Ex Parte Glydon

Patent Trial and Appeal Board

Jul 17, 2013

11209573 (P.T.A.B. Jul. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/209,573 08/23/2005 James A. Glydon 1421-443 RCE 2887
11632 7590 07/17/2013
Hoffmann & Baron, LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
SMITH, CHAIM A
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
07/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES A. GLYDON
____________

Appeal 2012-000955
Application 11/209,573
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
HUBERT C. LORIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 19, 33, 34, and 37-41. We have
jurisdiction pursuant to 35 U.S.C. § 6.
According to Appellant (Spec. 0001):
This application relates generally to packaging for
chewing gum and other products, and more particularly to
multiple compartment packaging for visibly displaying first and
second types of chewing gum and other products in at least first
and second compartments having display windows while
providing an indication of the flavor of the first and second
types of chewing gum and other products.
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The claimed invention is directed to a method of forming the package
for displaying first and second edible products.1
Claims 19 and 39 are illustrative and appended to this decision.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Rosskam 1,713,301 May 14, 1929
Wolf et al. (Wolf) 3,429,426 Feb. 1969
Adams, (Chiclets),Your Convenience Manager Magazine, Convenience
Central(CCCA) [on line] Mar. 2004,
http://www.conveniencecentral.ca/archive/2004/mar/adams.asp.

Binaca Gel Bursts Liquid-Filled Mints”, new product announcement, 12
May 2004, from Appellants’ IDS submission 17 July 2006.

Farley’s & Sathers Candy Company, Inc., (Farley’s) [on line] June 2009,
http://www.farleysandsathers.com/About/WhoWeAre.asp

Fruit Stripes Chewing Gum Advertisement, (Beech-Nut) Lizzy House [on
line] June 2009:
http://lizzyhouse.typepad.com.

Whitman’s Sampler Index (Whitman’s Chocolate), Dec. 20, 1943 [on line]
posted August 2003:
http:gogd.tjs-labs.com.

The Examiner maintains the following grounds of rejection:
Claim 39 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.

1 See related Appeal No. 2012-000487 (Application No. 11/209,880) (App.
Br. 1).
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Claims 37-39 stand rejected under 35 U.S.C. § 112, second paragraph
as failing to particularly point out and distinctly claim what applicant regards
as the invention.
Claims 19, 33, 34, 37, and 38 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wolf in view of Binaca, CCCA
(Conveniencecentral.ca ), Farley’s, and Beech-Nut.
Claims 39-41 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolf in view of Binaca, CCCA (Conveniencecentral.ca),
Farley’s, Beech-Nut, Rosskam, and Whitman’s Chocolate.
We reverse the 35 U.S.C. § 112, first paragraph rejection of claim 39
and the 35 U.S.C. § 112, second paragraph rejection of claims 37 and 38.
We affirm the 35 U.S.C. § 112, second paragraph rejection of claim
39 and we affirm the obviousness rejections.
Rejection for Lack of Written Descriptive Support
As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983)2:
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. . . . The
content of the drawings may also be considered in determining
compliance with the written description requirement. [Citations
omitted.]
It is the Examiner’s burden to establish a prima facie case of non-
patentability based on the written description requirement by presenting

2 See also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F. 3d 1336, 1351 (Fed.
Cir. 2010) (en banc).
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evidence or reasons establishing why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
The Examiner asserts that the application disclosure as originally filed
does not provide adequate written descriptive support for claim 39. The
Examiner maintains that (Ans. 5-6):
Claim 39 recites the limitation that the first and second
treatments are each associated more with the first aperture than
the second apertures respectively and that said first and second
treatments are associated with the first type of edible product
more than the second type of edible product or with the second
type of edible product more than the first type of edible
product. As disclosed the surface treatments correspond to, or
are directly associated to, the respective aperture and/or
first/second respective edible products. There is no disclosure
indicating that the surface treatments would be associated more
with one aperture or variety of edible product than another. This
limitation therefore constitutes an issue of new matter.

On the other hand, Appellant contends that (App. Br. 41):
Appellant's Figure 5 . . . clearly and unequivocally shows that
the first surface treatment 72 is more associated with the first
aperture (the aperture surrounding first edible product 32) than
the second aperture (the aperture surrounding second edible
product 34) by virtue of the first surface treatment's 72 location
surrounding the first aperture and the first surface treatment's 72
separation from the second aperture.

Similarly, Appellant's Figure 5 clearly and unequivocally
shows that the first surface treatment 72 is more associated with
the first type of edible product (represented by edible product
32) than the second type of edible product (represented by
edible product 34) by virtue of the first surface treatment's 72
appearance matching the appearance of edible product 32 (as
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represented by the use of the same pattern on the first surface
treatment 72 and the edible product 32).

The same argument applies to the second surface
treatment 74 relative to the second aperture and the second type
of edible product.

Thus, the dispositive question is: Has the Examiner reversibly erred
in finding that the application disclosure as originally filed does not provide
adequate written descriptive support for the identified limitations recited in
claim 39 within the meaning of 35 U.S.C. § 112, first paragraph? On this
appeal record, we answer this question in the affirmative.
We agree with Appellant that the Examiner has not established that
the Application, as filed, fails to provide written descriptive support for
claim 39. Figure 5 of the Drawings, as filed, as identified in the above-
reproduced arguments from the Appeal Brief, lends support to Appellant’s
argument that the Examiner has not discharged the burden to demonstrate
that the original disclosure is inadequate to establish that Appellant was in
possession of the subject matter of rejected claim 39. More particularly, the
Specification as filed, supports Appellant’s argument that each (first and
second) surface treatment can be comprised of a visible characteristic
(indication), such as color or texture, that is more associated with a type of
edible product visible through each surface treatment’s corresponding
(associated) aperture than the other type of product visible through each
surface treatment’s non-corresponding (non-associated) aperture (see Spec.
0016-0020, 0041, and Figs. 5, 6a, 6b, and 7 (item 130)).
In this regard, an ipsis verbis disclosure is not necessary to satisfy the
written description requirement of § 112. Instead, the disclosure need only
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reasonably convey to persons skilled in the art that the inventor had
possession of the subject matter in question. See In re Edwards 568 F.2d
1349, 1351-52 (CCPA 1978).
On this appeal record, we determine that the Examiner has not
established that claim 39 lacks written descriptive support within the
meaning of 35 U.S.C. § 112, first paragraph in the subject Specification, as
filed.
Accordingly, we reverse the Examiner’s rejection of claim 39 under
35 U.S.C. § 112, first paragraph, as lacking written descriptive support in the
application disclosure as originally filed.

Indefiniteness Rejection of Claims 37-39
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In this regard, “the indefiniteness inquiry asks whether the claims
‘circumscribe a particular area with a reasonable degree of precision and
particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d
1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235
(CCPA 1971).

Claims 38 and 37
Concerning claim 38, the Examiner asserts that “it is unclear how the
first and second types of edible products would remain in the blister package
once populated and prior to being inserted in the sleeve since the
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compartments of the blister package are not further covered or sealed to
contain the product” (Ans. 6).
Here, we agree with Appellant that the Examiner has not established
how claim 38 runs afoul of the requirements of 35 U.S.C. § 112, second
paragraph, based on the Examiner’s assertion, because claim 38 does not
require that “the compartments of the blister package are not further covered
or sealed to contain the product” once populated and prior to being inserted
in the sleeve (App. Br. 42). In this regard, the Examiner appears to have
improperly equated breadth with indefiniteness under § 112, second
paragraph. In re Miller, 441 F.2d 689, 693 (CCPA 1971). After all, it is
well-settled that just because a term is broad, does not mean it is indefinite.
In re Gardner, 427 F.2d 786, 788 (CCPA 1970); In re Borkowski, 422 F.2d
904, 908 (CCPA 1970). Moreover, the Examiner has not articulated why it
is required by the second paragraph of 35 U.S.C. § 112 that the claims,
themselves, must set forth details as to the nature of how the edible product
is retained in the blister package while the package is being inserted in the
sleeve as a recited part of Appellant’s claimed process.
Simply put, the Examiner does not reasonably explain why the claim
language, as it would have been interpreted by one of ordinary skill in the art
in light of Appellant’s Specification and the prior art, fails to set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.
The Examiner includes claim 37 in this rejection on the basis of its
dependency on claim 38 (Ans. 6).
In light of the above, the Examiner has not carried the burden to
establish that the rejected claims 37 and 38 fail to particularly point out and
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distinctly claim what applicant regards as the invention based on the reasons
expressed by the Examiner (Ans. 6).
It follows that we do not sustain the Examiner's rejection of claims 37
and 38 under §112, second paragraph.

Claim 39
We shall affirm the Examiner’s rejection of claim 39 under §112,
second paragraph (Ans.6). The Examiner has pointed to an internal
inconsistency in the last two lines of step d of claim 39 concerning the
limitation, “the second surface treatment is associated with the second type
of edible product more than the second type of edible product”, which
internal inconsistency as to the relative association of the second surface
treatment with the second type of edible product leaves claim 39 in violation
of the definiteness requirements of the second paragraph of 35 U.S.C. § 112,
as maintained by the Examiner (Ans. 6; FOA3, p.3).
Appellant asserts that the wording [internal inconsistency] at issue in
claim 39 represents a typographical error and that the Examiner has treated
(construed) this claim for examination purposes as though the claim were
amended to correct this error (App. Br. 42).
However, the Examiner’s conditional construction of claim 39 does
not obviate the maintained §112, second paragraph rejection, but rather it
represents a construction of claim 39 (as if claim 39 were amended to
obviate the internal inconsistency therein) that was manifestly for the
purpose of conducting an examination of claim 39 under other sections of
Title 35 of the U.S. Code, such as under 35 U.S.C. § 112, first paragraph and

3 Final Office action (FOA) mailed January 19, 2011.
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under 35 U.S.C. § 103(a). This is evinced by the rejections maintained
under the latter sections of the Patent Statute by the Examiner.
Consequently, Appellant has not effectively challenged the Examiner’s
determination that claim 39 fails to comply with 35 U.S.C. § 112, second
paragraph by the assertions presented.
As such, we affirm the Examiner’s rejection of claim 39 under 35
U.S.C. § 112, second paragraph.

Obviousness Rejections
The Supreme Court has instructed that although the teaching,
suggestion, and motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 415. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 417.
We begin with the Examiner’s first stated obviousness rejection of
claims 19, 33, 34, 37, and 38 over the combined teachings of Wolf, Binaca,
CCCA, Farley’s, and Beech Nut.
Appellant presents arguments traversing the Examiner’s rejection of
independent claims 19 and 38 and does not argue dependent claims 33 and
34 (which depend from claim 19), and dependent claim 37 (which depends
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from claim 38) separately. Accordingly, we select claims 19 and 38 as the
representative claims on which we decide this appeal as to the first stated
rejection.
After consideration of Appellant’s countervailing arguments together
with the Examiner’s obviousness position and the evidence of record, we
determine that, on balance, the prior art evidence of record weighs in favor
of the Examiner’s obviousness determination. In considering such
arguments, we note that most of Appellant’s separately presented arguments
for representative independent claim 38 substantially correlate with the
arguments traversing the Examiner’s rejection as to representative
independent claim 19 (App. Br. 12-36). Accordingly, the discussion below
respecting representative claim 19 applies, mutatis mutandis, to Appellant’s
traversal of the Examiner’s rejection of representative claim 38, particularly
as to why the common arguments do not indicate reversible error in the
Examiner’s obviousness determination as set forth in the Examiner’s first
stated obviousness rejection.
Appellant’s representative claim 19 is directed to a method for
forming a package for first and second different edible products, such as
different chewing gum products, that are displayed by providing for first and
second apertures in a sheet member that is made into the package outer
sleeve by folding the sheet member. First and second surface treatments are
applied to the sheet member surface forming an outer wall surface of the
sleeve, such that a first treatment is disposed on a portion of the outer wall of
the sleeve and such that it is associated with the first aperture and a second
surface treatment is disposed on a portion of the outer wall of the sleeve and
such that it is associated with the second aperture.
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The blister package of representative claim 19 that is to be inserted in
the sleeve includes a plurality of sealed separate compartments (cavities)
wherein the blister package is configured such that a first compartment can
be aligned with the first aperture and a second compartment can be aligned
with the second aperture. Claim 19 specifies that the first compartment is
populated with a first edible product (such as chewing gum or another edible
food of one flavor or type) and the second compartment is populated with a
second edible product (such as chewing gum or another edible food of
another flavor or type), which populating steps are predetermined. Claim 19
further requires that the blister package is inserted into the sleeve such that
the first compartment is aligned with the first aperture and such that a piece
of the edible product in the first compartment is visible through the aperture
and such that the second compartment is aligned with the second aperture
with the second edible product visible through the second aperture. As
further set forth in claim 19, first and second visibly distinct surface
treatments [of the sleeve] are applied and are associated (correspond),
respectively, with the appropriate aperture and edible product.
Concerning the Examiner’s obviousness rejection, it is worth noting
up front that Appellant acknowledges that(Spec. 0003 and 0004):4
A variety of gum packaging types also exist, including certain
types of packaging used predominately for one or the other of
the gum formats. Pellet gum may be packaged together in a
carton that can be opened to dispense one or more pellets at a
time. Various other package configurations exist, but in one

4 It is axiomatic that consideration of the prior art cited by the Examiner
must, of necessity, include consideration of the admitted state of the art
found in Appellant's Specification. In re Davis, 305 F.2d 501 (CCPA 1962);
In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986).
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configuration packages each pellet individually in what has
come to be known as a blister pack or package. Such a package
configuration may include a sheet of plastic having multiple
cavities (bulged structures) that may typically be formed in an
array. The gum pellets are placed into the individual cavities
and a sheet of foil is attached to the plastic sheet to contain/seal
the gum pellets within the individual cavities.

Generally, the blister package is itself packaged (e.g.,
wrapped) to protect the blister pack from damage prior to sale.
In one arrangement, this packaging includes an opaque
paperboard sleeve member having a hollow interior into which
the blister pack may be selectively inserted and removed. The
outside surface of this sleeve member may contain printed
subject matter that identifies the contents of the blister package.
In some instances, a single aperture may be formed though the
sleeve member such that a gum pellet in one of the individual
blisters may be viewed by a consumer prior to purchase of the
gum package.

Like the above-acknowledged admitted prior art in the Specification,
CCCA (Chiclets), as relied upon by the Examiner (Ans. 8), further discloses
a blister package containing multiple flavors of gum, which package is
inserted into a sleeve with a single aperture therein through which a piece of
gum in the blister package can be viewed.
In this regard, Appellant acknowledges that (App. Br. 15; see
Declaration of Paul Bowers; paras. 3 and 5)
[c]hiclets discloses a blister package inserted into a sleeve,
where the sleeve has a single aperture aligned with a
compartment of the blister package. The blister package
contains multiple flavors of gum. The blister package is
transparent and a piece of gum is visible through the aperture.
The sleeve has surface treatments. Chiclets, page 1. However,
in making the package, there was no predetermination of what
particular variety of gum was to be visible through the aperture.
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As detailed in the Declaration of Paul Bowers (hereinafter
"Declaration") included in the Evidence Appendix, at the time
of Appellant's filing, Chiclets were randomly populated as to
gum variety placement.

Moreover, Appellant acknowledges that “Wolf discloses a blister pack
inserted into a sleeve, where the sleeve has two apertures that are aligned
with two compartments of the blister package” (App. Br. 15). In this regard,
Wolf teaches a package that includes recesses (compartments) in an inner
receptacle that can include identical or non-identical products and which can
be surrounded by a sleeve having multiple apertures for registering with the
compartments, and for which package, transparent materials may be used for
making components thereof, as a matter of choice (col. 2, ll. 14-51; col. 3, ll.
44-72; col. 4, ll. 13-30; col. 6, ll. 13-18; Figs. 1, 4, and 5).
In this regard, Wolf is relied upon by the Examiner for disclosing or
suggesting (Ans. 7):
[A] method of forming a package which comprises providing a
sheet member, forming first and second apertures (openings)
through a surface of the sheet member; folding the sheet
member to form a sleeve having at least a first wall, the sleeve
being sized to receive a blister package, wherein the first and
second apertures extend through the first wall (fig. 1);
providing a blister package having a plurality of sealed separate
compartments formed as cavities (plurality of recesses). The
blister package is configured such that when the blister package
is inserted into the sleeve, a first compartment of the plurality
of compartments is operable to be aligned with the first aperture
and a second compartment of the plurality of compartments is
operable to be aligned with the second aperture (col.3, ln 35 -
col. 4, ln 12 and fig[s]. 1 and 2 ref. # 10 and opening along line
A - B).

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As regards to Wolf, the Examiner has further found that Wolf evinces
that “at least a first compartment of the plurality of compartments would
contain a first edible product (tablets) and a second compartment would
contain a different second edible product (non-identical articles) (col. 2, ln
24 - 28)” (Ans. 8). The Examiner continues by observing that “[w]hile Wolf
does not unequivocally state that the products of Wolf are visible through
the apertures, Wolf does disclose that it would have been an obvious matter
of choice to make the constituents transparent (col. 6, ln 14 - 18)” (Ans.8).
In addition to Wolf and CCCA, as discussed above, the Examiner
further relies on Binaca for teaching or suggesting a blister pack inserted
into a sleeve that allows for viewing edible products through two apertures
in the sleeve, wherein the sleeve has surface treatments visible thereon, as
acknowledged by Appellant (App. Br. 15; see Ans. 8). Also, the Examiner
relies on Farley’s and Beech-Nut for evincing that “providing edible
products wherein a first and second edible product[s] are visibly distinct
from each other in the same package is notoriously old” (Ans. 13).
Based on the combined teachings of the applied references, the
Examiner has basically determined that it would have been obvious for one
of ordinary skill in the art exercising routine skill to make and populate a
blister package having more than one compartment, such as that of Wolf,
with more than one edible product, such as two edible products in a
predetermined way, wherein the blister package is made transparent and
inserted into a sleeve, and wherein the sleeve is made in a manner as taught
by Wolf with at least two apertures being such that the two visually distinct
products in the blister package can be viewed through the apertures when
inserted in the sleeve and such that each of the visually distinct edible
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products in a blister pack compartment is associated with a particular
aperture (Ans. 8-11). Moreover, the Examiner has basically found that the
application of first and second visual surface treatments, such as printed
matter (text or graphics), to the sleeve for product indication, advertising or
descriptive ornamentation in a manner such that the treatments are
associated with a particular aperture and an edible product visible through
the aperture in the package of Wolf would have been a matter of choice to
one of ordinary skill in the art given the combined teachings of the applied
references (Ans. 9-10).
After consideration of the opposing positions of Appellant and the
Examiner and the evidence of record brought to bear on the obviousness
question before us, we find ourselves in agreement with the Examiner’s
obviousness determination as to representative claim 19, and
correspondingly, all of the other claims subject to the first stated
obviousness rejection.
The thrust of Appellant’s argument is that the claimed surface
treatment steps, predetermining steps as to populating the compartments,
including the populating steps carried out in conformance with such
predetermination, and the insertion step of representative claim 19 provide
“coordination between compartment population, surface treatments, and
blister package orientation [which] is not disclosed in, or rendered obvious
by, the cited prior art” (App. Br. 14; see also App. Br. 9-13, 16-32; Reply
Br. 4 and 5).
However, and as indicated above, Appellant acknowledges that the
applied CCCA reference (Chiclets) evinces a blister package that is “inserted
into a sleeve, where the sleeve has a single aperture aligned with a
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compartment of the blister package. The blister package contains multiple
flavors of gum. The blister package is transparent and a piece of gum is
visible through the aperture. The sleeve has surface treatments.” (App. Br.
15). Moreover, Wolf, as indicated above, evinces that it was well within the
ordinary level of skill in the art to make a blister package for edible food
products, including multiple products, with a sleeve having more than one
aperture.
Given the teachings of the applied references, including Wolf and
CCCA, we concur with the Examiner’s determination that it would have
been obvious for one of ordinary skill in the art to modify the method of
making the package of Wolf to arrange for multiple edible products, such as
two distinct flavors of gum as provided for in the package of CCCA, albeit
with only one aperture, in an organized way in the compartments of the
package of Wolf in a manner such that one product is visible through one
aperture and another visibly distinct product is viewable through another
aperture. Moreover, we agree with the Examiner that the provision of
organized surface treatments/markings that correspond with different sets of
products as arranged in the package and near the associated viewing aperture
for that product would have been an obvious option to one of ordinary skill
in the art given the combined teachings of the references and the expected
result of enhanced product identification by such surface treatments.
In this regard, we are not persuaded by Appellant’s argument to the
effect that the absence of explicit teachings and/or explicit motivations in the
applied references as to such an ordered arranging of the food items in the
compartments of the package and insertion of the package in a multi-
apertured sleeve such that a particular food (piece of gum) is visible through
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a particular aperture that has a corresponding surface treatment coordinated
with that aperture is fatal to the Examiner’s obviousness determination.
After all and as explained by the Court in In re Keller, 642 F.2d 413,
425 (CCPA 1981):
The 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. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

In order to establish a prima facie case of obviousness, the references
being combined do not need to explicitly suggest combining their teachings.
See e.g., In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) (“the teaching,
motivation, or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references”); In re Johnston, 435 F.3d
1381, 1385 (Fed. Cir. 2006) (“An explicit teaching that identifies and selects
elements from different sources and states that they should be combined in
the same way as in the invention at issue, is rarely found in the prior art”);
and In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988) (“for the purpose of
combining references, those references need not explicitly suggest
combining teachings.”).
Further concerning claim 19, Appellant states that (App. Br. 29)
[i]f any other arrangement of edible product is used in the
package, the package will lose functionality. That is, only the
claimed arrangement of a piece of the first edible product in the
first compartment and a piece of the second edible product in
the second compartment (and subsequent insertion of the blister
package into the sleeve) achieves the functionality of (i) having
the first surface treatment (that is associated with the first
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aperture) being associated with the first edible product, and (ii)
having the second surface treatment (that is associated with the
second aperture) being associated with the second edible
product.

However, the latter statement undercuts Appellant’s argument rather
than supporting it. This is because one of ordinary skill in the art would
have recognized that arranging a package and populating it with edible
products and corresponding surface markings in an organized manner with
the expected benefits attended by organizing the packaged product would
have been an alternative to random packing of different edible products in a
package. After all, just as the option of coordination between compartment
population of different edible products, surface treatments, and blister
package orientation would be expected to yield an organized packaged
product, the absence of such coordination would result in a random or
disorganized arrangement of the product in a package, as Appellant’s
statement indicates.
In light of the above and contrary to Appellant’s arguments, the
evidence of record reflects that one of ordinary skill in the art exercising
routine skill would have recognized the option of conducting the package
making steps so as to organize the arrangement of different products in a
package and would have been led to correlate the population of the package
compartments with the type of product, apertures, and surface markings in
an organized manner so as to result in a packaged product corresponding to
that claimed. See KSR, 550 U.S. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
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It is skill in the art, rather than the converse, which is to be presumed.
In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985). Moreover, common
sense has long been recognized to inform the analysis of obviousness if
explained with sufficient reasoning. Perfect Web Technologies, Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328-329 (Fed. Cir. 2009).
In light of the above, Appellant’s considerable arguments, including
arguments suggesting that the Examiner’s proposed rejection combination
lacks motivation for the proposed modifications and/or engages in
speculation or conclusive reasoning, and fails to consider the claimed subject
matter as a whole lack persuasive merit.
Notably, no evidence establishing unexpected results for the claimed
subject matter has been presented.
On this appeal record, we agree with the Examiner’s obviousness
conclusion as to representative claim 19 and the claims that depend
therefrom that are subject to the Examiner’s first stated obviousness
rejection.
Similarly, we concur with the Examiner’s obviousness determination
as to representative claim 38, and claim 37, which depends therefrom, as set
forth separately in the Examiner’s first stated rejection (Ans. 11-15).
Appellant identifies several differences between claim 19 and claim 38;
however, Appellant relies on substantially the same arguments as presented
for claim 19 for contesting the Examiner’s rejection of claim 38 (App. Br.
32-36).
As a consequence, we shall affirm the Examiner’s obviousness
rejection as to claims 38 and 37 for reasons discussed above with respect to
claim 19.
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It follows that we affirm the Examiner’s first stated obviousness
rejection.
In the Examiner’s separate obviousness rejection of claims 39-41, the
Examiner additionally relies on Rosskam and Whitman’s Chocolate in
addition to the references discussed above with respect to the first stated
rejection.
Appellant argues dependent claim 40 separately from claim 39 and
claim 41 depends from claim 40. Accordingly, we select claim 40 as the
representative claim for the claim grouping of claims 40 and 41 and we
consider representative claim 40 separately from claim 39 to the extent
separately argued therefrom.
Appellant’s arguments for the patentability of claim 39 substantially
parallel those submitted for claim 19 and claim 38 as discussed above with
respect to the Examiner’s first stated obviousness rejection (App. Br. 36-39).
Appellant asserts that claim 39 differs from the previously discussed
claims 19 and 38 by reciting two selecting steps instead of one, one selecting
step involving two separate pieces of one type of edible product and the
other selecting step involving two pieces of a second type of edible product
followed by corresponding populating steps where the selected pieces are
placed into different compartments of the blister package (App. Br. 36-37).
Appellant also indicates that claim 39 differs from claims 19 and 38 as
“claim 39 recites that the first surface treatment is associated with the first
aperture more than the second aperture and the first type of edible product
more than the second type of edible product” (App. Br. 37). However,
Appellant has not articulated how any differences between the selecting and
populating steps or the surface treatment of claim 39 as compared to such
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steps as recited in claim 19 and/or claim 38 renders any of the arguments
presented with respect to claim 19 and/or claim 38, which arguments we
found to be ineffective for establishing error in the latter claims, persuasive
as to indicating error in the Examiner’s rejection of claim 39 (App. Br. 37-
39).
Appellant acknowledges that “Rosskam discloses a package
containing a plurality of confections where at least a portion of the
confections are ‘preferably in orderly and slightly arrangement.’ Rosskam
column 2, lines 60-61” (App. Br. 37).
Moreover, Appellant acknowledges that “Whitman’s discloses a
plurality of chocolates arranged in a predetermined pattern” (App. Br. 37).
Consequently, Appellant has not articulated how the Examiner’s
addition of these latter references to the second stated rejection does not
buttress the Examiner’s obviousness contention that arranging multiple
pieces of edible products of different types in particular compartments, such
as the compartments in the package of Wolf having a sleeve with multiple
apertures, and as modified by CCCA (Chiclets), such that at least one piece
of different types of edible products are visible through separate apertures
and with differing surface treatments associated with each aperture would
have been an obvious option to one of ordinary skill in the art given that
Whitman’s evinces that coordinating the arrangement of different edible
products in different compartments of a package having differing surface
markings associated with each visible compartmented edible product is a
well-known option for visibly arranging different types of edible products in
a package.
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Concerning representative dependent claim 40 and the argued
requirement for selecting an orientation of the blister package in the sleeve
such that a particular product is visible through a particular aperture, we
concur with the Examiner’s obviousness assessment in that one of ordinary
skill in the art would have readily recognized that the manner of inserting the
package (inner receptacle (4) into sleeve (3) of Wolf could result in a
different compartment (recess 6) aligned with a different sleeve aperture
(opening 14) (App. Br. 39-40; Ans. 19; Wolf, Figs. 1, 4, and 5). Of course,
one of ordinary skill in the art would select the insertion orientation of the
package with the sleeve that results in the desired alignment as such would
have been a packaging option attended by expected results, as further
discussed above with respect to the Examiner’s first stated rejection.
As we indicated above, respecting the Examiner’s first stated rejection
and contrary to Appellant’s arguments concerning the separate rejection of
claims 39-41, the evidence of record reflects that one of ordinary skill in the
art exercising routine skill would have recognized the option of selecting and
arranging different types of multiple products in a package in an organized
manner and would have been led to correlate the population of the package
compartments with the type of product, apertures, and surface markings in
an organized manner so as to result in a method of making a packaged
product corresponding to that claimed. See KSR, 550 U.S. at 416 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
In our view, one of ordinary skill in the art would have recognized
that arranging a package and populating it with selected edible products in
an organized manner would have been an alternative to random selection
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and packing of different edible products in a package with the expected
benefits attended by organizing the packaged product. After all, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421. In making an obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.” KSR, 550 U.S. at 418.
Notably, no evidence establishing unexpected results for the claimed
subject matter has been presented.
On this appeal record, we agree with the Examiner’s obviousness
conclusion respecting claims 39-41 in light of the combined teachings of the
applied references set forth in the separately stated rejection pertaining
thereto.

CONCLUSION/ORDER
The Examiner’s decision to reject claim 39 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
and to reject claims 37 and 38 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim what applicant regards as
the invention is reversed.
The Examiner’s decision to reject claim 39 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim
what applicant regards as the invention is affirmed.
The Examiner’s decision to reject claims 19, 33, 34, 37, and 38 under
35 U.S.C. § 103(a) as being unpatentable over Wolf in view of Binaca,
CCCA (Conveniencecentral.ca ), Farley’s, and Beech-Nut and to reject
claims 39-41 under 35 U.S.C. § 103(a) as being unpatentable over Wolf in
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view of Binaca, CCCA (Conveniencecentral.ca ), Farley’s, Beech-Nut,
Rosskam, and Whitman’s Chocolate is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cam

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CLAIMS APPENDIX

19. A method for forming a package for displaying first and second
different edible products, comprising:

providing a sheet member;

forming first and second apertures through a surface of the sheet
member;

folding the sheet member to form a sleeve having at least a first wall,
the sleeve being sized to receive a blister package, wherein the first and
second apertures extend through the first wall;

applying a first surface treatment to the surface of the sheet member
such that the first surface treatment is disposed on a first portion of an
outside surface of the first wall and such that the first surface treatment is
associated with the first aperture;

applying a second surface treatment to the surface of the sheet
member such that the second surface treatment is disposed on a second
portion of the outside surface of the first wall and such that the second
surface treatment is associated with the second aperture, wherein the first
and second surface treatments are visibly distinct;

providing a blister package having a plurality of sealed separate
compartments formed as cavities therein, wherein the blister package is
configured such that when the blister package is inserted into the sleeve, a
first compartment of the plurality of compartments is operable to be aligned
with the first aperture and a second compartment of the plurality of
compartments is operable to be aligned with the second aperture, wherein
the providing a blister package step comprises:

a. predetermining to populate the first compartment of the
plurality of compartments with a piece of the first edible product;

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b. populating the first compartment with the piece of the first
edible product;

c. predetermining to populate the second compartment of the
plurality of compartments with a piece of the second edible product; and

d. populating the second compartment with the piece of the
second edible product; and

inserting the blister package into the sleeve such that the first
compartment is aligned with the first aperture, the second compartment is
aligned with the second aperture, the piece of the first edible product is
visible through the first aperture, and the piece of the second edible product
is visible through the second aperture, wherein the first and second edible
products are visibly distinct, wherein the first surface treatment provides a
visual indication associated with the first edible product; and wherein the
second surface treatment provides a visible indication associated with the
second edible product.

39. A method of forming a package for first and second types of
edible products, the method comprising:

a. forming first and second apertures through a surface of a sheet
member;

b. folding the sheet member to form a sleeve having at least a first
wall, the sleeve being sized to receive a blister package, wherein the first and
second apertures extend through the first wall;

c. applying a first surface treatment to the surface of the sheet
member such that:

the first surface treatment is disposed on a first portion of an
outside surface of the first wall;

the first surface treatment is associated with the first aperture
more than the second aperture; and

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the first surface treatment is associated with the first type of
edible product more than the second type of edible product;

d. applying a second surface treatment to the surface of the sheet
member such that:

the second surface treatment is disposed on a second portion of
the outside surface of the first wall;

the second surface treatment is associated with the second
aperture more than the first aperture;

the second surface treatment is associated with the second type
of edible product more than the second type of edible product;

e. selecting, based on type of edible product, first and second pieces
of edible product, wherein the first and second pieces of edible product are
of the first type of edible product;

f. populating, after step e, a first compartment of the blister package
with the selected first piece of edible product;

g. populating, after step e, a second compartment of the blister
package with the selected second piece of edible product;

h. selecting, based on type of edible product, third and fourth pieces
of edible product, wherein the third and fourth pieces piece of edible product
are of the second type of edible product;

i. populating, after step h. a third compartment of the blister package
with the selected third piece of edible product;

j. populating, after step h. a fourth compartment of the blister package
with the selected fourth piece of edible product; and

k. inserting, after steps e through j, the blister package into the sleeve
such that the blister package is fully inserted into the sleeve and such that:

the first compartment is aligned with the first aperture;
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the third compartment is aligned with the second aperture;

the first piece of edible product is visible through the first
aperture;

the third piece of edible product is visible through the second
aperture;

the second piece of edible product is not visible through the
first aperture;

the second piece of edible product is not visible through the
second aperture;

the fourth piece of edible product is not visible through the first
aperture; and

the fourth piece of edible product is not visible through the
second aperture,

wherein the first and second surface treatments are visibly distinct
from each other, wherein the first and second type of edible products are
visibly distinct from each other.