Ex Parte Chan

Board of Patent Appeals and Interferences

Aug 30, 2011

10608054 (B.P.A.I. Aug. 30, 2011)

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.
10/608,054 06/27/2003 Michael L.F. Chan TRA-007 7895
3897 7590 08/31/2011
SCHNECK & SCHNECK
P.O. BOX 2-E
SAN JOSE, CA 95109-0005
EXAMINER
MILLER, BENA B
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
08/31/2011 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 MICHAEL L.F. CHAN
____________

Appeal 2009-014114
Application 10/608,054
Technology Center 3700
____________

Before WILLIAM F. PATE III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014114
Application 10/608,054

2
STATEMENT OF THE CASE
Michael L.F. Chan (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting under 35 U.S.C. § 102(b) claim 19
as anticipated by McIlhenney (US 1,860,586, issued May 31, 1932).1
Claims 20-23 have been withdrawn by the Examiner. Claims 1-18 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a gift box having an inner box for
holding a gift. Spec. 1, ll. 32-33 and fig. 1.
Claim 19, the sole claim, is representative of the claimed invention
and reads as follows:
19. A device for display of a gift item suitable for mailing
comprising,
an inner box of rectangular cross section with opposed top and
bottom sections having dimensions for accommodating a gift therein,
said inner box having a transparent wall through which said gift is
visible,
an outer box with opposed top and bottom sections having
dimensions for snug nesting of the inner box by ingress through an
end of the outer box between the top and bottom sections, the outer
box having a cutout region in the one of the opposed top and bottom
sections through which the inner box is visible.

1 Appellant also filed a Declaration under 37 C.F.R. § 1.132 on Nov. 28,
2005. However, evidence of secondary considerations is irrelevant to 35
U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re
Wiggins, 488 F.2d 538, 543 (CCPA 1973).

Appeal 2009-014114
Application 10/608,054

3
SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant argues that McIlhenney fails to teach “an inner box of
rectangular cross section with opposed top and bottom sections,” as required
by claim 19. Br. 10. See also Br., Claims Appendix. According to
Appellant, the dictionary definition of the term “box” is “a container with a
flat base and sides and a lid.” Id. Appellant argues that (1) McIlhenney’s
tubular member 12 is not a “box” having a “flat base, sides and a lid”; and
(2) McIlhenney’s tubular member 12 “suggests the 3-sided cardboard
dividers found in confectioner’s samplers.” Id. In response, the Examiner
takes the position that the combination of tubular member 12 and transparent
paper 11 of McIlhenney constitutes the inner “box” and that the top and
bottom surfaces of transparent paper 11 constitute the top and bottom
sections, respectively, of the inner “box”. Ans. 3. We disagree with
Appellant’s position for the following reasons.
Accepting Appellant’s proffered definition of the term “box” to mean
“a container with a flat base and sides and a lid” (see Br. 10, we find that
McIlhenney teaches a display package including tubular member 12
enclosed in transparent paper or sheet cellophane 11. See McIlhenney, col.
2, ll. 76-80 and fig. 6. As such, although we agree with Appellant that
tubular member 12 is not a “box,” nonetheless, we find that the Examiner’s
proposed combination of McIlhenney’s tubular member 12 and transparent
paper or sheet cellophane 11 forms a container with a flat base (transparent
paper or sheet cellophane 11), sides (transparent paper or sheet cellophane
Appeal 2009-014114
Application 10/608,054

4
11 and tubular member 12), and a lid (transparent paper or sheet cellophane
11) (see Figure 6 of McIlhenney). We further agree with the Examiner’s
position that the combination of tubular member 12 and transparent paper or
sheet cellophane 11 of McIlhenney constitutes a rectangular cross section
having opposed top and bottom sections. Ans. 3. As such, we find that the
combination of tubular member 12 and transparent paper or sheet cellophane
11 of McIlhenney constitutes an inner “box,” Consequently, we agree with
the Examiner that McIlhenney teaches “an inner box of rectangular cross
section with opposed top and bottom sections,” as required by claim 19.
Appellant next argues that McIlhenney fails to teach an “inner box
having a transparent wall,” as required by claim 19. Br. 10. See also Br.,
Claims Appendix. According to Appellant, McIlhenney’s transparent paper
or sheet cellophane 11 does not constitute a “transparent wall2,” but rather a
“covering” of tubular member 12 because once transparent paper or sheet
cellophane 11 is removed, it must be resealed by heat, tape, or glue. In
contrast, a box with a transparent wall may be opened, the contents removed
and replaced, then closed without glue or tape. Id.
In this case, McIlhenney teaches that candy or other contents are
packed in tubular member 12 and entirely wrapped and sealed in transparent
paper or sheet cellophane 11. McIlhenney, col.2, ll. 76-80 and fig. 6. We
further find that McIlhenney teaches that the inner box (i.e., combined
tubular member 12 and transparent paper or sheet cellophane 11) is placed in
an outer box so that the contents of the inner box “can be readily inspected

2 An ordinary and customary meaning of the term “wall” that is most
consistent with the Specification and the understanding of those of ordinary
skill in the art is “5 : a material layer enclosing space (the ~ of a container)”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2005).
Appeal 2009-014114
Application 10/608,054

5
through the transparent wrapper [11] when slide 7 is partly withdrawn.”
McIlhenney, col.2, ll. 80-83 and fig. 2. Accordingly, because transparent
paper or sheet cellophane 11 of McIlhenney (1) serves as a layer that
encloses tubular member 12 and its contents and (2) allows the contents of
tubular member 12 to be inspected (viewed), we find that transparent paper
or sheet cellophane 11 of McIlhenney constitutes a transparent material layer
enclosing space, hence constitutes a “transparent wall.”
Lastly, we note that claim 19 does not require an inner box that “may
be opened, the contents removed and replaced, then closed without glue or
tape.” As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Hence, we
agree with the Examiner that the top surface of transparent paper or sheet
cellophane 11 of McIlhenney constitutes a “transparent wall,” as called for
by claim 19. Ans. 4.
In conclusion, for the foregoing reasons, the rejection of independent
claim 19 under 35 U.S.C. § 102(b) as anticipated by McIlhenney is
sustained.

DECISION
The decision of the Examiner is affirmed as to independent claim 19.

AFFIRMED

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