Patrick O. Tennican

Patent Trials and Appeals Board

Sep 27, 2019

15349828 - (D) (P.T.A.B. Sep. 27, 2019)

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.
15/349,828 11/11/2016 Patrick O. Tennican H014-0017USC1 1032
29150 7590 09/27/2019
LEE & HAYES, P.C.
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK O. TENNICAN

Appeal 2019-002469
Application 15/349,828
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and DANIEL S. SONG,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 21–23 and 25–36.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hyprotek,
Inc. Appeal Br. 3.
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Application 15/349,828

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a plurality of caps releasably attached
to a substrate. Claim 21 is illustrative, and is reproduced below:
21. An apparatus comprising:

a plurality of caps, each cap having an opening and a cavity, and
each cap including a film releasably attached to the respective
cap adjacent the opening to seal the cavity; and

a substrate to which each cap is releasably attached consecutively
via an external surface of a closed end of the respective cap
opposite the film at the opening sealing the cavity such that each
cap is individually removable from the substrate without
separating the film from the opening, the substrate, when the
plurality of caps are and are not attached to the substrate, being
a flexible and rollable strip, and the plurality of caps being
disposed in a row along a length of the rollable strip.

THE REJECTIONS
The Examiner rejects:
(i) claims 31–36 under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement; and
(ii) claims 21–23 and 25–36 under 35 U.S.C. § 103 as being
unpatentable over Tennican (US 2013/0138085 A1, published May 30,
2013) in view of Iwasaki (US 2005/0123749 A1, published June 9, 2005)
and Bunnelle (US 2012/0213956 A1, published Aug. 23, 2012).

ANALYSIS
Claims 31–36--§ 112(a), written description
The Examiner finds that the limitation in claim 31 requiring that “the
flexible, rollable substrate strip is rollable when the plurality of caps are and
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Application 15/349,828

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are not attached to the substrate,” lacks written descriptive support in the
application as filed. Final Act. 2–3. The Examiner acknowledges that the
Specification discloses that the substrate may be made of a flexible, rollable
material, but “[n]owhere is the substrate disclosed as being rollable when a
plurality of caps are attached.” Id. at 3. The Examiner also points out that
the drawing figures also do not show a substrate strip with a plurality of caps
attached thereto in a rolled condition. Id.
Appellant argues that paragraphs 46 and 47 provide ample written
descriptive support for the limitation at issue. Appeal Br. 8. Appellant
relies principally on the following passage in paragraph 47:
In some embodiments, the substrate 802 may be composed of a
flexible, rollable thermoplastic material. Individually sealed
cap devices may then [be] dispensed by cutting between the cap
devices 800(1)–(4) in the substrate 802.
Spec. ¶ 47; Appeal Br. 8–9.
Appellant urges that a grammatical dissection of the sentences leads
inescapably to an understanding that the presence of the word “then” implies
that “rollable” means “rolled” in terms of describing the substrate, and that it
would be understood that the substrate would be rolled with the cap devices
affixed thereto. Id. Appellant then posits three questions, to which
Appellant maintains the logical answers would lead to the understanding
that, in describing the substrate as being rollable, the person of ordinary skill
in the art would understand that Appellant had possession of subject matter
including a substrate having cap devices secured thereon being rollable. Id.
at 9–10.
None of this is particularly instructive as to whether a person of
ordinary skill in the art would understand Appellant to have been in
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possession of the limitation at issue in claim 31. For all of the purported
importance Appellant attaches to the presence of the word “then” in the
passage quoted above, more likely than not it is present because, in the
drafting of the present Specification, the sentence it appears in and the
preceding sentence were fashioned after the following disclosure, at
paragraph 35 of the Tennican reference (cited in the § 103 rejection):
The result is a strip 702 containing multiple individually sealed
devices. Individual devices may then [be] dispensed by cutting
between the devices in the strip 702.
Tennican ¶ 35. The similarities, including the presence of the same
typographical error, “may then by,” are undeniable. Of interest here is that
this passage from Tennican involves the finishing of the packaging, thereby
readying the devices for dispensing. The strip being rollable or rolled does
not appear to be of concern. Similarly, in Appellant’s current Specification,
the manner in which Appellant’s cap devices may “then” be dispensed has
little to nothing to do with whether the strip they are fastened to is rollable or
not, or rolled or not. There is thus no true connection between the two
sentences in paragraph 47 cited by Appellant. We therefore do not ascribe
to contorting the meaning of terms and importing them from one sentence
into the other, just because what appears to be imprecise application drafting
might “grammatically” seem to mean something other than what it says.
We, like the Examiner, are not inclined to speculate as to why the
Specification describes the substrate as being rollable, if the finished
products with the cap devices thereon were not rollable, and, thereafter,
rolled. A rollable substrate in rolled form, for example, might well facilitate
the feed of the substrate material to a manufacturing station at which the cap
devices are introduced for affixation thereto.
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We thus are not persuaded that paragraphs 46 and 47 of Appellant’s
Specification clearly evidence that a person of ordinary skill in the art would
understand Appellant to be in possession of a device in which the substrate
strip is rollable when a plurality of caps are attached thereto. However, the
manner in which paragraph 8 of the Specification describes the invention,
which Appellant belatedly points out in the Reply Brief, does, we believe,
provide adequate evidence that Appellant was in possession of a substrate
strip being rollable, however bulkily, with caps attached thereto. The
relatively simple statement that “a top end of each cap device may be
consecutively adhered to a roll-able strip,” adequately conveys that the strip
is contemplated to be rolled up once the cap devices are adhered thereto.
Spec. ¶ 8. Moreover, the claims do not require that the substrate actually be
rolled with the cap devices thereon, and attaching the cap devices would not
appear to destroy the material property of the substrate being rollable.
Accordingly, the rejection of claims 31–36 under 35 U.S.C. § 112(a),
written description, is not sustained.

Claims 21–23 and 25–36--§ 103--Tennican/Iwasaki/Bunnelle
The Examiner cites to Tennican as disclosing the claimed caps, but
not a flexible and rollable strip to which an external surface of the closed
ends of the caps are releasably attached. Final Act. 4. The Examiner cites to
Iwasaki as disclosing a flexible and rollable strip to which articles are
attached, and to Bunnelle as disclosing attaching the closed ends of articles
to a substrate in a packaging process. Id. at 4–5. The Examiner concludes
that it would have been obvious to attach the Tennican caps to a rollable and
flexible strip of the type disclosed in Iwasaki, with the orientation taught by
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Bunnelle, so that the caps can easily be detached and so that there is
accessibility to the open ends of the caps. Id. at 5.
Among Appellant’s arguments is an assertion that Iwasaki is
nonanalogous art, and therefore improperly combined with Tennican in
reaching the obviousness conclusion. Appeal Br. 12 (Iwasaki being in “a
technological field unrelated to medical caps”); Reply Br. 11–13.2
The Examiner appears to find that Iwasaki is not considered to be in
the same field of endeavor as the claimed invention, in that, in response to
Appellant’s statement about the different technological fields, the Examiner
mainly asserts that “Iwasaki is pertinent to the problem of consecutively
organizing products on a substrate.” Ans. 15. Appellant maintains that this
characterization of the problem is excessively specific, and notes instead that
the problem faced is “considering how to package the individual cap devices
in a convenient and simple way.” Reply Br. 12.
Appellant additionally argues that Iwasaki is directed to a display
means for bagged snacks, and that it would not have been reasonably
pertinent to Appellant’s problem, because the bagged snack articles have no
similarity in shape or size to the cap devices, and there is no similar concern
about the sterilization requirements for the cap devices. Reply Br. 13.
Appellant has the better position here. Consecutively organizing
cap articles in packaging, albeit in a strip of individually sealed
compartments, is disclosed in Tennican, which shares the same inventive
entity and ownership as the present application, and thus would not be the

2 The pages of the Reply Brief are unnumbered. We start the page count at
the title page.
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particular problem faced in the present invention. Thus, the Examiner’s
proffered problem to be solved is at least partially defective.
The present Specification provides precious little guidance as to a
particular problem faced, but it appears that developing a packaging scheme
allowing easier access to the caps, and/or a less expensive way to package
the caps, as compared to the packaging approach in Tennican, underlie the
presently claimed invention. As such, the problem faced by the inventor
was also not specifically how to attach the caps to a substrate. Attaching the
caps to a substrate is part of the solution, not part of the problem. Given that
the articles (caps and chip bags) are markedly different in type, shape, and
size, Iwasaki is not seen as being reasonably pertinent to the problem of
more efficiently packaging the claimed caps.
The rejection of claims 21–23 and 25–36 as being unpatentable over
Tennican, Iwasaki, and Bunnelle is not sustained.

DECISION
The rejection of claims 31–36 under 35 U.S.C. § 112(a) as failing to
meet the written description requirement, is reversed.
The rejection of claims 21–23 and 25–36 under 35 U.S.C. § 103 is
reversed.

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CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
31–36 § 112(a) written
description 
31–36
21–23, 25–36 § 103 Tennican,
Iwasaki, Bunnelle
21–23, 25–36
Overall Outcome

21–23, 25–36

REVERSED