Ex parte WEINSTEIN

Board of Patent Appeals and Interferences

May 27, 1998

08047994 (B.P.A.I. May. 27, 1998)

Application for patent filed April 19, 1993. According 1
to appellant, the application is a continuation-in-part of
Application 08/006,528, filed January 21, 1993, now U.S. Patent
5,356,010, issued October 18, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JACK WEINSTEIN

_____________
Appeal No. 95-1747
Application 08/047,9941
______________
ON BRIEF
_______________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 95-1747
Application 08/047,994
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 9 through 18, which are all of the claims
remaining in this application. Claims 1 through 8 have been
canceled.
Appellant's invention relates to an opening device for
assisting a user in more easily opening a soft pack (e.g., a
blister package) of individually segregated unit dosages of
medications. A representative "soft pack" of medications is seen
in Figure 4 of appellant's drawings and is designated by
reference character (23) therein. As explained on pages 9-10 of
the specification,
[t]he opener or soft pack puncturing
mechanism has a base segment and a top
segment which are hingedly connected to one
another. The base segment has an orifice
located thereon which is of sufficient size
to receive a unit dosage section of a soft
pack commonly referred to as a “blister” and
the top segment has a protrusion adapted to
nest within the orifice of the bottom
segment. The protrusion of the top segment
has sufficient height so as to puncture a
dosage unit section of a soft pack
medication. When a dosage unit or “blister”
is placed within the orifice of the bottom
segment and the top segment is hingedly
Appeal No. 95-1747
Application 08/047,994
The proposed claims found in Appendix B of appellant's2
brief have not been considered by this panel of the Board. As
explained in the paragraph bridging pages 7 and 8 of the brief,
these claims were discussed with the examiner in a telephone
interview on June 1, 1994, but no formal amendment was submitted
by appellant because the examiner indicated that he would not
enter such an amendment.
3
pushed downwardly, the protrusion on the top
segment will puncture the foil or flat
element of the blister pack.
Preferably, the puncture mechanism has
toothed edges on this protrusion to enhance
puncturing.
Claim 9 is representative of the subject matter on
appeal and a copy of that claim appears in Appendix A to
appellant's brief.2
The sole prior art reference of record relied upon by
the examiner in rejecting the appealed claims is:
Gibilisco 4,887,755 Dec. 19, 1989
Claims 9 through 18 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Appeal No. 95-1747
Application 08/047,994
4
Claims 9 through 18 stand additionally rejected under
35 U.S.C. § 102(b) as being anticipated by Gibilisco.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the answer (Paper No. 9, mailed
August 5, 1994) for the examiner's reasoning in support of the
rejections and to the appeal brief (Paper No. 7, filed June 9,
1994) for appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art Gibilisco reference, and to the respective
positions articulated by appellant and the examiner. As a con-
sequence of our review, we have made the determinations which
follow.
Looking first to the examiner's rejection of the
appealed claims under 35 U.S.C. § 112, second paragraph, we note
that it is well settled that claims in an application must define
Appeal No. 95-1747
Application 08/047,994
5
the metes and bounds of the claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976); In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). However, it
is equally well settled that, during examination, "claims in an
application are to be given their broadest reasonable
interpretation consistent with the specification" and, in
addition, that the "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, 218 USPQ 385, 388
(Fed. Cir. 1983)(emphasis added). Our Court of review has also
informed us that the drawings included in the application may aid
in the interpretation of claim limitations, in that the "drawings
alone may be sufficient to provide the 'written description of
the invention’ required by § 112." Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Thus, in those instances where a visual representation can
flesh out words, as in the present application, drawings can and
should be used like the written specification to provide evidence
relevant to claim interpretation and used to interpret what the
inventor intended by the claim terms.
Appeal No. 95-1747
Application 08/047,994
6
Applying these precepts to the present application, we
find that, when the claim language questioned by the examiner is
read in light of the present application disclosure as such would
be interpreted by the hypothetical person possessing an ordinary
level of skill in the art, and particularly when this language
is viewed in light of the invention as seen, for example, in
Figure 4 of the application drawings, the claim language is
reasonably clear and precise, and the subject matter of the
appealed claims is not indefinite.
From our perspective, one of ordinary skill in the
art would readily understand that the recitations in appealed
claims 9 and 10 relating to (1) the sizing of the orifice in the
base segment, (2) the sizing of the puncture mechanism
protrusion, and (3) the strength of the puncture mechanism
protrusion, define these elements in terms of their function and
capabilities with regard to a range of soft packs with which the
opener may be used. In particular, the claim recitations require
the orifice to be sized so at to "receive a corresponding dosage
unit section of a soft pack" and the puncture mechanism
protrusion to have a size and strength so that it will puncture
Appeal No. 95-1747
Application 08/047,994
7
the backing or base (e.g., 29) of the soft pack (23) and maintain
a space between the puncture mechanism protrusion and the dosage
unit (e.g., the tablet, capsule or gel tab 26) so that the dosage
unit (e.g., capsule or gel tab) is not damaged in any way when
the puncture mechanism protrusion is nested within the orifice
and the backing of the soft pack has been punctured.
Thus, in light of the foregoing considerations, we
conclude that the recitations questioned by the examiner in the
present application's claims would have been seen by the person
of ordinary skill in the art to merely allow for a reasonable
variation in the types of soft pack with which the opener may be
used and not as introducing a level of ambiguity that would
obscure the metes and bounds of the claimed subject matter.
Since we do not consider that an artisan possessing the ordinary
level of skill in this art would fail to comprehend the scope and
content of the claims on appeal when the questioned claim
recitations are given a reasonable definition or interpretation
that is consistent with appellant's specification, the examiner's
rejection of claims 9 through 18 under 35 U.S.C. § 112, second
paragraph, must be reversed.

Appeal No. 95-1747
Application 08/047,994
8
Next for our consideration is the examiner's rejection
of claims 9 through 18 under 35 U.S.C. § 102(b) as being
anticipated by Gibilisco. The patent to Gibilisco is directed to
"apparatus for breaking tablets such as medicinal tablets into
smaller parts" (col. 1, lines 5-6). While there is some
similarity between the structure of the apparatus of Gibilisco
and appellant's claimed soft pack opener, we are of the opinion
that the examiner's conclusion that the structure of Gibilisco
would "inherently be capable of performing the functions as
claimed with respect to a soft pack" (answer, page 4) is contrary
to the clear teachings of Gibilisco and is based totally on
speculation and conjecture on the examiner's part. More
particularly, we note that even if the hammer (40, 43) of
Gibilisco may be capable of puncturing the backing of a soft pack
dosage unit section placed in the opening defined by the
triangular shaped cuts (32) of the slidable flanges (31), the
contacting surfaces (43) of the hammer are clearly not sized in
the manner defined in appellant's claims on appeal so as to
maintain a space between the contacting surfaces (43) and the
dosage unit (e.g., the tablet 2 of Gibilisco). In clear contrast
with the requirements of appel- lant's claims on appeal, the
Appeal No. 95-1747
Application 08/047,994
9
contacting surfaces (43) of the apparatus in Gibilisco, read by
the examiner as being the puncture mechanism protrusion of
appellant's claim 9, are described as being constructed and sized
so as to
project downward from the hammer to contact
the upper surface of a tablet in at least
two points on opposing sides of the rigid
ridgelet [15]. Thus a downward force may be
applied and divided by the fulcrum means of
the rigid ridgelet between portions of the
tablet. With sufficient force on the hammer,
the tablet will break across the fulcrum
(col. 7, lines 15-21).
See also, column 7, lines 48-57, of Gibilisco wherein the
operation of the slidable flanges (31) and the hammer (40) and
contacting surfaces (43) are further described.
From our perspective, the contacting surfaces (43) of
Gibilisco which are sized to apply forces to break the tablet
therein into smaller pieces, are the antithesis of the puncture
mechanism protrusion of appellant's claim 9 which is sized so
that the dosage unit is not damaged when the protrusion is nested
within the opening and the backing of the soft pack has been
punctured. Thus, since the apparatus of Gibilisco does not
Appeal No. 95-1747
Application 08/047,994
10
include all of the elements as required and defined in
appellant's claims on appeal, it follows that we will not sustain
the examiner's rejection of independent claim 9 and dependent
claims 10 through 18 under 35 U.S.C. § 102(b) based on Gibilisco.
In light of the foregoing, it is clear that we have not
sustained either the examiner's rejection of appealed claims 9
through 18 under 35 U.S.C. § 112, second paragraph, or that of
claims 9 through 18 under 35 U.S.C. § 102(b).
The decision of the examiner is accordingly reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
Appeal No. 95-1747
Application 08/047,994
11
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-1747
Application 08/047,994
12
Kenneth P. Glynn
Suite 201 (Plaza One)
One Rt. 12 West
Flemington, NJ 08822-1731