Ex Parte Saso et al

Board of Patent Appeals and Interferences

May 24, 2005

09734792 (B.P.A.I. May. 24, 2005)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CORINNE SASO,
RICHARD CHALMERS and
EDWARD JOHN GIBLIN
_____________
Appeal No. 2005-1328
Application No. 09/734,792
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and WARREN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-13,
15-17, 19-25, 27 and 28.
Claim 1 is illustrative:
1. A combination of two or more packages juxtaposed
to form a unit, said unit being shrink wrapped in two
or more films on opposite film sides of said unit,
wherein at least one of said films is opaque and at
least one of said films is clear.
Appeal No. 2005-1328
Application No. 09/734,792
2
The examiner relies upon the following references as
evidence of obviousness:
Limousin 4,586,312 May 06, 1986
Lundquist et al. (Lundquist) 4,720,410 Jan. 19, 1988
Tsuchiya 5,067,612 Nov. 26, 1991
Appellants’ claimed invention is directed to a combination
comprising two or more packages that are shrink wrapped to form a
unit wherein one of the films of the shrink wrapping is opaque
while another film is clear. According to appellants’
specification, “[t]he opaque film is sufficiently resistant to
the transmission of light such that UPC bar codes present on the
individual packages cannot be read through the film by bar code
reading machines” (page 5, second paragraph). The specification
explains that “use of the opaque film prevents the bar code
reading machine from inadvertently reading one of the bar codes
for the individual packages and thereby falsely crediting the
manufacturer with shipment only of an individual package rather
than the multi-package unit” (id.).
Appealed claims 1, 3, 4, 6, 7, 10, 12, 13, 15-17, 22, 24,
25, 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Limousin in view of Lundquist. Claims 2, 5, 8,
9, 11 and 19 stand rejected under 35 U.S.C. § 103(a) as being
Appeal No. 2005-1328
Application No. 09/734,792
3
unpatentable over the stated combination of references further in
view of Tsuchiya. Also, claims 20, 21 and 23 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Limousin in
view of Tsuchiya.
We have thoroughly reviewed each of appellants’ arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner’s rejections for essentially those reasons
expressed in the answer, and we add the following primarily for
emphasis.
Appellants submit at page 12 of the brief that “[a]ll claims
stand or fall together for all grounds of rejection.” Accord-
ingly, the claims rejected over Limousin in view of Lundquist
stand or fall together with claim 1, whereas claims 2, 5, 8, 9,
11 and 19 stand or fall together with claim 2. Also, claims 21
and 23 stand or fall together with claim 20.
We consider first the rejection of claim 1 over Limousin in
view of Lundquist. There is no dispute that Limousin discloses
the presently claimed combination of two or more packages
Appeal No. 2005-1328
Application No. 09/734,792
4
juxtaposed to form a unit with the unit being shrink wrapped in
two or more films on opposite film sides of the unit. As
appreciated by the examiner, Limousin does not teach that one of
the films is opaque and the other is clear. However, we agree
with the examiner that Lundquist evidences that it was known in
the art to shrink wrap a combination of opaque and clear films
when the opacity of one of the films is desired. Accordingly,
although Limousin is silent with respect to the clarity or
opacity of the shrink wrapped films, we are confident that one of
ordinary skill in the art would have found it obvious to make one
of the films clear for allowing observation of desired portions
of the packages being shrink wrapped, while making another film
opaque to obscure or hide other portions of the objects. In our
view, the problem solved by appellants, inadvertent reading of
bar codes on individual packages, would have been readily
recognized by one of ordinary skill in the art, and the solution
of utilizing an opaque film would have been readily apparent to
the artisan. In re Ludwig, 353 F.2d 241, 244, 147 USPQ 420, 421
(CCPA 1965). Consequently, it follows that we find that the
subject matter of claim 1 would have been obvious over Limousin
alone.
Appeal No. 2005-1328
Application No. 09/734,792
5
As for separately rejected claim 2, we find that it would
have been obvious for one of ordinary skill in the art to
employ the known expedient of gripping openings on the ends of
Limousin’s shrink wrapping. We concur with the examiner that
figure 13 of Tsuchiya evidences the obviousness of such gripping
openings. We are satisfied that one of ordinary skill in the art
would need only to resort to routine experimentation to determine
the optimum locations for providing the gripping openings. While
appellants contend that Limousin does not teach the claimed
placement of perforations and apertures, claim 2 fails to recite
any perforations. Also, the specific location of Limousin’s
perforations are contingent upon the placement of the wrapping on
the conveyor during heating.
As for separately argued claim 20, appellants present the
same arguments discussed above. Again, it is our view that it
would have been obvious for one of ordinary skill in the art to
determine the optimum location of perforations and gripping
openings in shrink wrappings of the type disclosed by Limousin.
To the extent that Limousin teaches a specific advantage for
Appeal No. 2005-1328
Application No. 09/734,792
6
locating the perforations and openings, it is well settled that
it is a matter of obvious for one of ordinary skill in the art to
eliminate or modify a feature of the prior art along with its
attendant advantage. In re Thompson, 545 F.2d 1290, 1294, 192
USPQ 275, 277 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555, 188
USPQ 7, 9 (CCPA 1975).
As a final point, we note that appellants base no argument
upon objective evidence of nonobviousness, such as unexpected
results, which would serve to rebut the prima facie case of
obviousness established by the examiner.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is affirmed.
Appeal No. 2005-1328
Application No. 09/734,792
7
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
EAK/vsh
Appeal No. 2005-1328
Application No. 09/734,792
8
UNILEVER INTELLECTUAL PROPERTY GROUP
700 SYLVAN AVENUE
BLDG C2 SOUTH
ENGLEWOOD CLIFFS, NJ 07632-3100