Ex parte KANO et al.

Board of Patent Appeals and Interferences

Aug 11, 1997

08200707 (B.P.A.I. Aug. 11, 1997)

Application for patent filed February 23, 1994.1
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENICHI KANO
and KOKICHI SUGAWARA

_____________
Appeal No. 97-2504
Application 08/200,7071
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and TORCZON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2504
Application 08/200,707
2
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1 and 3. Claims 2 and
4-6 have been cancelled. Claims 7-9 stand withdrawn from
consideration as being directed to a nonelected invention.
The claimed invention pertains to a container casing for
housing a recording media therein. More particularly, the
invention is directed to external layers on the casing which
allow for color designs to be formed and areas in which writing
can be formed.
Representative claim 1 is reproduced as follows:
1. A container casing for a recording media having a main
casing member having the recording media housed therein,
comprising:
a highly adhesive layer formed on an outer surface of said
main casing member;
an ink receptive layer provided on said adhesive layer;
a colored layer printed on said ink receptive layer;
a protective layer printed on said colored layer for
protecting the colored layer; and
means defining an opening in said protective layer for
exposing a part of said colored layer and defining an area of
said colored layer which is unprotected and on which writing can
be formed.
The examiner relies on the following references:
Cocco et al. (Cocco) 4,996,681 Feb. 26, 1991
Sugaya et al. (Sugaya) 2,203,278 Oct. 12, 1988
Appeal No. 97-2504
Application 08/200,707
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(UK Patent Application)
Kogo 0,383,330 Aug. 22, 1990
(European Patent Application)
We note that the final rejection included a rejection of
claims 1 and 3 under the second paragraph of 35 U.S.C. § 112.
Three problems were indicated in paragraphs numbered 1(a) through
1(c) of the final rejection. Appellants filed an amendment after
final rejection on August 31, 1995. Although this amendment was
denied entry by the examiner, appellants were notified that the
Section 112 rejection of paragraphs 1(a) and 1(b) would be
overcome by a separately filed amendment [advisory action, Paper
#10]. Appellants filed a second amendment after final rejection
on January 23, 1996 directed to the rejection under Section 112.
The examiner indicated that this amendment would be entered upon
appeal and that the Section 112, paragraph 2 rejection of claims
1 and 3 had been overcome [advisory action, Paper #16]. No
mention was made of the separate rejections set forth in
paragraphs 1(a) through 1(c) of the final rejection. The appeal
brief in this case has noted that the Section 112 rejection of
paragraphs 1(a) and 1(b) has been overcome, and no further
discussion of the Section 112 rejection as set forth in the final
rejection is offered. The examiner’s answer repeated the final
Appeal No. 97-2504
Application 08/200,707
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rejection of claim 3 as set forth in paragraph 1(c) of the final
rejection. Appellants have made no comments with respect to this
rejection.
In view of this prosecution history, we must first decide
what to do about the Section 112 rejection of claim 3 as set
forth in paragraph 1(c) of the final rejection. The examiner’s
answer has repeated this rejection even though the second
advisory action [Paper #16] indicated that the rejection under
the second paragraph of 35 U.S.C. § 112 would be overcome by the
amendment. The brief ignores this rejection and notes that the
rejections of paragraphs 1(a) and 1(b) had been overcome by their
after final amendment [brief, page 2]. Thus, we have a situation
where appellants may have been misled by the second advisory
action indicating that the Section 112 rejection had been
overcome, yet appellants appear not to have read the examiner’s
answer which repeated the rejection and appellants admit that
their amendment only overcame the rejection as set forth in
paragraphs 1(a) and 1(b) of the final rejection.
Although we do not condone appellants’ failure to
carefully read the examiner’s answer, we do recognize that the
second advisory action could have misled appellants into thinking
Appeal No. 97-2504
Application 08/200,707
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that all the rejections under Section 112 had been overcome. The
Board would ordinarily have the authority to either dismiss the
appeal with respect to the claims not argued or to sustain the
rejection for lack of a persuasive response. In our view, each
of these actions would be unnecessarily punitive under the facts
of this case, and particularly when the merits of the Section 112
rejection are considered. Therefore, on this record we will
consider the merits of the rejection under 35 U.S.C. § 112.
Thus, claim 3 stands rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the invention as noted in the examiner’s answer.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103. As evidence
of obviousness the examiner offers Cocco in view of Sugaya with
respect to claim 1, Kogo taken alone with respect to claim 3, and
Sugaya taken alone with respect to both claims.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answers for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
Appeal No. 97-2504
Application 08/200,707
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of obviousness relied upon by the examiner as support for the
obviousness rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants'
arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner's answers.
It is our view, after consideration of the record before
us, that the invention as recited in claim 3 is in compliance
with the second paragraph of Section 112. We are also of the
view that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1 and 3. Accordingly, we reverse.
We consider first the rejection of claim 3 under the
second paragraph of 35 U.S.C. § 112. The complete rejection and
explanation are set forth as follows:
Regarding claim 3, it is not readily apparent
whether the “colored layer” is formed with
openings to define the “recessed index area”, or
the “protective layer” formed over the colored
layer defines the claimed “recessed index area”.
[answer, page 3].
Appeal No. 97-2504
Application 08/200,707
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As the rejection notes, the examiner is of the view that the
claim may have either of two possible interpretations. We note
that one of the examiner’s interpretations would be contrary to
the disclosed invention and the other interpretation would be
consistent with the claimed invention. In this situation the
only appropriate claim interpretation is the one which is
consistent with the disclosed invention. Since it is clear from
the record as a whole that it is the protective layer only which
defines the recessed index area, we interpret the claim in that
manner. When the claim is interpreted in light of the
specification in this case, we conclude that the claim properly
defines the invention within the meaning of 35 U.S.C. § 112.
Therefore, we do not sustain the rejection of claim 3 under the
second paragraph of 35 U.S.C. § 112.
We now consider the rejections of the claims under 35
U.S.C. § 103. 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, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
Appeal No. 97-2504
Application 08/200,707
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17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(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 Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the rejection of claim 1 as unpatentable
over the teachings of Cocco and Sugaya, the examiner basically
relies on Cocco as teaching the claimed invention except for the
white ink receptive layer located between the adhesive layer and
the colored layer [answer, pages 4-5]. The examiner relies on
Sugaya for supplying this teaching, and the examiner submits that
Appeal No. 97-2504
Application 08/200,707
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it would have been obvious to include such a layer on the Cocco
container casing. Appellants argue that the claims require that
the protective layer be “printed on” the colored layer, and this
condition is not suggested by either Cocco or Sugaya [brief,
pages 5-6]. The examiner responds that the “printing” of this
layer is a process limitation which is not relevant to the
obviousness of the product claimed. Appellants dispute the
examiner’s claim interpretation.
The examiner’s reliance on “product by process”
principles in the examination of the appealed claims is misplaced
here. The principle relied on by the examiner is that the
process of making cannot be used to patentably distinguish a
product which appears to be structurally the same as a prior art
product. Before this principle can be used, however, it is
necessary to establish that two products are structurally
identical to each other. The examiner’s finding that the
protective layer 36 of Cocco which is clamped onto the colored
layer 35 is structurally the same as a protective layer which is
“printed on” the colored layer is clearly flawed. The protective
layer of Cocco not only would structurally appear different from
Appeal No. 97-2504
Application 08/200,707
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a printed on layer to the artisan, but also would have different
properties from a printed on layer which would render the two
products as not being the same. The examiner must consider the
patentability of the claim as a whole including the obviousness
of the “printed on” feature of the protective layer. Such
determination has not been made here.
The other main difference argued by appellants is that
there is no suggestion in the applied references for exposing a
part of the colored layer by defining an opening in the
protective layer. The examiner argues that as a general rule, it
would
have been obvious to the artisan to omit an element of a prior
art device and to lose the function of that element. Thus, the
examiner contends that selectively removing parts of the
protective layer and losing the protection would have been
obvious to the artisan. We do not agree.
The prior art places a protective layer over a colored
layer for the sole purpose of protecting the colored layer. Any
removal of this protective layer would defeat the very purpose of
this layer. The artisan, therefore, would not remove any portion
of this layer unless there was a benefit to be derived which
Appeal No. 97-2504
Application 08/200,707
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would offset the loss of protection. The prior art suggests no
benefit to be derived in removing part of the protective layer.
Appellants’ specification discloses that the ability to write on
the exposed portions of the colored layer is a benefit they
desire to achieve. In our view, the artisan would find no
suggestion for exposing a part of the colored layer from the
applied prior art, but rather, such suggestion can only come from
appellants’ own specification. Such hindsight reconstruction of
the invention is improper. Thus, we do not sustain the rejection
of claim 1 as unpatentable over Cocco in view of Sugaya.
With respect to the rejection of claim 3 as unpatentable
over the teachings of Kogo, the examiner basically asserts that
it would have been obvious to the artisan to place a protective
cover over predetermined parts of Kogo’s printed color pattern 60
[answer, page 6]. Appellants again argue that the protective
layer being “printed” over the colored layer is not taught by
Kogo, and that Kogo would teach away from protecting only
predetermined portions of the colored layer with the protective
layer.
We are again persuaded by both of these arguments. The
examiner has not provided any factual support for the position
Appeal No. 97-2504
Application 08/200,707
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that a printed protective layer would have been obvious in view
of Kogo. There is also no reason suggested by Kogo why the
artisan would deliberately leave part of the colored layer
unprotected. The only reason for exposing a portion of the
colored layer comes from appellants’ own disclosure. Thus, we do
not sustain the rejection of claim 3 as unpatentable over Kogo.
With respect to the rejection of claims 1 and 3 as
unpatentable over the teachings of Sugaya, the examiner basically
relies on the same arguments discussed above with respect to the
rejection of claim 1 over Cocco and Sugaya. Likewise, appellants
point out the same differences argued above with respect to claim
1.
We agree with appellants that Sugaya does not suggest the
invention of claims 1 and 3 for the same reasons discussed above.
Therefore, we do not sustain the rejection of claims 1 and 3 as
unpatentable over the teachings of Sugaya.
In conclusion, we have not sustained any of the
examiner’s rejections of the claims. Accordingly, the decision
of the examiner rejecting claims 1 and 3 is reversed.
REVERSED
Appeal No. 97-2504
Application 08/200,707
13
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Ronald P. Kananen
Marks & Murase
2001 L Street, N.W., Ste. 750
Washington, DC 20036