11507259 (P.T.A.B. Sep. 5, 2013)

Ex Parte Palmer

Patent Trial and Appeal BoardSep 5, 2013

11507259 (P.T.A.B. Sep. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/507,259 08/21/2006 Kenneth J. Palmer P-A946-CIP 9304 29222 7590 09/05/2013 W. THOMAS TIMMONS 1320 PRUDENTIAL DRIVE SUITE 208 DALLAS, TX 75235-4117 EXAMINER ELOSHWAY, NIKI MARINA ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 09/05/2013 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 KENNETH J. PALMER ____________________ Appeal 2011-009922 Application 11/507,259 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009922 Application 11/507,259 2 STATEMENT OF THE CASE Appellant seeks review of the Examiner’s decision to reject claims 1- 3, 10, 17-19, and 26 under 35 U.S.C. § 102(b) as anticipated by Voges (US 4,114,796; iss. Sep. 19, 1978). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellant’s claimed invention “relates generally to packing boxes and file drawers.” Spec. 1:6. Claims 1 and 17 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An adjustable packing insert, for snugly packing items, comprising in combination: a first face; a second face, opposite the first face, wherein the distance between the first face and the second face is adjustable, depending upon the amount of space to be filled, and wherein at least one of the faces is in contact with the items to be packed; a first side support, flexibly connected at one end to one edge of the first face and flexibly connected at the opposite end to one edge of the second face, and bending inwards between the first face and the second face; and a second side support, flexibly connected at one end to the edge of the first face which is opposite the edge connected to the first side support and flexibly connected at the opposite end to the edge of the second face which is opposite the edge connected to the first side support, and bending inwards between the first face and the second face, wherein the first side support and the second side support are in positions with respect to the first face and the second face and each other such that when they are bent inwards between the first face and the second face, the first support member does not interfere with Appeal 2011-009922 Application 11/507,259 3 the second support member, and wherein the first side support is connected to the top of the two faces, and second side support is connected to the bottom of the two faces, and wherein each side support is less than half the height of the faces, so that the first side support passes over the top of the second side support without hitting the second side support or otherwise interfering with the operation of the second side support, and wherein the distance between the first face and the second face is adjusted by changing the angles formed by the first side support and the second side support. OPINION Only issues and findings of fact contested by the Appellants have been considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). The Examiner’s determination of anticipation includes the finding that Voges discloses a first face (side wall 318), a second face (side wall 316), a first side support (side wall 319 and upper right band 332a), and a second side support (side wall 317 and lower left band 331b). Ans. 3 (citing Figures 8 and 9). Appellant makes a variety of arguments in support of the contention that claim 1 is not anticipated by Voges.1 Appellant argues that Voges describes Figures 8 through 10 “entirely differently” from the Examiner’s findings. Br. 4. Similarly, Appellant argues that Voges is not a proper anticipatory reference because the Examiner has arbitrarily designated two side walls as corresponding to the 1 Appellant argues for independent claims 1 and 17 without making a distinction between the subject matter of these claims. Br. 4-5. As such, we select claim 1 as representative and claims 2, 3, 10, 17-19, and 26 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2011-009922 Application 11/507,259 4 claimed faces and two other side walls as corresponding to side supports. Br. 4-5. Whether Voges describes the elements in the same nomenclature utilized in claim 1 is not the relevant inquiry. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“The elements must be arranged as in the claim under review, but this is not an ‘ipsissimis verbis’ test”). Further, as the Examiner correctly points out, Appellant’s arguments do not identify a structural distinction between Voges and the claimed subject matter (Ans. 3), nor does this line of argument otherwise cogently explain how the Examiner’s findings are in error. Appellant argues that Voges’s walls are fixed and not adjustable once they are put together, and may either be die-cut as shown in Figure 8 or the fixed partition cells of Figure 9. Br. 4-5. Further, according to Appellant, because the container of Voges is not adjustable, it can neither fit into a container to take up loose space nor adjust the distance between the first and second face as claimed. Br. 5. Appellant mischaracterizes the reference. Voges discloses a rectangular carton that is collapsible into a two-layer thick article and is quickly erectable. Voges, col. 1, ll. 6-7, 50-53. Specifically, sheet form blank 315 may be fully collapsed and folded into a double-sheet thickness configuration and then erected for use. Voges, col. 1, ll. 62-68; col. 3, ll. 13- 26, 51-54; col. 4, ll. 1-4; figs. 5 (plan view fully collapsed in double thickness), 8 (plan view of blank), 9 (cross-sectional view of blank assembled and erected into a carton); see also Ans. 3 (explaining how Voges’s container is adjustable). This adjustability is maintained even after end tab 120 is connected to wall 119 and glue is applied to spot 141. Voges, Appeal 2011-009922 Application 11/507,259 5 col. 3, ll. 21-26. Therefore, contrary to Appellant’s assertion, Voges’s container is adjustable, even after assembly. Appellant argues that the walls of Voges are outside of the container and not in contact with items to be packed as claimed. Br. 5. Appellant’s argument is not responsive to the rejection as articulated by the Examiner. The Examiner found that Voges’s insert (carton) is capable of being used as an adjustable packing insert. So utilized, Voges’s insert would be utilized within a container in contact with the items to be packed, and would not be outside of a container as Appellant contends. Appellant’s arguments fail to apprise us of error in the Examiner’s rejection. DECISION We affirm the Examiner’s decision to reject claims 1-3, 10, 17-19, and 26. 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)(1)(iv). AFFIRMED tj