Ex parte Burdine

Board of Patent Appeals and Interferences

Mar 24, 1999

08545920 (B.P.A.I. Mar. 24, 1999)

Application for patent filed October 20, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN M. BURDINE
____________
Appeal No. 98-0107
Application No. 08/545,9201
____________
ON BRIEF
____________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge and GONZALES, Administrative Patent
Judge.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 1 through 3 under 35 U.S.C. §
103. No other claims are pending in the application.
Appeal No. 98-0107 Page 2
Application No. 08/545,920
Strict antecedent basis is lacking for the2
recitation of “said compression spring means” in lines
15-16 of claim 1. Correction of this informality is in
order upon return of this application to the jurisdiction
of the examiner.
Appellant’s invention relates to a clip carrier for
storing and dispensing semi-automatic cartridge clips.
Each cartridge clip holds a group of the individual
cartridges. According to claim 1, the only independent
claim on appeal, the clip carrier comprises a container
(12) having opposite side panels (18, 20), opposite edge
panels (22, 24) and a bottom panel (16). Claim 1 recites
that a top part of one of the edge panels forms an entry
opening (32) for receiving and dispensing a cartridge
clip. Thus, cartridge clips are loaded into the carrier
through the entry opening (32) and are dispensed through
the same opening. According to claim 1, the entry opening
is recited to be similar in size and configuration to a
cartridge clip. The cartridge clips in the carrier are
supported on a push plate (42) which is biased toward the
end of the carrier having the entry opening by spring
means (44, 46).2
Appeal No. 98-0107 Page 3
Application No. 08/545,920
A copy of the appealed claims is appended to
appellant’s brief.
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under 35 U.S.C. § 103:
Puckett 2,779,522 Jan. 29,
1957
Buban et al. (Buban) 4,465,208 Aug. 14,
1984
Yablans 5,337,897 Aug. 16,
1994
Claims 1 through 3 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over “Puckett, Buban et al.,
or Yablans” (answer page 3). As we understand this
statement of the rejections, the examiner relies solely on
Puckett in the first rejection, solely on Buban in the
second rejection, and solely on Yablans in the third
rejection. With regard to each of these rejections, the
examiner concedes on page 4 of the answer that the
carriers of the applied references lack an entry opening
that is similar in size and configuration to a cartridge
clip. He also concedes that the applied references lack a
Appeal No. 98-0107 Page 4
Application No. 08/545,920
teaching of a carrier or magazine for storing and
dispensing semi-automatic cartridge clips. He
nevertheless takes the following position:
However, the carriers of Puckett, Buban et al., and
Yablans show and suggest that different articles of
similar shape can be dispensed and that the opening
is sized for the specific article to be dispensed.
It would have been obvious to shape the opening of
Puckett, Buban et al., and Yablans to the size of a
cartridge clip when it is desired to dispense a
cartridge clip. [Answer, page 4.]
We have carefully considered the issues raised in
this appeal together with the examiner’s remarks and
appellant’s arguments. As a result, we conclude that none
of the rejections can be sustained.
It is well established patent law that there must be
some teaching, suggestion or inference in the prior art as
a whole or some knowledge generally available to one of
ordinary skill in the art that would have led one of
ordinary skill in the art to make the modification needed
to arrive at the claimed invention. See, inter alia, In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed
Appeal No. 98-0107 Page 5
Application No. 08/545,920
Cir. 1988) and Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir. 1988).
See also In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257,
1258 (Fed. Cir. 1984) (The prior art must provide one of
ordinary skill in the art with the motivation to make the
modification needed to arrive at the claimed invention).
The Puckett patent discloses a magazine for receiving
and dispensing individual cartridges or shells, not
cartridge clips as defined in claim 1. Furthermore, the
aperture in Puckett’s panel 7, which corresponds to one of
the claimed edge panels in claim 1, is not sized to
receive and dispense cartridge clips as required by claim
1. The aperture in Puckett’s panel 7 is not even intended
to receive or dispense individual cartridges. Instead,
the individual cartridges are inserted and dispensed
through the side opening 24 bridging the side panel 10 and
the top panel 12. In addition, Puckett lacks a disclosure
of appellant’s claimed inwardly folded flanges.
Appeal No. 98-0107 Page 6
Application No. 08/545,920
Puckett is also lacking in any disclosure of
utilizing the magazine for dispensing other articles of
“similar shape” as asserted by the examiner, and even if
this reference contained such a teaching, we do not see
how that teaching, without more, would have suggested the
modifications required to arrive at the claimed invention.
In the final analysis, Puckett contains no teaching or
suggestion of appellant’s claimed container construction,
including the entry opening and folded flanges, that would
have led one of ordinary skill in the art to modify
Puckett’s magazine in the manner required to arrive at the
claimed invention. For these reasons we must reverse the
§ 103 rejection based on Puckett.
The Yablans patent discloses a magazine or carrier
for receiving and dispensing thin flat-sided sampler
strips containing lipstick or other material, not
cartridge clips. We find no disclosure in Yablans of
dispensing other articles of “similar shape” as asserted
by the examiner, and even if this reference contained such
a teaching, we do not see how that teaching, without more,
Appeal No. 98-0107 Page 7
Application No. 08/545,920
would have suggested the modifications required to arrive
at the claimed invention.
Furthermore, the dispensing aperture 53 in Yablans’s
magazine is not sized to receive and dispense cartridge
clips as required by claim 1. In addition, Yablans’s
dispensing aperture is not formed in a panel that
corresponds to the claimed edge panel in appellant’s
invention. Instead, the aperture 53 is formed by a cutout
51 at the open end of a finger slot 24 in the top panel 22
of the container.
In the final analysis, Yablans, like Puckett,
contains no teaching or suggestion of appellant’s claimed
container construction, including the size and location of
the entry opening, that would have led one of ordinary
skill in the art to modify Yablans’s magazine in the
manner required to arrive at the claimed invention. For
these reasons we must reverse the § 103 rejection based on
Yablans.
Appeal No. 98-0107 Page 8
Application No. 08/545,920
The Buban patent discloses a magazine for dispensing
strips of gum, not cartridge clips as defined in appealed
claim 1. Although Buban’s dispensing slot 50 is formed in
a container panel corresponding to one of appellant’s edge
panels, the slot 50 is not sized to receive and dispense
cartridge clips as required by claim 1. In addition, we
do not find a disclosure of any article of any “similar
shape” to amount to a suggestion of modifying Buban’s
container to receive and dispense cartridge clips. Thus,
Buban lacks a teaching or suggestion that would have led
one of ordinary skill in the art to modify the patentee’s
container in the manner required to arrive at the claimed
invention. For these reasons we must also reverse the §
103 rejection based on Bubans.
The examiner’s decision rejecting appealed claims 1
through 3 is reversed.
Appeal No. 98-0107 Page 9
Application No. 08/545,920
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HARRISON E. McCANDLISH ) APPEALS
Senior Administrative Patent Judge
) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
HEM/jlb
Appeal No. 98-0107 Page 10
Application No. 08/545,920
Robert M. Hessin
Dougherty Hessin Beavers & Gilbert
Two Leadership Square
211 North Robinson Suite 1400
Oklahoma City, OK 73102