11156239 (B.P.A.I. Feb. 24, 2011)

Ex Parte Ross

Board of Patent Appeals and InterferencesFeb 24, 2011

11156239 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/156,239 06/17/2005 Edward C. Ross 1612-2 3643 44190 7590 02/25/2011 WALTER W. DUFT LAW OFFICES OF WALTER W. DUFT 8616 MAIN ST SUITE 2 WILLIAMSVILLE, NY 14221 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 02/25/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte EDWARD C. ROSS ____________ Appeal 2009-009629 Application 11/156,239 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Edward C. Ross (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3, 5-11, and 13-21 under 35 U.S.C. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown in the PTOL-90A cover letter attached to this decision. Appeal 2009-009629 Application 11/156,239 2 § 103(a) as unpatentable over Appellant’s Admitted Prior Art (hereinafter “AAPA”) and Ryan (U.S. Patent No. 6,823,988 B2, issued Nov. 30, 2004). Appellant cancelled claims 2, 4, and 12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to a packaging article and a prerecorded media package for packaging a media case. Claims 1 and 11, reproduced below, with emphasis added, are illustrative of the subject matter on appeal. 1. A packaging article, comprising: an elongated substantially rectangular box enclosure having a front wall, a rear wall, and a pair of first and second side walls; said box enclosure further having an open top end, a bottom end adapted to be closed, and an interior shelf disposed between said top end and said bottom end for supporting the bottom end of a media case to be carried by said package; an opening in said front wall contiguous with said open top end and extending toward said shelf to define an open channel for receiving said media case; said front wall opening extending laterally from said first side wall to said second side wall such that said channel is U-shaped and defined laterally by said first and second side walls; said first and second side walls being substantially planar and defining outside walls of said box enclosure; and whereby said open channel facilitates rapid placement of said media case in said package by virtue of said media case not being restricted to insertion through said top end only. Appeal 2009-009629 Application 11/156,239 3 11. A packaging article, comprising: a base enclosure having a front wall, a rear wall, a pair of first and second side walls, a first end that is adapted to be closed, and a second end that comprises a shelf for supporting the bottom end of a media case to be carried by said package; a pair of media case carrying arms extending from said shelf end of said base enclosure and defining an open channel having an open top end and a contiguous open front face for receiving said media case; said arms being substantially L-shaped, with one planar leg of each arm being formed as an extension of a respective one of said first and second side walls; and whereby said open channel facilitates rapid placement of said media case in said package by virtue of said media case not being restricted to insertion through said top end only. DISCUSSION Issue The determinative issue in this appeal is: Whether Ryan teaches a person of ordinary skill in the art to modify the front wall opening (framed front window 26) of the AAPA “to be without framing walls.” Ans. 4. Analysis Appellant contends that the claims are not obvious in view of the combination of AAPA and Ryan because neither AAPA nor Ryan teaches an open channel that is U-shaped and defined laterally by the first and second side walls which are substantially planar and which define outside walls of Appeal 2009-009629 Application 11/156,239 4 the box enclosure. App. Br. 11 and 19, and Reply Br. 4. Appellant also contends that neither AAPA nor Ryan teaches L-shaped arms. App. Br. 17. The Examiner posits that AAPA discloses the invention substantially as claimed, except that AAPA fails to explicitly disclose “the specifics of the opening in the front wall.” Ans. 3-4. The Examiner finds that Ryan teaches the specifics of the opening in front wall. Ans. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify: the front wall opening of the device of AAPA to be without framing walls and be contiguous with the open top end as taught by Ryan in order to allow for easier insertion and removal of the media case from two adjacent sides of the box and allow for the media case to be fully accessible without the framing rails or lateral member interfering. Id. The Examiner additionally posits that AAPA as modified by Ryan discloses a pair of substantially L-shaped media case carrying arms because “once the lateral framing walls are removed, L-shaped arms are formed at the sides of the opening.” Ans. 5. AAPA discloses a long box package 2 for a media case 4 which contains a prerecorded disk, such as a DVD or CD. Fig. 1 and Spec. 6. The long box package 2 comprises an elongated substantially rectangular box enclosure 6 including a front wall 8, a rear wall 10, a pair of first and second side walls 12, 14, an open top end 16, and a bottom end 18 adapted to be closed by folding side flaps 36, 36 and main tuck flap 38. Spec. 6-7. The front wall 8 has a framed front window 26 with the frame including a lateral member 40 between left and right side longitudinal framing rails (see 13, 15 of annotated copy of Figure 1 of AAPA infra) attached to the first and second side walls 12, 14, respectively. Fig. 1 and Spec. 7 and 8. The rear Appeal 2009-009629 Application 11/156,239 5 wall 10 has a framed rear window 30 including an unnumbered lateral member between unnumbered left and right side longitudinal framing rails attached to the first and second side walls 12, 14. Fig. 1 and Spec. 7. The open top end 16 defines a four sided rectangular-shaped slot 34 through which the media case 4 is inserted into the box enclosure 6. Fig. 1 and Spec. 7 and 8. The sides of the media case 4 are held in the long box package 2 by C-shaped walls made up of the framing rails of the rear and front frame and the side wall of the long box package 2. Fig. 1. Annotated copy of Figure 1 of AAPA is reproduced below: Figure 1 of AAPA depicts a long box package 2 for a media case 4 and has been annotated to insert reference numerals 13 and 15 to represent left and right side longitudinal framing rails which together with lateral member 40 form the frame of the framed front window 26. Appeal 2009-009629 Application 11/156,239 6 Ryan discloses a container 20 for simultaneously housing a product and a premium 26, such as a pinball game. Col. 4, ll. 36-37 and col. 5, ll. 6- 7. The container 20 includes a carton 22, such as a standard cereal box, and optionally includes a packaging card 24 for use with the premium 26. Col. 4, ll. 37-38 and 46-47, and col. 7, ll. 35-38. The carton 22 is formed from a unitary paperboard blank including a front panel 28, back panel 30, side panels 32, 34, sealing tab 36, top closure 38, and back closure 40 which are hingedly connected at fold lines for articulation into a substantially rectangular container. Col. 4, ll. 38-45. A recessing flap is formed in an originating panel selected from one of the front, back or side panels. Col. 2, ll. 48-50. In the embodiment shown in Figure 4, which has been annotated infra, the back panel 30 includes an interior fold line 42, side strips 46, 48, and a top strip 50 all of which remain in the plane of the back panel 30, and a recessing flap 44 comprised of a depth-gauging panel 52, and a backing panel 54 both of which are folded out of the plane of the back panel 30 to form a recessed cell 45 for housing the premium item 26. Figs. 1-4 and col. 4, ll. 52-62 and col. 5, ll. 13-19. The backing panel 54 includes a portion of back panel bottom flap 72 which folds at the end of angled bottom edges 56, 57. Figs. 1 and 4 and col. 5, ll. 27-36. The angled bottom edges 56, 57 form catch regions 78, 80 to help hold the bottom portion of the premium item 26 and the packaging card 24, if any, in the recessed cell 45. Fig. 4 and col. 6, ll. 10-16. In addition, recessing flap 44 may include straight, non-angled bottom edges to eliminate the catch regions 78, 80, thus allowing the premium item 26 to slide into and out of the recessed cell 45 from both the back panel 30 side of the carton 22 and the bottom closure 40 side of the carton 22. Col. 6, ll. 26-30. Appeal 2009-009629 Application 11/156,239 7 Annotated copy of Figure 4 of Ryan is reproduced below: Figure 4 of Ryan depicts a carton 22 having a recessed cell 45 and has been annotated to show side strips 46, 48 (see col. 4, l. 58), top strip 50 (see col. 4, l. 59), and fold line 53 (see col. 5, l. 16). We disagree with the Examiner’s finding that Ryan teaches “to be without framing walls” as stated on page 4 of the Examiner’s Answer. Ryan clearly teaches left and right side longitudinal framing rails (side strips 48, 46, respectively) around the opening made by folding down the recessing flap 44 of the front wall 30. Thus, Ryan does not teach or suggest the removal of left and right side longitudinal framing rails. In addition, it appears that Ryan does not teach a lateral member extending between left framing rail 48 and right framing rail 46. Assuming arguendo that Ryan does teach a lateral member, it appears that Ryan’s lateral member is part of the backing panel 54 that is not removed, but rather is moved or folded down from a position level with the left and right framing rails 48, 46 to a position Appeal 2009-009629 Application 11/156,239 8 below the level of the left and right framing rails 48, 46 by the depth of the depth-gauging panel 52. With respect to claims 1, 3, 5-10, 18, and 21, which all recite a U- shaped channel defined laterally by the first and second side walls of the box enclosure which are outside walls of the box enclosure, we disagree with the Examiner’s finding that Ryan teaches a person of ordinary skill in the art to remove the lateral member 40 of AAPA so that the front window 26 is contiguous with the open top end 16. At best, a modification of AAPA by the teachings of Ryan would have led a person of ordinary skill in the art to move the lateral member 40 of AAPA down below the level of the left and right framing rails 13, 15 of the framed front window 26 by a depth of a depth-gauging member. However, the modified AAPA, used without Ryan’s packaging card 24, would still not have a U-shaped open channel (i.e., “ ”) in cross-section transverse to its length, but instead would have a C-shaped open channel (i.e., “ ”) in cross-section transverse to its length. While both the modified AAPA used with Ryan’s packaging card 24 and Ryan’s bottom closure 40 in Figure 4 having straight, non-angled bottom edges (as suggested at column 6, lines 25-30 of Ryan) would appear to define a U-shaped channel, the U-shaped channel would not satisfy the claim recitation of being defined laterally by first and second side walls of the box enclosure which are outside walls of the box enclosure. With respect to claims 11, 13-17, 19, and 20, which all recite substantially L-shaped arms, we cannot agree with the Examiner’s finding that Ryan teaches the removal of the left and right side longitudinal framing rails so that “once the lateral framing walls are removed, L-shaped arms are formed at the sides of the opening” (Ans. 5). We conclude that it would not Appeal 2009-009629 Application 11/156,239 9 have been obvious to a person of ordinary skill in the art to remove the left and right framing rails 13, 15 of AAPA since Ryan does not teach the removal of the left and right framing rails. Rather, Ryan teaches that the opening in back panel 30 has left and right side longitudinal framing rails (side strips 48, 46). Since both AAPA and Ryan teach the use of framing walls (13, 15 in AAPA and 46, 48 in Ryan), the combination of AAPA and Ryan cannot teach the removal of the framing rails and therefore, there is no teaching of substantially L-shaped arms. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 1, 3, 5-11, and 13-21 under 35 U.S.C. § 103(a) as unpatentable over AAPA and Ryan. CONCLUSION Ryan fails to teach a person of ordinary skill in the art to modify the front wall opening (framed front window 26) of AAPA “to be without framing walls.” DECISION We reverse the Examiner’s rejection of claims 1, 3, 5-11, and 13-21 under 35 U.S.C. § 103(a) as unpatentable over AAPA and Ryan. REVERSED Klh WALTER W. DUFT LAW OFFICES OF WALTER W. DUFT 8616 MAIN ST., SUITE 2 WILLIAMSVILLE, NY 14221