Zambaux, Jean-Pascal et al.

Patent Trials and Appeals Board

Oct 21, 2019

13813182 - (D) (P.T.A.B. Oct. 21, 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.
13/813,182 07/02/2013 Jean-Pascal Zambaux 642-084 6816
1009 7590 10/21/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEAN-PASCAL ZAMBAUX and DANIEL MASSEAU
____________

Appeal 2019-001680
Application 13/813,182
Technology Center 3700
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP and
LEE L. STEPINA, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jean-Pascal Zambaux and Daniel Masseau (hereinafter collectively
Appellant)1 seeks our review under 35 U.S.C. § 134(a) of the final rejection
of claims 15–22, 25–27, and 30–33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Pall Life Sciences Belgium as the real
party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to product packaging. Spec. 1.
Claim 15, reproduced below, is illustrative of the subject matter on appeal.
15. A disposable vacuum packaged article comprising:
a plurality of containers; and
a flexible bag including an evacuated interior compartment,
said bag being formed of a material resistant to a temperature of
at least 225° C, said material supporting the plurality of
containers in the evacuated interior compartment.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Norton
Zambaux
VanderBush ’802
Lin
VanderBush ’977
US 5,735,609
US 2005/0050854 Al
US 2009/0100802 Al
US 2009/0117323 Al
US 2009/0288977 Al
Apr. 7, 1998
Mar. 10, 2005
Apr. 23, 2009
May 7, 2009
Nov. 26, 2009

The following rejections are before us for review:
1. Claims 15–22, 25–27, and 30–33 are rejected under 35 U.S.C.
§ 112(a) for failing to comply with the written description requirement.
2. Claims 15–22 are rejected under 35 U.S.C. § 112(a) for failing to
comply with the enablement requirement.
3. Claims 15–22, 25–27, and 30–33 are rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor(s) regard as the invention.
4. Claim 25–27, 30, 31, and 33 are rejected under U.S.C. 102(b)
or (e) as anticipated by VanderBush ’802.
5. Claim 25–27, 30, 31, and 33 are rejected under U.S.C. 102(b)
or (e) as anticipated by VanderBush ’977.
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6. Claims 15–22 are rejected under 35 U.S.C. § 103 as being
unpatentable over VanderBush ’802.
7. Claims 15–22 are rejected under 35 U.S.C. § 103 as being
unpatentable over VanderBush ’977.
8. Claim 32 is rejected under 35 U.S.C. § 103 as being unpatentable
over VanderBush ’802.
9. Claim 32 is rejected under 35 U.S.C. § 103 as being unpatentable
over VanderBush ’977.2, 3, 4, 5
OPINION
Section 112 Written Description
The written description requirement of 35 U.S.C. § 112, ¶ 1 provides,
in pertinent part, that “[t]he specification shall contain a written description
of the invention.” That requirement is satisfied when an inventor “convey[s]
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention,’ and demonstrate[s]
that by disclosure in the specification of the patent.” Centocor Ortho
Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (quoting
Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122
(Fed. Cir. 2008)).

2 The Examiner relies on Norton as disclosing heat sterilization of medical
equipment using a polymeric bag constructed from TYVEK.
3 The Examiner relies on Zambaux as disclosing a bag made from PEEK
material that can sustain temperatures of 250o C for at least 60 minutes.
4 The Examiner relies on Lin as teaching microwave heating of food to a
high temperature using a bag constructed o PEEK.
5 The Examiner relies on Held as teaching microwave heating of medical
instruments in a pouch to sterilize the same.
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The essence of the written description requirement is that a
patent applicant, as part of the bargain with the public, must
describe his or her invention so that the public will know what
it is and that he or she has truly made the claimed invention.
Nuvo Pharmaceuticals (Ireland) Designated Activity Co. v. Dr Reddy’s Labs
Inc., 923 F.3d 1368, 1377 (Fed. Cir. 2019) quoting AbbVie Deutschland
GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014).
Claims 15–22
Independent claim 15 contains the following limitation: “the bag
being formed of a material resistant to a temperature of at least 225
degrees C.” Claims App. The Examiner determines that such limitation is
not sufficiently described in the Specification to demonstrate that the
inventor(s) had possession of the claimed invention as of the filing data.
Final Action 9. Claims 16–22, which depend, directly or indirectly, from
claim 15, are rejected on account of their dependency. Claims App.
Appellant argues that the temperature limitation at issue was present
in original claim 1, as well as in the Specification as filed. Appeal Br. 7.
Appellant argues that the invention uses “existing materials” described in the
Specification to form a packaging resistant to a particular temperature. Id.
Appellant characterizes the use of such existing materials as a “mature
technology.” Id.
Appellant appears to concede that the Specification does not explain
“how” the package or film is made resistant to ’225 degrees Celsius but,
nevertheless, contends that “how to make” an invention is not the province
of the written description requirement. Id.
Appellant is not claiming how to make the material resistant
above a particular temperature via a method . . . a skilled artisan
would understand how to select a suitable known material
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based on it being described in the specification or “conventional
in the relevant art.”
Id. at 8.
In response, the Examiner emphasizes that what is missing from the
written description is a teaching of how Appellant got the otherwise
conventional material to have the claimed temperature resistance. Ans. 7.
The Examiner reiterates that Appellant does not teach how one of ordinary
skill in the art would make the materials taught in the Specification resistant
to ’225 degrees Celsius and above.
If such bags are conventional, [Appellant] should have clearly
admitted this on the record and there would be no issue. If on
the other hand such bags are not conventional, it is clearly
incumbent upon the applicant to say how the temperature
resistance was achieved by [Appellant].
Id.
In reply, Appellant admits that it is not claiming how to make the
material resistant above a particular temperature, but simply reciting a bag
with the claimed temperature resistant property. Reply Br. 2.
Appellant’s Specification states that:
[T]he invention covers also the use of several polymeric
materials in order to associate their properties and to improve
the properties of the packaging. Among the preferred
polymers, one or more polymers are used selected among: PE
(Polyethylene), PP (Polypropylene), PFA (Perfluoroalkoxy),
Polyaryletherketone, PEP (fluoro ethylene propylene), PEEK
(Poly(ether ketone)) (PEEK MT or ST), PAI (polyamide
imide), PI (Polyimide), PPSU (Polyphenylene sulfon), PES
(Polyether sulfon), PPP (Polyparaphenylene), POM
(Polyoxymethylene), and the analog polymers.
Spec. 4.
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At the outset, we note that the mere fact that claim language appears
in the Specification does not necessarily mean that the written description
requirement is met. Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d 956,
968 (Fed. Cir. 2002). The Federal Circuit maintains that “the appearance of
mere indistinct words in a specification or a claim, even an original claim,
does not necessarily satisfy” § 112(a) because it may not both put others on
notice of the scope of the claimed invention and demonstrate possession of
that invention. Id. at 968–69; see also Nuvo Pharma, 923 F.3d at 1380.
However, we disagree with the Examiner’s assessment that Appellant
has not sufficiently described the invention of claim 15 to demonstrate that it
possessed the invention. Nuvo Pharma, 923 F.3d at 1380–81. Under the
facts and circumstances of this case, we credit Appellant’s characterization
of the invention as merely using “existing materials” in a “mature
technology” such that no further written description is necessary to
demonstrate possession of the invention by the inventor or to place the
invention in the possession of the public.
Consequently, we do not sustain the Examiner’s Section 112, written
description, rejection of claims 15–22.
Claims 25–27
Claim 25 is an independent claim and claims 26 and 27 depend
therefrom. Claims App. The Examiner determines that the following
limitation in claim 25 lacks written description support: “wherein no tray
within the interior compartment supports the plurality of containers from the
bottom.” Final Action 14–15.
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Appellant argues that Figure 7 illustrates the lack of a tray as claimed.
Appeal Br. 8. Appellant also directs our attention to page 5, lines 15–16 of
the Specification as disclosing a package with no support or tray. Id. at 9.
In response, the Examiner questions whether the disclosure on page 5
of the Specification applies to the elected embodiment of Figure 7. Ans. 8.
The claims are subject to restriction and election of species. In
the circumstances, appellant cannot just point to some teaching
in what would normally constitute a Brief Description of the
Invention section of the application and suggest that the
teaching therein pertains to Fig 7.
Id.
In reply, Appellant argues that the Examiner fails to rebut Appellant’s
main point that Figure 7 shows the lack of a tray supporting the containers
from the bottom. Reply Br. 2.
Appellant’s Specification teaches that:
According to another implementation mode, the invention does
not comprise a tray or support, or separating elements. In other
words, the interior space of the packaging according to the
invention contains only, for instance, the products, the
recipients, the flasks or vials to be packaged.
Spec. pp. 5–6. We determine that Appellant’s disclosure, at pages 5 and 6 of
the Specification, either alone or in conjunction with the depiction of the
invention in Figure 7, is sufficient to satisfy the written description
requirement.
Accordingly, we do not sustain the Examiner’s Section 112, written
description rejection of claims 25–27.
Claims 30–33
Claim 30 is an independent claim and claims 31–33 depend, directly
or indirectly, therefrom. Claims App. The Examiner determines that the
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“buffer volume” limitation in claim 30 lacks written description support.
Final Action 15.
Appellant argues that the following language from the Specification
adequately discloses and describes the buffer volume limitation:
[T]he interior space comprises a buffer volume or “dead”
volume which limits the forces exercised on the closing means
when the volume of the interior space increases. Typically,
during the sterilization and/or depyrogenation procedure, the
rise in temperature causes a volume increase of the interior
space. The buffer volume serves therefore as expansion zone of
the gas present in the interior space. A typical buffer zone
comprises an extension of several centimeters of the
thermoplastic film not facing the packaged elements, typically 5
to 10 cm.
Spec. 9, Appeal Br. 11
In response, the Examiner argues that it is unclear from the
Specification which embodiment of the invention that above quoted passage
is referring to. Ans. 12.
Appellant’s Specification includes a description of Figure 5 as
showing a variant of the buffer volume 570. Spec. 9. Appellant’s
Specification then describes Figure 7 such that numbered features may be
identified by adding 700 to the references of Figures 1 and 2. Id. Figure 7
depicts an enumerated element 770; however, there is no corresponding
element “70” in either Figure 1 or 2. See Figs. 1, 2, and 7. Notwithstanding,
it is our opinion that a person of ordinary skill in the art would readily
deduce from the Specification and the drawings, taken as a whole, that
element 770 corresponds to the claimed “buffer volume.”
Accordingly, we do not sustain the Examiner’s Section 112 written
description rejection of claims 30–33.
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Non-enablement of Claims 15–22
Claim 15
The Examiner determines that Appellant does not provide an
adequate enabling disclosure for the limitation: “the bag being formed of a
material resistant to a temperature of at least 225 degrees C.” Final
Action 17. The Examiner finds that Appellant provides no direction as to
how the bag is formed or how the material from which the bag is formed is
obtained. Id. at 18. The Examiner further notes the lack of working
examples in Appellant’s disclosure. Id.
Appellant argues that no undue experimentation is required for a
skilled artisan to make and use the claimed invention. Appeal Br. 12.
Appellant argues that it specifically describes the materials used in forming
the claimed bag. Id. In so doing, Appellant appears to concede the
Examiner’s point that such materials are “conventional.” Id.
Enablement is a legal determination of whether a patent enables one
skilled in the art to make and use the claimed invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). To be
enabling, a patent's specification must “teach those skilled in the art how to
make and use the full scope of the claimed invention without ‘undue
experimentation.’” ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940
(Fed. Cir. 2010). However, it is well settled that a patent need not teach, and
preferably omits, what is well known in the art. Streck, Inc. v. Research &
Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012).
In the instant case, the art cited by the Examiner, both as to the two
VanderBush references as well as to the supplemental, non-applied
references cited on pages 25 and 26 of the Final Action, amply demonstrates
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that a person of ordinary skill in the art already knew how to make
polymeric bags for medical containers at the time of the invention. Taking
into consideration that Appellant’s bag is made from existing, conventional
materials, we deem Appellant’s disclosure to be sufficiently enabling for
purposes of Section 112.
Accordingly, we do not sustain the Examiner’s Section 112 non-
enablement rejection of claims 15–22.
Indefiniteness of Claims 15–22, 25–27, and 30-33
Claims 15–22
The Examiner considers that the phrase in claim 15 - “supporting the
plurality of containers” – renders the claim indefinite. Final Action 19.
A claim is properly rejected as indefinite under 35 U.S.C. § 112 if,
after applying the broadest reasonable interpretation in light of the
specification, the metes and bounds of a claim are not clear because the
claim “contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). The test for
definiteness under 35 U.S.C. § 112, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Having read the “supporting . . . containers” phrase of claim 15 in
light of the context of claim 15 and the accompanying Specification and
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drawings, we are of the opinion that claim 15 is sufficiently definite and,
therefore, do not sustain the Section 112 indefiniteness rejection of claim 15.
Claims 16–22 appear to be rejected solely on the basis of their dependency
and, therefore, stand with claim 15.
Claims 25–27
The Examiner determines that the following limitation from
independent claim 25 - “no tray within the interior compartment supports
the plurality of containers from the bottom” – renders the claim indefinite.
Final Action 20.
After reading the claim in light of the Specification, we disagree that
the claim is indefinite and, therefore, do not sustain the Examiner’s
Section 112 indefiniteness rejection of claims 25–27.
Claims 30–33
The Examiner indicates that these claims are rejected under
Section 112 as indefinite, but fails to specify why. Final Action 19–20.
We do not sustain the Examiner’s Section 112 indefiniteness rejection of
claims 30–33.
Anticipation of Claim 25–27, 30, 31, and 33
by VanderBush ’802
Claim 25
The Examiner finds that VanderBush ’802 discloses all of the
limitations of claim 25. Final Action 24. In particular, the Examiner finds
that VanderBush ’802 satisfies the “no tray” limitation. Id. Specifically, the
Examiner finds that in: “Fig 6 it is element 45 that supports the syringes, not
tray 14' and the syringes are not supported from their bottoms.” Id.
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Appellant argues that the meaning of “bottom” is “supporting part.”
Appeal Br. 17. Using such construction, Appellant argues that nesting
plate 45 supports syringes 16 “from the bottom.” Id.
The dispute between Appellant and the Examiner is a matter of claim
construction. During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Construing claims broadly during prosecution is not unfair to the
applicant, because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage. Am. Acad. 367 F.3d at 1364.
A person of ordinary skill in the art would understand that, using its
ordinary and customary meaning, the “bottom” is the lowermost portion or
surface of an object, such that when the object is placed on the ground or
some other structure, it is the “bottom” of the object that makes contact with
and engages the ground or other structure. A person of ordinary skill in the
art would thus distinguish the “bottom” of an object from structure that
permits the object to be suspended or “hang” from an upper or intermediate
portion of the object. Furthermore, in context, “the bottom” in claim 25 is
the lowermost portion or surface of the containers. In other words, claim 25
contains a negative limitation requiring that the containers are not supported
from their bottom surface or portion. Claims App.
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We have reviewed the Figure 6 embodiment of VanderBush ’802. As
can be readily seen from viewing the drawing, there is no structure beneath
syringes 16 on which the syringes are resting. Rather, they are suspended or
“hang” from nesting plate 45. VanderBush ‘’802, ¶ 64, Fig. 6.
The Examiner’s finding that nesting plate 45 does not support the
containers “from the bottom” is supported by a preponderance of the
evidence. Accordingly, sustain the Examiner’s anticipation rejection of
claim 25.
Claim 26
Claim 26 depends from claim 25 and adds the limitation: “wherein
the interior compartment comprises a buffer volume to limit forces on a
closure for the bag when the volume of the interior compartment increases.”
Claims App. Appellant argues that VanderBush ’802’s disclosure that
film 12 is in facing engagement with portions of vials 16 and tray 14 is
incompatible with it having a buffer volume. Appeal Br. 17.
In response, the Examiner acknowledges that a portion of an
evacuated bag can be in facing engagement with the contents thereof.
Ans. 30. The Examiner points out that such does not negate the fact that
other portions can be spaced from the tray. Id.
Appellant’s argument does not apprise us of Examiner error. We
agree with the Examiner that Appellant’s argument that VanderBush’s film
is engaged with “portions” of vials 16 and tray 14 does not establish that
there is no buffer volume in the evacuated bag. In that regard, we note that
VanderBush teaches that the pressure in the internal cavity is reduced to a
predetermined vacuum pressure. VanderBush ’802 ¶ 53. We can
reasonably infer from “predetermined vacuum pressure” that some amount
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of gas remains inside of bag 12. Furthermore, the packaging assembly is
often transported as air cargo and is, therefore, subjected to reduced air
pressure. VanderBush ’802, ¶ 56. The volume of gas remaining inside of
the bag after evacuation at normal atmospheric pressure would naturally
expand when subjected to reduced external atmospheric pressure during air
transport. Accommodation of such expansion inside of the bag constitutes a
buffer volume. Thus, Appellant’s argument that VanderBush ’802 lacks a
buffer volume is not supported by the evidentiary record before us.
We sustain the Examiner’s anticipation rejection of claim 26.
Claim 27, 30, 31, and 33
Appellant does not argue for the separate patentability of these claims.
We sustain the Examiner’s anticipation rejection of claims 27, 30, 31,
and 33. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims).
Unpatentability of Claims 15–22
over VanderBush ’802
Claim 15
The Examiner finds that VanderBush ’802 discloses the invention
substantially as claimed except for the heat limitation. Final Action 20–22.
In particular, the Examiner finds that VanderBush ’802 discloses a vacuum
bag that can be sterilized, depyrogenated and sealed. Id. at 21. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to make the bag of VanderBush
from a material that is resistant to the claimed temperature. Id. at 23.
According to the Examiner, a person of ordinary skill in the art would have
done this to facilitate in situ heat sterilization of glass containers. Id.
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Appellant argues that the Examiner’s rejection lacks any reason or
rational underpinning. Appeal Br. 15. Furthermore, Appellant argues that
the rejection fails to consider the invention “as a whole.” Id. In that regard,
Appellant argues that claim 15 requires that the material of the bag support
the plurality of containers in the evacuated interior compartment. Id.
Appellant argues that, in VanderBush, it is tray 14, not the film, that
supports the containers. Id. at 16.
In response, the Examiner refers back to the findings of fact in the
Final Action. Ans. 25. The Examiner then notes that Appellant essentially
concedes that all of the polymeric materials used to construct Appellant’s
bag are “conventional.” Id. The Examiner concludes that it would have
been obvious to construct the VanderBush bag from a “conventional”
material resistant to a temperature of ’225 degrees C as listed on page 4 of
Appellant’s Specification. Id. 26.
In reply, Appellant argues that the Examiner fails to provide an
articulated reason as to why the bags and trays in VanderBush ’802 would
be constructed from a heat resistant material. Reply Br. 5. Appellant
reiterates its earlier argument that the rejection fails to address the assertion
that VanderBush’s containers are supported by a tray. Id.
Appellant’s arguments are not persuasive. With respect to the
Section 112 rejections, Appellant essentially concedes that the polymeric
materials listed on page 4 of the Specification are conventional such that no
further elaboration is required to provide written description support for the
temperature limitation in claim 15. Thus, the temperature limitation issue
boils down to mere selection of a known material based on its suitability for
its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325
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U.S. 327, 335 (1945) (explaining that selecting a known compound to meet
known requirements is not invention).
Appellant’s “articulated reasoning” argument is likewise
unpersuasive. In the rejection, the Examiner reasons that providing the
claimed temperature resistance would have facilitated in situ heat
sterilization of glass containers. Final Action 23. This is adequate rationale
to support the rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)(requiring an obviousness conclusion to be based on explicit
articulated reasoning with rational underpinning) cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Finally, Appellant’s “no tray” argument is unconvincing. Appellant’s
claim 15 uses a comprising transition. “In the patent claim context the term
‘comprising’ is well understood to mean ‘including but not limited to.’”
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007).
The fact that VanderBush ’802 also uses a tray to support the containers
does not negate that fact that such containers are also, at least in part,
supported by the bottom layer of the bag. See VanderBush ’802, Figs. 1–7.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claim 15 over VanderBush ’802.
Claim 20
Claim 20 depends from claim 15 and adds the limitation: “wherein
the at least one container includes a bottom surface in contact with the inner
surface of the bag.” Claims App. Appellant argues that the bottom surfaces
of VanderBush’s containers rest on tray 14, not the bag. Appeal Br. 16.
In response, the Examiner states, in essence, that claim 20 and any
supporting disclosure in the Specification is broad enough to encompass a
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situation in which the bag of VanderBush and its contents are turned upside
down. Ans. 28.
VanderBush discloses a plurality of containers 16 that are placed on
tray 14 such that tray 14 then slides into bag 12. VanderBush ’802, Fig. 1.
VanderBush’s packaging system is for transporting medical containers. Id.
¶ 7. Such transportation may include air transportation. Id. ¶ 56. In our
opinion, a person of ordinary skill in the art having reviewed VanderBush
’802 would likely understand that the package could be turned upside down
at some point during transport without destroying either the package or its
contents. When turned upside down, a surface of the containers would rest
on and receive support from an interior surface of the bag. When upside
down, the position of the top and bottom of the containers would be reversed
such that the “top” could be properly understood to be the “bottom.”
Taking the foregoing into account, the Examiner’s findings of fact are
supported by a preponderance of the evidence. We sustain the Examiner’s
unpatentability rejection of claim 20 over VanderBush ’802.
Claims 16–19, 21, and 22
Appellant does not argue for the separate patentability of claims 16–
19, 21, and 22. The Examiner’s unpatentability rejection thereof is hereby
sustained. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue
claims).
Unpatentability of Claim 32
over VanderBush ’802
Claim 32 depends directly from claim 31 and indirectly from
claim 30. Claims App. Claim 31 adds the limitation: “wherein the buffer
volume is formed by an extension of the bag between the closure and the
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article.” Claim 32 adds the limitation: “wherein the extension is between 5
and 10 cm.” Claims App. The Examiner concludes that it would have been
obvious to provide an extension with the claimed dimensions as a matter of
design choice. Final Action 25.
Appellant argues that there is no extension of the bag between the
closure and article as claimed, and, therefore, the dimension of this
extension would not have been a matter of design choice. Appeal Br. 16. In
response, the Examiner states that VanderBush shows an extension between
the containers and the closure at the ends of the bag. Ans. 29.
Figure 8 of VanderBush ’802 shows bag 12 on the left side of the
drawing and an open end 12b on the right side of the drawing. The center
portion of the drawing depicts a narrowing of bag 12 to open end 12b. Id.
The open end 12b is sealed at or near sealing jaws 26 and clamp jaws 22. Id.
¶ 53. Tear notch 18 is provided to facilitate opening the package after it has
been sealed. Id. Fig. 8. In our opinion, open end 12b satisfies the claim 31
limitation of an extension of the bag between the closure and the article. Id.
We are, therefore, not apprised of error and sustain the Examiner’s
unpatentability rejection of claim 32 over VanderBush ’802.
Alternative Grounds of Rejection
over VanderBush ’977
VanderBush ’977 is a continuation-in-part of the application for
VanderBush ’802. The two references share common inventorship. The
two references share identical drawings. See Figs. 1–13.6 The disclosure of
VanderBush ’977 is substantially similar to that of VanderBush ’802 and
may be treated as identical for purposes of the instant appeal.

6 The later reference, VanderBush ’977, adds Figures 14a–d.
Appeal 2019-001680
Application 13/813,182
19
We sustain the Examiner’s prior art rejections over the
VanderBush ‘977 reference for the same reasons discussed above with
respect to the VanderBush ’802 reference.
CONCLUSION
In summary:
Claims
Rejected
Basis Reference(s) Aff’d Rev’d
15-22, 25-27
30-33
§ 112 15-22, 25-27
30-33
15-22 § 103 VanderBush ’802 15-22
15-22 § 103 VanderBush ’977 15-22
25-27, 30, 31,
33
§ 102 VanderBush ’802 25-27, 30, 31,
33

25-27, 30, 31,
33
§ 102 VanderBush ’977 25-27, 30, 31,
33

32 § 103 VanderBush ’802 32
32 § 103 VanderBush ’977 32
Summary

15-22, 25-27
30-33

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED