Ex Parte Countee

Board of Patent Appeals and Interferences

Jan 16, 2003

29094432 (B.P.A.I. Jan. 16, 2003)

1
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not written for publication and is not binding precedent of the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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH COUNTEE JR.
__________
Appeal No. 2002-1818
Application 29/094,432
___________
HEARD: December 11, 2002
___________
Before GARRIS, FRANKFORT, and SAADAT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of the following design claim:
The ornamental design for a RECLOSABLE, EXPANDED SNACK
CARTON as shown and described.
As is apparent from the drawings and description in the
specification of the present design application, appellant’s
invention is directed to a reclosable snack carton in an expanded
or flexed, open configuration, i.e., where the top closure
Appeal No. 2002-1818
Application 29/094,432
2
portion of a normally rectangular parallelepiped carton has been
fully opened and pressure applied to the narrow side panels of
the carton to cause the large front and back panels of the carton
to flex in a particular way to provide an expanded, open
configuration shown in a first embodiment in Figures 1 through 7
and a second embodiment in Figures 8 through 14 of the
application.
More particularly, as noted on pages 2 and 3 of appellant’s
brief, it is apparent that the claimed expanded carton includes
specific score lines arranged on each of the large front and back
panels extending from the bottom corners of the panels to the
center of the top edge of the panels and a single score line
extending from that point to the top edge of each of the front
and back closure flaps, thereby providing a hexagonal appearance
to the top opening of the flexed and expanded carton (e.g., Fig.
6) and three triangular, planar portions bounded by straight
lines on each of the front and back panels (e.g., Figs. 1, 2 and
4). As is further apparent from the side views (e.g., Figs. 3
and 5), the expanded carton has a straight tapered appearance
which narrows from the top edges of the front and back panels to
the bottom of the carton. In addition, as can be clearly seen in
Figure 7, for example, the claimed expanded carton also has a
Appeal No. 2002-1818
Application 29/094,432
1 Although not expressly stated, it is clear that the
examiner must also consider it to have been obvious to replace
the score line configuration (elements 72b, 74b and 76b) on back
3
hexagonal appearance when viewed from the bottom of the carton.
Four separate top flaps with no connection at their side edges
and a liner inside the carton are also shown in the drawings.
The references of record relied upon by the examiner as
evidence of obviousness under 35 U.S.C. 103 are:
Luckett 2,176,912 Oct. 24, 1939
Zoss et al. (Zoss) 5,292,058 Mar. 8, 1994
The appealed design claim stands rejected under 35 U.S.C.
§ 103 as being unpatentable over Zoss in view of Luckett. In the
examiner’s opinion, Zoss discloses basically all the
characteristics of the claimed design with the only difference
residing in the configuration of the score lines on the front and
rear panels of Zoss’ package. To account for this difference,
the examiner turns to the container of Luckett (Fig. 3), urging
that it would have been obvious to a designer of ordinary skill
in the art at the time the invention was made “to have modified
the Zoss package by replacing it’s score line configuration
(elements 72f, 74f and 76f) with that of the score line
configuration (elements 31, 32 and 33) of the Luckett package”
(answer, page 3).1
Appeal No. 2002-1818
Application 29/094,432
panel (28) of the package in Zoss with the score line
configuration (elements 31, 32 and 33) of the Luckett package,
thereby resulting in an article (carton) the examiner
characterizes as being “strikingly similar in general overall
appearance of [sic, to] the claimed design” (answer, page 3).
4
OPINION
Having carefully considered the issues raised in this appeal
in light of the examiner's position and remarks as set forth in
the examiner’s answer (Paper No. 19, mailed February 25, 2002)
and appellant's arguments as set forth in the brief (Paper No.
18, filed December 18, 2001) and reply brief (Paper No 20, filed
April 29, 2002), it is our conclusion that the examiner's
rejection of the present design claim under 35 U.S.C. § 103 will
not be sustained. Our reasons follow.
In determining the patentability of a design, it is the
overall appearance, the visual effect as a whole of the design,
which must be taken into consideration. See In re Rosen, 673
F.2d 288, 390, 213 USPQ 347, 349 (CCPA 1982). Where the inquiry
is to be made under 35 U.S.C. 103, the proper standard is whether
the design would have been obvious to a designer of ordinary
skill who designs articles of the type presented in the
application under consideration. The “ordinary designer” is one
who brings certain background and training to the problems of
Appeal No. 2002-1818
Application 29/094,432
5
developing designs in a particular field. See In re Nalbandian,
661 F.2d 1214, 1216, 211 USPQ 782, 784-85 (CCPA 1981).
Furthermore, as a starting point when a § 103 rejection is based
upon a combination of references, there must be a reference, a
"something in existence," the design characteristics of which are
basically the same as the claimed design. Once a reference meets
the test of a basic design reference, ornamental features may
reasonably be interchanged with or added from those in other
pertinent references, when such references are "so related that
the appearance of certain ornamental features in one would
suggest the application of those features to the other." See In
re Rosen, supra, and In re Glavas, 230 F.2d 447, 450, 109 USPQ
50, 52 (CCPA 1956). If, however, the combined teachings of the
applied references suggest only components of the claimed design,
but not its overall appearance, an obviousness rejection is
inappropriate. See In re Cho, 813 F.2d 378, 382, 1 USPQ2d 1662,
1663-64 (Fed. Cir 1987).
In the present case, appellant has challenged the examiner's
determination that the expanded package seen in Zoss is a Rosen-
type reference (brief, pages 4-6 and reply brief, pages 3-4).
Appellant further argues with regard to the applied prior art
references that a designer of ordinary skill who designs cartons
Appeal No. 2002-1818
Application 29/094,432
6
like that claimed in the present application would not have made
the substitution posited by the examiner, because such a
modification would greatly change the overall curved and geodesic
appearance of the Zoss package into a planar angular design with
straight borders, thereby changing the overall appearance of the
top, bottom, front and back, and the sides of the Zoss package,
i.e., changing nearly every element of Zoss’ package (brief,
pages 7-8). In addition, appellant argues that the modification
proposed by the examiner is an inappropriate modification of the
Zoss package because Zoss “teaches away” from any such
modification of the score line configuration therein (brief pages
9-11 and reply brief, pages 4-6).
Dealing with the Rosen reference issue first, we note that
the only showing of the expanded package of Zoss is found in
Figure 1 of that patent, which appears to be a top, front
perspective view of the package in its expanded configuration.
Apparently, from this view alone the examiner contends that the
package of Zoss “discloses basically all the characteristics of
the claimed design” (answer, page 4), with the “only difference”
residing in the configuration of the score lines on the front and
rear panels of Zoss’ package. The examiner then concludes that
the design characteristics of Zoss satisfy the Rosen requirement
Appeal No. 2002-1818
Application 29/094,432
7
under 35 U.S.C. § 103 of being a “something in existence.”
However, after careful consideration of the teachings of the Zoss
reference as a whole, we agree with appellant’s assessment in the
brief and reply brief that the expanded package seen in Zoss is
not a “something in existence” the design characteristics of
which are basically the same as the claimed design, and thus
conclude that Zoss is not a Rosen reference.
Like appellant, we note that the examiner’s position that
“the only difference resides in certain configuration of score
lines of the front and rear side panels” (answer, page 4), is in
error, because it fails to take into account the overall visual
impression created by the expanded package of Zoss, which visual
impression a designer of ordinary skill would have fully
appreciated after having read the specification of the Zoss
patent. More particularly, while Zoss discloses a package or
carton having score lines on its front and back surfaces, the
patent makes clear (col. 6, lines 3-15) that the arrangement of
the score lines therein allows the panels (18, 28, 46, and 60) to
be
flexed into a non-planar shape with edges 48, 56, 62, and 68
of panels 18, 24, 28, and 32, respectively, and edges 47,
78, 96, and 80 of panels 46, 54, 60, and 66 being open and
generally of an oval shape (emphasis added).
Appeal No. 2002-1818
Application 29/094,432
8
In addition, at column 6, lines 35-42, Zoss notes that
spacing score lines 72, 74, and 76 from side edges 20 and 22
of panel 18 and side edges 26 and 30 of panel 28 and from
bottom edges 44 gives rigidity to panels 18 and 28 to assist
in their return to a static, planar condition.
Additionally, the Y-shape divides panels 18 and 28 into 3
flat areas which have a geodesic configuration when panles
18 and 28 are flexed outwardly and have a tendency to return
to a static planar condition.
On page 6 of the brief, appellant provides a definition of
“geodesic” which indicates that this term pertains to the
geometry of curved surfaces, in which geodesic lines take the
place of straight lines of plain geometry.
In light of the foregoing, it is clear to us that a designer
of ordinary skill who designs articles of the type claimed in the
present application would have readily recognized and appreciated
that the expanded package shown in Figure 1 of Zoss has three
interconnected areas on each of the front and back panels which
are rounded or curved (i.e., are of geodesic configuration) and
which provide the expanded package of Zoss with an overall curved
appearance and thereby provide the package and opening thereof
with a generally oval shape, whereas appellant’s claimed carton
creates an overall planar, tapered and triangular visual
impression with a hexagonal top opening.
Appeal No. 2002-1818
Application 29/094,432
9
Accordingly, for the reasons set forth by appellant on pages
5 and 6 of the brief, and pages 3 and 4 of the reply brief, we
find that the expanded package shown in Figure 1 of Zoss differs
significantly from the expanded carton claimed by appellant and
that major modifications would be required to make the expanded
package of Zoss, with its geodesic (curved) areas and generally
oval configuration, look like appellant’s claimed expanded carton
having tapering flat, planar triangular areas and a hexagonal top
opening. Thus, we conclude that Zoss does not qualify as a basic
design reference meeting the Rosen requirement and for that
reason alone would refuse to sustain the examiner’s rejection
under 35 U.S.C. § 103.
As for the examiner’s assertions on pages 5 and 6 of the
answer that the visual impression of both appellant’s carton and
that of Zoss created on any prospective buyer would be basically
a regular rectangular shaped carton, and that the expanded
configuration of appellant’s carton is “merely a functional
feature of the claimed design,” we find such position to be
untenable. As emphasized by appellant in both the specification,
brief and reply brief, the claimed design is directed to an
expanded snack carton, not the carton in its rectangular
parallelepiped form. Moreover, the mere fact that the expanded
Appeal No. 2002-1818
Application 29/094,432
10
carton may have functional aspects does not allow the examiner to
assume lack of ornamentality. In this case, we agree with
appellant’s assessment on page 2 of the reply brief that because
there are many other ways to allow for access to a carton of the
type involved in the present application and for removal of its
contents, the particular appearance of appellant’s claimed
expanded carton design has a primarily ornamental purpose and
cannot be ignored.
Moreover, even if we were to assume for the sake of argument
that Zoss was a Rosen-type reference, we must agree with
appellant (brief, pages 9-11, and reply brief, pages 4-6) that
Zoss and Luckett are not properly combinable in the manner urged
by the examiner, because Zoss explicitly “teaches away” from a
score line configuration like that seen in Luckett. More
specifically, Zoss (col. 5, lines 1-53) teaches that the score
lines are spaced from the side edges of the front and back panels
and from the bottom edge (44) of the panels, with said spacing
providing “rigidity to panels 18 and 28 to assist in their return
to a static, planar condition” (col. 6, lines 35-39) and also
contributing to achieving the geodesic (curved) configuration of
the package in its flexed or expanded condition. In addition, as
noted by appellant in the brief and reply brief, language
Appeal No. 2002-1818
Application 29/094,432
11
relating to such spacing of the score lines or flex allowing
means was added to independent claim 1 of the Zoss patent during
prosecution thereof specifically to distinguish from a score line
configuration like that in Luckett. Thus, the teachings of Zoss
when considered as a whole would have led a designer of ordinary
skill in the carton field in a direction divergent from the path
that was followed by appellant and discourage an expanded carton
with the claimed design.
As was made clear in In re Haruna, 249 F.3d 1327, 1335, 58
USPQ2d 1517, 1522 (Fed. Cir. 2001), 35 U.S.C. § 103 (and all the
case law interpreting that statute) applies with equal force to a
determination of obviousness of either a design or a utility
patent and, therefore, a prima facie case of obviousness in a
design application can be rebutted if the applicant can show that
the art in any material respect taught away from the claimed
invention. In this case, appellant has clearly demonstrated that
the Zoss patent teaches away from the claimed design.
Thus, even if Zoss were a Rosen reference, we have
determined that the evidence before us as a whole would not have
been suggestive of the modifications posited by the examiner and
thus of the distinctive ornamental appearance of appellant's
claimed expanded snack carton.
Appeal No. 2002-1818
Application 29/094,432
12
In accordance with the foregoing, the decision of the
examiner rejecting appellant’s claimed design under 35 U.S.C.
§ 103 is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID SAADAT )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2002-1818
Application 29/094,432
13
Hollander Law Firm, P.L.C.
Suite 305
10300 Eaton Place
Fairfax, VA 22030