Ex Parte Krumme

Patent Trial and Appeal Board

Oct 28, 2014

12310829 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/310,829 07/27/2009 Markus Krumme LH4660US (#90813) 2899
28672 7590 10/29/2014
D. PETER HOCHBERG CO. L.P.A.
1940 EAST 6TH STREET
CLEVELAND, OH 44114
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
10/29/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARKUS KRUMME
____________________

Appeal 2012-009691
Application 12/310,829
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, JAMES P. CALVE, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Markus Krumme (“Appellant”) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1–35. Appeal Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).
Appeal 2012-009691
Application 12/310,829

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to packaging. See, e.g., Spec. 1, ll.
1–3. Independent claim 1 is illustrative and is reproduced below.
1. A packaging for active substance-containing films,
said packaging comprising a carrier layer and a covering layer
releasably connected to the carrier layer to form a releasable
connection, and wherein the packaging comprises:
two opposing surface regions in a paired arrangement
and a web for separating the two opposing surface regions,
wherein the covering layer is not connected to the carrier layer
within said web, for forming two spaces, separate from one
another and enclosed on all sides, for receiving said films in
pairs;
a further surface region within said web wherein the
carrier layer is not connected to the covering layer for forming a
cavity enclosed on all sides; and
at least one perforation line within the web, wherein the
packaging has an outer margin and wherein said at least one
perforation line does not reach as far as the outer margin of the
packaging.
THE REJECTIONS
The Examiner has rejected (see Answer 5–18):
(i) claims 1, 3–30, 32, 34, and 35 under 35 U.S.C. § 103(a) as
being unpatentable over Moser (US 3,941,248, issued Mar. 2, 1976) and
Wood (US 5,046,618, issued Sept. 10, 1991);
(ii) claim 2 under 35 U.S.C. § 103(a) as being unpatentable over
Moser, Wood, and Bertsch (US 2007/0012592 A1, published Jan. 18, 2007);
and
Appeal 2012-009691
Application 12/310,829

3
(iii) claims 31 and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Moser, Wood, and Rohrmus (US 7,121,410 B2, issued
Oct. 17, 2006).1
ANALYSIS
Claims 1, 3–30, 32, and 34 as Unpatentable Over Moser and Wood
Appellant argues claims 1, 3–30, 32, and 34 as a group. See Appeal
Br. 13–31 and Claims App. We select claim 1 as the representative claim of
the group (see 37 C.F.R. § 41.37(c)(1)(vii) (2011)), with claims 3–30, 32,
and 34 standing or falling with claim 1.
The Examiner relies upon Moser to disclose every feature of claim 1,
except a perforation line that does not reach as far as the outer margin of the
packaging. See Answer 5–6. In particular, the Examiner finds that Moser
discloses, inter alia, packaging comprising carrier layer (base foil) 1,
covering layer (cover foil) 2, opposing surface regions (cups) 3, cavity
(grasping recess) 7, and perforation 6. Id. at 5.2 The Examiner determines
that it would have been obvious to modify the package of Moser to include
the claimed perforation line, as taught by Wood, “because it would increase
the difficulty of access for children.” Id. at 5–6 (citing Wood, col. 2, ll. 62–
63).
The Examiner’s findings that Moser discloses all of the features of
claim 1, except for a perforation line that does not reach the outer margin of
the packaging, rely on two different embodiments of Moser; one represented

1 In the Answer, the Examiner rejected claims 31 and 33 as being
unpatentable over Moser, Wood, and Rohrmus, despite apparently
unintentionally omitting Wood from the list of references used in rejecting
claim 33. See Answer 5 and 17–18.
2 Parenthetical nomenclature refers to that used in Moser.
App
App

by F
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27–2
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igures 1–4
iner’s fin
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oses the cl
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Figures
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pellant app
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mbodimen
8; see also
09691
/310,829
and the se
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ears to tre
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Reply Br
cond repr
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, “opposin

at the reje
ents recite
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. 5–6.
4
esented by
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of the pa
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Figures 5
plicitly w
ch of the e
of Moser
layer 2, o
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uced below
diment of
region” 3,
ing based
1, by argu
ed feature
–7. Id. T
hether eac
lements of
’s two em
pposing su
y a perfor

:

Moser’s “
“cavity” 7
on each em
ing that n
s. See Ap
he
h
claim 1.
bodiments
rface
ation line
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peal Br.

t
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layer
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(citing Wo
Appellan
ackaging
ike’ in the
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/310,829
5 and 6 of
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Moser are
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tely, below
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us to inclu
ter margin
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ll. 62–63)
ues that “t
substance
oser, et al.
5
reproduce
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g surface
ppellant p
.
one skilled
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Appeal Br
rror in the
de Wood’
of packag
children, w
sheet, as t
; 18–19.
he present
-containin
” Appeal
d below:

diment of
region” 3,
resents se
in the art
y [Moser
. 25. With
Examiner
s teaching
ing in Mo
hile allow
aught by W
ly claimed
g films . .
Br. 27. A
Moser’s “
“cavity” 7
veral argu
would ha
with Woo
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's determin
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ing unit d
ood. See
invention
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this
ation that
ration line
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osages to
Answer
is directed
ablets or
rther

Appeal 2012-009691
Application 12/310,829

6
argues that “‘films’ are by their very nature ‘flat.’ . . . Moser . . . discloses
packages for tablets, pills and the like . . . which are inherently not flat.”
Reply Br. 4–5 (citing Moser, Abstract and Figs. 2, 4, 6, and 7). This
argument is not persuasive because the recited intended use of “packaging
for active substance-containing films” does not distinguish the structure of
the claimed packaging from that disclosed in Moser and Wood. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable”). Nor does this argument persuade us of error in
the Examiner's finding that Moser discloses a package that is “capable of
holding films as claimed by the [A]ppellant,” to the extent that we treat this
recited use as a functional limitation. See Answer 18. The Examiner has a
sound basis for finding that Moser discloses this feature because claim 1
does not recite any features pertaining to “flat packaging” that distinguishes
the claimed packaging over Moser’s packaging. Id. Appellant’s arguments
thus do not persuade us that Moser is not capable of use with films.
Schreiber, 128 F.3d at 1478 (where the USPTO has a reason to believe that a
functional limitation is an inherent characteristic of the prior art, an applicant
has the burden of showing that the prior art does not possess the
functionally-defined limitation inherently).
Appellant also argues that neither the first embodiment of Moser, as
shown in Figure 1, nor the second embodiment of Moser, as shown in Figure
5, teaches or discloses “a cavity enclosed on all sides,” as recited in claim 1.
Reply Br. 5–6 (citing Moser, Figs. 1 and 5); see also Appeal Br. 27–28.
With respect to Moser’s first embodiment, Appellant argues that “when
arranging the packaging in a paired arrangement as required by [claim 1] . . .
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Application 12/310,829

7
only two opposing surface regions are present,” and Moser’s “cavity” 7 is
therefore not enclosed on all sides. See Reply Br. 5–6 (citing Moser, Fig. 1).
Here, Appellant appears to argue that two of the four cups 3 of Moser must
first be disconnected, thereby opening “cavity” 7 to the outside. With
respect to Moser’s second embodiment, Appellant argues that “two cavities
(5) . . . are formed” instead of the claimed single cavity. See Reply Br. 6
(citing Moser, Fig. 2); see also Appeal Br. 27–28. Claim 1 recites a
packaging that “comprises” and therefore covers prior art packaging that
includes more than one pair of “opposing surface regions,” as disclosed in
Moser’s first embodiment, and more than one cavity, as disclosed in Moser’s
second embodiment. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).
Stated differently, as claim 1 does not recite structure that would otherwise
preclude the presence of more than two “opposing surface regions” or more
than one “cavity,” we are not persuaded by Appellant’s argument.
Appellant further argues that “it is unclear that the perforation line
(32) of the Wood reference would not reach as far as the outer region of the
packaging as the reference does not explicitly teach such a configuration of
the perforation line.” Appeal Br. 28; see also Reply Br. 7. This argument
does not persuade us of error in the Examiner's findings that Wood explicitly
discloses a perforation line “being short from the outer edge (38).” Answer
18–19 (citing Wood, col. 4, ll. 33–38 and Fig. 1). We further note that the
Examiner cites to Wood’s DETAILED DESCRIPTION OF THE
PREFERRED EMBODIMENT, which discloses, inter alia, “line of
weakening 30, located between said rows of depressions 14 and extending
substantially from side to side of said blister pack 10, but short of the far
edge 38.” Wood, col. 4, ll. 35–38 (emphasis added).
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Application 12/310,829

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Appellant also argues that “incorporation of a perforation line that
does not reach as far as the outer margin in Moser . . . would essentially
destroy the packaging according to Moser . . . thereby rendering the prior art
unsatisfactory for its intended purpose.” Appeal Br. 28; see also Reply Br.
7. In support of this argument, Appellant cites to a portion of Moser that
describes perforations 6 that “serve for the easy separation of individual
packages from the entire package.” Reply Br. 7–8 (citing Moser, col. 2, ll.
40–46 and 62–68). This argument, however, does not persuade us of
Examiner error as Appellant has not established why Moser’s perforations 6
must extend from edge-to-edge to provide easy separation of packaging.
Moreover, Appellant has not provided persuasive evidence to convince us
that the Examiner’s determination to modify the perforation lines of Moser,
thereby making it “harder for a child to tear and separate a blister from the
others,” is in error. For example, Appellant has not shown that any resulting
loss of some ease of separation outweighs the benefit of making the
packaging harder for children to open.
For the foregoing reasons, we sustain the rejection of claim 1 as being
unpatentable over Moser in view of Wood, including claims 3–30, 32, and
34, which stand or fall with claim 1, as discussed above. Because our
analysis relies upon facts that the Examiner did not explicitly find, we
denominate the affirmance of the rejection of claims 1, 3–30, 32, and 34 as
new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
Claim 35 as Unpatentable Over Moser and Wood
Claim 35 is directed to a packaging and recites, inter alia,
wherein said packaging is openable by at least three
coordinated manual actions comprising bending the packaging
in the outer margin or marginal region for accessing the at least
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Application 12/310,829

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one perforation line, tearing into and continuing to tear the at
least one perforation line to generate free edges, and gripping
the free edges thus generated as a grasping aid and pulling the
carrier layer and covering layer apart.
Appeal Br., Claims App.
In regards to claim 35, Appellant relies on the same arguments
presented supra with respect to claim 1, and further argues that “[t]he prior
art is devoid of any specific teachings that the prior art packages could be
openable by the very specific at least three coordinated manual actions,” as
recited in claim 35. See Reply Br. 9–10; see also Appeal Br. 29–31. In
particular, Appellant argues, “by installing a perforation line that does not
reach to the outer margin of the [Figure 1] packaging of Moser . . . the cavity
(7) would already be open and thus, at least one foil could be easily grasped
to open the packaging.” Reply Br. 10.
As discussed supra, we are not convinced that modifying the
embodiment of Moser’s Figure 1, by combining it with the perforation line
in Wood, would necessarily open cavity 7.
Further, although Appellant may be correct in that the prior art does
not explicitly address the method of opening the disclosed structure, the
absence of a disclosure relating to this opening function does not defeat the
Examiner’s finding that the Figure 1 packaging of Moser is capable of being
opened as claimed. As discussed above in connection with the rejection of
claim 1, it is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable. See Schreiber
128 F.3d at 1477. Furthermore, when the Examiner shows sound basis for
believing that the claimed product and the prior art are the same, as the
Examiner has done here, and therefore the prior art inherently possesses the
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Application 12/310,829

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claimed functional features, Appellant has the burden of showing that they
are not. See Schreiber, 128 F.3d at 1478.
In the present case, the Examiner finds that:
(1) The packaging of Figure 1 is capable of being bent toward carrier
layer 2 by bending or folding the horizontal perforation line 6;
(2) Tearing the vertical perforation line 6, thereby generating the
claimed “free edges,” which are the portion of the covering layer 1
that is not bonded to carrier layer 2, as shown in Moser’s Figure 4;
and
(3) Gripping the free edges and pulling the carrier layer and the cover
layer apart.
See Answer 19–20.
As the Examiner has shown that the packaging of Moser is capable of
being opened, as recited in claim 35, and Appellant has not persuasively
shown otherwise, we are not apprised of error in the Examiner’s rejection.
For these reasons and those discussed supra in connection claim 1, we
sustain the rejection of claim 35. Further, because our analysis relies upon
facts that the Examiner did not explicitly find, we denominate the affirmance
of the rejection of claim 35 as new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).
Claim 2 as Unpatentable Over Moser, Wood, and Bertsch
The Examiner relies on Bertsch to disclose a perforation line formed
in both the carrier layer and in the covering layer, as recited in dependent
claim 2.4 Answer 16–17. Appellant argues that Bertsch does not cure the

4 We note that Moser appears to disclose perforations 6 present in both the
base foil 1 and the cover foil 2. Moser, col. 2, ll. 43–46.
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Application 12/310,829

11
deficiencies of the prior art, including Moser and Wood, as to claim 1.
Appeal Br. 32–33. For the reasons discussed supra, and as there are no
deficiencies for Bertsch to cure as to claim 1, we are not persuaded by
Appellant’s argument. Accordingly, we sustain the rejection of claim 2.
Further, because our analysis relies upon facts that the Examiner did not
explicitly find, we denominate the affirmance of the rejection of claim 35 as
new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
Claims 31 and 33 as Unpatentable Over Moser, Wood, and Rohrmus
The Examiner relies on Rohrmus to disclose a peelable sealing
lacquer, as recited in dependent claims 31 and 33. Answer 33–35.
Appellant argues that Rohrmus does not cure the deficiencies of the prior art,
including Moser and Wood, as to independent claims 22 and 23, from which
claims 31 and 33 depend, respectively. Appeal Br. 33–35. For the reasons
discussed supra, and as there are no deficiencies for Rohrmus to cure as to
claims 22, or 23, which fell with claim 1, we are not persuaded by
Appellant’s argument. Accordingly, we sustain the rejection of claims 31
and 33. Further, because our analysis relies upon facts that the Examiner did
not explicitly find, we denominate the affirmance of the rejection of claims
31 and 33 as new grounds of rejection pursuant to 37 C.F.R. § 41.50(b).
SUMMARY
The Examiner’s decision to reject claims 1, 3–30, 32, 34, and 35
under 35 U.S.C. § 103(a) as being unpatentable over Moser and Wood is
affirmed.
The Examiner’s decision to reject claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over Moser, Wood, and Bertsch is also affirmed.
Appeal 2012-009691
Application 12/310,829

12
The Examiner’s decision to reject claims 31 and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Moser, Wood, and Rohrmus is also
affirmed.
For the reasons discussed above, we denominate our affirmance of the
rejection of claims 1-35 as new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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