Ex Parte Shaw

Patent Trial and Appeal Board

Mar 27, 2018

13104627 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/104,627 05/10/2011 Raymond R. Shaw
25006 7590 03/29/2018
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SRH-10606/01 1614
EXAMINER
ATTEL, NINA KAY
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
03/29/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND R. SHAW
Appeal 2016-001616
Application 13/104,627
Technology Center 3700
Before KEN B. BARRETT, RICHARD H. MARSCHALL and
ANTHONY KNIGHT, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raymond R. Shaw (Appellant) 1 seeks our review under 35 U.S.C.
§ 134 of the Examiner's rejection of claims 1, 2, 5-15, and 17-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Raymond R. Shaw as the real party in interest. App.
Br. 2.
Appeal2016-001616
Application 13/104,627
THE INVENTION
Appellant's claimed invention pertains to a rigid, tamper-evident
container (a sealed box, for example) for holding evidence. Spec. i-f 2. The
container has a panel on a side of the container defined by perforations such
that the panel may be punched out in order to access the evidence. Id. A
tacky patch having a perimeter greater than that of the access panel is
provided. Id. After returning the evidence to the container, the patch may
be applied over the access hole to reseal the container in a tamper-evident
form. Id. The patch may contain information fields for documenting, for
example, the source of the evidence and the chain of custody. Id. i-fi-12, 36.
Appellant's Figure 4 is shown below.
I
48
14
Figure 4 depicts an evidence retaining enclosure with a tacky cover patch,
which has been removed from a second side of the structure, "applied over
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Application 13/104,627
and around the punch out section in order to effectively reseal the evidence
retaining structure." Id. i-fi-19, 14.
Of the claims on appeal, claims 1 and 14 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A rigid and tamper evident evidence container,
compnsmg:
a plurality of interconnected sides, a bottom and
upwardly extending and inter-foldable flaps extending from
said sides for sealing and holding an item of evidence
previously deposited within an enclosure defined interior
established within the container;
access and tamper-evident resealing structure being
located along at least one facing side of said container to allow
for re-entry of a pre-sealed container and for re-sealing in
thereafter tamper evident fashion;
said structure including an inner panel supported within a
side of the container via a plurality of weakened perforated
locations, said panel being forcibly dislodged to reveal an
opening communicating with the evidence holding interior, a
replacement patch removably secured to the container, said
patch further exhibiting an outer perimeter greater than a
perimeter associated with said perforated locations, said patch
exhibiting a tacky inner surface upon a reverse face which is
revealed upon removal of a covering layer and such that said
tacky surface corresponds at least to an overlapping portion of
said container surrounding the opening for securing said patch
over the opening in a manner preventing subsequent removal
without permanently damaging said structure; and
an indicia inscribing location established along an
exterior surface of the container and providing recordable
information fields for documenting particulars for each of initial
evidence entry and subsequent re-entry and resealing events.
Response to Notification of Non-Compliant Appeal Brief ( 5/7 /15),
Appendix A (Claims Appendix).
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Appeal2016-001616
Application 13/104,627
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Weaver
De honey
Hanna et al.
Sedwick
Pelis
Dupuy
Raden
Dalvey
Hochmeister et al.
Kobayashi et al.
us 1,984,611
us 2,998,180
us 4,066,167
us 4,518,115
us 4,750,609
us 4,826,004
us 5,108,194
us 5,582,343
US 6,171,260 Bl
US 2005/0284776 Al
Dec. 18, 1934
Aug.29, 1961
Jan. 3, 1978
May 21, 1985
June 14, 1988
May 2, 1989
Apr. 28, 1992
Dec. 10, 1996
Jan.9,2001
Dec. 29, 2005
The following Examiner's rejections are before us for review:
1. Claims 1, 5-7, 11, 12, 14, 15 and 17 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Sedwick, Raden, Hanna,
Kobayashi, and Hochmeister;
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sedwick, Raden, Hanna, Kobayashi, Hochmeister, and
Dalvey;
3. Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sedwick, Raden, Hanna, Kobayashi, Hochmeister, and
De honey;
4. Claims 9, 10, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sedwick, Raden, Hanna, Kobayashi,
Hochmeister, Weaver, and Pelis; and
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Application 13/104,627
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sedwick, Raden, Hanna, Kobayashi, Hochmeister,
and Dupuy.
ANALYSIS
Appellant and the Examiner focus their analyses on the rejection of
independent claim 1 as being obvious over the combination of Sedwick,
Raden, Hanna, Kobayashi, and Hochmeister. See App. Br. 8-11; Ans. 3-7;
see also Final Act. 2---6.
The Examiner finds that Sedwick discloses the claimed subject matter
except for the access structure tear line being perforations and a
tamper-evident resealing structure for resealing the container. Final Act. 2-
4. Sedwick pertains to an integral handle for use with a large, bulky,
convenience pack carton, and offers, as a "non-limiting example," "the
packaging of disposable diapers in large, rectangular, cartonboard cartons."
Sedwick, 1: 19-26. Figure 6 of Sedwick is reproduced below.
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Application 13/104,627
Figure 6 is a perspective view of a fully formed carton with an integral
handle. Id. at 3: 14--16. "The top wall 3 and side wall 5 may be provided
with a tear line 9 by which an access opening can be formed in the carton."
Id. at 3:32-34; see also Ans. 3 (the Examiner relying on the same).
The Examiner relies on each of Raden, Hanna, Kobayashi, and
Hochmeister for the teaching of certain features. Final Act. at 4--6. Hanna,
Kobayashi, and Hochmeister disclose, respectively, a recloseable package
for food such as cookies, a resealable package for moist tissues, and an
evidence collection label that may be used to seal the end flaps of a box to
prevent tampering with the evidence. See Hanna, 1:9-16; Kobayashi, i-f 3,
Fig. 9; Hochmeister, 6:28-36. Of particular relevance to the proposed
combination, the Examiner finds that Raden teaches a tacky, replacement
patch with a perimeter greater than the access opening and "teaches that it is
desirable and known to provide a container with a replacement patch
specifically comprising a tacky inner surface configured to reclose the
access opening in a manner preventing subsequent removal without
permanently damaging the structure." Final Act. at 4.
Raden discloses "a tamper evident, leak proof security bag which
presents a positive seal along the access opening without the need to fold the
mating surfaces of the bag in a facing relationship and without the need for
critical user attention." Raden, 1:39-43. Figure 4 of Raden is reproduced
below.
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Application 13/104,627
Figure 4 of Raden depicts "a perspective view of the access opening of the
security bag in an open position with a portion of the releasable liner being
removed from the carrier film." Id. at 2:34--36.
The Examiner, in pertinent part, reasons:
[A ]s containers are known in the prior art to comprise access
openings configured to be non-resealable, resealable or
permanently resealable depending on the desired use of the
container, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the
container of Sedwick by providing the container with a tamper-
evident resealing structure comprising a replacement patch ...
as taught by Raden in order to provide the container with a
means for permanently re-sealing the container in tamper
evident form.
Final Act. 5 (emphasis added).
Appellant asserts that the Examiner erred in finding that the primary
reference, Sedwick, teaches "a rigid tamper evidence container" and argues
"the Examiner's combination of the several disparate packaging designs in
the prior art ... is submitted to amount only to an attempt to reconstruct the
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Application 13/104,627
invention in hindsight." App. Br. 8 (emphasis added) (citing Final Act. 22),
10.
We cannot sustain the rejection. The Examiner reasons that one of
ordinary skill in the art would modify Sedwick' s box to be permanently
resealable in tamper evident form. Final Act. 5. However, Sedwick
suggests that the box is for bulky, convenience packs of consumer goods
such as diapers. Sedwick, 1 :22-26. The Examiner does not explain
adequately why one would have a reason to reseal permanently and in a
tamper evident form a package for diapers and the like.
We acknowledge the Examiner's statement that a purported intended
use recitation as an evidence container may not patentably "differentiate the
claimed apparatus from a prior art apparatus satisfying the claimed structural
limitations." Ans. 3 (citing Ex parte Masham, 2 USPQ2d 1647 (BPAI
1987) ). In this case, however, the proposed combination must be made
before we could assess whether it satisfies all the claimed structural
limitations, and the Examiner's proposed combination is premised implicitly
on the primary reference having a need to be permanently resealed in
tamper-resistant form, as would an evidence container or a similar container.
Accordingly, the Examiner's conclusion that it would have been
obvious to modify the container of Sedwick to have Raden's tamper-evident
2 The Examiner's finding appears to contain a typographical error. We
understand that the Examiner made no finding that Raden teaches an
evidence container, but rather found that the reference discloses a
tamper-evident container. See Ans. 3 ("activation of the tear line to form the
access opening in the [Raden] container renders the container a rigid tamper
evident container.").
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Application 13/104,627
resealing structure is not based on a rational underpinning. Without an
articulated rationale based on rational underpinning for modifying the
reference as proposed, the Examiner's rejection appears to be the result of
hindsight analysis. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
The Examiner's inadequate reasoning applies equally to independent
claim 14 and the dependent claims on appeal. As such, we also cannot
sustain the rejection of those claims.
DECISION
The decision of the Examiner to reject claims 1, 2, 5-15, and 17-20 is
reversed.
REVERSED
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