Case: 20-1530 Document: 33 Page: 1 Filed: 01/21/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: CSP TECHNOLOGIES, INC.,
Appellant
______________________
2020-1530
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/992,749.
______________________
Decided: January 21, 2021
______________________
DAVID B. GORNISH, Eckert Seamans Cherin & Mellott,
LLC, Philadelphia, PA, for appellant. Also represented by
MARK T. VOGELBACKER; EDWARD C. FLYNN, Pittsburgh, PA.
WILLIAM LAMARCA, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Drew Hirshfeld. Also represented by THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED, PETER JOHN
SAWERT.
______________________
Before MOORE, HUGHES, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
CSP Technologies, Inc. appeals from the final decision
of the Patent Trial and Appeal Board affirming the
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2 IN RE: CSP TECHS., INC.
rejection of certain claims in U.S. Patent Application
No. 12/992,749 under 35 U.S.C. § 103. The rejected claims
recite a moisture-tight, resealable container for storing di-
agnostic test strips. Because substantial evidence supports
the Board’s determination of obviousness, we affirm.
BACKGROUND
The ’749 application discloses a “moisture proof, reseal-
able non-cylindrical container and lid assembly” that can
be used to “house test strips, pills, capsules, particulate
materials, liquids, or other objects or materials and control
the ingress and/or egress of moisture.” J.A. 57. The body
of the container “has a generally tubular sidewall” and a
“non-round body sealing surface,” and the container’s lid
includes a “lid sealing surface” and is “configured to seat on
the body.” J.A. 58. Figures 1 and 2 illustrate an embodi-
ment of the container that has an elliptical cross-section:
J.A. 96.
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IN RE: CSP TECHS., INC. 3
J.A. 97. The body sealing surface (16) and the lid sealing
surface (20) “can be configured to mate to form a seal” be-
tween the lid (18) and the body (12) when the lid is seated
on the body, which “isolate[s] the interior space 14 from
ambient conditions.” J.A. 75. In addition, an “integral
hinge” (54) “links” the body and lid. 1
Id.
Independent claim 14 is illustrative of the claims at is-
sue on appeal:
1 CSP refers to this feature whereby the lid is con-
nected to the body by a hinge as the “flip-top” feature. Ap-
pellant’s Br. 4, 8.
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4 IN RE: CSP TECHS., INC.
14. A moisture-tight, re-sealable container com-
prising:
a. a body that is generally elliptical in cross-section
having a generally tubular sidewall with first and
second axially opposed ends, a base, and a dispens-
ing opening axially spaced from the base and at
least adjacent to the second end;
b. an interior space disposed generally within the
sidewall and at least generally between the base
and the dispensing opening;
c. the generally tubular sidewall having a gener-
ally elliptical cross-section having a major diame-
ter and a minor diameter, wherein the ratio
between the major diameter and the minor diame-
ter of the sidewall cross-section is a value between
1.1 : 1 and 10 : 1, inclusive;
d. a generally elliptical body sealing surface located
on an exterior portion of the body and disposed
about the dispensing opening, the body sealing sur-
face having a major diameter and a minor diame-
ter, wherein the ratio between the major diameter
and the minor diameter of the body sealing surface
is a value between 1.1 : 1 and 10 : 1, inclusive;
e. a lid configured to seat on the body, the lid being
linked to the body by a hinge;
f. a lid sealing surface located on an interior portion
of the lid, the lid comprising a lid sidewall extend-
ing from the lid sealing surface and terminating at
a lid underside;
g. the body sealing surface and the lid sealing sur-
face being configured to mate to form a seal be-
tween the lid and the body when the lid is seated
on the body; and
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IN RE: CSP TECHS., INC. 5
h. the lid and lid sealing surface at least substan-
tially closing the dispensing opening and isolating
the interior space from ambient conditions,
wherein the container is configured to store test
strips such that exposed ends of the test strips ex-
tend beyond the entire dispensing opening of the
body and wherein the exposed ends are positioned
within the lid when the lid is seated on the body
without damaging the exposed ends;
the container having a moisture ingress rate of
100-1000 micrograms per day, at 80% relative hu-
midity and 22.2°C.
J.A. 967 (emphases added to disputed claim limitations). 2
The Examiner rejected claims 14–21, 23, 25, 27, 33,
and 36–46 under 35 U.S.C. § 103 as being unpatentable
2 The other independent claim at issue on appeal,
claim 38, similarly recites a moisture-tight, resealable con-
tainer comprising “a body that is generally elliptical in
cross-section” and “a lid configured to seat on the body, the
lid being linked to the body by a hinge.” J.A. 970. Claim 38
also includes a discrete limitation requiring the lid to have
“a lid underside that is axially spaced from the lid sealing
surface and from the entire dispensing opening when the
lid is seated on the body.”
Id. CSP contends that this lim-
itation corresponds to the limitation in claim 14 that “the
container is configured to store test strips such that ex-
posed ends of the test strips extend beyond the entire dis-
pensing opening of the body and wherein the exposed ends
are positioned within the lid when the lid is seated on the
body without damaging the exposed ends.” CSP focuses its
appeal on claim 14 and does not present separate argu-
ments for claim 38 or any dependent claims.
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6 IN RE: CSP TECHS., INC.
over Giraud 3 in view of Hagen 4. The Examiner rejected
claim 29, which ultimately depends from claim 14, under
§ 103 as being unpatentable over Giraud, Hagen, and fur-
ther in view of Moon 5.
Giraud discloses “a moisture proof, resealable non-cy-
lindrical container and lid assembly.” Giraud col. 2
ll. 9–10. Giraud’s container may be “used to hold a phar-
maceutical product such as pills or glucose test strips.”
Id.
at col. 2 ll. 58–60. As shown in Figures 1 and 2 (duplicated
below), the container has a “flip-top” lid, whereby the re-
sealable cap is attached to the body of the container by a
hinge that has a recess, which functions as a bending point
during the opening and closing of the container.
Id.
at col. 2 ll. 26–31, 38–40. Giraud’s container and cap are
“non-circular in shape,” with “[s]uitable shapes includ[ing]
the square, triangle, ellipse, rectangle, trapezoid, and nu-
merous others.”
Id. at col. 2 ll. 45–51.
3 U.S. Patent No. 7,059,492.
4 U.S. Patent Pub. No. 2003/0133847 A1.
5 U.S. Patent No. 2,727,547.
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IN RE: CSP TECHS., INC. 7
Id. Figs. 1, 2.
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8 IN RE: CSP TECHS., INC.
Hagen discloses a container that has a “substantially
air and moisture tight seal” and “a housing made of a cover
and a base configured to retain a plurality of test strips.”
Hagen ¶ 14. Hagen teaches that, for certain embodiments,
“the height of the base is less than the height of each of the
test strips, such that a portion of each of the test strips ex-
tends beyond the distal or top edge of the base.” Id.; see
id.
¶ 60. Hagen also discloses that the container’s housing
“may take any of a variety of shapes,” including a “substan-
tially elliptical or substantially oval shape.”
Id. ¶ 59. Ha-
gen discloses an exemplary configuration whereby the
housing and cap are not attached (a “separable configura-
tion”).
Id. Hagen further explains that, as compared to
prior-art containers, its extended-test-strip container de-
sign makes it easier for users, particularly “visually and
dextrally impaired” individuals, to retrieve a single test
strip from the container “without damaging or contaminat-
ing any of [the] test strips.”
Id. ¶ 5; see
id. ¶¶ 3, 13, 60.
Moon discloses a “leak proof, water resistant and reus-
able” container with a flip-top lid that can be used for car-
rying medical supplies. Moon col. 1 ll. 20–22, 62–66.
Moon’s container is non-cylindrical in shape. See
id.
at col. 2 ll. 26–32, Figs. 1–4.
In a non-final office action, the Examiner found that
Giraud teaches most of the limitations of claim 14, but
acknowledged that it does not teach a container that is
“configured to store test strips such that the entire exposed
ends of the test strips extend beyond the dispensing open-
ing of the vial body and wherein the exposed ends are posi-
tioned within the lid when the lid is seated on the body
without damaging the exposed ends.” J.A. 912. The Ex-
aminer found that Hagen similarly discloses an air-tight,
elliptical container, but also one wherein the “exposed ends
of the test strips extend beyond the dispensing opening of
the vial body and wherein the ENTIRE exposed ends are
positioned within the lid when the lid is seated on the body
without damaging the exposed ends.”
Id. (emphasis in
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IN RE: CSP TECHS., INC. 9
original). The Examiner determined that it would have
been obvious to a person of ordinary skill in the art to mod-
ify Giraud’s container with the configuration of test strips
taught in Hagen because “such a configuration allows for
easy manipulation of individual test strips.”
Id. (citing Ha-
gen ¶ 60).
The Board affirmed the Examiner’s rejection of
claims 14–21, 23, 25, 27, 33, and 36–46 over Giraud and
Hagen. 6 Ex Parte Bucholtz, No. 2018-002139,
2019 WL
7374906, at *5–6 (P.T.A.B. Dec. 26, 2019) (Decision). The
Board rejected CSP’s argument that, because Hagen “dis-
courages” skilled artisans from using a hinge, the contain-
ers of Giraud and Hagen “would not have been ‘predictably
capable of being combined to achieve moisture tightness.’”
Id. at *3–4 (citations and emphasis omitted). The Board
explained that the Examiner’s combination did not rely on
Hagen’s “separable configuration,” nor was it “based on a
bodily incorporation of” such exemplary configuration into
Giraud’s container.
Id. at *4. According to the Board,
though Hagen teaches that its “separable configuration ad-
vantageously enables substantially air and moisture tight
seals to be created and maintained between the cover and
base by a variety of means,”
id. (quoting Hagen ¶ 59), that
did not mean that an ordinarily skilled artisan “would be
discouraged from combining Hagen’s ability to store test
strips with exposed ends that are not damaged when the
lid is closed with Giraud’s container,”
id.
Next, the Board rejected CSP’s argument that a person
of skill in the art would not have reasonably expected to
succeed in creating a moisture-tight container having an
elliptical shape, a flip-top, and a “heightened lid.” The
6 The Board reversed, however, the Examiner’s obvi-
ousness rejection of claims 14, 27, 36–39, and 42–44 over
the combination of Hagen and U.S. Patent Pub.
No. 2007/0080093 A1 (Boozer).
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10 IN RE: CSP TECHS., INC.
Board noted that CSP had defined “heightened lid” as
“where test strip ends extend beyond the dispensing open-
ing and are positioned within the lid when closed without
damaging the strip ends,” and had described such feature
as being “‘designed such that the strips would somehow be
rendered accessible and easily extractable, particularly by
a patient who has finger swelling and/or arthritis second-
ary to diabetes,’ such as by ‘vaulting the lid [to] reduce[]
hoop strength (resistance to inward deflection) in the lid,
particularly around the longer arcs of the elliptical cross-
section.’”
Id. (alterations in original) (citations omitted).
The Board concluded that because claim 14 “does not recite
a specific part of the container and how it is so configured
or designed, such as the lid having a specific height or
structural vaulting designed to reduce hoop strength,”
CSP’s argument and the declaration of inventor Michael
Bucholtz submitted in support thereof were “not commen-
surate with the scope of claim 14.”
Id.
Finally, because CSP had not provided a separate ar-
gument for the Examiner’s rejection of dependent claim 29,
the Board sustained the rejection of this claim over the
combination of Giraud, Hagen, and Moon for the same rea-
sons it sustained the rejection of claim 14.
CSP appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), and its
fact findings for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence
is “such relevant evidence as a reasonable mind might ac-
cept as adequate to support a conclusion.” OSI Pharms.,
LLC v. Apotex Inc.,
939 F.3d 1375, 1381 (Fed. Cir. 2019)
(quoting Consol. Edison Co. v. N.L.R.B.,
305 U.S. 197, 229
(1938)). “Obviousness is a question of law based on under-
lying findings of fact.”
Id. at 1382 (quoting In re Kubin,
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IN RE: CSP TECHS., INC. 11
561 F.3d 1351, 1355 (Fed. Cir. 2009)). “An obviousness de-
termination requires finding that a person of ordinary skill
in the art would have been motivated to combine or modify
the teachings in the prior art and would have had a reason-
able expectation of success in doing so.”
Id. (quoting Re-
gents of Univ. of Cal. v. Broad Inst., Inc.,
903 F.3d 1286,
1291 (Fed. Cir. 2018)). “Whether a person of ordinary skill
in the art would have been motivated to modify or combine
teachings in the prior art, and whether he would have had
a reasonable expectation of success, are questions of
fact.”
Id. (quoting Regents of Univ. of
Cal., 903 F.3d
at 1291)).
Substantial evidence supports the Board’s finding that
a person of ordinary skill in the art would have modified
Giraud in view of Hagen to arrive at the claimed container.
Giraud discloses a moisture-tight, elliptical container
nearly identical to the claimed container except for a lid
that, when closed, can cover extended test strips, i.e., the
“heightened lid” feature. Giraud col. 2 ll. 9–10, 26–31,
38–40, 45–51, 58–60. Hagen discloses a moisture-tight
container with extended test strips that are undamaged by
a closed lid. Hagen ¶¶ 14, 60. Hagen also teaches that,
like Giraud’s container, its container can be elliptical in
shape.
Id. ¶ 59. Hagen further teaches that known diffi-
culties with grasping and manipulating test strips created
a need for easy manipulation that could be cured with an
extended-strip container design.
Id. ¶¶ 3, 5, 13, 60. Sub-
stantial evidence thus supports the Board’s and the Exam-
iner’s finding that a skilled artisan would have been
motivated to use Hagen’s test-strip configuration with a
container like Giraud’s to “allow[] for easy manipulation of
individual test strips.” Decision,
2019 WL 7374906, at *3;
J.A. 912.
On appeal, CSP contends that the Board failed to artic-
ulate a “rational apparent reason” why a person of ordinary
skill would have combined Giraud and Hagen. Appellant’s
Br. 20. In particular, CSP argues that the Board’s “alleged
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12 IN RE: CSP TECHS., INC.
reason to modify Giraud in view of Hagen (i.e., to allow for
‘easy manipulation of individual test strips’) has no support
in the evidence of record.”
Id. at 20–21; see
id. at 23 (“There
is no evidence of record that the problem Hagen was ad-
dressing exists in Giraud’s disclosure.”).
We disagree. Both the Examiner and the Board cited
Hagen’s teaching that extending a portion of the test strip
“beyond the base assembly . . . enable[s] an individual to
easily grasp a single test strip while avoiding many of the
problems associated with prior art devices,” namely, dam-
age or contamination of the test strips. Hagen ¶ 60; see
id.
¶ 5. That Hagen rather than Giraud expressly acknowl-
edges the problem in the art and the need for easier re-
trieval of test strips does not undermine the Board’s
obviousness determination based on the combination of Gi-
raud and Hagen. A conclusion of obviousness “cannot be
overcome ‘by attacking references individually where the
rejection is based upon the teachings of a combination of
references.’” Bradium Techs. LLC v. Iancu,
923 F.3d 1032,
1050 (Fed. Cir. 2019) (quoting In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986)); see In re Kel-
ler,
642 F.2d 413, 425 (CCPA 1981). Substantial evidence
thus supports the Board’s finding that a skilled artisan
would have been motivated to modify Giraud’s container
with the extended-test-strip configuration of Hagen based
on the benefits of such configuration taught by Hagen.
CSP also contends that the Board “fail[ed] to establish
any record” that a person of ordinary skill “would have had
a reasonable expectation of success in modifying Giraud in
light of the teachings of Hagen to achieve the claimed in-
vention.” Appellant’s Br. 23. Specifically, CSP argues that
the Board disregarded the declarations by inventor
Mr. Bucholtz and CSP employee William Spano that, in
CSP’s view, establish a lack of a reasonable expectation of
success in combining the various features of the prior art
(i.e., the elliptical, flip-top container of Giraud and the ex-
tended-test-strip configuration of Hagen) “into a single
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IN RE: CSP TECHS., INC. 13
container, while still achieving the exacting moisture tight-
ness standard” of the claims.
Id. at 25.
Contrary to CSP’s assertion, the Board’s decision
shows that it considered—and rejected as unpersuasive—
CSP’s evidence on the issue of reasonable expectation of
success. The Board accepted the Examiner’s reasoning as
to why the declarations failed to show that an ordinarily
skilled artisan would not have reasonably expected Ha-
gen’s extended-test-strip configuration to work with Gi-
raud’s elliptical container. Moreover, substantial evidence
supports the Examiner’s and the Board’s finding that a per-
son of ordinary skill would have reasonably expected Ha-
gen’s configuration to be workable in Giraud’s container.
Hagen teaches that elliptical-shaped containers, such as
Giraud’s, are workable with its configuration. Hagen ¶ 59.
Though CSP focuses on Hagen’s “separable configuration”
embodiment that omits a hinge, neither Hagen nor Giraud
discourages incorporating an extended-test-strip feature
into an elliptical, hinged container, or otherwise suggests
that such combination would be potentially problematic in
terms of moisture tightness.
Furthermore, in response to the Board’s conclusion
that the declaration evidence was not commensurate with
the scope of the claims, CSP asserts on appeal that “a
vaulted lid alone would present a challenge to achieving
the claimed moisture tightness.” Appellant’s Br. 33; see
Reply Br. 22 (arguing that a skilled artisan “would have
known that the claimed Heightened Lid Feature detracts
from moisture tightness because vaulting the lid reduces
hoop strength” and CSP “should not be required to claim
the negative consequence of reduced hoop strength”). As
the Board correctly recognized, however, claim 14 merely
requires that the container “store test strips such that ex-
posed ends of the test strips extend beyond the entire dis-
pensing opening of the body” and that the lid form a seal
when closed “without damaging the exposed ends.” As dis-
cussed above, substantial evidence supports the Board’s
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14 IN RE: CSP TECHS., INC.
finding that Hagen teaches this feature and that its config-
uration can be used with an elliptical-shaped container
such as Giraud’s.
CONCLUSION
We have considered CSP’s remaining arguments but
find them unpersuasive. Accordingly, the decision of the
Board is affirmed.
AFFIRMED
COSTS
No costs.
