Ex Parte Dehlin

Patent Trial and Appeal Board

Jul 29, 2016

12520363 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/520,363 06/19/2009 Marcus Dehlin
24978 7590 08/02/2016
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1988.85006 8759
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
08/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptomail@ gbclaw. net
docket@gbclaw.net
verify@gbclaw.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS DEHLIN
Appeal2013-000709
Application 12/520,363
Technology Center 3700
Before STEVEN D.A. McCARTHY, BRETT C. MARTIN, and
JENNIFER L. McKEOWN, Administrative Patent Judges
PERCURIAM.
DECISION ON APPEAL
Appeal2013-000709
Application 12/520,363
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, and 5. Claims 3 and 4 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Karow
Heissat
US 6,230,893 B 1
FR 2,649,672 Al
May 15, 2001
January 18, 1991
The Examiner made the following rejections that are at issue in this
appeal:
Claims 1and2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Karow. Final Act. 2.
Claim 5 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Karow or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Karow and Heissat. Id. at 2-3.
We AFFIRM-IN-PART.
THE INVENTION
The Appellant's claims are directed generally to "an insert adapted to
be slidably inserted in a sleeve." Spec. 1, 11. 2-3. The Appellant describes
the claimed subject matter as "especially suitable for, but not limited to,
controlled, easy-access packag[ing] for child-resistant, senior-friendly
storage of unit dose products or the like, carried by [the] insert." Id., 11. 7-9.
Claims 1 and 5, the independent claims on appeal, are reproduced below:
2
Appeal2013-000709
Application 12/520,363
1. Insert adapted to be slidably received in a sleeve, the
insert comprising
a base portion,
a first flap portion adapted to be refolded about a first
fold line,
a second flap portion adapted to be refolded about a
second fold line,
wherein the second fold line extends essentially in
parallel with the first fold line,
wherein the first and second fold lines extend essentially
along a single geometrical line,
wherein the base portion comprises two portions refolded
against each other about a fold line extending essentially along
the direction in which the insert is adapted to be slidable when
received in the sleeve, and
wherein the first flap portion is refolded in relation to the
folded base portion such that it extends backwardly over a first
surface of the base portion, and the second flap portion is
refolded in relation to the base portion such that it extends
backwardly over a second surface, opposite the first surface, of
the folded base portion.
5. Package comprising a sleeve and an insert slidably
received in the sleeve,
the insert comprising
a base portion,
a first flap portion adapted to be refolded about a first
fold line,
a second flap portion adapted to be refolded about a
second fold line,
3
Appeal2013-000709
Application 12/520,363
wherein the second fold line extends essentially in
parallel with the first fold line,
wherein the first and second fold lines extend essentially
along a single geometrical line,
wherein the base portion comprises two portions refolded
against each other about a fold line extending essentially along
the direction in which the insert is adapted to be slidable when
received in the sleeve, and
wherein the first flap portion is refolded in relation to the
folded base portion such that it extends backwardly over a first
surface of the base portion, and the second flap portion is
refolded in relation to the base portion such that it extends
backwardly over a second surface, opposite the first surface, of
the base portion,
the sleeve comprising
a plurality of panel portions forming a compartment with
at least one opening, the insert being slidable at least partly out
of the compartment of the sleeve through said opening,
wherein a first panel forming a first wall of the
compartment of the sleeve is provided with a first retaining
means adapted to interact with the first flap portion of the
insert, and
wherein a second panel forming a second wall, opposite
the first wall, of the compartment of the sleeve is provided with
a second retaining means adapted to interact with the second
flap portion of the insert.
ANALYSIS
Claims 1 and 2
The Appellant argues the anticipation rejection of claims 1, 2, and 5 as
a group. App. Br. 9. Accordingly, the disposition of the rejection of these
4
Appeal2013-000709
Application 12/520,363
claims turns on our analysis of the rejection of independent claim 1. "To
anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently." In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). The Appellant asserts that Karow fails to
disclose the limitation:
wherein the first flap portion is refolded in relation to the
folded base portion such that it extends backwardly over a first
surface of the base portion, and the second flap portion is
refolded in relation to the base portion such that it extends
backwardly over a second surface, opposite the first surface, of
the folded base portion.
App. Br. 9 (emphasis in Appeal Brief).
In the Final Action, the Examiner finds that Figure 6 of Karow shows
the insert 100 in an unfolded position with fold lines displayed below first
flap portion 106 and second flap portion 108. Figure 7 shows first flap
portion 106 folded over second flap portion 108. Figure 8 shows first flap
portion 106 folded down over portion 102. Final Act. 4. The Examiner
further finds that second flap portion 108 is folded backwards over a second
surface as claimed in claim 1, which is why the second flap portion 108 is
not visible in Figure 8. Id.
...... ~;~:-... ,.·
5
Appeal2013-000709
Application 12/520,363
l--/6. 8
The above illustration depicts Figures 6-8 of Karow.
As the Appellant correctly points out on pages 9-12 of the Appeal
Brief and pages 2--4 of the Reply Brief, Karow does not describe refolding
the panel extension or second flap portion 108 over the exterior surface of
the side panel 104. The exterior surface of side panel 104 is hidden in
Figures 7, 8, 10 and 11 of Karow. Furthermore, the Appellant correctly
points out that Karow's description is consistent with one or more structures
in which the panel extension or second flap portion 108 is not refolded over
the exterior surface of the side panel 104.
The Appellant further asserts that the Examiner is speculating that the
second flap portion of Karow is folded backwards over the second panel 104
independently of the first flap portion 106 based on what is not shown in
Figures 7 and 8 of Karow. App. Br. 11. The Appellant also asserts that,
although the Examiner's speculation on the possible location of second flap
portion 108 in Figure 8 of Karow is one possible interpretation, there are
other possible interpretations, including that both flap portions 106 and 108
are doubled-up and folded together over the first panel 102; or that the
second flap portion 108 was removed. Id. Accordingly, as asserted by the
Appellant, we agree that Karow fails to expressly or explicitly describe the
quoted limitation.
6
Appeal2013-000709
Application 12/520,363
The Examiner appears to be selecting from the limited number of
possibilities as to the location of the second flap portion in stating that this
feature is disclosed by Karow. Indeed, the Examiner appears to concede that
Karow fails to clearly disclose this limitation in stating that "[ e ]ven if 108
was folded over 106 [i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to have folded the portion
backwards." Final Act. 4. Because inherency cannot be shown by
possibilities, Karow also fails to inherently describe the quoted limitation.
To establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotations omitted). Accordingly, we agree with the Appellant that Karow
fails to disclose "the second flap portion is refolded in relation to the base
portion such that it extends backwardly over a second surface, opposite the
first surface" as claimed in claim 1. Because Karow fails to explicitly or
inherently describe a limitation recited in both independent claims 1 and 5,
Karow does not anticipate any of claims 1, 2 and 5.
As to the obviousness rejection of claim 5, we note that the Appellant
does not traverse the Examiner's conclusion that it would have been obvious
"to have manufactured the sleeve of Karow with multiple retaining means,
as taught by [Heissat], in order to better secure the insert within the sleeve."
(Ans. 5, para. 6). Instead, the Appellant argues that the modification
7
Appeal2013-000709
Application 12/520,363
proposed by the Examiner would have required "completely redesigning the
package." (App. Br. 15; see also Reply Br. 4--5). As the Appellant points
out, however, the "complete redesign" would have required only the
addition of another side flap to the sleeve with which to provide a second
release button similar to the release button 30 described by Karow.
Although neither Karow nor Heissat explicitly teaches the desirability of
adding another side panel for this purpose, it would have been an obvious
expedient for one of ordinary skill in the art familiar with the teachings of
Karow who sought, in accordance with the Examiner's unchallenged
reasoning ,both to use Karow's extension panel 108 as an additional
retaining means; and who sought to recreate the release button 3 0 and the
cutaway area 14 to provide retention means for the extension panel 108.
The Appellant also argues that neither Karow nor Heissat explicitly
discloses a second flap "refolded in relation to the base portion such that it
extends over a second surface." Although this assertion is correct, the
limitation would have flowed naturally if one of ordinary skill in the art had
modified the teachings of Karow to use the panel extension 108 as a second
flap in order to provide Karow's packaging with multiple retaining means as
taught by Heissat in accordance with the Examiner's unchallenged findings
and reasoning.
DECISION
We REVERSE the Examiner's rejections of claims 1, 2 and 5 as
anticipated by Karow. We AFFIRM the Examiner's rejection of claim 5 as
obvious over Karow and Heissat.
8
Appeal2013-000709
Application 12/520,363
AFFIRMED-IN-PART
9