Ex Parte Johnston

Board of Patent Appeals and Interferences

Jan 29, 2004

08992878 (B.P.A.I. Jan. 29, 2004)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT H. JOHNSTON
____________
Appeal No. 2004-0404
Application No. 08/992,878
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Robert H. Johnston originally took this appeal from the
final rejection (Paper No. 20) of claims 1, 3, 6, 8 and 19, all
of the claims pending in the application. Upon consideration of
the appellant’s main brief (Paper No. 23), the examiner issued an
Office action (Paper No. 24) reopening prosecution and entering a
superseding rejection of the claims. Pursuant to 37 CFR
§ 1.193(b)(2)(ii), the appellant then filed a supplemental brief
(Paper No. 26) with a request that the appeal be reinstated.
Implicitly granting the request, the examiner entered an answer
(Paper No. 27), noted a reply brief (Paper No. 28) filed by the
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Application No. 08/992,878
2
appellant and forwarded the application to this Board for review
of the new rejection of claims 1, 3, 6, 8 and 19.
This is the second appeal to this Board involving the
instant application. A decision in the first appeal (Appeal No.
2001-2299), generally favorable to the appellant, issued on
October 9, 2001 (Paper No. 16).
THE INVENTION
The invention relates to an envelope for packaging and
displaying seeds. Representative claims 1 and 19 read as
follows:
1. A seed envelope comprising:
(a) a folded sheet having a front face including an
aperture, a back face, a bottom edge, a top edge, a first side
edge and a second side edge extending opposite each other from
said top edge to said bottom edge, height and width dimensions of
a seed envelope being a height from said top edge to said bottom
edge between about 9 cm and about 15 cm, and a width from said
first side edge to said second side edge between about 6 cm and
about 10 cm, said height being greater than said width, said
aperture being closer to said bottom edge than to said top edge;
said aperture being spaced between about ½ cm and about 2 cm from
said bottom edge, and at least ½ cm from each of said side edges,
the aperture having a width of at least 1 cm, whereby a desired
quantity of seeds placed within the seed envelope is seen through
the aperture when the seed envelope rests on its bottom edge
while retaining sufficient structural stability to permit the
insertion of the seeds without being destroyed; and
(b) a transparent sheet attached to said front face covering
said aperture.
19. A seed envelope comprising:
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Application No. 08/992,878
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(a) a folded sheet having a front face including an
aperture, a back face, a bottom edge, a top edge, a first side
edge and a second side edge extending opposite each other from
said top edge to said bottom edge, said aperture being closer to
said bottom edge than to said top edge; said aperture being
spaced between about ½ cm and about 2 cm from said bottom edge,
and at least ½ cm from each of said first side edge and said
second side edge, the aperture and the envelope each having a
width, the width of the aperture being about 80% of the width of
the envelope; and
b) a transparent sheet attached to said front face covering
said aperture.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Lewis 1,799,428 Apr. 7, 1931
Tullar 1,962,921 Jun. 12, 1934
Buttery 3,835,988 Sep. 17, 1974
Warfield 5,611,426 Mar. 18, 1997
Fothergill 2,260,531 Apr. 21, 1993
(British Patent Document)
THE REJECTION
Claims 1, 3, 6, 8 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fothergill in view of Tullar,
Lewis and either Buttery or Warfield.
Attention is directed to the main, supplemental and reply
briefs (Paper Nos. 23, 26 and 28) and to the answer (Paper No.
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Application No. 08/992,878
4
27) for the respective positions of the appellant and the
examiner regarding the merits of this rejection.
DISCUSSION
Fothergill, the examiner’s primary reference, discloses a
seed packet or envelope 12 made from the folded blank 1 shown in
Figures 1 and 2. The packet can include a cellulose or glassine
window on either or both of its sides to facilitate
identification of its contents (see page 4, lines 12 through 15).
Fothergill does not provide any detail as to the size or position
of such windows relative to the sides of the packet.
While finding general correspondence between the window(s)
described by Fothergill and the aperture recited in independent
claims 1 and 19, the examiner concedes (see page 3 in the answer)
that Fothergill’s broad disclosure of the window(s) does not
respond to the specific dimensional limitations in independent
claims 1 and 19 defining the size and position of the aperture.
To overcome this deficiency, the examiner turns to Tullar, Lewis
and either Buttery or Warfield.
Tullar discloses a letter envelope A of standard size and
shape (see Figures 1 and 3) for mailing items such as a check F
having the addressee’s name and address printed thereon. The
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envelope includes a window opening B covered with a transparent
sheet C to permit the name and address to be seen for mailing
purposes.
Lewis discloses a multi-compartment envelope having
transparent windows through which the contents of the
compartments may be viewed. The exemplary embodiment shown in
the drawing figures includes a compartment and translucent window
22 for automobile license plates and a compartment and
translucent window 2 for a license card bearing the name and
mailing address of the party for whom the plates are intended.
Buttery discloses “paperboard cartons for packaging items
such as sliced meat products, e.g., bacon, and the like, and
provided with a window opening in the carton for inspection of
the contents contained therein” (column 1, lines 6 through 10).
Warfield discloses a packaging assembly 10 for compact discs
comprising a paperboard box 22 having a window 24 in its forward
wall 23, and a tiered support 20 for holding the compact discs 12
within the box such that they are visible through the window.
According to Warfield, “[t]he window 24 . . . can be any size,
provided the window 24 is large enough to enable a person looking
at the packaging assembly 10 to view at least fifty percent of
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the surface area of each compact disc 12 left exposed on the
tiered support 20" (column 3, lines 22 through 27).
As is evident from the foregoing descriptions, the
Fothergill, Tullar, Lewis, Buttery and Warfield references
pertain to distinctive packages for diverse products. None of
them is particularly responsive to the specific dimensional
limitations set forth in claims 1 and 19. The only suggestion
for combining their disparate teachings in the manner proposed by
the examiner so as to arrive at the subject matter recited in
claims 1 and 19 stems from hindsight knowledge impermissibly
derived from the appellant’s disclosure.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 19, and dependent
claims 3, 6 and 8, as being unpatentable over Fothergill in view
of Tullar, Lewis and either Buttery or Warfield.
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SUMMARY
The decision of the examiner to reject claims 1, 3, 6, 8 and
19 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/gjh
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