Ex Parte Fort

Board of Patent Appeals and Interferences

May 9, 2003

09305799 (B.P.A.I. May. 9, 2003)

1 Claim 2 was amended subsequent to the final rejection.
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for publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WESLEY C. FORT
____________
Appeal No. 2002-1147
Application No. 09/305,799
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 2 and
5 to 15, which are all of the claims pending in this application.1
We REVERSE.
Appeal No. 2002-1147
Application No. 09/305,799
Page 2
2 Since the rejection of claim 2 under 35 U.S.C. § 112, second paragraph, set forth in the final
rejection (Paper No. 5, mailed September 26, 2000) was not set forth in the examiner's answer we
assume that this ground of rejection has been withdrawn by the examiner. See Ex parte Emm, 118 USPQ
180, 181 (Bd. App. 1957).
BACKGROUND
The appellant's invention relates to sift proof containers designed to prevent
leakage of particulate contents or infestation by insects (specification, p. 1). A copy of
the claims under appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Smitherman 5,540,774 July 30, 1996
Jenkins 5,688,218 Nov. 18, 1997
Claims 1, 2 and 6 to 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jenkins.
Claims 1, 2 and 5 to 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Jenkins in view of Smitherman.2
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
Appeal No. 2002-1147
Application No. 09/305,799
Page 3
(Paper No. 8, mailed July 6, 2001) for the examiner's complete reasoning in support of
the rejections, and to the brief (Paper No. 7, filed April 26, 2001) and reply brief (Paper
No. 9, filed September 10, 2001) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1, 2 and 5 to 15 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
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). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art
to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560,
Appeal No. 2002-1147
Application No. 09/305,799
Page 4
562 (CCPA 1972). Evidence of a suggestion, teaching, or motivation to modify a
reference may flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the problem to be solved,
see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80
(1996), although "the suggestion more often comes from the teachings of the pertinent
references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The range of sources available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and particular. See, e.g., C.R.
Bard Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.
1998), cert. denied, 119 S. Ct. 1804 (1999). A broad conclusory statement regarding
the obviousness of modifying a reference, standing alone, is not "evidence." Thus,
when an examiner relies on general knowledge to negate patentability, that knowledge
must be articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45,
61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Appeal No. 2002-1147
Application No. 09/305,799
Page 5
3 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
4 The examiner did not ascertain the differences between Jenkins and independent claim 15.
Obviousness rejection based on Jenkins alone
We will not sustain the rejection of claims 1, 2 and 6 to 15 under 35 U.S.C. § 103
as being unpatentable over Jenkins.
In this rejection, after setting forth the pertinent teachings of Jenkins, the
examiner ascertained3 (brief, p. 4) that
Jenkins meets all claimed limitations except for: (1) the adhesive at
portions 46 and 48 being confined to the corner portions of the minor flaps
extending partially toward the opposed edges and the minor flaps as set forth in
claims 1, 9 and 10 and (2) the adhesive portion at 70 is confined to the corners
of the first major flap 24 as set forth in claims 8, 9, and 10.[4]
The examiner then concluded that such differences would have been obvious to a
person of ordinary skill in the art since such changes would be within the level of
ordinary skill in this art.
In this rejection, the examiner has not set forth any evidence of any suggestion,
teaching, or motivation as to why it would have been obvious at the time the invention
was made to a person of ordinary skill in the art to have modified Jenkins to arrive at
the claimed invention. Accordingly, the examiner has not presented a prima facie case
Appeal No. 2002-1147
Application No. 09/305,799
Page 6
5 Once again the examiner did not ascertain the differences between Jenkins and independent
claim 15.
of obviousness. Therefore, the decision of the examiner to reject claims 1, 2 and 6 to
15 under 35 U.S.C. § 103 is reversed.
Obviousness rejection based on Jenkins and Smitherman
We will not sustain the rejection of claims 1, 2 and 5 to 15 under 35 U.S.C. § 103
as being unpatentable over Jenkins in view of Smitherman.
In this rejection, the examiner ascertained (brief, p. 6) that
Jenkins meets all claimed limitations except for: (1) the adhesive at
portions 46 and 48 being confined to the corner portions of the minor flaps
extending partially toward the opposed edges and the minor flaps as set forth in
claims 1, 9 and 10, (2) the adhesive portion at 70 is confined to the corners of
the first major flap 24 as set forth in claims 8, 9, and 10, and (3) the inner
opposed edges of the first and second [minor] flaps being spaced at a
substantial distance apart as set forth in claim 5.[5]
The examiner then concluded that such differences would have been obvious to a
person of ordinary skill in the art from the teachings of Smitherman.
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree.
Appeal No. 2002-1147
Application No. 09/305,799
Page 7
In our view, the teachings of Smitherman provide no teaching, suggestion,
incentive or motivation for a person of ordinary skill in the art at the time the invention
was made to have modified Jenkins' adhesive line 46 (which extends across both minor
flaps 28 and 30 from side panel 16 to side panel 18 as shown in Figures 2 and 5) to be
substantially confined to the corner portions as set forth in independent claims 1, 9, 10
and 15. Smitherman teaches to prevent material from leaking about the corners of his
container 24 by using a double portion of adhesive 18 at the contact area between the
outside portions 32 of the minor end flaps 22 and the major inside end flap 20, which
double portion of adhesive 18 does not extend across both minor end flaps 22 as
shown in Figure 1. Smitherman does not teach one skilled in that art that the double
portion of adhesive 18 at the contact area between the outside portions 32 of the minor
end flaps 22 and the major inside end flap 20 is substantially confined to the corner
portions as set forth in independent claims 1, 9, 10 and 15. Therefore, Smitherman
does not provide any teaching, suggestion, incentive or motivation whatsoever for an
artisan to have modified Jenkins to arrive at the claimed subject matter.
For the reasons set forth above, the decision of the examiner to reject claims 1,
2 and 5 to 15 under 35 U.S.C. § 103 is reversed.
Appeal No. 2002-1147
Application No. 09/305,799
Page 8
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 2 and 5 to 15
under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-1147
Application No. 09/305,799
Page 9
WOOD HERRON & EVANS LLP
2700 CAREW TOWER
CINCINNATI, OH 45202
JVN/jg