Ex Parte Oshima et al

Board of Patent Appeals and Interferences

Mar 19, 2003

09060960 (B.P.A.I. Mar. 19, 2003)

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not written for publication and is not binding precedent of the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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SHINICHI OSHIMA
and MASAYUKI MIYAUCHI

Appeal No. 2002-2175
Application No. 09/060,960

Heard: March 4, 2003

Before FRANKFORT, STAAB and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Shinichi Oshima et al. appeal from the final rejection
(Paper No. 26) of claims 1 through 5, all of the claims pending
in the application.
The record (see page 1 in the main brief, Paper No. 33)
indicates that this appeal is related to a parallel appeal in
Application No. 08/988,181 (Appeal No. 2002-1912).
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Serial No. 09/060,960
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THE INVENTION
The invention relates to a golf glove package which is
defined in representative claim 1 as follows:
1. A package for a golf glove comprising:
a package capable of containing a golf glove;
a generally rectangular indication section disposed on a
side of said package for indicating salient characteristics of
the golf glove contained within said package, said section being
divided into a plurality of subsections, each subsection
indicating a unique salient characteristic of the golf glove; and
identifying means disposed within each of said subsections
and comprising text and graphical indications for uniquely
identifying said salient characteristics of the golf glove.
THE PRIOR ART
The items relied on by the examiner to support the final
rejection are:
Connell 1,406,541 Feb. 14, 1922
West 2,051,665 Aug. 18, 1936
Official Notice implicitly taken by the examiner of the prior art
practice of packaging golf gloves in containers or boxes for
distribution to consumers (conventional golf glove package).
THE REJECTIONS
Claims 1 through 5 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Connell.
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Claims 1 through 5 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Connell.
Claims 1 through 5 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Connell in view of West.
Claims 1 through 5 stand rejected under 35 U.S.C. § 103(a)
as being obvious over a conventional golf glove package in view
of Connell.
Attention is directed to the appellants’ main and reply
briefs (Paper Nos. 33 and 35) and to the examiner’s answer (Paper
No. 34) for the respective positions of the appellants and the
examiner regarding the merits of these rejections.
DISCUSSION
I. Grouping of claims
On page 4 in the main brief, the appellants state that
“[c]laims 1-5 stand or fall together.” In accordance with this
statement, and pursuant to 37 CFR § 1.192(c)(7), we shall decide
the appeal with respect to each of the examiner’s rejections on
the basis of independent claim 1 alone. In other words,
dependent claims 2 through 5 shall stand or fall with claim 1 for
each rejection.
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II. The 35 U.S.C. § 102(b) rejection based on Connell
Connell discloses “a label adapted or suited for containers
holding any of different types of articles” (page 1, lines 77
through 79), and more specifically “a label suitable for cartons
or boxes in which may be packed any of a variety of styles or
shapes of smoking pipes, the label being adapted for designating
the characteristics of a particular style of pipe or pipes
contained in any given box or carton” (page 1, lines 11 through
17). Figure 1 shows the label as comprising a label body 10
bearing (1) pictorial representations 11 of various styles of
pipes made and marketed by the manufacturer, (2) indicia such as
a star 13 within the representation of the particular style of
pipe packaged in the carton, (3) a space 14 with a descriptive
representation 15, e.g., the word “Poker,” and the star indicia
16 of the packaged pipes, (4) a space 17 with the word “Quantity”
and the number of pipes, e.g., 100, in the carton, (5) spaces 20
and 21 with a trade number and trade name representative of the
physical characteristics of the packaged pipes, (6) a central
space 22 with the trade mark 23 of the manufacturer on a
background color-coded to denote the price of the packaged pipes,
and (7) a space 24 with the name of the manufacturer on a like
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color-coded background. Connell teaches that this label serves
to quickly and accurately convey the identity and characteristics
of the articles packaged in the box or carton (see Connell at
page 1, lines 8 through 94).
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
As indicated above, claim 1 recites a golf glove package
comprising, inter alia, “identifying means disposed within each
of said subsections and comprising text and graphical indications
for uniquely identifying said salient characteristics of the golf
glove.” While not disputing that Connell fails to meet these
limitations, the examiner dismisses them as being directed to
printed matter whose content does not impart patentable weight to
the claimed invention (see page 8 in the answer).
The examiner’s position here is untenable. Differences
between an invention and the prior art cannot be ignored merely
because those differences reside in the content of printed
matter. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04
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(Fed. Cir. 1983). Since Connell does not disclose a package
meeting the identifying means limitations in claim 1, it is not
anticipatory with respect to the subject matter recited therein.
Hence, we shall not sustain the standing 35 U.S.C. § 102(b)
rejection of claim 1, and dependent claims 2 through 5, as being
anticipated by Connell.
III. The 35 U.S.C. § 103(a) rejection based on Connell
Acknowledging that Connell does not meet the golf glove
identifying means limitations in claim 1, the examiner
nonetheless concludes that
one skilled in the art, looking at the package and
label combination in the Connell device and noting the
context within which the package and label are used,
would have been motivated to use a similar package and
label embodiment to provide information to a consumer
regarding any number of packaged products [including,
presumably, a packaged golf glove] [answer, page 4].
The examiner, however, has failed to advance in this
rejection any prior art golf glove packaging evidence which
supports this conclusion.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, and dependent claims 2 through 5,
as being obvious over Connell.
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IV. The 35 U.S.C. § 103(a) rejection based on Connell in view of
West
West discloses a container label displaying lettering and a
symbol indicative of the character of the container’s contents.
In the illustrated example, the label includes the word “Poison”
and the skull and crossbones symbol.
In proposing to combine Connell and West to reject claim 1,
the examiner submits that
[i]n view of the patent to West, it would have been
obvious to modify the device in the cited art reference
to Connell by providing both text and graphical indicia
on the exterior label(s) found on the container, the
motivation being to provide concise and accurate
information as to the contents of the package. As for
the identifying means being indicative of the salient
characteristics of a golf glove, such would flow
logically from the teachings in the art [answer, page
5].
As was the case with the preceding rejection, the examiner
has not advanced any prior art golf glove packaging evidence
which supports this conclusion.
Consequently, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, and dependent claims 2 through 5,
as being obvious over Connell in view of West.
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VI. The 35 U.S.C. § 103(a) rejection based on a conventional golf
glove package in view of Connell
In this rejection, the examiner’s conclusion of obviousness
rests on the following rationale:
[i]t is a fact that gloves as well as other golf
accouterments are often packaged in containers for ease
of distribution. One need only look to the myriad of
golf products such as shoes, tees, golf balls, and even
golf clubs which are commonly transferred to the
consumer in some type of container, i.e., a box. Now,
taking into account the teachings of Connell, the
skilled artisan would have realized that packaged goods
could more easily be identified without disturbing the
package by attaching a label with descriptive matter
and graphical icons relating to the packaged item. The
extension of this teaching by Connell to include any
packaged good for retail sale would have been obvious.
. . . Thus, to have modified a conventional box
already housing gloves to include further facts about
the glove which a manufacturer may deem helpful to a
consumer during the selection and buying process and
which a manufacturer feels may help better educate the
consumer about his product would have been obvious to
the skilled artisan at the time the invention was made
[answer, pages 5 and 6].
In what appears to be an alternative approach to the
rejection, the examiner also submits that “the mere fact that the
claimed identifying means are confined to distinguishing a golf
glove from other articles that may be housed within the package
does not patentably distinguish the claimed invention over the
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prior art. The claimed identifying means are simply deemed to be
printed matter” (answer, page 6).
This latter position is unsound. Where printed matter is
not functionally related to its substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability. In re Gulack, supra. Although the printed matter
must be considered, in that situation it is not be entitled to
patentable weight. What is required is the existence of
differences between the claims and the prior art sufficient to
establish patentability. The bare presence or absence of a
specific functional relationship, without further analysis, is
not dispositive of obviousness. Rather, the critical question is
whether there exists any new and unobvious functional
relationship between the printed matter and the substrate. Id.
In the present case, a functional relationship clearly
exists between the printed matter (the text and graphical
indications identifying salient characteristics of the golf
glove) and the substrate (the golf glove package). Thus, the
printed matter limitations in the appealed claims must be
evaluated in terms of their patentable weight in assessing the
obviousness of the claimed invention.
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As for the teachings of the applied prior art, Connell’s
disclosure of a label designed to quickly and accurately convey
the identity and characteristics of articles packaged in a box or
carton would have furnished the artisan with ample suggestion or
motivation to apply such a label to a conventional golf glove
package for the same reasons, thereby arriving at the particular
package set forth in claim 1. The appellants’ arguments to the
contrary are not persuasive.
More particularly, the disclosed presence on Connell’s label
of text and graphics indicative of the style, physical
characteristics, price and manufacturer of the articles within
the box or carton belies the appellants’ contention (see, for
example, pages 4 through 7 in the main brief) that Connell
teaches a universal label which does not provide information
about the characteristics of the pipes in the package. Although
Connell’s label has a universal aspect in that it displays
pictorial representations of other articles made by the
manufacturer, such additional information is not excluded by, or
otherwise inconsistent with, the limitations in claim 1. This
disclosure by Connell also refutes the appellants’ argument (see,
for example, pages 6 and 8 in the main brief) that Connell’s
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label does not provide information about multiple characteristics
of the articles within the box or carton. Claim 1 defines the
indicated or identified characteristics as “salient”
characteristics which, under the broadest reasonable
interpretation of this term consistent with the appellants’
specification, encompasses the characteristics contemplated by
Connell. In this regard, the term “salient” does not require the
recited characteristics to be “performance” characteristics as
seemingly urged by the appellants. Finally, and notwithstanding
the appellants’ comments to the contrary (see, for example, pages
6 and 8 in the main brief), Connell’s rectangular label (see
Figure 1) and the various representations and spaces thereon
constitute a generally rectangular indication section divided
into a plurality of subsections as broadly recited in claim 1.
At least some of these subsections, e.g., spaces 14, 22 and 24,
embody text and graphical indications identifying “salient”
characteristics of the articles within the package.
In light of the foregoing, the examiner’s application of a
conventional golf glove package and Connell justifies a
conclusion that the differences between the subject matter
recited in claim 1 and the prior art are such that the subject
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matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art.
We shall therefore sustain the standing 35 U.S.C. § 103(a)
rejection of claim 1, and claims 2 through 5 which stand or fall
therewith, as being obvious over a conventional golf glove
package in view of Connell.
SUMMARY
Since one of the examiner’s four rejections of claims 1
through 5 is sustained, the decision of the examiner to reject
these claims is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/dal
Appeal No. 2002-2175
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