover sheet instead of
under the cover sheet that will make the screen outside of the
tub instead of inside of the tub, since it has been held that a
reversal of the essential working parts i.e., who is on the top
and who is on the bottom, [of] the cover or the sheet of a device
involves only routine skill in the art.
Ans. 4. The Examiner further elaborates that “[w]hen a patent simply
arranges old elements with each performing the same function it had been
known to perform and yields no more than one would expect from such an
arrangement, the combination is obvious.” Ans. 6 citing Sakraida v. AG
Pro, Inc., 425 U.S. 273, 282 (1976).1
Appellant contends that there is “no apparent reason for a person of
ordinary skill in the art to reverse the order of certain parts of packaging
disclosed in Porret to arrive at the present invention.” App. Br. 3, Reply Br.
2. However, Appellant does not persuade us that the reversal of known parts

1See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

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Application 12/008,024

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is not reason enough, on its own, for a finding of obviousness without also
requiring a reason for doing so. See In re Einstein, 46 F.2d 373, 374
(CCPA 1931) where it was stated that “a mere reversal of the essential
working parts of a previously patented device did not constitute invention.”
See also In re Gazda, 219 F.2d 449, 452 (CCPA 1955) holding that the
reverse operation of moving parts would not amount to invention because
the “mere reversal of such movement being an obvious expedient.” In the
present case, the parts are not even moving and, in view of the above
guidance, we agree with the Examiner that a reversal of order of certain
parts of Porret’s packaging is obvious on its own (i.e., an obvious expedient)
without the Examiner also having to provide a separate reason for doing so
as Appellant contends.
Appellant also argues that “[n]owhere does Porret mention any
problem” of its packaging which places the screen inside the tub and under
the cover rather than “on top of said cover sheet, outside of the tub” as
claimed. App. Br. 3, Reply Br. 2-3. Appellant’s contention is likewise not
persuasive since nowhere does Appellant provide justification that
motivation must come from a statement in the prior art of its own
deficiencies. App. Br. 3, Reply Br. 3. Further, we are not persuaded by
Appellant’s contention that because a citation does not indicate how it can
be further modified, that any further modification thereof is non-obvious.
App. Br. 4, Reply Br. 3.
Appellant acknowledges that the lack of an express reason or
motivation “is not fatal” to an obviousness determination but contends that
there is still a need for “an apparent reason for combining prior art
teachings.” Reply Br. 2 citing KSR, 550 U.S. at 401 and 418, see also App.
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Application 12/008,024

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Br. 4, Reply Br. 3-4. We do not dispute the KSR references cited by
Appellant, both with respect to stating a reason to combine known elements
from multiple patents, but this is not the situation before us. Here, the
Examiner is not combining known elements from multiple patents but
instead, the Examiner is reversing/rearranging elements found in a single
reference. Ans. 3-6.
Appellant also contends that placing the screens as claimed (i.e. “on
top of said cover sheet, outside of the tub”) provides critical and unexpected
advantages. App. Br. 4, Reply Br. 4. For example, Appellant contends that
“the packaging of the present invention may be efficiently decontaminated
by being submitted to an electron beam without altering the integrity of the
products it contains.” App. Br. 4, Reply Br. 4. However, Appellant does not
explain how the location of the screen under the cover inside the tub, as in
Porret, is inefficient or permits decontamination but only by altering the
integrity of the products it contains. Appellant further contends that “the
packaging of the invention is particularly easy to handle and to manipulate”
due to the ability to attach the screen to the cover before sealing the tub.
App. Br. 5, Reply Br. 4. Again, Appellant does not explain how Porret’s
packaging with the internal screen is, as a consequence, difficult to handle
and manipulate or that its screen cannot be attached to the cover before the
tub is sealed. Appellant also contends that “[t]he screen can be applied after
a standard packaging process” (App. Br. 5, Reply Br. 4) but does not explain
how Porret’s packaging process is non-standard. Appellant also references
the advantage of being able to employ “special screens in compliance with
the requirement of a customer” (App. Br. 5, Reply Br. 4) but Appellant does
not indicate that Porret’s packaging is incapable of being outfitted with
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special, customer-specific, screens. We further note that Appellant has not
provided any objective evidence or documentation in support of these
allegations which are attorney arguments, and Appellant’s contentions are
not otherwise self-evident from the record. Accordingly, we agree with the
Examiner’s finding that “Appellant has not shown the criticality and
unexpected advantages of locating the screen on the top of the cover outside
of the tub” as claimed. Ans. 7.
Appellant also contends that “the package in accordance with the
present invention yields more than one would expect from reading Porret”
(App. Br. 5), but the comparison is not to what one would expect from
reading Porret but what one would expect from the reversal/rearrangement
of old parts. Appellant does not persuade us that the Examiner’s expectation
is unreasonable or is in error.
Appellant further contends that “the Examiner fails to provide any
support for his conclusion” regarding the lack of criticality and unexpected
advantages over Porret. Reply Br. 5. However, in this case, the burden is
upon Appellant to show error; the PTO satisfies its initial procedural burden
of establishing a prima facie rejection by adequately explaining the
shortcomings it perceives so that the applicant is properly notified and able
to respond. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). We are not
persuaded that Appellant has met ‘the burden of coming forward with
evidence or arguments’ to counter the Examiner’s rejection once the burden
has shifted due to the Examiner’s presentation of a prima facie case of
unpatentability. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Accordingly, and based on the record presented, we are not persuaded
by Appellant’s contentions and as such, we sustain the Examiner’s rejection
of claims 1-12 as being unpatentable over Porret.

DECISION
The Examiner’s rejection of claims 1-12 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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