Ex Parte Izen et al

Board of Patent Appeals and Interferences

Feb 12, 2009

10842764 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK S. IZEN,
ALEXANDER WEBB, BRIAN ARCHER,
MICHAEL OPPENHEIM, and GERARD HELFRICH
____________

Appeal 2008-5780
Application 10/842,764
Technology Center 2800
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Decided:1 February 12, 2009
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Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/842,764

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-20, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellants’ claimed invention relates to a packaged drum set
including a carton having a top wall, a bottom wall, and plural side walls
with one of the side walls defining a transparent window. The walls form a
chamber which retains a frame assembly that defines a first nest in the
chamber lower portion, and second and third horizontally spaced apart nests
in the chamber upper portion. A drum set, including bass, snare and tom
drums, is retained within the carton and is partially visible through the
transparent window. The bass drum is disposed in the first nest with the
snare and tom drums disposed, respectively, in the second and third upper
chamber nests. (Spec. 2:13-20).
Claim 1 is illustrative of the invention and reads as follows:

1. A packaged drum set comprising:
a carton having a top wall, a bottom wall, and a plurality of side walls
extending between said top and bottom walls to form a chamber; one of said
side walls defining a transparent window providing visual access into said
chamber;
a frame assembly retained within said chamber and defining a first
nest disposed in a lower portion of said chamber and second and third
horizontally spaced apart nests disposed in an upper portion of said chamber;
a bass drum disposed in said first nest and at least partially visible
through said window;
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a snare drum disposed in said second nest and at least partially visible
through said window; and
a tom drum disposed in said third nest and at least partially visible
through said window.
The Examiner’s Answer cites the following prior art references:
Hacker US 1,725,073 Aug. 20, 1929
Russell US 3,747,464 Jul. 24, 1973
Kaufman US 5,934,551 Aug. 10, 1999

Claims 1-11 and 13-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Russell in view of Kaufman.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Russell in view of Kaufman and Hacker.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUE
Under 35 U.S.C. § 103(a), with respect to appealed claims 1-20,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Russell and Kaufman to render the claimed invention
unpatentable?

The pivotal issue before us is whether Appellants have demonstrated
that the Examiner erred in finding that the structure resulting from the
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combined teachings of Russell and Kaufman would satisfy the particular
structural orientation of the packaged drum set forth in independent claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Russell discloses (Figure 1) an assembled drum set 10 including
a bass drum 13, a snare drum 12, a tom drum 14 and a pair of cymbals 18,
19.
2. Kaufman discloses (Figure 4) a packaging container 90 having
a top wall 20, a bottom wall 22, and side walls 4, 6, 8, and 10 which form a
chamber. The chamber is divided into a plurality of nests or compartments
and packaged objects can be viewed through windows in the side walls.
(Kaufman, Figures 1, 2A, 3B, col. 3, ll. 36-45).
3. Kaufman also discloses that the packaging container is
particularly suited for displaying objects which are related and have a
common theme. An example of such related objects is the packaging of
books and their related toy objects, although the disclosed invention is not
limited to the packaging of any particular related products. Kaufman, col. 1,
ll. 26-30 and col. 4, ll. 31-37).
4. Hacker discloses (Figure 1) a carton package with a pictorial
display on the top surface of the package which bears no relationship to the
contents of the package.

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness” . . . . [H]owever, the 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., 127 S. Ct. 1727, 1741 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1, the sole independent claim on appeal, based on the
combination of Russell and Kaufman, Appellants assert that the Examiner
has failed to set forth a prima facie case of obviousness since all of the claim
limitations are not taught or suggested by the applied Russell and Kaufman
references. According to Appellants (App. Br. 12-13), the structure
resulting from the Examiner’s proposed combination of references would
not satisfy the requirements of claim 1 which requires that specific drum
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components of an assembled drum set are packaged in particular
compartment nests of a carton package.
We agree with Appellants. We do not dispute that the Examiner has
correctly characterized (Ans. 3-5) Kaufman as providing a teaching of
packaging a related set of objects in a compartmentalized carton having a
side wall with a transparent window. We find, however, that applying this
teaching to the drum set assembly disclosure of Russell would, at best, result
in a packaged drum set with various drum set components disposed in
various chamber compartment nests of a carton.
It is apparent from a reading of the language of claim 1 that much
more is required. Specifically, the Examiner’s assertion to the contrary (id.,
at 5) notwithstanding, claim 1 sets forth a specific orientation of specified
drum type components disposed in particular compartmentalized chamber
nests, which nests themselves have a particular structural arrangement in
relation to each other. As Appellants point out (App. Br. 13), claim 1 sets
forth that the packaged drum set retains a set of drums in the relative
position they would be used, i.e., the bass drum in the lower carton chamber
nest, and the snare and bass drums in the horizontally spaced apart nests in
the upper carton chamber.
To whatever extent the Examiner may be correct in finding the
obviousness to the skilled artisan of packaging drum set components, such
as disclosed by Russell, in a nested chamber carton, such as described by
Kaufman, we simply find no valid line of reasoning on the record before us
as to why a skilled artisan would package the claimed drum set components
with the particular orientation specified in independent claim 1.
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We have also reviewed the Hacker reference, relied upon by the
Examiner to address the pictorial display feature of dependent claim 12, and
find nothing which overcomes the innate deficiencies of Russell and
Kaufman discussed supra.
In view of the above discussion, we are of the opinion that the applied
prior art references, even if combined, do not support the obviousness
rejection. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 1, nor of claims 2-20 dependent thereon.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown the Examiner erred in rejecting claims 1-20 for
obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-20, all of the
appealed claims, is reversed.

REVERSED

KIS

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