Ex Parte D

Board of Patent Appeals and Interferences

Aug 18, 2010

10630378 (B.P.A.I. Aug. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GIANFRANCO D’AMATO
____________

Appeal 2008-001264
Application 10/630,378
Technology Center 3700
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2008-001264
Application 10/630,378

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STATEMENT OF THE CASE
Gianfranco D’Amato (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4-10, 12-20, 22-27, and 29-35.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claimed invention is to a collapsible container for receiving food.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. Collapsible container for receiving food, having a
flexible wall comprising at least two transparent layers, the
container comprising a withdrawal opening with a bent opening
edge and being closed at its end opposite the withdrawal
opening, the container being rolled from a two-dimensional
blank which is connected with itself in an overlap region
extending in the longitudinal direction of the container by at
least one of heat and pressure, wherein the container is formed
from a transparent and fluid tight material which can be shaped
for bending the opening edge and is dimensionally stable after
the shaping, and wherein the container and the material are
stable at least within the temperature range of -50ºC to +120ºC.
The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Beall US 4,324,338 Apr. 13, 1982
Halligan US 4,574,987 Mar. 11, 1986
Summons US 4,863,014 Sep. 5, 1989
McLaughlin US 6,210,766 B1 Apr. 3, 2001
Sekine2 JP 56-156777 Nov. 21, 1981

2 Both the Examiner and Appellant have identified this piece of prior art as
JP ’777.
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The Rejections3
The following Examiner’s rejections are before us for review:
Claims 1, 2, 4-10, 12-20, 22-27, 30, 31, and 33 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Sekine in view of McLaughlin
and Summons.
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sekine, McLaughlin and Summons, as applied to claim 1, and further in
view of Halligan.
Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sekine, McLaughlin, and Summons, and Beall.
Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sekine, McLaughlin, Summons, and Beall, as applied to claim 34, and
further in view of Halligan.
The Examiner’s positions concerning each rejection supra can be
found on pages 4 though 8 of the Supplemental Answer. The Examiner’s
responses to Appellant’s contentions can be found on pages 9 through 14 of
the Supplemental Answer.
Contentions
Appellant separately argues the patentability of claims 1, 2, 5, 6, 25,
26, 30, 32, 34, and 35. App. Br., passim.
Appellant acknowledges that claims 3, 4, 7-10, 12-20, 22-24, 27, 31,
and 33 will stand or fall with claim 1. App. Br. 7.

3 The Examiner submitted a Supplemental Answer correcting an error
concerning the rejection of claim 29. Claim 29 was canceled by Appellant
during prosecution of the patent application.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

DISCUSSION
Obviousness based on Sekine, McLaughlin, and Summons
Claim 1
Appellant’s arguments appear premised on “dimensional stability”
meaning that at least one of the container and the material has a resilient
aspect. However, the term “dimensional stability” cannot be as narrowly
construed as Appellant would desire when this term is read in light of the
Specification. Appellant fails to direct attention to any portion of the
Specification that supports the allegation that the term “dimensional
stability” denotes resiliency. The Specification discloses that “dimensional
stability” is “always to be understood to the effect that the wall is still
flexible enough for moving the food towards the withdrawal opening by
exerting an external pressure on the collapsible container.” Spec. 6, para.
[0017]. As such, the understanding of “dimensional stability” does not
necessarily have a factor of resiliency when compared to other portions of
the Specification. See Spec. 20, para. [0079] (“[T]he container is elastic, so
that it takes on its original shape even after having been pressed.”)
In our view, “dimensional stability,” when read in light of the
Specification, is broadly understood to mean that the container or its
material have the capability of maintaining its shape after shaping or
assembly, during packaging and transport, and/or while dispensing; and not
necessarily having a resilient aspect associated with the container or the
material.
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Given the above claim construction for the term “dimensional
stability” and Appellant’s admission that Sekine’s container is “presumably
stable,” see App. Br. 9, we find that Sekine has a “dimensional stability”
quality and thus satisfies the claimed “dimensional stability” feature recited
in claim 1.
Responding to Appellant’s concerns that no motivation exists to apply
the teachings of the two collapsible containers within McLaughlin and
Summons to Sekine, it appears that Appellant is arguing a person of skill in
the art would not bodily incorporate the teachings of McLaughlin and
Summons into Sekine. However, “[t]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”);
and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures.”). Given this legal authority, Appellant’s argument is
unconvincing to show a person of ordinary skill in the art would not have
reason to combine the teachings of McLaughlin and Summons with the
disclosure of Sekine. Moreover, the Examiner explained to Appellant that
the Examiner was utilizing the disclosures within McLaughlin and Summons
to teach the use of multi-layer plastic laminate material and multiple
transparent layers. Ans. 9. As such, the Examiner was not trying to bodily
incorporate the entire structures of McLaughlin and Summons into Sekine.
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Instead, the Examiner was applying the teachings of McLaughlin’s multiple
layer laminate and Summons’s multiple transparent layers, as shown in
collapsible containers, to the container disclosed in Sekine. Further,
responding to Appellant’s concerns that motivation is lacking, the Supreme
Court, in KSR, explained that motivation is not the only valid reason for
combining the teachings of the prior art to render a claimed invention
obvious.
Appellant’s arguments that the combined teachings fail to disclose,
teach, or suggest a transparent and fluid tight material, a container that is
stable within the entirety of the claimed range, and a withdrawal opening
with “a bent opening edge” as recited in claim 1, are unconvincing. All of
the containers disclosed appear to be fluid tight, while at least Summons is
transparent. Sekine discloses an opened section peripheral edge or lip
around the withdrawal opening. See fig. 4, reference numeral 4. Contrary to
Appellant’s understanding of Sekine, and Appellant providing no rebuttal
evidence to support Appellant’s understanding, in our view, a person of
ordinary skill in the art would understand the structure identified in Sekine
as the “opened section periphery” to satisfy a claim feature directed to “a
bent opening edge” since Sekine’s figures appear to show the disclosed
invention in sequential fabrication steps. Figure 1 depicts the blank, Figures
2 and 3 depict the assembly process, and Figure 4 shows complete
construction. It is at the stage depicted in Figure 4 where the bent edge
appears and yet is absent from Figures 2 and 3.
Concerning the argument that the prior art fails to disclose a container
that is stable within the claimed temperature range, we disagree, since the
claimed range is for containers containing items that are ingested by
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humans, and at least McLaughlin discloses an item in its container that is
partially ingested by humans during use of the item within the container,
viz., teeth brushing as evidenced by the assignee and depiction of a
toothpaste tube in the figures.
For the reasons given above, the Examiner’s rejection of claim 1 as
obvious over Sekine, McLaughlin, and Summons is sustained.
Claims 3, 4, 7-10, 12-20, 22-24, 27, 31, and 33
The Examiner’s rejection of these claims is sustained for the same
reasoning as applied to claim 1 since Appellant did not separately argue
these claims.
Claim 2
Based on the Examiner’s findings and analysis provided for this
combination of prior art, we are constrained to reverse the rejection of claim
2, because the Examiner fails to adequately explain how the combined
teachings of Sekine, McLaughlin, and Summons would have a transparency
aspect that enables the filling of the container to be monitored as called for
in claim 2. While we agree with the Examiner that McLaughlin inherently
teaches the outer layer being transparent, otherwise, the holographic film
layer below it would be superfluous, there is neither evidence nor cogent
reasoning to find that McLaughlin’s inner layers, the layers on the other side
of the holographic film layer and the layers that line the interior volume are
also transparent. The flaw with the Examiner’s proposed modification
applying Summons’ transparent layers to the McLaughlin layers is that the
Examiner assumes the holographic layer partially overlays the outer
transparent layer and thus any other layers. However, McLaughlin’s
disclosure fails to provide any express or inherent teachings that the
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holographic film layer could partially overlay the outer, inherently
transparent, layer or the two inner layers. Moreover, McLaughlin contains
an express teaching that the holographic layer is coterminous with the other
layers that construct the container, see figs. 1 and 2. This express disclosure
tends to refute a teaching that a person of ordinary skill in the art could
modify McLaughlin’s holographic film to have it not be coterminous with
the other film layers and then further modify the inner layers of McLaughlin
to be transparent in order to enable a monitoring of the filling of the
container.
Claim 5
We are constrained to reverse the Examiner’s rejection of claim 5 as
the Examiner’s findings and analysis are flawed in providing a reasoning
with some rational underpinnings, other than viewing Appellant’s
Specification and claims, that a person of ordinary skill in the art would
combine the teachings as the Examiner has set forth in the rejection. There
appears to be no reason with some rational underpinning to modify
McLaughlin’s inner layers to be transparent since the holographic film layer
is disclosed as being coterminous with the other layers, and thus the film
layer would block any visibility of the inner layers. Accordingly, the
Examiner’s rejection appears to be born out of improper hindsight
reconstruction for rendering obvious the claimed container having three
transparent layers given the teachings of Sekine, McLaughlin, and
Summons.
Claim 6
Appellant’s arguments against the rejection of claim 6 fail to convince
us that the Examiner erred in rejecting the claim based on the teachings of
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Sekine, McLaughlin, and Summons. Appellant surmises the rejection is
flawed because Summons discloses an elastic central layer, but the layer is
not dimensionally stable. As essentially explained by the Examiner, a
person of ordinary skill is a person of ordinary creativity and not an
automaton, and, arguendo Summons’ central elastic layer is not
dimensionally stable, when the teachings of Summons that are directed to
having a central elastic layer in a container are combined with Sekine and
McLaughlin, the combination of laminate of layers would remain
“dimensionally stable” as Appellant has broadly used the term in
Appellant’s Specification. As such, the Examiner’s rejection of claim 6 is
sustained.
Claim 25 and 26
We are constrained to reverse the Examiner’s rejection of claims 25
and 26 for essentially the same reasoning as applied to claim 5. These
rejections are founded on a flawed understanding that McLaughlin contains
an express or inherent teaching that the holographic film layer could be non-
coterminous with the other layers and thus any other layer below the
holographic layer would be visible from viewing it through the outer,
inherently transparent, layer. Moreover, we agree with Appellant that
having the print being visible only after part of the food is removed is not a
result effect variable as the Examiner finds.
Claim 30
While argued separately, Appellant is relying on the argument that the
resultant combined teachings of Sekine, McLaughlin, and Summons would
not yield a transparent container that is dimensionally stable. Based on this
reasoning, Appellant contends the combined teachings would not be capable
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of being both stacked and unstacked. App. Br. 12. Inasmuch as Appellant’s
arguments are unconvincing to show that the combined teachings of Sekine,
McLaughlin, and Summons do not render obvious a container having
transparent and elastic aspects along with being “dimensionally stable” as
broadly used in the Specification, these contentions are likewise
unconvincing to show that the resultant container would not be capable of
being both stacked and unstacked. Moreover, as the Examiner rationalizes,
the container formed from the combined teachings of Sekine, McLaughlin,
and Summons would have a taper and thus would be readily capable of
being stacked one on top of the other when empty in any orientation. Based
on the foregoing, we sustain the Examiner’s rejection of claim 30.
Claim 32
Appellant’s arguments fail to convince us that combining the
teachings of Sekine, McLaughlin, and Summons with Halligan’s teaching of
the air gap between two layers in a container for insulation would be nothing
more than combining familiar elements according to known methods and
does no more than yield a predictable result of providing an air gap between
the layers in a container for insulation purposes. As such, we sustain the
Examiner’s rejection of claim 30.
Claim 34
We are constrained to reverse the Examiner’s rejection of claim 34 for
essentially the same reasoning concerning claim 5. Based on this record, no
reason with rational underpinnings appears present to have three transparent
layers when one of the references, McLaughlin, teaches that an opaque
layer, the holographic film, is coterminous with the other layers.

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DECISION
The Examiner’s decision to reject claims 1, 3, 4, 6-10, 12-20, 22-24,
27, and 30-33 as obvious is affirmed.
The Examiner’s decision to reject claims 2, 5, 25, 26, and 34 as
obvious is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

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