Ex parte Cain et al.

Board of Patent Appeals and Interferences

Jan 14, 2002

09178951 (B.P.A.I. Jan. 14, 2002)

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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEITH CAIN and JANET CAIN
____________
Appeal No. 2001-1844
Application No. 09/178,951
____________
ON BRIEF
____________
Before FRANKFORT, STAAB and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 5, all of the claims pending in
this application.
As noted on page 4 of the specification, appellants’
invention relates to a food storage organization system that
provides the user with a convenient means by which to label
Appeal No. 2001-1844
Application No. 09/178,951
2
leftover food containers in their refrigerators, indicating
the date upon which the container was placed in the
refrigerator. Representative independent claim 1 can be found
in Paper No. 4, filed April 10, 2000.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Namisniak et al. 5,711,160 Jan 27, 1998
(Namisniak ‘160)
Johnson 5,934,707 Aug. 10, 1999
(filed May 30, 1997)
Claims 1 through 5 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Namisniak ‘160 in view of
Johnson. On page 3 for the answer, the examiner has set forth
her position that
Namisniak ‘160 teaches a food organization system
including marker means 22 attached to the lid of a
food storage container and calendar means (Figures 1
and 2) which correlates with the markers. The date
upon which a food storage container was placed
inside the refrigerator can be ascertained by
matching the marker means to the calendar.
Namisniak ‘160 does not teach the use of magnets as
the marker system, however, this is common in the
art. Johnson teaches using magnetic means to attach
Appeal No. 2001-1844
Application No. 09/178,951
3
markers (column 3, line 13). Johnson also teaches a
magnetically responsive surface (column 2 lines 1-4)
for attaching the magnets. It would have been
obvious to a person having ordinary skill in the art
to utilize the magnets of Johnson in the device of
Namisniak ‘160 to provide an easier to use marker
system.
The markers of Johnson include a variety of colors
and shapes.
Rather than reiterate the examiner's further comments
regarding the above-noted rejection and the conflicting
viewpoints advanced by the examiner and appellants regarding
the rejection, we make reference to the examiner's answer
(Paper No. 10, mailed September 18, 2000) for the reasoning in
support of the rejection, and to appellants’ brief (Paper No.
9, filed September 11, 2000) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of
Appeal No. 2001-1844
Application No. 09/178,951
4
our review, we have made the determination that the examiner’s
above-noted rejection will not be sustained. Our reasons
follow.
Before turning to the merits of the rejection before us
on appeal, we note our agreement with the examiner’s position
(answer, page 4) that Johnson is available as a reference in
the present case under 35 U.S.C. § 102(e) since that patent is
“by another” and its filing date of May 30, 1997 is before the
filing date of the present application (October 26, 1998) and
appellants have not provide any evidence to prove an actual
date of completion of the invention prior to the filing date
of the Johnson patent (see, 37 CFR § 1.131).
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); In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is
Appeal No. 2001-1844
Application No. 09/178,951
5
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). 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 combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Looking at the examiner’s rejection, we observe that the
only difference identified by the examiner between the subject
matter of appellants’ claim 1 on appeal and the food storage
tracking system of Namisniak ‘160 is that Namisniak ‘160 “does
not teach the use of magnets as the marker system” (answer,
page 3). However, our review of appellants’ independent claim
1 and Namisniak ‘160 reveals other deficiencies in the primary
reference that have not been addressed by the examiner. More
specifically, claim 1 on appeal sets forth, inter alia, a
Appeal No. 2001-1844
Application No. 09/178,951
6
plurality of marker means having a ferromagnetic base
supporting identification indicia and “an anchoring plate
having a ferrous composition... permanently affixed to the lid
of a food storage container and allowing for the removable
attachment of said marker means thereto.”
While we would view the magnetic tabs (12) of Namisniak
‘160, seen in Figures 1, 2 and 4, etc., as being “marker
means” comprising a ferromagnetic base supporting
identification indicia, we find nothing in Namisniak ‘160 that
corresponds to the anchoring plate of ferrous composition
permanently affixed to the lid of a food storage container and
allowing for the removable attachment of marker means thereto,
as set forth in appellants’ independent claim 1. A review of
the Johnson patent applied by the examiner in combination with
Namisniak ‘160 likewise reveals no such “anchoring plate”
permanently affixed to the lid of a food storage container.
Thus, like appellants, we find that the references applied by
the examiner fail to disclose or teach every element of the
claimed subject matter and that it is only through the use of
impermissible hindsight that the examiner could conclude that
Appeal No. 2001-1844
Application No. 09/178,951
7
it would have been obvious to one of ordinary skill in the art
to combine the teachings of the applied references to
Namisniak ‘160 and Johnson so as to arrive at the claimed
invention defined in appellants’ claims 1 through 5 on appeal.
The examiner’s assertion (answer, page 3) that it would
have been obvious to a person having ordinary skill in the art
to utilize the magnets of Johnson in the device of Namisniak
‘160 to provide for an easier to use marking system, in no way
accounts for the difference we have noted above. This is
especially true since we see no substantive difference between
the magnetic tabs (12) of Namisniak ‘160 that are applied to
the calendar means therein and the masks (e.g., 16, 18, 20)
that are applied to the calendar in Johnson. While Namisniak
‘160 (col. 4, lines 20-29) makes reference to reusable bands
or disposable tapes that match identifier swatches on the base
unit (10) and which may be used to mark prepackaged perishable
items, we find nothing in the applied references relied upon
by the examiner which teaches or suggests the particular form
Appeal No. 2001-1844
Application No. 09/178,951
8
of container marker arrangement set forth in the claims before
us on appeal.
The examiner’s further observation on page 5 of the
answer that “Namisniak teaches labeling containers so as to
remember dates... and Johnson teaches a removable, reusable
system for labeling special days on a calendar,” while true,
does nothing to render obvious the particular food age
organization system defined in appellants’ claims on appeal.
In light of the foregoing, we will not sustain the
examiner’s rejection of claims 1 through 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Namisniak ‘160 and
Johnson. The decision of the examiner is, accordingly,
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
Appeal No. 2001-1844
Application No. 09/178,951
9
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/ki
Appeal No. 2001-1844
Application No. 09/178,951
10
Law Offices of John D. Gugliotta
Suite 202
137 South Main Street
Akron, OH 44308