Ex Parte Shingle

Board of Patent Appeals and Interferences

Feb 23, 2009

10682608 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN M. SHINGLE
____________

Appeal 2008-2430
Application 10/682,608
Technology Center 3700
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Decided:1 February 23, 2009
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Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2430
Application 10/682,608

2
John M. Shingle (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 28-37, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b) (2002). We reverse.
The Appellant’s claimed invention is directed to a closure that can be
modified by a user from child-resistant to non-child-resistant operation.
Spec. 1:4-5.
The Appellant seeks review of the Examiner’s rejection of claims 28-
37 under 35 U.S.C. § 102(b) as being anticipated by each of: U.S. Patent
No. 3,504,818 to Crisci; U.S. Patent No. 4,534,480 to Santostasi; U.S. Patent
No. 4,609,115 to Moore; U.S. Patent No. 4,771,904 to Perne; U.S. Patent
No. 4,930,647 to Dutt; U.S. Patent No. 5,027,964 to Banich; and U.S. Patent
No. 5,111,947 to Patterson.
The Examiner found that each of the cited references discloses the
structure of claims 28-32 and inherently discloses the method of claims
33-37. Ans. 3-5. In particular, the Examiner found the recitations of a
“child-resistant package” and a “child-resistant mode of operation” are
statements of intended use and do not patentably distinguish the claimed
invention from the prior art. Ans. 5.
The Appellant contends that each of the prior art references discloses
a tamper-evident closure and does not disclose a child-resistant package
capable of operating in a child-resistant mode of operation as claimed. App.
Br. 8, 13-14. The Appellant further contends that because the closures of the
prior art cannot be removed from the container without first removing the
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Application 10/682,608

3
tamper band, a user could not remove a portion of the skirt with the closure
removed from the container as claimed. App. Br. 13, 15.
The issue presented by this appeal is whether the Appellant has shown
the Examiner erred in determining that the structure disclosed in each of the
cited references is inherently capable of operating as a child-resistant
package in a child-resistant mode of operation and is constructed such that
the user could remove a portion of the skirt after the closure has been
removed from the container.
Independent claim 28 is directed to a child-resistant package that
includes “a container having a finish with a first engagement element, and a
closure on said finish having a skirt with a second engagement element
engagable with said first engagement element in a child-resistant mode of
operation.” Independent claim 33 is directed to a method including
“providing a child-resistant package that includes a container having a finish
with a first engagement element, and a closure on said finish, said closure
including a shell of one-piece integrally molded plastic construction having
a skirt with a second engagement element engagable with said first
engagement element in a child-resistant mode of operation.”
The term “child-resistant” as used in the pending claims is a term of
art having a particular meaning to one of ordinary skill. A package is
considered “child-resistant” if it cannot be opened in a ten minute period by
80 percent of 42- to 51-month old children during testing. ASTM
Standardization News 38 (February 2004) and 16 C.F.R. §§ 1700.15(b)(1)
and 1700.20(a)(2)(ii).
Appeal 2008-2430
Application 10/682,608

4
The Examiner determined that the structures of the prior art tamper-
evident closures are capable of performing the function of a child-resistant
closure because these tamper-evident closures resist opening by a child.
Ans. 5. We fail to see, however, how the tamper-evident closures of the
prior art satisfy the requirements of a “child-resistant” package as that term
is understood in the art. For example, in Patterson, to remove the cap 10,
one must merely grasp the tab 26 and pull it outwardly and around the neck
11 to sever the strip 22 from the skirt portion 16 and thereby allow the skirt
to be unthreaded from the container neck 11. Patterson, col. 3, ll. 58-63.
Likewise, each of Perne, Santostasi, Moore, Dutt, Crisci, and Banich
discloses a tamper evident closure that uses a ratchet and pawl mechanism to
automatically break material bridges between a tamper band and the skirt of
the closure during normal unscrewing of the closure. Perne, col. 3, ll. 14-19;
Santostasi, col. 7, ll. 38-47; Moore, col. 2, ll. 49-53; Dutt, col. 4, l. 63 – col.
5, l. 7; Crisci, col. 3, ll. 26-34; and Banich, col. 3, ll. 43-50. All of these
tamper-evident closures are designed to be opened with ease by the user.
See e.g., Moore, col. 3, ll. 51-53. The goal of these closures is to provide a
clear indication of when a package has been previously opened, and not to
prevent or deter a child from opening the package. As such, based on a
preponderance of the evidence, we do not find that the closures of the cited
prior art are inherently capable of functioning in a child-resistant mode of
operation as claimed.
Independent claim 28 also recites that a portion of the skirt is
selectively permanently removable from the closure shell “with said closure
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Application 10/682,608

5
removed from said container.” Independent claim 33 similarly recites the
step of permanently removing a portion of the skirt from the closure “with
said closure removed from said container.” The tamper-evident closures of
the prior art cannot meet these limitations of the claims because the tamper
evident closures of the prior art necessarily require removal of the tamper
band from the remainder of the closure shell prior to removal of the closure
from the container. See e.g., Patterson, col. 4, ll. 22-26; Perne, col. 1, ll. 26-
29; Santostasi, col. 4, ll. 64-65; Moore, col. 3, ll. 15-20; Dutt, col. 5, ll. 1-7;
Crisci, col. 1, ll. 17-20; and Banich, col. 3, ll. 43-50.
As such, the Appellant has shown the Examiner erred in rejecting
claims 28-37 under 35 U.S.C. § 102(b) as anticipated by each of Crisci,
Santostasi, Moore, Perne, Dutt, Banich, and Patterson.
The decision of the Examiner to reject claims 28-37 is reversed.

REVERSED

Vsh

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