Ex Parte Lin et al

Board of Patent Appeals and Interferences

May 6, 2009

10974343 (B.P.A.I. May. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK W. LIN and THOMAS E. KORDER
__________

Appeal 2009-0486
Application 10/974,343
Technology Center 3700
__________

Decided:1 May 7, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 18-21, 24,
25, and 27-33, all of the pending claims, which are directed to packaging for

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 2009-0486
Application 10/974,343

shuttlecocks. The Examiner has rejected the claims on the bases that they
include new matter and would have been obvious in view of the prior art.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Badminton shuttlecocks have a flared skirt that can be made of plastic
but “for serious badminton play feathered shuttlecocks are used” (Spec. 1, ¶
2). The Specification discloses packaging for shuttlecocks that provides “a
suitably humid environment to prevent the moisture within the feathers of
the shuttlecock from evaporating off” (id. at 2, ¶ 9).
Claims 18 and 30, the only independent claims, read as follows:
18. Shuttlecock packaging for retaining at least one shuttlecock, the
packaging comprising:
a shuttlecock storage region for retaining the at least one shuttlecock,
the shuttlecock storage region including a tubular member positioned
between first and second end caps, at least a portion of the shuttlecock
storage region being formed of a generally transparent material configured
to expose at least one shuttlecock to visual inspection; and
a humidity control mechanism for maintaining the humidity within the
packaging within a predetermined range of at least 20 percent without a fluid
reservoir, the humidity control mechanism comprising;
a humidifying disc including a pad moistened with water and
propylene glycol, and
a non-fabric housing for at least partially enclosing the disc and
separating the disc from the at least one shuttlecock, the housing positioned
adjacent the first end cap and configured to separate the at least one
shuttlecock from contact with the disc and the first end cap, the housing
having a plurality of openings for allowing air and moisture to pass through
the housing between the disc and the shuttlecock storage region, the
packaging being substantially airtight.

30. Shuttlecock packaging for retaining at least one shuttlecock, the
packaging comprising:
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Application 10/974,343

a shuttlecock storage region for retaining the at least one shuttlecock,
the shuttlecock storage region including a tubular member positioned
between first and second end caps, at least a portion of the shuttlecock
storage region being formed of a generally transparent material configured
to expose at least one shuttlecock to visual inspection, the storage region
including indicia selected from the group consisting of graphical indicia,
alphanumeric indicia and combinations thereof; and
a humidity control mechanism for maintaining the humidity within the
packaging within a predetermined range of at least 20 percent, the humidity
control mechanism including a liquid absorbing paper, the packaging being
substantially airtight, the humidity control mechanism positioned adjacent
the first end cap and configured to separate the at least one shuttlecock from
contact with the first end cap.

The claims stand rejected as follows:
• Claims 18-21, 24, 25, and 27-29 under 35 U.S.C. § 112, first
paragraph, on the basis that they include new matter2 (Answer 3);
• Claims 18, 21, 24, 25, 27-29, 32, and 33 under 35 U.S.C. § 103(a)
as obvious in view of Krause,3 Hekal4 and Pagidas5 (Answer 4); and
• Claims 19, 20, 30, and 31 under 35 U.S.C. § 103(a) as obvious in
view of Krause, Hekal, Pagidas, and Vagedes6 (Answer 6).

2 The Examiner also objected to the amendment filed June 29, 2007 under
35 U.S.C. § 132 on the basis that “it introduces new matter into the
disclosure” (Answer 3), the new matter being the phrase “without a fluid
reservoir.” The amendment filed June 29, 2007, however, does not appear
to include any amendment to the Specification. In any event, where “there
has been both a rejection and objection by the examiner, the issue becomes
appealable and should not be decided by petition.” MPEP § 2163.06(II).
3 Krause, U.S. Patent 2,443,139, issued June 8, 1948.
4 Hekal, U.S. Patent 6,194,079 B1, issued Feb. 27, 2001.
5 Pagidas et al., U.S. Patent 6,274,209 B1, issued Aug. 14, 2001.
6 Vagedes et al., U.S. Patent 5,839,581, issued Nov. 24, 1998.
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Application 10/974,343

NEW MATTER
Issue
The Examiner has rejected claims 18-21, 24, 25, and 27-29 under 35
U.S.C. § 112, first paragraph (Answer 3). Claim 18, on which the other
rejected claims depend, recites “a humidity control mechanism . . . without a
fluid reservoir.” The Examiner finds that the “specification does not provide
a literal basis for this negative limitation” (Answer 3). The Examiner also
objected to an amendment to the Specification on the same basis (id.).
Appellants contend that “the specification clearly describes the
humidity control mechanism as a structure that does not possess a fluid
reservoir,” in that the humidity control mechanism is described as “a foam or
sponge pad moistened with water” (Appeal Br. 4).
The issue with respect to this rejection is: Has the Examiner
established that the Specification does not adequately describe “a humidity
control mechanism . . . without a fluid reservoir,” as recited in claim 18 and
in the proposed amendment to the Specification?
Findings of Fact
1. The Specification discloses a shuttlecock package that includes a
humidity control mechanism (Spec. 4, ¶ 16).
2. The Specification states that in a preferred embodiment “the
humidity control mechanism 20 can comprise a humidifier housing 24 and a
humidifying disc 26” (id. at 5, ¶ 19).
3. The Specification states that the “humidifying disc 20 is a moisture
containing substance . . . . Preferably, the humidifying disc 20 is a foam or
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Application 10/974,343

sponge pad moistened with water, preferably distilled water, and propylene
glycol.” (Id. at 6, ¶ 21.)
4. The Specification states that, “in another alternative embodiment,
blotter paper, or an equivalent material, can be used in lieu of the
humidifying disc. A small amount of water would be added to a piece or
pieces of the blotter paper within the container and this moistened paper
would provide a similar function as the other embodiment.” (Id. at 7, ¶ 26.)
5. The Specification states that “[i]n other alternative preferred
embodiments, the humidity level within the package 12 can be adjusted
using mechanical means, electro-mechanical means or through electronic
means” (id. at 8, ¶ 26).
Principles of Law
The examiner “‘bears the initial burden . . . of presenting a prima facie
case of unpatentability.’ Insofar as the written description requirement is
concerned, that burden is discharged by ‘presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description
of the invention defined by the claims.’” In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996) (citations omitted).
If “the specification contains a description of the claimed invention,
albeit not in ipsis verbis (in the identical words), then the examiner . . . , in
order to meet the burden of proof, must provide reasons why one of ordinary
skill in the art would not consider the description sufficient.” Id.
The “Patent Act and [the Federal Circuit’s] case law require only
sufficient description to show one of skill in the [relevant] art that the
inventor possessed the claimed invention at the time of filing.” Union Oil
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Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir.
2000).
Analysis
As the Examiner has pointed out, the phrase “without a fluid
reservoir” does not appear in the Specification. But the test for adequate
written description is not whether the identical words of a claim are found in
the Specification. The test is whether the Specification’s description shows
to those skilled in the art that the applicant possessed the invention defined
by the claims.
Appellants have argued that a fluid reservoir “holds water in a non-
absorbed state, whereas Appellants’ claimed invention retains water
absorbed in a humidifying disc rather than in a container or receptacle”
(Appeal Br. 4-5). Consistent with Appellants’ position, the instant
Specification describes several embodiments of the disclosed packaging that
include a humidifying disc in the form of a moistened foam or sponge pad,
or a piece of blotter paper. The Examiner has not provided any explanation
of why those skilled in the art would not have recognized the Specification’s
disclosure to show possession of packaging that includes the disputed
limitation.
Conclusion of Law
The Examiner has not established that the Specification does not
adequately describe “a humidity control mechanism . . . without a fluid
reservoir,” as recited in claim 18.
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OBVIOUSNESS
Issue
The Examiner has rejected claims 18, 21, 24, 25, 27-29, 32, and 33
under 35 U.S.C. § 103(a) as obvious in view of Krause, Hekal and Pagidas
(Answer 4). The Examiner finds that Krause discloses shuttlecock
packaging that includes most of the elements of the rejected claims but
“does not appear to disclose the shape and the specific type of humidity
control material and . . . a non-fabric housing” (Answer 4).
The Examiner finds that Hekal “discloses that it is desirable to make
humidifying control system in the shape of an open-celled disc and using
suitable hydrophilic agents such as propylene glycol” (id.) and that Pagidas
discloses a package comprising a plastic housing enclosing a humidity
control system (id. at 5). The Examiner concludes that it would have been
obvious “to make the humidifying control mechanism of Krause ‘139 as a
disc and from propylene glycol as taught by Heckal [sic]” (Answer 4) and
“to make the housing of Krause ‘139 from non-fabric material with a
plurality of openings as taught by Pagidas” (Answer 5).
Appellants contend that “the incorporation of the vent holes (4) of
Pagidas et al. into the container in Krause would render the container no
longer airtight and would no longer maintain a constant humidity, thus
rendering the humidity device in Krause ineffective” (Appeal Br. 6).
Appellants also contend that “the substitution of the Hekal disc into the
Krause humidity device is not a predictable variation. After all, the Hekal
disc is intended to absorb moisture away from the contents of the container,
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not to be pre-moistened to enhance the moisture inside the container.” (Id.
at 7.)
The issue with respect to this rejection is: Does the evidence support
the Examiner’s conclusion that Hekal and Pagidas would have suggested
including a humidifying control mechanism comprising “a pad moistened
with water and propylene glycol,” and a nonfabric housing with a plurality
of openings, in Krause’s shuttlecock packaging?
Additional Findings of Fact
6. Krause discloses a container for, among other things, shuttlecocks
(Krause, col. 2, ll. 4-9).
7. Krause’s container includes a humidifier that includes a transparent
water reservoir that is closed at the bottom by a metallic cup filled with a
porous member made of, for example, plaster of Paris (id. at col. 2, ll. 10-
18).
8. In Krause’s humidifier, water from the reservoir seeps through an
opening in the metallic cup into the porous member, then evaporates into the
container to provide humidity (id. at col. 2, ll. 24-30).
9. Krause teaches that the disclosed humidifier has the property that
“the water reservoir [is] plainly visible to indicate the presence of water in
the reservoir and proper humidity control for the contents of the carton” (id.
at col. 2, ll. 39-42).
10. Hekal discloses a “monolithic composition comprising a water-
insoluble polymer, a hydrophilic agent and an absorbing material” (Hekal,
col. 1, ll. 15-17).
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11. Hekal discloses that the composition includes “interconnecting
channels [that] communicate the entrained absorbing materials to the
appropriate areas of the exterior of the composition in a manner that permits
the desired property (e.g., gases and vapors) to migrate from outside the
plastic structure to interior locations where the absorbing material is
positioned” (id. at col. 2, ll. 30-35).
12. Hekal discloses that the “hydrophilic agents are used to act as
bridges from the surface of the composition inwardly to the absorbing
material positioned within the composition” (id. at col. 2, ll. 39-42).
13. Hekal discloses that “suitable hydrophilic agents . . . include
polyglycols such as poly(ethylene glycol) and poly(propylene glycol)” (id. at
col. 4, ll. 54-56).
14. Hekal discloses that suitable absorbing materials are various types
of desiccating compounds (id. at col. 5, ll. 5-51).
15. Hekal discloses that suitable absorbing materials also include
metals or metal-coated particulates, inorganic compounds, carbon-based
materials, elastomers, and “other fillers and pigments” (id. at col. 5, ll. 52-
65).
16. Hekal discloses that “the water-insoluble polymer . . . may be any
thermoplastic material” (id. at col. 6, ll. 53-54).
17. The Examiner has pointed to no specific passage of Hekal stating
that propylene glycol is suitable for use in its composition as the water-
insoluble polymer, hydrophilic agent, or absorbing material.
18. Pagidas discloses “a semipermeable venting cap to permit the
selective passage of gases but not of liquids, suitable to seal plastic bottles
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containing liquids which could create positive or negative pressure by
producing gaseous products or by absorbing air from the headspace”
(Pagidas, col. 1, ll. 10-14).
19. The cap disclosed by Pagidas includes a cavity filled with a
“swellable liquid-absorbing mass comprising a polymeric matrix” (id. at col.
2, ll. 48-49, 60-61).
20. In Pagidas’ cap, the cavity is connected by passages to the inside
and outside of the container (id. at col. 2, ll. 56-60).
21. Pagidas discloses that the “liquid-absorbing mass acts, after
absorption of liquid, as a selective filter prohibiting the passage of liquid, but
permit[ting] the passage of gas” (id. at col. 2, ll. 61-63).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
Analyzing obviousness under 35 U.S.C. § 103 requires “a searching
comparison of the claimed invention – including all its limitations – with the
teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
A factfinder can
look to interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the
marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known
elements in the fashion claimed.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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“We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Analysis
Krause discloses packaging for shuttlecocks that includes a humidity
control mechanism, but not one that comprises “a humidifying disc
including a pad moistened with water and propylene glycol,” as recited in
claim 18. The Examiner finds that Hekal discloses this element of the
claimed product.
Hekal, however, discloses a monolithic polymer composition that
absorbs gases or vapors, such as water vapor, from the atmosphere of a
container. The Examiner has not pointed to any embodiment of Hekal’s
composition that is disclosed to add water vapor to (i.e., humidify) a
container, rather than absorbing water vapor to maintain low humidity. In
addition, the Examiner has not pointed to any specific passage of Hekal as
disclosing the mixture of water and propylene glycol recited in claim 18.
Hekal discloses that poly(propylene glycol) is a suitable hydrophilic agent
for use in its composition but poly(propylene glycol) is polymerized
propylene glycol, not propylene glycol itself.
We conclude that the evidence does not support the Examiner’s
conclusion that it would have been obvious to use Hekal’s composition in
Krause’s humidity control mechanism, because Hekal’s composition is
designed to dehumidify an environment while Krause’s humidity control
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mechanism is designed to maintain a high level of humidity. In addition, the
Examiner has not shown that Hekal discloses or suggests “a humidifying
disc including a pad moistened with water and propylene glycol,” as
required by claim 18. The Examiner has pointed to nothing in Pagidas that
would suggest the limitations missing from Hekal. We therefore agree with
Appellants that the Examiner has not adequately shown that the references
support a prima facie case of obviousness under 35 U.S.C. § 103.
The Examiner also rejected claims 19, 20, 30, and 31 under 35 U.S.C.
§ 103(a) as obvious in view of Krause, Hekal, Pagidas, and Vagedes
(Answer 6). The Examiner relied on Krause, Hekal, and Pagidas for the
teachings discussed above, and cited Vagedes only as a basis for suggesting
the indicia recited in claims 19, 20, 30, and 31 (id.). We have concluded,
however, that the Examiner has not shown that Krause, Hekal, and Pagidas
would have suggested the humidity control mechanism recited in the claims
on appeal. The rejection based on Krause, Hekal, Pagidas, and Vagedes
fails for the reasons discussed above.
Conclusion of Law
The evidence does not support the Examiner’s conclusion that Hekal
and Pagidas would have suggested including a humidifying control
mechanism comprising “a pad moistened with water and propylene glycol”
in Krause’s shuttlecock packaging.
SUMMARY
We reverse the rejection of claims 18-21, 24, 25, and 27-29 under 35
U.S.C. § 112, first paragraph, and the objection to the Specification under 35
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U.S.C. § 132. We also reverse the rejections under 35 U.S.C. § 103(a) of
claims 18, 21, 24, 25, 27-29, 32 and 33 based on Krause, Hekal and Pagidas,
and of claims 19, 20, 30, and 31 based on Krause, Hekal, Pagidas, and
Vagedes.

REVERSED

cdc

Wilson Sporting Goods Co.
8750 W. Bryn Mawr Ave.
Chicago IL 60631
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