Ex Parte Kormanik

Board of Patent Appeals and Interferences

Sep 30, 2002

08802472 (B.P.A.I. Sep. 30, 2002)

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for publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES KORMANIK JR.
____________
Appeal No. 2001-2537
Application No. 08/802,472
____________
ON BRIEF
____________
Before STAAB, McQUADE, and CRAWFORD, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 5, 8 to 15 and 17 to 31. Claims 1 to 4 have
been withdrawn from consideration. Claims 6, 7 and 16 have been
canceled.
The appellant's invention relates to a method for making
thematic packaging (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellant's
brief.
Appeal No. 2001-2537
Application No. 08/802,472
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The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Agapiou 4,815,607 Mar. 28, 1989
The rejections
Claim 5 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Agapiou.
Claims 8 to 15 and 17 to 31 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Agapiou.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 30) for
the examiner's complete reasoning in support of the rejections,
and to the brief (Paper No. 29) and reply brief (Paper No. 32)
for the appellant's arguments thereagainst.
Opinion
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 2001-2537
Application No. 08/802,472
Page 3
examiner. As a consequence of our review, we make the
determinations which follow.
We turn first to the examiner’s rejection of claim 5 under
35 U.S.C. § 102(b) as being anticipated by Agapiou. To support a
rejection of a claim under 35 U.S.C. § 102(b), it must be shown
that each element of the claim is found, either expressly
described or under principles of inherency, in a single prior art
reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
Claim 5 is directed to a method of making the combination of
a thematic package and an article contained within the package.
Claim 5 includes, inter alia, the step of constructing the
package “as a replica of a recognizable icon.” Claim 5 calls for
the package to have “a shape that is different than a shape of
the article contained therein.” In addition, claim 5 sets forth
that the shape of the package “visually convey[s] information
about an activity associated with the icon in which the article
is used.” Reading claim 5 on one of appellant’s disclosed
embodiments, the package may be in the shape of a replica of a
golf ball, and an article contained therein may be a golf tee.
In this case, an activity “associated with” the golf ball replica
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Application No. 08/802,472
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package would be playing the game of golf, and the article
contained within the package, namely, a golf tee, is used in
playing the game of golf.
Agapiou pertains to an educational kit for increasing safety
awareness. The kit includes a container in the shape of a flat
tire and at least one toy figure preferably in the form of an
animal (e.g., a squirrel) having a flattened portion 44 and
simulated tire tread 48 attached to the flattened portion.
We do not share the examiner’s view that Agapiou anticipates
claim 1. As stated by Agapiou at column 1, lines 50-55:
The kit of the present invention is believed
to be particularly useful in educating young
children. By placing a toy figure with the
tire tread on its back under or in close
proximity to the tire, a lasting visual
impression of the hazards of pedestrian
carelessness can be imparted to the child.
Hence, in Agapiou the disclosed activity in which the article
contained with the package is used is to teach, generally, about
safety awareness, and more particularly, about the hazards of
pedestrian carelessness. While we appreciate the examiner’s
position to the effect that all shapes visually convey
information about an activity associated with the package, the
examiner has not persuaded us that an artisan would associate
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Application No. 08/802,472
Page 5
educating pedestrians about safety awareness with Agapiou’s
container in the shape of a flat tire.
In view of the foregoing, we will not sustain the examiner’s
rejection of claim 5 under 35 U.S.C. § 102(b).
We turn next to the examiner’s rejection of claims 8 to 15
and 17 to 31 under 35 U.S.C. § 103 as being unpatentable over
Agapiou. Recognizing that Agapiou does not disclose, for
example, that the package thereof may take the form of any of the
various replicas recited in claims 8 to 15 and 24 to 26, the
examiner concludes:
It would have been obvious to one having
ordinary skill in the art at the time of the
invention to modify the Agapiou reference by
having the package resemble a particular ball
. . .since a person of ordinary skill in the
art at the time of the invention would
provide a package with an article inside to
resemble objects useful to the target
consumer(s) who would purchase these items.
It is notoriously well known to place rain
gear or any other article, for that matter,
inside a package. Further it is also well
known to construct the package to resemble a
familiar symbol to the target consumer.
[answer at page 4]
We do not agree. In our view, Agapiou does not disclose or
suggest any of the shapes for the package called for in claims 8
to 15, 24 to 26 and 31. On this basis alone, the § 103 rejection
of these claims based on Agapiou cannot be sustained. As to the
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Application No. 08/802,472
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1Claims 27-30 are multiple dependent claims that depend from
any one of claims 5 and 8 to 23.
remaining claims, namely claims 17 to 23 and 27-30, these claims
all depend either directly or indirectly from claim 5.1 In that
the examiner has not established a prima facie case of
anticipation or obviousness of base claim 5, the § 103 of these
claims also cannot be sustained.
The decision of the examiner is reversed.
Remand to the examiner
In addition to the foregoing, we find it necessary to remand
this case to the examiner to consider whether any of claims 5, 8
to 15 and 17 to 31 would have been obvious in view of the
following patents: Des 388,606; Des 392,096; Des 394,156;
Des 373,245; US D449,711 S; Des 431,879; Des 424,295;
Des 217,412; Des 194,287; US D449,777 S; Des. 346,185;
Des. 57,436; Des 262,189; Des. 390,103 (copies attached).
For example, Des. 394,156 discloses a tire shaped emergency
road kit. The shape of the package is a replica of a tire and
the tire shape may be considered to visually convey information
about an “associated” activity, such as changing a tire. The
examiner should consider whether Des. 384,156 would have
Appeal No. 2001-2537
Application No. 08/802,472
Page 7
suggested to a person of ordinary skill in the art to include
articles such as a lug wrench, car jack etc. in the emergency
road kit.
Further, for example, Des. 424,295 discloses a tool case
package which is a replica of a wrench. The wrench shape may be
considered to visually convey information about an “associated”
activity such as using tools to maintain or repair various items.
The examiner should consider whether Des. 424,295 would have
suggested to a person of ordinary skill in the art to include,
for example, a hammer, screw driver etc. which have a shape
different from the wrench shape.
Des. 262,189 discloses a container for first aid items
or the like which is shaped like a band aid. The band
aid shape may be considered to visually convey information about
an “associated” activity such as giving first aid treatment. The
shape of the gauze, adhesive tape and circular bandages are
different from the shape of the band aid shaped container. The
examiner should consider whether it would have been obvious to
store, for example, gauze, adhesive tape, circular bandages etc.
within the band aid shaped container.
In addition, the examiner should consider whether some or
all of the claims would have been rendered obvious in view of the
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Application No. 08/802,472
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teachings of the above listed patents in combination with the
teachings of: U.S. D446,355 S; Des. 310,137; Des. 304,262;
4,927,052; Des. 425,706 which depict various sports shaped
containers.

REVERSED and REMANDED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC/jrg
Appeal No. 2001-2537
Application No. 08/802,472
Page 9
PETER K. TRZYNA
P. O. BOX 7131
CHICAGO, IL 60680-7131