Ex Parte Gale

Board of Patent Appeals and Interferences

Dec 21, 2001

09306516 (B.P.A.I. Dec. 21, 2001)

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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREGORY W. GALE
____________
Appeal No. 2001-1462
Application No. 09/306,516
____________
ON BRIEF
____________
Before ABRAMS, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 7-14. Claims 1-6, the only other claims
pending in this application, stand allowed. As claim 8 stands
rejected only under the doctrine of obviousness-type double
patenting, the examiner having withdrawn the rejection of claim 8
under 35 U.S.C. § 103 on page 2 of the answer, and appellant has
not appealed the obviousness-type double patenting rejection, as
explained infra, claim 8 is not involved in this appeal.
Accordingly, this appeal involves only claims 7 and 9-14.
Appeal No. 2001-1462
Application No. 09/306,516
Page 2
1 Claims 7-14 also stand rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claims 1, 5,
7, 9 and 14 of U.S. Pat. No. 5,975,300, which issued on the parent Application
No. 08/882,737 of the instant application. However, in that appellant has
elected to file a terminal disclaimer rather than appeal this rejection, the
double patenting rejection is not before us.
BACKGROUND
The appellant’s invention relates to a shipping carton for
glass bottles and pulp inserts for use therewith (specification,
page 1). A copy of the claims under appeal is set forth in the
appendix to the appellant’s brief.
The examiner relied upon the following prior art references
in rejecting the appealed claims:
De Reamer 2,216,339 Oct. 1, 1940
Herrick et al. (Herrick) 2,547,005 Apr. 3, 1951
Watanabe et al. (Watanabe) 5,038,961 Aug. 13, 1991
The following rejections are before us for review.1
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over De Reamer in view of Watanabe and
Herrick.
Claims 10-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over De Reamer in view of Herrick.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 12) for
the examiner's complete reasoning in support of the rejections
Appeal No. 2001-1462
Application No. 09/306,516
Page 3
and to the brief and reply brief (Paper Nos. 9 and 13) 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. As a consequence of our review, we make the
determinations which follow.
Turning first to the examiner’s rejection of claims 10-14,
we note that claim 10 recites a step of “removably securing a
half insert to each of the first and second bottom minor flaps”
and claim 13 recites a step of “removably securing a half insert
to each of the first and second top minor flaps.” Similarly,
claim 14 recites “first and second half inserts formed of a non-
plastic material and cooperative securing means removably
securing said first and second half inserts to said first and
second minor flaps” (emphasis ours).
As explained in appellant’s specification from page 11, line
21, to page 12, line 34, the disclosed structure for removably
securing the half inserts to the minor flaps includes the lock
tabs 66, 67 in the flaps and the slots 126, 127 in the inserts.
Appeal No. 2001-1462
Application No. 09/306,516
Page 4
Likewise, the disclosed acts for removably securing the half
inserts to the minor flaps include the insertion of the lock tabs
in the slots.
Consistent with appellant’s underlying disclosure, one
skilled in the art would understand the removable securement
recited in claims 10, 13 and 14 to be one which permits the flaps
and half inserts to be removed from one another with ease and
without damage or alteration of the flaps and inserts. From our
perspective, the skilled artisan would not recognize the adhesive
attachments taught by De Reamer (page 3, left col., lines 38-53)
and Herrick (col. 2, lines 19-22) as removable securements.
Therefore, we share appellant’s view (brief, pages 8, 9 and 10;
reply brief, page 3) that De Reamer and Herrick, even if combined
as proposed by the examiner, would not have suggested the subject
matter of claims 10, 13 and 14. It follows that we shall not
sustain the examiner’s rejection of claims 10, 13 and 14, or
claims 11 and 12 which depend from claim 10, as being
unpatentable over De Reamer in view of Herrick.
In that the deficiency of the combination of De Reamer and
Herrick finds no cure in the teachings of Watanabe, we also shall
not sustain the examiner’s rejection of claim 7, which also
recites “cooperative securing means removably securing said first
Appeal No. 2001-1462
Application No. 09/306,516
Page 5
2 In an advisory action mailed on October 30, 2000 (Paper No. 11), the
examiner explained to appellant that the terminal disclaimer filed September
28, 2000 (Paper No. 10) with the brief is improper because it is directed to
specific claims.
and second half inserts to said first and second minor flaps,”
and claim 9, which depends from claim 7, as being unpatentable
over De Reamer in view of Watanabe and Herrick.
REMAND TO THE EXAMINER
In an attempt to overcome the obviousness-type double
patenting rejection, appellant filed a terminal disclaimer on
February 26, 2001 (Paper No. 16).2 There is no indication in the
record that the examiner has notified appellant whether this
terminal disclaimer is sufficient to overcome the rejection.
Therefore, we remand this application to the examiner to inform
appellant of the status of the terminal disclaimer and, hence, of
the obviousness-type double patenting rejection.
Appeal No. 2001-1462
Application No. 09/306,516
Page 6
CONCLUSION
To summarize, the decision of the examiner to reject claims
7-14 under 35 U.S.C. § 103 is reversed and the application is
remanded to the examiner for the reason noted supra.
REVERSED AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-1462
Application No. 09/306,516
Page 7
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