Ex Parte Apps

Board of Patent Appeals and Interferences

Aug 31, 2005

09785100 (B.P.A.I. Aug. 31, 2005)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM PATRICK APPS
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Appeal No. 2005-1294
Application No. 09/785,100
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ON BRIEF
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Before KIMLIN, PAK and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
ON REQUEST ON REHEARING
Appellant requests a rehearing of the Board’s decision
entered August 31, 2005 (hereinafter referred to as “Decision”),
wherein we affirmed the examiner’s decision rejecting the claims
on appeal under 35 U.S.C. § 102(b) and (e).
We have carefully considered the arguments raised by the
appellant in the request for rehearing. However, those arguments
do not persuade us that our Decision was in error in any respect.
Appeal No. 2005-1294
Application No. 09/785,100
2
First, the appellant argues that the claimed functional
limitations are not taught by the prior art references. See the
Request for Rehearing, pages 3 and 4. Specifically, the
appellant argues that the prior art references do not teach the
claimed functional limitations relating to the size of the
display openings (i.e., “sized to reveal labels on the bottle
carries [sic., carriers] for displaying the bottle carriers in a
loaded crate”) recited in claims 1 and 2 and to the interior
shape of the floor or panel (for supporting bottle carriers)
recited in claims 1, 2, 15, 16, 28 and 33. Id.
As indicated at pages 2 and 7 of the Decision, the claimed
subject matter is directed to low depth nestable display crates.
This determination is consistent with the examiner’s
determination at page 10 of the Answer that:
Appellant doesn’t broadly claim the combination of a
crate and bottle carriers. Appellant’s claims are much
broader and are directed to the broad invention of a
bottle crate intended for use with bottle carriers.
However, rather than reciting the structures of the claimed
crates, the appellant relies on functional limitations to define
the novel aspect of the claimed crates, e.g., defining the crate
in terms of intended use with bottle carriers. See the
Decision, page 7. Specifically, we stated (id.) that:
Appeal No. 2005-1294
Application No. 09/785,100
The appellant recognizes the importance of describing the1
precise nature of the bottle carriers at page 4 of the Request
for Rehearing. However, the appellant does not recite the bottle
carrier in a precise manner. See the claims.
3
The appellant does not dispute the examiner’s finding
that the prior art references teach low dept nestable
crates corresponding to the crates included in claims
1, 15, 28 and 40, except for features [crate
structures] defined by the claimed functional
limitations relating to [intended use of] bottle
carriers.
In other words, the claimed crate structures will vary depending
on the precise nature or structure of the bottle carrier
encompassed by the claims on appeal. However, as pointed out at1
pages 2 and 8 of the Decision, the claims on appeal do not limit
the structure or shape of the bottle carrier. Nor does the
specification limit the structure or shape of the bottle carrier.
See the Decision, pages 2 and 8. Thus, relying on In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), we
gave the term “bottle carrier” the broadest reasonable
interpretation in light of the specification as follows:
[T]he [claim] term “bottle carriers” encompasses a
conventional thin plastic web material having circular-
shape holes (ring carrier) for bundling and
transporting multiple bottles and/or any other bottle
carriers, including those which conform to the shapes
of the interior surfaces of the prior art crates relied
upon by the examiner. [Emphasis added].
Appeal No. 2005-1294
Application No. 09/785,100
4
This interpretation is consistent with the examiner’s
determination at page 10 of the Answer that the claimed “[b]ottle
carrier refers to any hypothetically designed bottle carrier
. . . . ” See also the Brief, page 3, referring to the
examiner’s interpretation regarding “hypothetical bottle
carriers.” Any “hypothetical bottle carriers” also include the
conventional ring carrier shown at pages 3 and 4 of the Request
for Rehearing. Having interpreted the claims in that manner, we
found at pages 8 through 10 of the Decision that the structures
of the prior art crates relied upon by the examiner appear to be
identical or substantially identical to those included in the
claims. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429,
1432 (Fed. Cir. 1997); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977). In other words, the claimed functional
limitations relating to intended use of a bottle carrier do not
patentably distinguish the display opening size and internal
shape of the claimed crates from those of the prior art crates
since the claims on appeal do not limit the structure or shape of
the type of a bottle carrier employed. Thus, consistent with the
holding of Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432
referred to at page 8 of our Decision, we have properly shifted
the burden to the appellant to distinguish the structures of the
Appeal No. 2005-1294
Application No. 09/785,100
5
claimed crates from those of the prior art crates. However, the
appellant still has not demonstrated that the claimed
functionally defined display opening size and floor and panel
interior surfaces are patentably different from those of the
prior art crates. See the Request for Rehearing in its entirety.
The appellant’s reference to the conventional ring shape carrier
is of little or no moment since no structural difference between
the claimed crates and the prior art crates has been established.
Id. In this regard, we also note that the appellant has not
addressed our interpretation relating to hypothetical bottle
carriers such as those which conform to the shapes of the
interior surfaces of the prior art crates relied upon by the
examiner. Id. That is, since the bottle carrier can be in any
shape, including those conformed to the interior surfaces of the
prior art crates, and any size label can be attached anywhere in
the bottle carrier such that it is visible through the openings
of the prior art crates, we observe no patentable distinction
between the claimed and prior art crates.
The appellant states that “[c]larification and a chance to
further respond is requested, if the Board had envisioned a ring
Appeal No. 2005-1294
Application No. 09/785,100
Even if assuming, arguendo, the Decision includes a new2
ground of rejection, we note the appellant’s statement that
“[t]he Board’s decision constitutes new grounds of rejection
warranting re-hearing.” See the Request for Rehearing, page 3.
This statement indicates that the appellant exercised his option
of rehearing the case based on the same record in accordance with
37 CFR § 41.50(b)(2004). Thus, pursuant to 37 CFR § 41.52 (a)(1)
(2004), we need not permit further rehearing from a decision on
rehearing.
6
carrier of a type not discussed.” See the Request for Rehearing,
page 5. Having agreed with the appellant’s description of the
conventional ring carrier as indicated supra, we need not grant
this request. 2
The appellant requests that footnote 2 in the Decision “be
withdrawn so as not to confuse the record.” See the Request for
Rehearing, pages 5 and 6. We decline.
As is apparent from the statements in the footnote in
question, it is no more than advice to the examiner “in the event
of further prosecution.” We observe no confusion in the record.
In view of the foregoing, the appellant’s request for
rehearing is granted to the extent of reconsidering our Decision,
but is denied with respect to making any change thereto.
Appeal No. 2005-1294
Application No. 09/785,100
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REQUEST FOR REHEARING - DENIED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
CKP:hh
Appeal No. 2005-1294
Application No. 09/785,100
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KONSTANTINE J. DIAMOND
4010 E. 26 STREETTH
LOS ANGELES, CA 90023