Ex parte Bierly

Board of Patent Appeals and Interferences

Nov 6, 2000

08856228 (B.P.A.I. Nov. 6, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DON L. BIERLY
____________
Appeal No. 2000-0487
Application No. 08/856,228
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 7 to 9, 11, 12, 14, 15 and 20. Claim 2 to
6 and 13 have been objected to as depending from a non-allowed
claim. Claims 10 and 16 to 19 have been withdrawn from
consideration under 37 CFR § 1.142(b) as being drawn to a
nonelected invention. Claim 1 has been canceled.
We AFFIRM-IN-PART.
Appeal No. 2000-0487 Page 2
Application No. 08/856,228
In determining the teachings of D'Arques, we will rely1
on the translation provided by the USPTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a display carton and
a slide-out tray. A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
The prior art references of record (the applied prior
art) relied upon by the examiner in rejecting the appealed
claims are:
Whiley 2,238,545 Apr. 15,
1941
Lee 2,339,176 Jan. 11,
1944
Bekoff 2,771,986 Nov. 27,
1956
Jones 3,070,222 Dec. 25,
1962
Chaussadas 4,875,586 Oct. 24,
1989
D'Arques FR 1,492,902 Aug. 25, 19671
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Bekoff.
Appeal No. 2000-0487 Page 3
Application No. 08/856,228
Claims 7 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over D'Arques in view of Bekoff.
Claims 8, 9, 11 and 12 stand rejected under 35 U.S.C. §
103 as being unpatentable over D'Arques in view of Bekoff,
Jones, Chaussadas and Lee.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Jones in view of Lee and Chaussadas.
Claim 15 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Jones in view of Lee, Chaussadas and Whiley.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 13,
mailed June 29, 1999) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 12,
filed May 20, 1999) and reply brief (Paper No. 14, filed
August 20, 1999) for the appellant's arguments thereagainst.
Appeal No. 2000-0487 Page 4
Application No. 08/856,228
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
Claims 7 to 9, 11, 12 and 20
We will not sustain the rejection of claims 7 to 9, 11,
12 and 20 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
Appeal No. 2000-0487 Page 5
Application No. 08/856,228
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Independent claim 20 reads as follows:
A display carton for holding at least one article,
said display carton being formed by a foldable blank,
comprising:
a plurality of panels forming a hollow interior of
said carton upon erection of said blank to receive said
article; and
at least one panel forming a face of the carton
having a cutout opening allowing for the partial visual
and tactile inspection of said article, said cutout
opening being surrounded by a printed silhouette of said
article on said face;
the combined visual appearance of the article
through said opening and said silhouette providing a
substantially full visualization of the article;
whereby said article may be inspected and fully
visualized by simulation without opening said carton.
We have reviewed the applied prior art cited by the
examiner in the rejection of the claims 7 to 9, 11, 12 and 20
Appeal No. 2000-0487 Page 6
Application No. 08/856,228
Evidence of a suggestion, teaching, or motivation to2
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
(continued...)
and find ourselves in agreement with the examiner and the
appellant that the applied prior art does not teach or suggest
a cutout opening being surrounded by a printed silhouette of
the article on the face of the carton as set forth in claim 20
(the printed silhouette limitation). To supply this omission
in the teachings of the applied prior art, the examiner made
determinations (answer, p. 4) that the printed silhouette
limitation would have been obvious to an artisan to better
attract customers. However, this determination has not been
supported by any evidence that would have led an artisan to
arrive at the claimed invention. 2
Appeal No. 2000-0487 Page 7
Application No. 08/856,228
(...continued)2
modifying a reference, standing alone, is not "evidence." See
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
In our view, the only suggestion for modifying the
applied prior art in the manner proposed by the examiner to
meet the printed silhouette limitation stems from hindsight
knowledge derived from the appellant's own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
For the reasons set forth above, the decision of the
examiner to reject independent claim 20, as well as dependent
claims 7 to 9, 11 and 12, is reversed.
Claims 14
We sustain the rejection of claim 14 under 35 U.S.C. §
103.
Appeal No. 2000-0487 Page 8
Application No. 08/856,228
Independent claim 14 reads as follows:
A slide-out tray formed of a blank having a planar
body and a plurality of horizontal fold lines for
securing an article in a carton, comprising:
a fold over cover and a folded pop-in divider formed
from spaced slits spanning one of said horizontal fold
lines for securing an upper portion of said article; and
a tube for securing a lower portion of said article
including a recess in said tube.

Jones discloses a display and shipping package. As
shown in Figure 4, the package is formed from a blank 16
having a plurality of fold lines 18-24. As shown in Figures
1-3 and 6, the package includes (1) a base portion 11 formed
from bottom wall 28, front wall 29, top wall 30 and a portion
of rear wall 12, (2) openings 32-35 formed in the top wall 30
of the base portion 11 to receive base portions of tumblers
36, (3) diagonal wall 13 with elliptical openings 40-43, (4)
top wall 14, and
(5) top end flange 15.
Chaussadas' invention relates to a carton accommodating a
plurality of like articles, such as bottles, wherein a keel is
used to maintain the relative spacing of the adjacent bottles
Appeal No. 2000-0487 Page 9
Application No. 08/856,228
in the group within the carton. As shown in Figure 2, a
carton C accommodates a plurality of bottles B arranged in a
group. The carton comprises a top panel 18, base panels 12,24
and
spaced side wall panels 16,20 interconnecting and hinged to
opposed side edges of the top panel and the base panels. One
of the bottles Bc is arranged centrally of the group and a
locking and separating keel 38 is provided by the top panel
which has portions displaced out of the plane of the top panel
to hold the central bottle centrally of the group while
maintaining the relative spacing of adjacent bottles in the
group. As shown in Figure 1, the keel 38 includes step panel
44 hinged to side panel portion 38b along fold line 46 and
step panel 50 hinged to side panel portion 38c along fold line
52.
Lee discloses a carton for bottles. As shown in Figures
1-3, the carton is formed from a single blank of cardboard and
includes panels 29 and 30 that are cut to produce spacers 31
and the upper end wall panel 24 is provided with a terminal
panel 33 having elliptical openings 34.
Appeal No. 2000-0487 Page 10
Application No. 08/856,228
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Jones and claim 14,
we agree with the examiner (answer, p. 5) that the only
difference is the limitation that the slide-out tray includes
a "folded pop-in divider formed from spaced slits spanning one
of said horizontal fold lines" for securing an upper portion
of the article.
With regard to this difference, the examiner determined
(answer, p. 5) that "it would have been obvious in view of Lee
and Chaussadas to place dividers between the articles of Jones
to prevent article movements."
The argument advanced by the appellant (brief, pp. 14-15;
reply brief, pp. 4-5) is unpersuasive for the following
reasons.
Appeal No. 2000-0487 Page 11
Application No. 08/856,228
A statement of intended use does not qualify or3
distinguish the structural apparatus claimed over the
reference. In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305
(CCPA 1962). There is an extensive body of precedent on the
question of whether a statement in a claim of purpose or
intended use constitutes a limitation for purposes of
patentability. See generally Kropa v. Robie, 187 F.2d 150,
155-59, 88 USPQ 478, 483-87 (CCPA 1951) and the authority
cited therein, and cases compiled in 2 Chisum, Patents §
8.06[1][d] (1991).
First, we agree with the examiner (answer, p. 8) that
claim 14 is directed to the slide-out tray per se and not to
the combination of a slide-out tray in a carton. In that
regard, we note the appellant employs only intended use
phraseology in claim 14 (for securing an article in a carton;
for securing an upper portion of said article; and for
securing a lower portion of said article). 3
Second, we do not agree with the appellant that claim 14
is patentable since Jones fails to show a slide-out tray for a
carton. It is our determination that Jones clearly discloses
a display and shipping package that is inherently capable of
being placed/inserted in a carton. Thus, the limitation of
claim 14 of a slide-out tray for a carton is fully met by
Jones.
Appeal No. 2000-0487 Page 12
Application No. 08/856,228
Thus, we regard the examiner's application of the4
teachings of Lee to be mere surplusage.
Third, the appellant has argued deficiencies of each
reference on an individual basis, however, it is well settled
that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon
a combination of prior art disclosures. See In re Merck & Co.
Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Fourth, we agree with the appellant that the combined
teachings of Jones and Lee would not have suggested the
claimed invention and that it would not have been obvious to
place the Jones' tray inside the carton of Chaussadas.
However, it is our opinion that when the combined teachings of
the Jones and Chaussadas are considered, it would have been4
obvious at the time the invention was made to a person having
ordinary skill in the art to modify Jones' package to have a
top panel keel as suggested and taught by Chaussadas for the
self-evident advantages thereof.
Appeal No. 2000-0487 Page 13
Application No. 08/856,228
Lastly, the appellant argues that claim 14 is patentable
since (1) Jones requires an over wrap; (2) Jones has no fold
over cover; and (3) Jones does not engage and secure the upper
portion of the article. We find this argument unconvincing
since (1) claim 14 does not preclude an over wrap; (2) Jones
does not disclose an over wrap; (3) Jones has a fold over
cover (i.e., top wall 14 and top end flange 15); and (4) Jones
does engage and secure the upper portion of the article via
the uppermost portion of openings 40-43 in diagonal wall 13,
top wall 14 and top end flange 15 as shown in Figure 3.
For the reasons set forth above, the decision of the
examiner to reject claim 14 under 35 U.S.C. § 103 is affirmed.
Claim 15
Claim 15 which depends from claim 14 has not been
separately argued by the appellant. Accordingly, we have
determined that claim 15 must be treated as falling with
independent claim 14. See In re Nielson, 816 F.2d 1567, 1572,
2 USPQ2d 1525, 1528 (Fed. Cir. 1987). Thus, it follows that
Appeal No. 2000-0487 Page 14
Application No. 08/856,228
the examiner's rejection of claim 15 under 35 U.S.C. § 103 is
also sustained.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 7 to 9, 11, 12, 14, 15 and 20 under 35 U.S.C. § 103 is
affirmed with respect to claims 14 and 15 and reversed with
respect to claims 7 to 9, 11, 12 and 20.
Appeal No. 2000-0487 Page 15
Application No. 08/856,228
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0487 Page 16
Application No. 08/856,228
KING AND SCHICKLI
CORPORATE GATEWAY
3070 HARRODSBURG ROAD
SUITE 210
LEXINGTON, KY 40503
Appeal No. 2000-0487 Page 17
Application No. 08/856,228
JVN/dl