Ex parte FUSS

Board of Patent Appeals and Interferences

Sep 16, 1997

08101499 (B.P.A.I. Sep. 16, 1997)

Application for patent filed August 2, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GUNTER G. FUSS
________________
Appeal No. 96-0501
Application 08/101,4991
________________
ON BRIEF
________________
Before CALVERT, GARRIS and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 8, 24, 25 and 30 to 36, the only claims remaining in the
application.
Appeal No. 96-0501
Application 08/101,499
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The claims on appeal are drawn to a packing device, a
cushion for use in packaging an article, and a method of
packaging.
The references applied by the examiner in rejecting the
appealed claims are:
Holden 3,188,264 June 8, 1965
Gianakos et al. (Gianakos) 3,389,195 June 18, 1968
Bauman 3,412,521 Nov. 26, 1968
Atkins D 255,661 July 1, 1980
Wright 4,640,080 Feb. 3, 1987
Boeri 5,151,312 Sept. 29, 1992
Starcevich 5,186,990 Feb. 16, 1993
The claims on appeal stand rejected under 35 U.S.C 103 as
follows:
(1) Claims 8, 24 and 30 to 33, unpatentable over Bauman in
view of Wright alone, or further in view of Boeri or Starcevich.
(2) Claim 25, unpatentable over the references as applied in
rejection (1), further in view of Holden or Atkins.
(3) Claims 34 to 36, unpatentable over the references as
applied in rejection (1), further in view of Gianakos.
(4) Claim 34, unpatentable over Gianakos alone, or in view
of Boeri or Starcevich.
Appeal No. 96-0501
Application 08/101,499
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Rejection (1)
We will first consider this rejection with regard to claim
8, which reads:
8. A packing device comprising:
a container;
an article disposed within the container; and
at least one cushioning device disposed in the container
with the article, each such cushioning device having a sealed
flexible enclosure fabricated of a water soluble biodegradable
material, and a multitude of individual particles of water
soluble biodegradable fill material within the enclosure, said
enclosure having a conformable external surface which engages the
article and a wall which serves as a protective barrier to keep
the fill material out of direct contact with the article, the
pressure within the enclosure being lower than the pressure
outside the enclosure so that the fill material is compressed to
a volume on the order of 20 to 80 percent of the uncompressed
volume of said material.
The examiner’s position with regard to this rejection is, in
essence, that (answer, page 3):
It would have been obvious to use a
multitude of particles and to provide the
volume ratio as taught by Wright in the package
and method of Bauman ‘521 to allow the user to
control the amount of compression and to allow
the cushion to more closely conform to the
contents.
As for the requirement that the enclosure and fill material both
be a “water soluble biodegradable material,” the examiner asserts
that (answer, page 4):
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Application 08/101,499
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It would have been obvious to one having
ordinary skill in the art at the time the
invention was made to select a biodegradable
plastic enclosure, since it has been held to be
within the general skill of a worker in the art
to select a known material on the basis of its
suitability for the intended use as a matter of
obvious design choice and due to environmental
concerns it would have been obvious to select a
biodegradable enclosure material. In re
Leshin, [277 F.2d 197, 199,]125 USPQ 416 [,417-
18 (CCPA 1960).]
Alternatively, the examiner states (id.):
Boeri or Starcevich teaches the use of water
soluble and biodegradable materials for filler
material. It would have been obvious to use
water soluble and biodegradable materials for
filler material as taught by Boeri or
Starcevich for the filler material in the
package of Bauman ‘521 as modified above to
allow easy disposal of the packaging contents
without damage to the environment.
Appellant contends in both the brief and reply brief that
neither Bauman nor Wright teaches or suggests that both the
enclosure and fill material be made of water soluble
biodegradable material, and that neither Boeri or Starcevich
suggests using biodegradable fill materials in combination with a
biodegradable and/or water soluble enclosure. Appellant asserts
that the examiner is engaging in impermissible hindsight
reconstruction of his invention.
We note initially that claim 8 recites an enclosure “having
a conformable external surface which engages the article and a
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Application 08/101,499
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wall which serves as a protective barrier to keep the fill
material out of direct contact with the article” (emphasis
added). The other independent claims, 30, 33 and 34, contain
similar language. This language is somewhat misleading, since
the use of the word “and” implies that the claim is drawn to a
double-walled enclosure having a first wall as the “external
surface” and a second wall as the “protective barrier.” However,
we do not find a disclosure of any such double-walled enclosure
in the application, and therefore will construe the claims as
calling for an enclosure having a wall which is both the
“external surface” and the “protective barrier” recited in the
claims.
Turning to the references applied against claim 8, we find
in Wright at col. 7, line 33 to col. 8, line 58 a disclosure of
apparatus meeting all the limitations recited in claim 8, except
for the use of “water soluble biodegradable material.” Thus,
Wright discloses a container or “first packaging enclosure” (col.
7, line 34), an article in the container (col. 8, line 7), and
plural cushioning devices or “second packaging enclosures” (col.
7, line 35) which are sealed flexible enclosures containing
individual particles (col. 7, lines 49 to 52 and 65), the
pressure within the enclosures being subatmospheric with the fill
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Application 08/101,499
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compressed from about 90 to about 40 percent of its original
volume (col. 8, lines 16 to 39).
The Starcevich patent discloses that packaging materials
such as beads or discs which are made from petroleum-based
products as polystyrene, styrofoam, etc., present a disposal and
environmental problem in that they are not readily degradable
(col. 1, lines 15 to 25). The patent therefore suggests as an
alternative the use of a water soluble biodegradable packaging
and cushioning material consisting of expanded fill particles
made from grain, such as corn, wheat or rice. In view of the
Starcevich patent, we consider that it would have been obvious to
one of ordinary skill in the art to utilize the water soluble
biodegradable fill particles disclosed by Starcevich instead of
the petroleum-based fill materials disclosed by Wright at col. 4,
line 34, et seq. Contrary to appellant’s arguments, such
substitution would not constitute impermissible hindsight
reconstruction, but rather the application of a clear teaching in
the prior art in order to solve a problem arising from use of the
apparatus disclosed by Wright.
Moreover, we consider that it would have been obvious to
utilize a water-soluble biodegradable material as the material of
the “second packaging enclosures” disclosed by Wright. Wright
discloses that the second enclosures may be “[a]ny polymeric
Appeal No. 96-0501
Application 08/101,499
See In re Ahlert, 424 F.2d 1088, 1091-1092, 165 USPQ 418,2
420-21 (CCPA 1970).
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resin capable of forming a film” and meeting the requirements of
being capable of (1) being sealed and (2) maintaining an internal
vacuum for a sufficient length of time (col. 3, lines 48 to 55
and col. 4, lines 1 to 14). We take official notice of the fact2
that most plastic bags on the market for trash, storage, etc. are
made of biodegradable materials, and refer again to Starcevich’s
disclosure of the desirability of making packaging materials out
of a water-soluble biodegradable substance. In addition to these
suggestions in the prior art, it is a matter of common knowledge
in this time of heightened environmental consciousness that it is
desirable, whenever possible, to make items which will ultimately
be disposed of out of biodegradable materials. The question of
obviousness cannot be determined in a vacuum, but rather those
skilled in the art must be presumed to know something about the
art apart from what the references disclose, In re Jacoby, 309
F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962), and obviousness may
be based on common knowledge and the common sense of one of
ordinary skill in the art, without any specific hint or
suggestion in a particular reference. In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Accordingly, we
consider that one of ordinary skill in the art would have found
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Application 08/101,499
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it obvious to employ for the film of the second enclosure of
Wright a polymer which is water-soluble and biodegradable.
In view of the foregoing, we conclude that the subject
matter recited in claim 8 would have been prima facie obvious
over the applied prior art.
Claim 24 falls with its parent claim 8, inasmuch as the fill
material disclosed by Starcevich is “starch based,” as recited.
Claim 30 is drawn to a cushion for use in packaging an
article, and does not recite that the biodegradable material is
water soluble. We conclude that it is unpatentable for the same
reasons as claim 8.
Claim 31 recites that the fill material consists of, inter
alia, “plant fibers.” This limitation reads on the grain
disclosed by Starcevich.
Claim 32 recites that the enclosure material is selected
from one of various biodegradable materials. Since we consider
that it would have been obvious to make the second enclosure of
Wright out of a film of a biodegradable polymer, we further
consider that it would have been obvious to select a known
polymer for that purpose. In re Leshin, supra.
Claim 33 is drawn to a method of packaging an article in a
container. All the steps thereof are generally disclosed by
Wright at col. 7, line 33 to col. 8, line 39, except that (i) the
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materials of the enclosures and fill are not biodegradable, and
(ii) the enclosures are compressed after being placed in the
container, rather than before. As for (i), we consider the use
of biodegradable materials to have been obvious, for the reasons
discussed above. As for (ii), it would seem to have been an
obvious matter of choice whether the enclosures were compressed
before or after being placed in the container, and in any event,
such pre-compression (pre-evacuation) would have been obvious in
view of Bauman’s disclosure of placing compressed packing bags
into a container around an article 16 (col. 3, lines 5 to 21).
Accordingly, rejection (1) will be sustained.
Rejection (2)
Claim 25 reads:
25. A cushion as in claim 8, wherein the particles of
fill material have an interlocking shape which reduces migration
of the particles.
The examiner finds claim 25 to be unpatentable over the
combination of references applied in rejection (1), in view of
Holden or Atkins.
Holden discloses loose fill packing material of resilient
thermoplastic foam particles which are made in an interlocking
configuration. The patent teaches that the purpose of the
interlocking shape is “in order to prevent settling of the
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Application 08/101,499
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packaging material due to relative movement between adjacent
members in contact with one another” (col. 1, lines 56 to 60).
We consider this rejection to be well taken. Holden’s
disclosure of the advantages of interlocking fill particles would
readily have suggested to one of ordinary skill in the art the
use of particles of such shape for the fill particles of Wright.
Rejection (2) will be sustained.
Rejections (3) and (4)
Claim 34 reads:
34. In a method of packaging an article in a
container, the steps of:
placing a multitude of particles of biodegradable fill
material which in the aggregate form a compressible body in a
flexible enclosure of biodegradable material which has an
external surface for engagement with the article and a wall which
serves as a protective barrier to keep the fill material out of
direct contact with the article;
compressing the body of fill material outside the container
to a shape corresponding to the contour of the article and the
interior of the container; and
placing the compressed body of fill material and the article
into the container with the external surface of the enclosure
engaging the article and the wall of the enclosure isolating the
article from direct contact with the fill material.
The rejection of claim 34 as unpatentable over Gianakos in
view of Boeri or Starcevich was a new ground of rejection made in
the examiner’s answer. In response, the appellant filed a reply
brief and an “Amendment Under Rule 193(b)” (Paper No. 16),
Appeal No. 96-0501
Application 08/101,499
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amending claim 34 by changing “molding” to --compressing-- and
“molded” to --compressed--.
The examiner then issued an advisory action (Paper No. 18)
stating that the reply brief “has been entered and considered,”
but not mentioning the amendment. However, in the margin of the
amendment is the handwritten notation “Do Not Enter/MDP
10/19/95.”
Under the provisions of 37 CFR § 1.193(b), the appellant’s
reply to a new ground of rejection “may be accompanied by any
amendment or material appropriate to the new ground,” and an
amendment limited to the new ground of rejection is entitled to
entry. MPEP § 1208.03. Appellant was therefore entitled to have
the amendment of claim 34 entered. Also, since appellant
discussed the effect of the amendment in the reply brief (e.g.,
in part 5 on page 9), it was inconsistent for the examiner to
state in Paper No. 18 that the reply brief had been considered
while at the same time denying entry of the amendment (but not
communicating the denial of entry to the appellant). Under the
circumstances, we will treat the case as if the “Amendment Under
Rule 193(b)” had been entered, and proceed on that basis.
In both rejection (3) and rejection (4), the examiner relies
on Gianakos for its disclosure of molding an envelope of filler
material prior to packaging. However, as appellant points out,
Appeal No. 96-0501
Application 08/101,499
Although under some circumstances lack of compliance with3
§ 112, second paragraph, may preclude consideration of a
rejection under §103, that is not the case here. Cf. Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993).
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claim 34 as amended now calls for the body of fill material to be
compressed outside the container to a shape corresponding to the
contour of the article, whereas in Gianakos the fill material is
expanded to that shape. We therefore conclude that even if
Gianakos were applied in the manner proposed by the examiner, all
the limitations of amended claim 34 (and therefore of dependent
claims 35 and 36) would not be met. Rejections (3) and (4) will
therefore not be sustained.
Rejection Under 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 25, 31 and 32 are
rejected for failure to comply with the second paragraph of
35 U.S.C § 112. 3
The test for compliance with §112, second paragraph, is
Whether the claim language, when read by a
person of ordinary skill in the art in light of
the specification, describes the subject matter
with sufficient precision that the bounds of
the claimed subject matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
The preamble of claim 25 recites “A cushion as in Claim 8,”
while the preamble of claim 8 recites “A packing device
comprising:.” Setting aside the fact that the term “cushion” in
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Application 08/101,499
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claim 25 lacks antecedent basis, this difference between the
preambles of the claims raises the question of whether claim 25
is intended to be a further limitation on the combination recited
in its parent claim 8, or whether it is drawn to the
subcombination of the “cushion” [sic: cushioning device] recited
in claim 8. This uncertainty renders the bounds of the claimed
subject matter indistinct.
Likewise, the preambles of claims 31 and 32 each recite “A
packing device as in Claim 30," while the preamble of claim 30
recites “In a cushion.” There being no “packing device” recited
in claim 30, it is not clear what apparatus claims 31 and 32 are
intended to encompass; is it only the cushion of claim 30, or the
container and article as well?
Conclusion
The examiner’s decision to reject claims 8, 24, 25, and 30
to 33 is affirmed, and to reject claims 34 to 36 is reversed.
Claims 25, 31 and 32 are rejected pursuant to 37 CFR § 1.196(b).
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences based
upon the same record must be filed within one month from the date
hereof. 37 CFR § 1.197.
With respect to the new rejection under 37 CFR
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§ 1.196(b), should appellant elect the alternate option under
that rule to prosecute further before the Primary Examiner by way
of amendment or showing of facts, or both, not previously of
record, a shortened statutory period for making such response is
hereby set to expire two months from the date of this decision.
In the event appellant elects this alternate option, in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejections, the effective date of
the affirmance is deferred until conclusion of the prosecution
before the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to us for final
action on the affirmed rejections, including any timely request
for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
Appeal No. 96-0501
Application 08/101,499
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)
)
)
BRADLEY R. GARRIS )
BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Flehr, Hohbach, Test, Albritton
& Herbert
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