Ex Parte Bahnsen et al

Board of Patent Appeals and Interferences

Oct 13, 2010

10958824 (B.P.A.I. Oct. 13, 2010)

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.
10/958,824 10/05/2004 Clay Bahnsen 02315-P0031A 1095
24126 7590 10/13/2010
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
O HERN, BRENT T
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
10/13/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAY BAHNSEN,
MICHAEL L. GRINNALL,
DANIEL E. KORANDA, and
JAMES M. WIESE
____________

Appeal 2010-001148
Application 10/958,824
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001148
Application 10/958,824

2
This is an appeal from the final rejection of claims 31, 34, 36-42, and
55-62. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6.
Claim 31 is illustrative:
31. A blow-molded case for housing an object with an outline,
comprising:

a blow-molded double wall base portion having an inner wall, an
outer wall, and a space therebetween;

a blow-molded double wall lid portion connected to said base portion,
said lid portion having an inner wall, an outer wall, and a space
therebetween;

wherein said base portion has a first punched hole passing through the
inner wall of said base portion and into the space between the inner and
outer walls of said base portion, the first punched hole having a perimeter
that corresponds to the outline of the object for receiving the object; and

wherein said lid portion has a second punched hole passing through
the inner wall of said lid portion and into the space between the inner and
outer walls of said lid portion, the second punched hole having a perimeter
that corresponds to the outline of the object for receiving the object.

The Examiner relies upon the following reference as evidence of
obviousness:
Miller 6,267,238 B1 Jul. 31, 2001
Appellants' claimed invention is directed to a blow-molded case
having the recited structure comprising, inter alia, blow-molded base and lid
portions, each portion having an inner and outer wall and a hole punched
through the inner wall of both portions. The case finds utility for housing an
object whose perimeter corresponds to the punched holes.
Appeal 2010-001148
Application 10/958,824

3
Appealed claims 31, 34, 36-42, and 55-62 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Miller.
Appellants have not separately argued any particular claim on appeal.
Accordingly, all the appealed claims stand or fall together with claim 31.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection for essentially those
reasons expressed in the Answer.2
Miller, like Appellants, discloses a molded case for housing an object,
such as a tool, with recesses in the lid and base portions to accommodate the
object. While the recesses of Miller are not described as punched holes, we
agree with the Examiner that Appellants have not established a structural
distinction between a recess and a punched hole. How Appellants' hole or
recess is formed, by punching or otherwise, is a process consideration that
does not further limit or define the claimed structure of the recited case.
Appellants erroneously assert that "[t]he present invention, as
claimed, is directed to a combination of a blow-molded case housing an
object" (Br. 6, last ¶). Claim 31, with which all the appealed claims stand or
fall, does not claim a combination of a case and an object. The recitation
"for housing an object" is a statement of intended use that fails to impart any
particular structure to the case. Manifestly, since the claim does not define a
specific object in combination with the case, the recited holes may have an

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, first
paragraph.
Appeal 2010-001148
Application 10/958,824

4
infinite number of configurations and sizes. Hence, contrary to Appellants'
argument, it is not necessary to modify Miller's case to comprise a punched
hole because the depressions of Miller structurally meet the requirement of
the claimed hole.
We also find no merit in Appellants' argument that "if the cavity 46
and the depression 106 of Miller et al. were replaced with punched holes, as
required by all claims, the object would no longer be held snugly in place,
which is a major concern of Miller" (Br. 9, first full ¶). A hole or depression
of any size can snuggly hold an object in place if the hole and object are
properly sized.
Appellants also contend that "creating the presently claimed holes
during the blow molding process (rather than employing a separate step of
cutting holes in the walls of the case after blow molding) requires the use of
a more complicated mechanism, like the punching apparatus used for the
present invention" (Br. 10, first full ¶). This argument, however, is not
germane to the claimed subject matter which does not recite a process for
punching a hold during a blow molding process. Appealed claim 31 simply
requires that the base and lid portions have holes punched therein.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
Appeal 2010-001148
Application 10/958,824

5
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

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ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619