Ex Parte Nakano et alDownload PDFPatent Trial and Appeal BoardSep 20, 201612944791 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/944,791 11/12/2010 127226 7590 09/22/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 FIRST NAMED INVENTOR Keiko NAKANO 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1131-0658PUS1 6391 EXAMINER MATHEW, FENN C ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 09/22/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEIKO NAKANO and AKIRA MIY AZA WA Appeal2014-009244 Application 12/944,791 Technology Center 3700 Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1 and 5-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2014-009244 Application 12/944,791 CLAIMED SUBJECT MATTER The majority of the claims are directed to a package, while claim 16 and its dependents are directed to a cigarette dispensing package. Claim 16 is reproduced below: 16. A cigarette dispensing package which comprises: an outer case formed into a rectangular parallelepiped shape and having a front wall, a rear wall, a bottom wall, a pair of side walls, and an open end at a top thereof; a tongue lid rotatably connected to a rear edge of the open end through a lid hinge, said tongue lid including a lid portion for opening/closing the open end and a tongue connected to a tip end of the lid portion through a tongue hinge, in which the tongue is superimposed upon an outer surface of the front wall of said outer case when the lid portion is in a closed position; and an inner holder for housing the package contents, said inner holder being slidably disposed within said outer case through the open end at the top of said outer case, said inner holder having a bottom wall, side walls and a rear wall which define a single recessed area offset from the corresponding walls of the outer case; and having an open front face which faces the front walls of the outer case and an open top end, said open top end providing access to and selective removal of the contents of the inner holder through the open end of the outer case when the inner holder is disposed within the outer case, wherein the outer case, the tongue lid and the inner holder are made of a transparent or translucent material so that when the inner holder is disposed within the outer case, the contents of the dispensing package disposed in the recessed area of the inner holder appear to be floating within the outer case. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cote Fuller us 5, 123,589 us 5,711,423 2 June 23, 1992 Jan.27, 1998 Appeal2014-009244 Application 12/944,791 Draghetti Palazzo Kajiwara US 2004/0256254 Al WO 2004/108563 Al JP 2000-043940 REJECTIONS Dec. 23, 2004 Dec. 16, 2004 Feb. 15,2000 Claims 1, 6-10, 12, and 14--19 are rejected under 35 U.S.C. §103(a) as being unpatentable over Kajiwara, Palazzo, and Fuller. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kajiwara, Palazzo, Fuller, and Cote. Claims 11 and 13 are rejected under 3 5 U.S. C. § 103 (a) as being unpatentable over Kajiwara, Palazzo, Fuller, and Draghetti. OPINION Claims 1, 7, and 16 are independent. Appellants highlight claim 16 as representative of the independent claims. Appeal Br. 6. Appellants also argue the majority of the claims together with claim 16. Id. Thus, claims 1, 6-10, 12, 14, 15, and 17-19 stand or fall withtherejectionofclaim 16. See 37 C.F.R. § 41.37(c)(iv). Appellants also separately argue the rejection of claim 5 and the rejection of claims 11 and 13. Appeal Br. 9-11. We select claims 5 and 11 for review. Claims 1, 6--10, 12, and 14-19 In rejecting the independent claims, the Examiner finds that Kajiwara teaches the majority of the claimed features. Final Act. 2--4, 7-9. The Examiner further finds that Palazzo teaches many of the features of the tongue-lid. Id. at 4. The Examiner finds that Fuller teaches "a package for holding [or dispensing] cigarettes" including an inner holder and a recessed 3 Appeal2014-009244 Application 12/944,791 area with many of the features of the claims. Id. at 4--5, 8. The Examiner then finds that these references teach all the recited limitations and provides reasons concluding that the combination of these teachings would be obvious to one having ordinary skill in the art. Id. at 4, 5, 9. Appellants argue that "none of the prior art relied upon by the Examiner suggests the Appellants' inventive contribution." Appeal Br. 6. In support of this argument, Appellants provide of list of features present in Kajiwara and Fuller that they argue are different from what is required by the claims. Id. at 6-7. For example, Appellants argue that in Kajiwara "restricting elements would be visible through the transparency of the cover member 12 [which] would clearly not permit the content of the tray to appear to be floating." Id. at 7. In response the Examiner finds that because "the recess 2a [of Kajiwara] is offset from each of the outer walls of the inner holder" and "the recess 2a is shown to be spaced from the bottom surface of the outer holder," the content in the container would "appear to be floating over a surface on which the container is placed" independent from the restricting elements. Answer 12. Appellants argue that Kajiwara does not suggest a "hollow" inner holder. Appeal Br. 7. The Examiner responds that "[F]igure 2 of Kajiwara shows the hollow construction claimed since the recess 2a is spaced from all of the outer walls of the inner holder." Answer 13. In view of the record presented, we hold that the Examiner has offered sufficient evidence that Kajiwara teaches or suggests a hollow construction and that the contents would appear to be floating as required by claim 16. 4 Appeal2014-009244 Application 12/944,791 Appellants also argue that Kajiwara is "not [a] dispensing package" and further "[t]he inner holder (tray 2) does NOT have an open top end and therefore its contents cannot be dispensed while the tray is still disposed in the outer case." Appeal Br. 6. The Examiner responds "that it is possible to remove content from the inner holder of Kajiwara by partially removing the inner holder from the outer case." Answer 13. The Examiner also notes that "the rejection ... relies upon the proposed combination of Kajiwara in view of Fuller and Palazzo, and not the structure of Kajiwara alone." Id. For example, the Examiner finds that Fuller teaches an inner tray with an open top, which teachings are combined with Kajiwara in the rejection. Final Act. 5. Appellants' arguments focusing on the individual references are unconvincing for a number of reasons. First, as shown in the third example above, the majority of items listed by Appellants as different were not relied upon by the Examiner in the rejection. 1 Second, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., 800 F .2d 1091, 1097 (Fed. Cir. 1986). Appellants argue the prior art references individually and do not argue against the combination of teachings from the prior art as outlined in the rejection. As noted by the Examiner: The Appellant has argued that Kajiwara and Fuller are individually different than the applicant's invention (page 6 and 7 of Appeal Brief show how the individual references differ from 1 As a further example, Appellants argue that Kajiwara shows an inner holder with "multiple recessed areas," instead of the claimed "single recessed area." Appeal Br. 6. The Examiner finds that Fuller teaches this feature, not Kajiwara. See also Answer 14 (Examiner states "the rejection above does not rely on these features of Fuller"). 5 Appeal2014-009244 Application 12/944,791 the claimed invention). However, the rejection above is not based on these references individually, but rather the proposed combination of Kajiwara in view of Palazzo and Fuller. Answer 14. Appellants also argue that: although the prior art references are related to containers for housing various contents, because the contents of, for example, the Kajiwara and Fuller references, are so different from each other and from the present invention, it is believed that the Appellants have defined an inventive contribution which is not even remotely contemplated by either of the references relied upon by the Examiner, either alone or in combination. Appeal Br. 9. Such "contemplation" by a specific reference is not required to support a finding of obviousness. Appellants' argument is foreclosed by KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. For the above reasons, we sustain the rejection of claim 16. For these same reasons, we sustain the rejections of claims 1, 6-10, 12, 14, 15, and 17-19. Claim 5 Appellants argue that the rejection of claim 5 is improper because "it is not understood why it would be obvious to one skilled in the art to look to 6 Appeal2014-009244 Application 12/944,791 three different, unrelated technological fields for solving problems associated with a tongue-lid package which is utilized for accommodating tobacco products." Appeal Br. 9. Claim 5 depends from claim 1. Claims 1 and 5 are both directed to a "tongue-lid package" and do not require or discuss "tobacco products." As noted by the Examiner "[e]ach reference relates to the field of packages designed to hold a content." Answer 16. The cited references are all in the same field of endeavor as claim 5. Further, features that do not appear in a claim cannot be relied on for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As Appellants' argument is not commensurate with the scope of claim 5, we are not apprised of error in the rejection of claim 5. Claims 11 and 13 Similar to claim 5, Appellants argue that the rejection of claim 11 is improper because "it is not understood why it would be obvious to one skilled in the art to look to three different, unrelated technological fields for solving problems associated with a tongue-lid package which is utilized for accommodating tobacco products." Appeal Br. 9. Claim 11 depends from claim 1 and, like claims 1 and 5, claim 11 is directed to a "tongue-lid package" and does not require or discuss "tobacco products." Thus, Appellants argument is not commensurate with the scope of claim 11. All of the cited references are in the same field of endeavor as claim 11. Appellants' also provide a discussion on the law of obviousness. Appeal Br. 10-11. This discussion does not discuss the facts of the present application, or point out any errors in the rejection. The Board "reviews the 7 Appeal2014-009244 Application 12/944,791 obviousness rejection for error based upon the issues identified by the appellant, and in light of the arguments and evidence produced thereon." Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI Fe. 26, 2010)(precedential)(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). As no errors have been identified by Appellants in this discussion of the law, Appellants have not apprised us of error in the rejection of claims 11 and 13. DECISION The Examiner's rejection of claims 1 and 5-19 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation