Ex Parte Groff

Board of Patent Appeals and Interferences

Oct 17, 2005

10210046 (B.P.A.I. Oct. 17, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Alan M. Groff
____________
Appeal No. 2005-1826
Application No. 10/210,046
____________
ON BRIEF
____________
Before FRANKFORT, PATE, and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Alan M. Groff appeals from the final rejection of claims
1-5, 7, 9 and 13-20, all of the claims pending in the
application.
THE INVENTION
The invention relates to “stackable containers having a
product access opening in one panel” (specification, page 1).
Representative claim 1 reads as follows:
Claim 1. A stackable container formed from a single sheet
of material comprising:
side panel members, a front panel member connected to said side
panel members and a rear panel member connected to said side
Appeal No. 2005-1826
Application No. 10/210,046
2
panel members, each of said panel members constructed with a
container forming section, a reinforcing section adapted to
folded over and secured to said container forming section, said
reinforcing section being defined and separated from said
container forming section by score lines and a bottom section
defined and separated from said container forming section by
score lines, said bottom section being folded on scoring which
separates it from said container forming section to form at least
a portion of a bottom of the container, said bottom section
overlapping a bottom section of an adjacent panel, each side
panel member, front panel member and rear panel member comprising
two overlapping walls formed by said container forming section
and said reinforcing section which are secured together, at least
one of said panel members defining a cutout allowing entry into
an interior of said container and a plurality of corner support
members defined by said panel members, each said corner support
member extending between adjacent panels to provide stacking
support for containers placed thereon and being seated in
recesses cut into said reinforcing section.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Hamilton Re. 25,050 Oct. 10, 1961
Kanter et al. (Kanter) 6,158,653 Dec. 12, 2000
THE REJECTIONS
Claims 1-5, 7, 9 and 13-20 stand rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter the appellant
regards as the invention.
Claims 1-3, 5 and 7 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Kanter.
Appeal No. 2005-1826
Application No. 10/210,046
3
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanter in view of Hamilton.
Attention is directed to the main and reply briefs (filed
July 26, 2004 and January 18, 2005) and answer (mailed November
17, 2004) for the respective positions of the appellant and
examiner regarding the merits of these rejections.
DISCUSSION
I. Preliminary matter
The appellant (see pages 7 and 8 in the main brief) raises
as an issue on appeal the refusal of the examiner to enter the
amendment filed subsequent to final rejection on February 2,
2004. It is well settled, however, that the refusal of an
examiner to enter an amendment after final rejection is a matter
of discretion which is reviewable by petition to the Director
rather than by appeal to this Board. In re Mindick, 371 F.2d
892, 894, 152 USPQ 566, 568 (CCPA 1967). Hence, we shall not
address the merits of this matter.
II. The 35 U.S.C. § 112, second paragraph, rejection of claims
1-5, 7, 9, 13 and 14-20
The examiner considers claims 1-5, 7, 9, 13 and 14-20 to be
indefinite because:
Appeal No. 2005-1826
Application No. 10/210,046
1 The appealed claims contain numerous inconsistencies in
terminology. For example, claim 1 utilizes the terms “score
lines” and “scoring” to refer to the same structure, and lacks a
proper antecedent basis for the terms “said bottom section,”
“panels” and “said reinforcing section.” In the event of further
prosecution, steps should be taken to review the claims and
eliminate these problems.
4
In claim 1, “each said corner support
member...being seated in recesses” is confusing. It
seems only one corner is seated in one corresponding
recess.
In claim 9, “it’s” should be changed to --its--.
In claim 9, line 8, and claim 14, line 7, “once
fold line” should be changed to --one fold line--.
In claim 16, the rectangular tabs do not have the
diagonal fold lines. The drawings show only the
quarter circle having the diagonal fold lines [answer,
page 4].
These criticisms are reasonable on their face and not
specifically disputed on appeal. Instead, the appellant
challenges the rejection on the basis of an allegedly improper
refusal by the examiner to enter the amendment submitted
subsequent to final rejection. In the appellant’s view, the
amendment, if entered, would overcome the examiner’s concerns.
As explained above, however, this Board has no jurisdiction to
review the examiner’s action in this regard. Hence, the
appellant’s argument is misplaced.
Accordingly, we shall sustain the standing 35 U.S.C. § 112,
second paragraph, rejection of claims 1-5, 7, 9, 13 and 14-20.1
Appeal No. 2005-1826
Application No. 10/210,046
5
III. The 35 U.S.C. § 102(b) rejection of claims 1-3, 5 and 7 as
being anticipated by Kanter
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
Kanter discloses a stackable container for packaging,
shipping and displaying goods. Of particular interest in this
appeal is the presence in the Kanter container of corner supports
which increase the stacking strength of the container.
The examiner’s determination (see page 4 in the answer)
that Kanter’s container meets the various limitations in
representative claim 1 relating to the single sheet of material,
the side panel members, the front panel member, the rear panel
member, the container bottom, the container forming sections, the
Appeal No. 2005-1826
Application No. 10/210,046
6
reinforcing sections, the bottom sections, the score lines and
the cutout is reasonable on its face and not disputed by the
appellant. The appellant does contend, however, that the
rejection of claim 1 is unsound because the Kanter container
lacks response to the limitations in the claim pertaining to the
plurality of corner support members (see pages 4 and 5 in the
main brief). The various arguments advanced by the appellant in
support of this position are unpersuasive because they are not
(1) commensurate with the relatively broad scope of the corner
support member limitations or (2) directed to the particular
corner support structure disclosed by Kanter which is relied on
by the examiner to meet these limitations (see pages 4 and 5 in
the main brief).
More particularly, the Kanter container includes four corner
supports 40:
As best illustrated in FIGS. 1, 2, 3, and 4,
corner supports 40 are provided adjacent each corner
26, 28, 30, and 32 to improve stacking strength. The
corner supports 40 reinforce each of the corners 26,
28, 30, and 32 and provide a second support surface in
addition to the tops of the corners for supporting a
container stacked on top. While all corners of the
container 10 are shown with a corner support 40, it is
readily understood that other embodiments having less
than all corners reinforced are possible.
Multiple configurations for the corner supports 40
are contemplated, two particular preferred
configurations being illustrated: a substantially
Appeal No. 2005-1826
Application No. 10/210,046
7
non-rectangular corner support 42a, 42b, and a
substantially rectangular corner support 44a, 44b
[column 3, lines 39-52].
In applying Kanter against claim 1, the examiner focuses on
the corner support embodiment illustrated in Figure 8 which is a
variation of non-rectangular corner supports 42a and 42b:
Illustrated in FIGS. 8 and 9 is another embodiment
of the corner supports 40 of the non-rectangular type.
A corner support 42c is similar to that of the support
42a of FIG. 3, with similar elements being referenced
with the same reference number. The height of the
first and second panel sections 50 and 58 of the corner
support 42c are substantially less than the height of
the adjacent wall panels 18 and 20, the corner support
42c having a lower end 59 as shown. The first edge 52
of the first panel section 50 is attached pivotally to
the inner face 17 of the first wall panel 18 via the
glue panel 54 in a like manner as shown and described
with reference to FIG. 3. Here, however, the glue
panel 54 has a lower section 104 that extends below the
lower end 59 of the corner support 42c to the corner 26
(see FIG. 9). The first edge 60 of the second panel 58
is pivotally attached to the inner face 17 of the
second wall panel 20 via the second glue panel 62. The
reinforcing panel 91, folded over at the top end 14 and
glued to the panel 20 has a lower section 106 that
extends below the lower end 59 of the corner support
42c to the corner 26 (see FIG. 9).
With reference to FIG. 9, it is seen that the
corner support 42c is formed and cut from the first
glue panel 54 (here a reinforcing panel) and
reinforcing panel 91 by making horizontal cuts 108,
108b (the cut 108b forming the lower end 59 of the
corner support 42c) and a vertical cut 110 (forming the
end 66) to leave a cut-out 112 [column 7, lines 32-58].
Appeal No. 2005-1826
Application No. 10/210,046
8
Figures 8 and 9 in the Kanter reference clearly show that
the non-rectangular corner supports 42c are defined by the
container’s panel members and that each extends between adjacent
panels (i.e. panel members) to provide stacking support for
containers placed thereon and seats in a recess cut into a
reinforcing section of a panel member. This is all that is
required by the corner support member limitations recited in
claim 1. The appellant’s argument that Kanter’s rectangular
corner supports fail to meet these limitations, while arguably
correct, is of no moment since the subject limitations find full
response in Kanter’s non-rectangular supports 42c and because the
claim does not exclude, and is not otherwise inconsistent with,
the rectangular corner supports.
Hence, the appellant’s position that the subject matter
recited in independent claim 1, and dependent claims 2, 3, 5 and
7, distinguishes over that disclosed by Kanter is not well taken.
Consequently, we shall sustain the standing 35 U.S.C. § 102(b)
rejection of claims 1-3, 5 and 7 as being anticipated by Kanter.
IV. The 35 U.S.C. § 103(a) rejection of claim 4 as being
unpatentable over Kanter in view of Hamilton
Claim 4 depends from claim 1 and recites that at least one
of the corner support members has a top segment shaped as a
Appeal No. 2005-1826
Application No. 10/210,046
9
quarter circle with an anchor tab extending outwardly therefrom
and secured to an adjacent panel member. Conceding that the
Kanter container has no such corner support member, the examiner
turns to Hamilton to account for this deficiency.
Hamilton discloses a stackable tray which includes corner
support members in the form of quarter circles having respective
anchor tabs. The examiner submits that it would have been
obvious “to provide a support member being shaped as a quarter
circle and having an anchor tab in Kanter as taught by Hamilton
to provide an alternative corner support structure for a
container” (answer, page 5). The problem here, however, is that
Hamilton’s corner support members are part of an intricate folded
blank construction which differs markedly from that disclosed by
Kanter. The examiner has failed to cogently explain, and it is
not apparent, how or why one of ordinary skill in the art would
have found it obvious to incorporate the particular quarter
circle and anchor tab configuration taught by Hamilton into the
container disclosed by Kanter so as to arrive at a corner support
of the sort set forth in parent claim 1 and further defined in
dependent claim 4. The only suggestion for such a combination
stems from hindsight knowledge impermissibly derived from the
appellant’s disclosure.
Appeal No. 2005-1826
Application No. 10/210,046
10
Thus, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claim 4 as being unpatentable over Kanter in view of
Hamilton.
SUMMARY
As at least one rejection of each of the appealed claims is
sustained, the decision of the examiner to reject claims 1-5, 7,
9 and 13-20 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 2005-1826
Application No. 10/210,046
11
John S. Hale
c/o Gipple & Hale
6665-A Old Dominion Drive
McLean, VA 22101

JPM/jrg
Appeal No. 2005-1826
Application No. 10/210,046
12