Ex Parte Izen et alDownload PDFBoard of Patent Appeals and InterferencesFeb 12, 200910842764 (B.P.A.I. Feb. 12, 2009) Copy Citation 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 ____________ Decided:1 February 12, 2009 ____________ 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). Appeal 2008-5780 Application 10/842,764 2 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; Appeal 2008-5780 Application 10/842,764 3 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 Appeal 2008-5780 Application 10/842,764 4 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. Appeal 2008-5780 Application 10/842,764 5 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 Appeal 2008-5780 Application 10/842,764 6 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. Appeal 2008-5780 Application 10/842,764 7 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 TOWNSEND AND TOWNSEND AND CREW, L.L.P. TWO EMBARCADERO CENTER EIGHTH FLOOR SAN FRANCISCO, CA 94111-3834 Copy with citationCopy as parenthetical citation