Ex parte Hale

Board of Patent Appeals and Interferences

Aug 15, 1997

08272906 (B.P.A.I. Aug. 15, 1997)

Application for patent filed July 8, 1994. According to appellant1
this application is a continuation of Application 08/056,954, filed May 3,
1993, now abandoned; which is a continuation of Application 07/927,866,
filed August 10, 1992, now Patent No. 5,244,108 issued September 14, 1993.
1
Paper No. 21
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JAMES A. HALE
______________
Appeal No. 96-1604
Application 08/272,9061
_______________
ON BRIEF
_______________
Before COHEN, LYDDANE and STAAB, Administrative Patent Judges.
LYDDANE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the examiner's refusal
to allow claims 6 through 9, 13, 14, 22 and 23. Claims 17
through 20, which are the only other claims pending in the
Appeal No. 96-1604
Application 08/272,906
2
application, stand withdrawn from further consideration by the
examiner pursuant to the provisions of 37 CFR § 1.142(b) as being
drawn to a nonelected invention.
The subject matter on appeal is directed to a collapsible
container. Claim 6 is exemplary of the invention and reads as
follows:
6. An easily collapsible to save space container that
may be readily reassembled without special tools comprising:
a plurality of reusable identical and nestable U-shaped
continuously slightly curved and convex relatively rigid molded
sidewalls and rounded corners, each sidewall being defined
between two longitudinal edges;
an equal plurality of reusable H-shaped connectors for
connecting said sidewalls by said edges to form a generally
rectangular tubular body with slightly curved and convex
sidewalls connected with rounded corners each of said edges
being located intermediate a sidewall and between a pair of
rounded corners, said connectors having grooves so shaped and
dimensioned to form an interference fit with said edges so that
the side walls and connectors may be assembled and disassembled
without special tools;
a top member including a top plate and a top skirt extending
below said top plate and arranged and constructed to form an
interference fit with said tubular body when said tubular body is
telescopically joined to said top member; and
a bottom member including a bottom plate and a bottom skirt
extending above said bottom plate and arranged and constructed to
form an interference fit with said tubular body when said tubular
body is telescopically joined to said bottom member.
Appeal No. 96-1604
Application 08/272,906
3
The references of record relied upon by the examiner
in rejections of the claims under 35 U.S.C. § 103 are:
Sherk 1,511,915 Oct. 14, 1924
Carpenter, Sr. (Carpenter) 3,042,288 July 3, 1962
Sproull et al. (Sproull) 3,291,362 Dec. 13, 1966
Hancock 3,854,269 Dec. 17, 1974
DeForest et al. (DeForest) 4,157,147 June 5, 1979
Linnemann 4,881,683 Nov. 21, 1989
Claims 6 through 9 and 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sproull in view of Carpenter,
Hancock and Sherk.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Sproull in view of Carpenter, Hancock, Sherk
and DeForest.
Claims 14 and 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sproull in view of Carpenter, Hancock,
Sherk and Linnemann.
Rather than reiterate the examiner's statement of the
above rejections and the conflicting viewpoints advanced by the
examiner and the appellant, we refer to pages 3 through 8 of the
examiner's answer and to pages 3 through 9 of the appellant's
brief for the full exposition thereof.
Appeal No. 96-1604
Application 08/272,906
Note page 3 of the appellant's brief and page 2 of the examiner's2
answer.
4
OPINION
At the outset, we note that both the appellant and the
examiner agree that claims 6 through 9 and 22 stand or fall
together and claims 13, 14 and 23 stand or fall together.2
In arriving at our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art, and to the respective positions
advanced by the appellant and by 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 all claims
on appeal. 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); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A prima facie case of
obviousness is established by presenting evidence indicating that
the reference teachings would appear to be sufficient for one of
Appeal No. 96-1604
Application 08/272,906
5
ordinary skill in the relevant art having the references before
him to make the proposed combination or other modification.
See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972). Furthermore, the conclusion that the claimed subject
matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988),
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied,
475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984), and In
re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
Additionally, rejections based on § 103 must rest on
a factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art.
The examiner has the initial duty of supplying the factual basis
for the rejection. The examiner may not, because of doubt that
Appeal No. 96-1604
Application 08/272,906
6
the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in
the factual basis. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Our reviewing court has repeatedly cautioned against employing
hindsight by using the applicant's disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings in
the prior art. See, e.g., Grain Processing Corp. v. American
Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.
Cir. 1988).
With this as background, we turn to the patent to Sproull
applied by the examiner in the rejection of appealed claims 6
through 9 and 22. Sproull (Figures 1 and 2) discloses a fiber-
board hogshead formed by interconnecting two fiberboard semi-
cylindrical body halves 12A, 12B via a "slide fastener or zipper
means 14 (column 5, line 37-38). The hogshead may include top
and bottom members, or end closures, 16' (note Figures 8 and 9)
that include central panels 60, an upstanding vertical wall 62,
an arcuate web 64, and a downwardly extending, generally vertical
skirt portion 66. The end closures 60 are secured to the body
halves 12A, 12B by fasteners 74. Critical to the construction of
Appeal No. 96-1604
Application 08/272,906
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the fiberboard hogshead of Sproull is the requirement that "the
hogshead must be constructed to diametrically enlarge 8% beyond
its initial dimensions during a pressing operation" (column 6,
lines 5-7). Sproull allows for this diametrical enlargement by
either forming each zipper tape section 20 with a stretchable
portion (column 5, lines 50-51 and column 6, lines 7-14) or by
forming the body "in whole or in part of an extensible paper,
which, in itself, could stretch during the pressing operation"
(column 6, lines 15-17).
In rejecting appealed claims 6 through 9 and 22, the
examiner has applied the additional teachings of Carpenter,
Hancock and Sherk. Carpenter has been applied for its teaching
of a fiberboard container having curved sidewalls and rounded
corners (Figures 1 and 4). Hancock has been applied for its
teaching of an H-shaped connector (Figure 12) for joining edges
of panels to form a knockdown container, and Sherk has been
applied to show a fiberboard container having end closures with
skirts 18 extending below (or above) the planar plate portion of
the end closure (Figure 5).
As noted above, the initial burden of establishing a prima
facie case of obviousness rests upon the examiner. In estab-
lishing a prima facie case of obviousness under 35 U.S.C. § 103,
Appeal No. 96-1604
Application 08/272,906
8
it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the
claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd.
Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the
prior art as a whole or from the knowledge generally available to
one of ordinary skill in the art and not from appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988),
cert. denied, 488 U.S. 825 (1988).
It is our opinion that nothing in the teachings of the
applied prior art or the knowledge generally available to one of
ordinary skill in the art would have led such person of ordinary
skill in the art to modify the fiberboard hogshead of Sproull to
include the H-shaped connector of Hancock or the downwardly (or
upwardly) extending skirt portions for the end closures of Sherk.
In particular, although Hancock does disclose a removable
H-shaped connector for connecting panels of a container, it is
not apparent that such a connection would provide the necessary
Appeal No. 96-1604
Application 08/272,906
9
resistance to the diametrical expansion forces critical to the
manner in which the hogshead of Sproull functions. We recognize
that Sproull discloses that either the walls of the container
or the attachment tapes of the zipper means can be elastic.
However, the fastener (zipper) itself and its connection to the
panel ends must be of sufficient rigidity and strength to
maintain the connection during the stretching of the elastic
portions caused by the diametrical expansion. Nothing in the
disclosure of Hancock indicates that the H-shaped connector is
intended to function, or is even capable of functioning, in a
manner to preclude separation of the panel connection during
diametrical expansion of container walls formed thereby.
As stated in W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984),
[t]o imbue one of ordinary skill in the art
with knowledge of the invention in suit, when
no prior art reference or references of
record convey or suggest that knowledge, is
to fall victim to the insidious effect of a
hindsight syndrome wherein that which only
the inventor taught is used against its
teacher.
It is our conclusion that the only reason to combine the
teachings of the applied references in the manner proposed by
the examiner results from a review of appellant's disclosure
Appeal No. 96-1604
Application 08/272,906
10
and the application of impermissible hindsight, since it does
not appear from the disclosure of Hancock that any similar
diametrical expansion is contemplated for the knockdown container
thereof. Thus, we cannot sustain the examiner's rejection of
appealed independent claims 6 and 22, or of claims 7 through 9
dependent from claim 6, under 35 U.S.C. § 103 for this reason
alone.
Moreover, it is also not apparent from the disclosure of
Hancock that the H-shaped connector thereof includes "grooves so
shaped and dimensioned to form an interference fit" with the
longitudinal edges of the panels in the manner disclosed and
claimed by appellant. The H-shaped connectors and edging strips
of Hancock "are arranged to be snap fitted together" (column 4,
line 54), which would not necessarily result in an interference
fit. Furthermore, the H-shaped connectors of Hancock do not
engage the longitudinal edges of molded sidewalls as disclosed
and claimed by appellant, rather they engage an "edging strip"
that is crimped onto the edges of the panels to be joined. Thus,
even assuming arguendo that the teachings of Hancock could be
combined with those of Sproull, the container structure resulting
therefrom would not include the longitudinal edges of the molded
Appeal No. 96-1604
Application 08/272,906
11
sidewalls engaging with the grooves of the H-shaped connectors in
an interference fit as required by appealed independent claims 6
and 22. Therefore, we also cannot sustain the examiner's
rejection of claims 6 through 9 and 22 under 35 U.S.C. § 103
for this additional reason.
Furthermore, like the appellant, we are unable to find any
teaching suggestion or motivation for modifying the end closures
of Sproull to include skirt portions 18 as taught for the end
closures of the ice cream container of Sherk. We observe that
the end closures 16' of Sproull (Figure 8) already include
downwardly (or upwardly) extending skirt portions 66, and it is
not seen why one of ordinary skill in the art would have been
led to the teachings of Sherk to have the portions 66 extend even
farther downwardly past the plate portion 60, other than by
utilizing appellant's claim as a template and the application
of impermissible hindsight. Thus, we consider the examiner's
rejection of claims 6 through 9 and 22 under 35 U.S.C. § 103
to be defective for this further reason.
We have also considered the teachings of the patents to
DeForest and Linnemann as applied in the rejections of claims 13,
14 and 23 under 35 U.S.C. § 103, but we find nothing therein to
cure the deficiencies of the rejection based on the combined
Appeal No. 96-1604
Application 08/272,906
12
teachings of Sproull Carpenter, Hancock and Sherk as set forth
above. Therefore, the examiner's rejection of these claims under
35 U.S.C. § 103 also cannot be sustained.
Accordingly, the decision of the examiner rejecting claims 6
through 9, 13, 14, 22 and 23 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
WILLIAM E. LYDDANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )

Appeal No. 96-1604
Application 08/272,906
13
John Kurucz, Inc.
Kane, Dalsimer, Sullivan & Kurucz
711 Third Avenue
20th Floor
New York, NY 10017
WEL/cam