Ex parte Pietrafesa

Board of Patent Appeals and Interferences

Mar 30, 2000

09008836 (B.P.A.I. Mar. 30, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL PIETRAFESA
_____________
Appeal No. 1999-2730
Application 09/008,836
______________
ON BRIEF
_______________
Before ABRAMS, PATE, and CRAWFORD, Administrative Patent
Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner's refusal to allow
claims 1 and 3 through 6 as amended after the final rejection.
These are all the claims in the application.
The claimed invention is directed to a gift package for
accommodating a gift such as a doll or stuffed animal. The
gift package is in the shape of a baby bottle and is comprised
Appeal No. 1999-2730
Application 09/008,836
2
of a
cylindrical plastic container and a cap with a simulated
nipple that fastens to the container.
The claimed invention can be further understood with
reference to the appealed claims which are appended to
appellant's brief.
The references of record relied upon by the examiner as
evidence of obviousness are:
Whitney 3,118,562 Jan. 21,
1964
Stevens 3,297,193 Jan. 10,
1967
Tancredi 3,811,565 May 21,
1974
Cooper 5,312,282 May 17,
1994
Applicant's own admission on Pages 2-4 of the instant
application. (hereinafter Applicant's admission).
THE REJECTIONS
Claims 1, 3 and 5 stand rejected under 35 U.S.C. § 103 as
unpatentable over Whitney in view of Stevens and the admitted
prior art.
Claim 4 stands rejected under 35 U.S.C. § 103 as
Appeal No. 1999-2730
Application 09/008,836
3
unpatentable over Whitney in view of Stevens and the admitted
prior art, and further in view of Cooper.
Claim 6 stands rejected under 35 U.S.C. § 103 as
unpatentable over Whitney in view of Stevens and the admitted
prior art, and further in view of Tancredi.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have determined that the applied
prior art does not establish a prima facie case of obviousness
with respect to the claims on appeal. Therefore, the
rejections on appeal are reversed. Our reasons follow.
We are generally in agreement with the examiner's
findings of fact with respect to the Whitney reference.
Whitney discloses a carafe and cup combination for use in
hospitals. Whitney's cap 20 has a circular flange and a lower
cylindrical stopper section 21. On the stopper section are
circumferentially spaced projections 23. The examiner regards
these projections as an array of vertical ledges as called for
Appeal No. 1999-2730
Application 09/008,836
4
in claim 1.
Turning to the patent to Stevens, Stevens discloses a
container closure for forming a normally permanent closure on
a container, the closure being relatively non-removable. The
embodiments of Stevens show the end of a paperboard container
folded over to present a top edge 14 and a downwardly directed
skirt 17 which ends in an edge 23 facing downwardly. Stevens
discusses several embodiments, two of which are directed to
forming a normally permanent closure on a container and one of
which cannot be easily resealed once it is removed from the
container.
Inasmuch as Stevens does not show a rolled rim defining
an annular bead as argued by appellant, it is our view that
the references to Whitney and Stevens, if combined as the
examiner
proposes, would not have rendered the subject matter of claim
1 prima facie obvious. Furthermore, inasmuch as Stevens
discloses that his container is normally either permanently
closed or cannot be easily tightly sealed again after the
Appeal No. 1999-2730
Application 09/008,836
5
closure is removed (Fig. 5 embodiment), it is our view that
Stevens does not suggest, and in fact, teaches away from the
examiner's combination of references. Certainly, the carafe
of Whitney is designed to be opened and closed many times
during its use. The closure of Stevens is not. The design of
Stevens is antithetical to a container fastener designed to be
opened and closed readily throughout its life by the user.
The citation of appellant's prior art does not remedy the
problems we have found in the combination of Stevens and
Whitney. For these reasons, the rejection of claims 1, 3 and
5 is reversed.
We have further considered the additional prior art cited
against dependent claims 4 and 6, but we find therein no
disclosure, teaching or suggestion that ameliorates the
problems we have found with respect to the references used in
the rejection of claims 1, 3 and 5. Accordingly, the
rejections of claims 4 and 6 are also reversed.
REVERSED

Appeal No. 1999-2730
Application 09/008,836
6

NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MICHAEL EBERT
HOPGOOD, CALIMAFDE,
KALIL & JUDLOWE
60 E. 42nd STREET
NEW YORK, N.Y. 10165
Appeal No. 1999-2730
Application 09/008,836
7
WFP/dal