Ex Parte Shafer et al

Patent Trial and Appeal Board

Jan 24, 2018

14738997 (P.T.A.B. Jan. 24, 2018)

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.
14/738,997 06/15/2015 HELEN ZINREICH SHAFER 109040-220102 3959
110669 7590
Ajay A. Jagtiani
Miles & Stockbridge
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102
01/26/2018 EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
ipdocketing @ milesstockbridge. com
bgoodman @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELEN ZINREICH SHAFER, DAVID ALAN ZINREICH, and
DOUGLAS ABRAHAM CRUMB
(Applicant: IZI MEDICAL PRODUCTS, LLC)1
Appeal 2016-007310
Application 14/738,997
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and SEAN P. O’HANLON,
Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appeal Brief identifies IZI Medical Products as the real party in
interest. Appeal Br. 1.
Appeal 2016-007310
Application 14/738,997
STATEMENT OF THE CASE
IZI Medical Products, LLC (Appellant) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 12—15.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to packaging for retro-reflective
markers for image-guided surgery. Spec. 12. Claim 12, the sole
independent claim, is reproduced below from page 15 (Claims Appendix) of
the Appeal Brief:
12. A package comprising:
a pocket layer including one or more pockets for
receiving one or more retro-reflective marker spheres,
one or more backing layers joined to the pocket layer,
wherein at least one of the one or more backing layers
comprises a rupturable material joined to the pocket layer, and
a retro-reflective marker sphere contained in the package.
REJECTIONS
Claims 12—14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rossner (US 7,874,686 B2, issued Jan. 25, 2011) and
either one of Bae (US 6,523,686 Bl, issued Feb. 25, 2003) and Katzner (US
6,155,423, issued Dec. 5, 2000).
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rossner, Katzner, and Okui (US 5,025,923, issued June
25, 1991).
2 Claims 1—11 are cancelled. Appeal Br. 1.
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Appeal 2016-007310
Application 14/738,997
ANALYSIS
Rejection Based on Rossner and One of Bae and Katzner
The Examiner finds that Rossner discloses a marker sphere, and that
each of Bae and Katzner discloses “a package capable of holding a sphere or
a shaped content.” Final Act. 3. The Examiner reasons that it would have
been obvious to one of ordinary skill in the art “to provide the marker sphere
of [Rossner] in a package similar to either one of Bae and Katzner . . ., as
such a modification would predictably allow packaging of the spherical
marker or markers for ease of collective transport and individual
disposition.” Id.
The Examiner finds that Bae discloses a package having a pocket
layer including pockets (bodies 10) and a rupturable backing layer (cover
20). Id. Similarly, the Examiner finds that Katzner discloses a package
having a pocket layer (blister sheet 13) including pockets (recesses 22) and a
rupturable backing layer (lidding material 12). Id. The Examiner further
finds that Bae discloses a single backing layer, and Katzner discloses a
multilayer backing layer. Id.
Appellant traverses the rejection of claim 12 by arguing, inter alia,
that neither Bae nor Katzner “disclose[s] a feature of ‘one or more backing
layers comprising] a rupturable material joined to the pocket layer.’”3
Appeal Br. 8—9; see also Reply Br. 8.
“It is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
3 We note that claim 12 recites “at least one of the one or more backing
layers comprises a rupturable material joined to the pocket layer.” Appeal
Br. 15 (Claims App.) (emphasis added).
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Appeal 2016-007310
Application 14/738,997
with the specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (citations omitted).
“[T]he PTO must. . . tak[e] into account any definitions presented in the
specification. Words in a claim are to be given their ordinary and
accustomed meaning unless the inventor chose to be his own lexicographer
in the specification.” In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)
(citations omitted).
The Examiner relies on Bae’s cutting lines 12 and Katzner’s lines of
weakness 28 as indicating that Bae’s and Katzner’s backing layers are
rupturable. Final Act. 3 (citing Bae, 3:30-35; Katzner, Fig. 3); Ans.4 3, 6
(citing Bae, 3:30-35). As noted by Appellant (see Appeal Br. 8), the
Specification provides a definition for “rupturable material”:
For purposes of the present invention, the term
“rupturable material” refers to a material used as a backing
layer for a blister pack that may be ruptured by a user pushing
out a retro-reflective marker sphere enclosed in the blister pack
through the backing layer, thereby allowing the retro-reflective
marker sphere to be removed from the blister pack. Examples
of rupturable materials include paper, cardboard, metal foils
such as aluminum, some types of plastics, etc.
Spec. 191. The Examiner’s determination that the mere presence of
perforated lines in the backing layer renders it to be “rupturable material” is
inconsistent with the term as it is defined in the Specification. Although we
note that Bae discloses that “[pjreferably, the cover 20 is fabricated by using
a soft aluminum thin film” (Bae, 3:10—11) and Katzner discloses that lidding
4 We note that reference is to the Answer mailed on June 9, 2016. We
further note that Appellant also refers to this Answer. Reply Br. 1 n.3.
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Appeal 2016-007310
Application 14/738,997
material 12 includes layers formed of “kraft paper,” polyester film, and
aluminum foil (Katzner, 6:52—62), the Examiner has made no finding,
supported by evidence, that any of these backing layers would allow a user
to push a contained object therethrough. Thus, the Examiner has not set
forth properly that the cited references disclose the “at least one of the one or
more backing layers comprises a rupturable material” recitation of claim 12.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion
of obviousness must be supported by facts. Where the legal conclusion is
not supported by facts it cannot stand.”).
Accordingly, we do not sustain the rejection of claim 12, or its
dependent claims 13 and 14. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”).
Rejection Based on Rossner, Katzner, and Okui
Claim 15 is reproduced below from the Claims Appendix of the
Appeal Brief:
The package of claim 14, wherein the upper backing layer
comprises one or more first openings that are aligned with
respective one or more second openings of the one or more
pockets of the pocket layer.
The Examiner finds that Okui discloses “a backing layer adjacent its
content including a first opening (1-1) to receive part of the content.” Final
Act. 3. We understand the Examiner to rely on Okui’s base material 1 to
correspond to the recited backing layer, as holes 1—1 are provided in base
material 1. See Okui, 2:50-52. The Examiner reasons that it would have
been obvious to one of ordinary skill in the art “to provide the backing layer
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Appeal 2016-007310
Application 14/738,997
of Katzner . . . with an inner opening in the manner of Okui as claimed, as
such a modification would predictably locate the content in position.” Final
Act. 3^4.
Appellant traverses, arguing, inter alia, that the Examiner “has not
pointed out what features in Okui are analogous to an ‘upper backing
layer.’” Appeal Br. 12.
Okui discloses a strip of tape including a base material 1 to which a
strip of double-sided adhesive tape 2 is adhered. Okui, 2:47—57. A number
of holes 1—1 are provided in base material 1. Id. Individual small-sized
electronic parts are inserted into holes 1—1, and holes 1—1 are then covered
by adhesive layer 2—2 by coiling the tape around a reel. Id. at 3:27—34.
Thus, as Okui’s base material 1 includes holes into which components are
positioned for storage, base material 1 is similar to the recited pocket layer
and Katzner’s blister sheet 13. Accordingly, the Examiner has not set forth
reasoning, with rational underpinning, as to how Okui’s base material could
properly be considered as a backing layer or why one of ordinary skill in the
art would modify Katzner’s backing layer (lidding material 12) based on
Okui’s base material.
Accordingly, we do not sustain the rejection of claim 15 for this
reason in addition to the reason set forth above regarding parent claim 12.
DECISION
The Examiner’s decision to reject claims 12—15 is reversed.
REVERSED
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