Ex parte Brick

Board of Patent Appeals and Interferences

May 25, 2001

08901171 (B.P.A.I. May. 25, 2001)

1
The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RALPH B. BRICK
__________
Appeal No. 2000-1794
Application 08/901,171
___________
HEARD: May 15, 2001
___________
Before ABRAMS, MCQUADE, and BAHR, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Ralph B. Brick appeals from the final rejection of claims
1 through 13, all of the claims pending in the application.
THE INVENTION
In general, the invention relates to a well known type of
packaging assembly comprising a wrapping material for covering
an article and an elongated tape having a hidden portion
disposed internally between the article and the wrapping
material and a visible gripping portion disposed externally of
Appeal No. 2000-1794
Application 08/901,171
Although the download date of this reference is subsequent to the July 28, 19971
filing date of the instant application, it is not disputed that the subject matter
discussed in the reference, particularly the Hershey’s Kisses packaging arrangement, is
prior art with respect to the appellant’s invention.
2
the wrapped article to facilitate removal of the wrapping
material from the
article. In the appellant’s package assembly, “the visible
gripping portion of the elongated tape [has] a first message
associated therewith and the hidden portion of the elongated
tape [has] a second message associated therewith
intellectually compatible with the first message which becomes
available for viewing upon unwrapping the wrapping material
from the article” (specification, page 3). A copy of claims 1
through 13 appears in the appendix to the appellant’s main
brief (Paper No. 18).
THE REFERENCES
The references relied on by the examiner to support the
final rejection are:
Lenkoff 3,826,499 Jul. 30, 1974
Hill 5,645,300 Jul. 8, 1997
“Hershey’s Kisses chocolates,”
http:/www.hersheys.com/totally/product/kisses (downloaded
January 12, 1999, 12:46PM) (Hersheys.com)1
THE REJECTIONS
Appeal No. 2000-1794
Application 08/901,171
3
Claims 1 through 11 and 13 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter the appellant regards
as the invention.
Claims 1 through 9 and 11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hersheys.com.
Claims 10 and 13 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Hersheys.com in view of Lenkoff.
Claim 12 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Hill.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 18 and 20) and to the examiner’s final
rejection and answer (Paper Nos. 14 and 19) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
DISCUSSION
I. The examiner’s refusal to enter the amendment filed
subsequent to final rejection
On March 28, 2000, the appellant filed an amendment (Paper
No. 15) subsequent to final rejection which has been refused
entry by the examiner (see the advisory action dated April 5,
Appeal No. 2000-1794
Application 08/901,171
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2000, Paper No. 16). The appellant (see pages 2 and 3 in the
reply brief) suggests that this Board has the authority to
remand the application to the examiner with instructions to
enter the amendment, and seemingly urges us to do so. It is
well settled, however, that the refusal of an examiner to enter
an amendment
after final rejection is a matter of discretion reviewable by
petition to the Commissioner rather than by appeal to this
Board. In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568
(CCPA 1967). Accordingly, we shall not review or further
discuss this matter.
II. The 35 U.S.C. § 112, second paragraph, rejection of claims
1 through 11 and 13
The examiner considers claims 1 through 11 and 13 to be
indefinite because
[i]n claims 1-11 and 13 the use of the recitation
“adapted to be” renders the claim indefinite.
Furthermore, it has been held that the recitation
that an element is “adapted to” perform a function is
not a positive limitation but only requires the
ability to so perform. It does not constitute a
limitation in any patentable sense. In re
[Hutchison], 69 USPQ 138. In claim 1, lines 6 and 7,
the recitation “a wrapper hidden portion . . . within
the inner surface of said wrapping material . . .” is
not clear [final rejection, page 2].
Appeal No. 2000-1794
Application 08/901,171
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In further explanation of this position, the examiner
states that
the use of the language “adapted to be” renders the
claim indefinite because, for example, Appellant is
not positively claiming the visible gripping portion
being positioned externally of the wrapping material.
The recitation “a wrapper hidden . . . within the
inner surface of the wrapping material . . .” is not
clear to the Examiner. The Examiner does not
understand how the wrapper hidden portion is nested
within the inner surface of said wrapping material.
Is the Appellant referring to the elongated single,
unitary tape as
being the “wrapper hidden portion”? How can the
wrapper which is used to completely wrap the outer
surface of the article, as claimed, hide within
itself? [answer, page 4].
The examiner’s determination that claims 1 through 11 and
13 are indefinite for these reasons is not well taken. The
“adapted to be” terminology in the claims constitutes
functional language which merely defines the claimed packaging
assembly elements in terms of what they are intended to do.
Contrary to the position taken by the examiner, there is
nothing intrinsically wrong with the use of this technique in
drafting a patent claim. See In re Swinehart, 439 F.2d 210,
213, 169 USPQ 226, 228 (CCPA 1971). The examiner’s additional
concern with the recitation in claim 1 of the “wrapper hidden
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Application 08/901,171
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portion” is also unfounded. When claim 1 is read, as it is
required to be, in light of the underlying specification, it is
reasonably clear that the “wrapper hidden portion” refers to a
part of the elongated tape which is adapted to be nested within
the inner surface of the wrapping material.
Thus, we shall not sustain the standing 35 U.S.C. § 112,
second paragraph, rejection of claims 1 through 11 and 13.
III. The 35 U.S.C. § 103(a) rejection of claims 1 through 9 and
11 as being unpatentable over Hersheys.com
Hersheys.com discusses the familiar package for a
Hershey’s Kisses chocolate. It is not disputed that this
package comprises
a foil wrapper completely enclosing the chocolate and an
elongated tape having a hidden portion lying between the
wrapper and the chocolate and a visible gripping portion
extending out of the wrapper and bearing the word “KISSES.”
As conceded by the examiner (see page 3 in the final
rejection), Hersheys.com does not respond to the limitations in
independent claim 1, or the corresponding limitations in
independent claim 11, requiring the visible gripping portion of
the tape to have printed thereon a first response solicitive
message and the spaced wrapper hidden portion of the tape to
Appeal No. 2000-1794
Application 08/901,171
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have printed thereon a second differing and responsive
completing portion of the message intellectually compatible
with and
functionally pertaining to and completing the message. The
examiner nonetheless concludes that
[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made
to provide the necessary printed matter on the
elongated tape for advertisement purposes as
necessitated by the end user since it would only
depend on the intended use of the assembly and the
desired information to be displayed. Further, it has
been held that when the
claimed printed matter is not functionally related to
the substrate it will not distinguish the invention
from the prior art in terms of patentability. In re
Gulack, 217 USPQ 401, (CAFC 1983). The fact that the
content of the printed matter placed on the substrate
may render the device more convenient by providing an
individual with a specific type of packaging assembly
does not alter the functional relationship. Mere
support by the substrate for the printed matter is
not the kind of functional relationship necessary for
patentability. Thus, there is no novel and unobvious
functional relationship between the printed matter
and the elongated tape which is required for
patentability [final rejection, pages 3 and 4].
Differences between an invention and the prior art cannot
be ignored merely because those differences reside in the
content of printed matter. In re Gulack, 703 F.2d 1381, 1385,
217 USPQ 401, 403-04 (Fed. Cir. 1983). Where the printed
Appeal No. 2000-1794
Application 08/901,171
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matter is not functionally related to the substrate, it will
not distinguish the invention from the prior art in terms of
patentability. Although the printed matter must be considered,
in that situation it may not be entitled to patentable weight.
What is required is
the existence of differences between the claims and the prior
art sufficient to establish patentability. The bare presence
or absence of a specific functional relationship, without
further analysis, is not dispositive of obviousness. Rather,
the critical question is whether there exists any new and
unobvious functional relationship between the printed matter
and the substrate. Id.
In the present case, claims 1 and 11 do indeed recite a
specific functional relationship between the response
solicitive and responsive “printed matter” and the tape
“substrate,” i.e.
that the response solicitive matter be printed on the visible
gripping portion of the tape and that the responsive matter be
printed on the spaced hidden portion of the tape. The
examiner’s conclusion that it would have been obvious to
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provide the Hersheys.com tape with these features is completely
devoid of factual support. Hence, the examiner’s ultimate
conclusion that the differences between the subject matter
recited in claims 1 and 11 and the applied prior art are such
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art must fall.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1 and 11, or of claims 2 through 9
which depend from claim 1, as being unpatentable over
Hersheys.com.
IV. The 35 U.S.C. § 103(a) rejection of claims 10 and 13 as
being unpatentable over Hersheys.com in view of Lenkoff
Claims 10 and 13 depend, either directly or indirectly,
from independent claims 1 and 11, respectively. Suffice to say
that Lenkoff’s disclosure of games having marking sheets
printed with
invisible ink and marking pens designed to make such printing
visible does not cure the above noted deficiencies of
Hersheys.com with respect to the subject matter recited in
parent claims 1 and 11.
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Therefore, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 10 and 13 as being unpatentable
over Hersheys.com in view of Lenkoff.
V. The 35 U.S.C. § 103(a) rejection of claim 12 as being
unpatentable over Hill
Independent claim 12 recites an elongated tape and is
similar to independent claims 1 and 11 in that it requires the
tape to include opposed, i.e., opposite, extremities having
printed thereon functionally compatible message portions which
are response solicitive and responsive, respectively.
Hill discloses a label/wrapper composed of a flexible
elongated strip of paper or plastic adapted to be wrapped
around
packages for food or other products. The label/wrapper may
carry printed indicia relating to trademarks, logos, product
names, cooking information, product coupons, recipes and the
like.
In essence, the examiner (see page 5 in the final
rejection) concedes Hill to be unresponsive to the printed
matter limitations in claim 12 in the same sense that
Hersheys.com is
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Application 08/901,171
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unresponsive to the printed matter limitations in claims 1 and
11. The examiner’s position that these differences do not
constitute patentable distinctions is substantively identical
to that advanced with respect to claims 1 and 11 and the
Hersheys.com reference and is unpersuasive for the same
reasons.
Therefore, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 12 as being unpatentable over Hill.
VI. New rejection
The following new rejection is entered pursuant to 37 CFR
§ 1.196(b).
Claims 1, 11 and 13, and claims 2 through 10 which depend
from claim 1, are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the
invention.
Independent claim 1 is unclear as to the relationship
between the “single message” and the subsequently recited
“first response solicitive message.” Amending the recitation
of the “first response solicitive message” to read as –-a first
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Application 08/901,171
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response solicitive portion of said message–- would overcome
this problem.
Independent claim 11 is similarly unclear as to the
relationship between the “single message” and the subsequently
recited message/message portion limitations. Moreover, these
subsequently recited message/message portion limitations are
inconsistent in and of themselves. For example, the terms
“said first portion” and “said written intellectually response
solicitive message” lack a proper antecedent basis.
Finally, claim 13 is unclear in that the preambular
recitation of “The elongated tape of Claim 11" and the
recitation of “said messages” lack a proper antecedent basis.

SUMMARY
The decision of the examiner to reject claims 1 through 13
is reversed; and a new rejection of claims 1 through 11 and 13
is entered pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37
Appeal No. 2000-1794
Application 08/901,171
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CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b).
NEAL E. ABRAMS )
Appeal No. 2000-1794
Application 08/901,171
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Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
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)
)
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)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
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