Ex Parte Simon et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10497163 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PASCAL SIMON, KENJI NAKAMURA,
and ISAO KURAISHI
__________

Appeal 2009-0026901
Application 10/497,163
Technology Center 3700
__________

Decided: September 29, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 4-7, 9, 10, and 51-58, directed to a packaged article.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Heard September 22, 2009.
2 Claims 2, 3, 8, and 11-50 are also pending, but have been withdrawn from
consideration.

Appeal 2009-002690
Application 10/497,163

STATEMENT OF THE CASE
The invention is directed to a product applicator disposed within a
package. The applicator can be used to apply a liquid or dry product, and
“includes a cavity that receives an appendage [e.g., a finger or hand] of the
user so that the user can hold the applicator by inserting the appendage into
the cavity” (Spec. 1). A liquid or dry product “can be disposed within the
package in the region between the applicator and the remainder of the
package and/or the product can be impregnated in the exterior of the
applicator” (id.). In addition,
[A] seam which closes the package also closes the cavity of the
applicator, such that upon opening of the package, an opening
into the cavity of the applicator or article is also formed. As a
result, the interior of the cavity of the applicator is isolated from
the product disposed in the package.

(Spec. 2.)
Claim 1 is representative of the subject matter on appeal:
1. A packaged article comprising:
an article having an outer surface and an inner surface, wherein said
inner surface defines a cavity for receiving an appendage of a user;
a package surrounding said article;
a seam which closes both said package and said cavity of said article,
wherein said seam extends through a portion of said package and wherein
said seam also extends through a portion of said article, and further wherein
opening of said seam opens both said package and said cavity of said article.

The Examiner rejected the claims as follows:
• Claims 1, 4-7, 10, and 51-58 under 35 U.S.C. § 103(a) as unpatentable
over Brower et al. (US Patent 6,250,829 B1, issued June 26, 2001).

• Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Brower and
Gruenbacher et al. (US Patent 6,726,386 B1, issued April 27, 2004).
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Application 10/497,163

ISSUE
The Examiner rejected claims 1, 4-7, 10, and 51-58 as obvious over
Brower, and claim 9 as obvious over Brower and Gruenbacher. The
Examiner finds that Brower discloses a packaged article that meets all of the
limitations of the claims with the exception of a common seam that extends
through the package and the article. However, the Examiner finds that
Brower discloses a bonding arrangement and seam extending through the
package that accomplishes essentially the same thing as the common seam in
the claimed packaged article. That is, in Brower, and in the claimed
invention, “opening the seam . . . opens both the package and the cavity of
the article” (Ans. 3). The Examiner concludes that replacing Brower’s
arrangement with a seam that extends through both the package and the
article would have been an obvious modification of Brower’s packaged
article for one of ordinary skill in the art.
Appellants contend that “Brower does not disclose a seam which
closes both a package and a cavity of an article, in which the seam extends
through a portion of the package and also extends through a portion of the
article” (App. Br. 8), a structure which is required by claim 1. Appellants
contend that Brower not only “fail[s] to disclose or suggest the structure
recited in Claim 1, but Brower also fails to recognize the purposes and
advantages of the claimed structure” (id. at 6).
The principal issue raised by both of these rejections is whether
Appellants have established that the Examiner erred in concluding that a
packaged article, with a common seam extending through and closing both
the article and the package surrounding it, would have been obvious over
Brower’s disclosure.
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Application 10/497,163

FINDINGS OF FACT
FF1 Claim 1 is directed to a packaged article, i.e., an article in a
package, wherein the article “defines a cavity for receiving an appendage of
a user.” A common seam, extending through both the package and the
article, closes both the package and the cavity of the article. Likewise,
opening the seam opens both the package and the cavity of the article.
FF2 Figures 1 and 4, reproduced below, illustrate an embodiment of
the claimed packaged article that meets the limitations of claim 1.

Figure 1 is a schematic representation of the packaged article, while Figure 4
provides a cross-sectional view (Spec. 7: 11, 16).
FF3
As shown in Figure 1, a common seam or seal is
provided which closes both the package 1 and a cavity 6 of the
article 3. As a result, the product 2 provided within the package
1 (and/or impregnated in the outer layer(s) of the article 3) will
not enter the cavity 6 of the article. As a result, upon opening
of the package, the cavity 6 into the article is opened, and the
user can insert an appendage into the cavity 6 without
contacting the product. Preferably, a tear line 4 is provided[.]

(Spec. 8: 27-33.)

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Application 10/497,163

FF4 Brower discloses “a storage and applicator article for the
convenient and controlled application of a lotion . . . to the skin of a user”
(Brower, col. 2, ll. 43-47).
FF5 Brower’s applicator article comprises “a flexible thin sheet
impregnated with the lotion and formed into a cavity having . . . an open
proximal end into which at least a portion of the user’s hand may be
inserted” (Brower, col. 2, ll. 47-52). The applicator sheet may comprise “an
absorbent outermost layer comprising the outside surface of the cavity, and a
fluid impervious innermost layer comprising the cavity inside surface” (id. at
col. 3, ll. 18-20). “The sheet is contained and stored . . . in an openable
airtight enclosure until lotion is needed” (id. at col. 2, ll. 56-58).
FF6 Brower discloses a “self opening embodiment” (Brower, col. 3,
l. 29) in which the applicator’s “openable proximal end . . . has opening
means that cooperate with the enclosure tearable openable edge, whereby
tearing said edge open exposes the openable end of the applicator in an open
condition for insertion of the hand. Thus, a user advantageously is not
required to . . . handle the fluid impregnated applicator” (id. at col. 3, ll. 36-
42).
FF7 The
[p]referred applicator opening means comprises a bond on the
outer surface of the applicator near the applicator[’]s openable
proximal end. . . . The bonded surface removably attaches the
applicator outer surface first and second sides to the enclosure’s
upper and lower flexible sheets, respectively, near the
enclosure’s tearably openable edge. Tearing open of the edge
and spreading the enclosure upper and lower sheets thereby
urges the applicator’s openable end open.

(Brower, col. 3, ll. 43-52.)
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FF8 Figure 5, reproduced below, is a cross section of the self
opening embodiment of Brower’s enclosure and applicator, in its initial,
unopened condition:

Figure 5 shows “opening means 72, preferably a bond surface,” at the
proximal openable end of applicator 70. “Tearably openable edge 82, upper
sheet 76, and lower sheet 78 [of enclosure 74] cooperate with applicator
bond surface 72 to urge applicator openable proximal end open when
tearable edge 82 is torn open and sheets 76 and 78 are separated” (Brower,
col. 6, l. 57 to col. 7, l. 5).
FF9 Brower’s Figures 6B, 6C, and 6D, reproduced below, show
perspective views of the process of opening enclosure 74 and applicator 70:

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In Figure 6B, “edge 82 has been torn open, exposing applicator proximal
openable end 100 and bond surface 72” (Brower, col. 7, ll. 17-19). Figure
6C “shows that as enclosure upper sheet 76 and lower sheet 78 are urged
apart, opening means bond surface 72 likewise urges applicator proximal
end 100 open” (id. at col. 7, ll. 19-22). Figure 6D “shows a hand being
partially inserted into opened proximal end 100, and applicator 70 being
removed from enclosure 74” (id. at col. 7, ll. 22-24).
FF10
In addition to the advantage of allowing a user to easily .
. . insert a hand into the applicator without having to . . . handle
the fluid impregnated applicator, this self-opening embodiment
further advantageously tends to urge the applicator openable
end closed during storage. This results as the applicator
openable end is removably affixed to the storage enclosure top
and bottom sheets and the storage enclosure has a generally flat
shape. Thus, the applicator openable end is held closed
between the enclosure upper and lower sheets, and the cavity is
generally kept free of fluid during storage.

(Brower, col. 3, ll. 54-64.)
PRINCIPLES OF LAW
“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
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content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
“[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. “In many fields it may be that there is little
discussion of obvious techniques or combinations, and it often may be the
case that market demand . . . will drive design trends.” Id. at 419.
Finally, “[r]igid preventative rules that deny factfinders recourse to
common sense . . . are neither necessary under our case law nor consistent
with it.” Id. at 421.
ANALYSIS
Claims 1, 4-7, 10, 56, and 57
Appellants contend that “Brower does not disclose a seam which
closes both a package and a cavity of an article, in which the seam extends
through a portion of the package and also extends through a portion of the
article” (App. Br. 8), a structure which is required by claim 1.
Appellants contend that Brower “also fails to recognize the purposes
and advantages of the claimed structure” (App. Br. 6). Specifically,
Appellants contend that as a result of the common seam, which initially
closes both the package and the article, “the interior of the cavity of the
applicator is isolated from the product disposed in the package” (id.).
According to Appellants,
[The] interior portion of [Brower’s] applicator 70 is not isolated
from the interior of the enclosure 74. Specifically, the
enclosure 74 is joined together around the edges 80, which are
separate from the applicator 70. The applicator 70 is separately
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attached to the enclosure at two bond surfaces 72. However,
the bond surfaces 72 do not extend through a portion of the
enclosure 74 a package and also extend through a portion of the
applicator 70, and neither the bond surfaces 72 nor the edges 80
close both the enclosure 74 a package and an interior of the
applicator 70.

(Id. at 7.)
Appellants’ arguments do not persuade us that the Examiner erred
in concluding that the claimed invention would have been obvious over
Brower. The Examiner acknowledges that Brower doesn’t disclose a
packaged article with a seam that extends through and closes both the
package and the article (Ans. 3). However, the Examiner finds that the
“tearably openable edge” on Brower’s enclosure and the bondable surfaces
on the applicator serve the same purpose as the common seam in the claimed
packaged article. The Examiner finds “by joining the article walls to the
package walls by adhesive, . . . [Brower’s] article and package walls act as a
unit such that when the package walls are opened, the article walls, joined to
the package walls, will also be urged open because they act in concert” (Ans.
10). Moreover, the Examiner finds that Brower’s applicator is closed, and
the interior of the applicator is isolated from the interior of the enclosure,
until the enclosure is opened (id.).
We agree with the Examiner that replacing Brower’s arrangement
with a seam that extends through both the package and the article would
have been an obvious modification of Brower’s packaged article for one of
ordinary skill in the art, given the fact that Brower recognizes the advantage
of having an arrangement that not only opens both the enclosure and the
applicator at the same time, but also ensures that the applicator is closed as
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long as the enclosure remains unopened, so that the cavity in the applicator
is “generally kept free of fluid during storage” (FF8, FF9, FF10). Brower
shows that it’s conventional to close a package with a seam. The person of
ordinary skill “is also a person of ordinary creativity, not an automaton”
(KSR, 550 U.S. at 421), and would have recognized that a simple way to
close both the package and the article at the same time, and likewise open
both the package and the article at the same time, would be to use a common
seam through both the package and the article.
Claim 51
Claim 51 depends from claim 1. Appellants contend that claim 51
“recites that the package includes an interior portion between an inner
surface of the package and the outer surface of the article” (App. Br. 9), and
“further recites that prior to opening the claimed seam, the seam closes the
cavity with respect to an interior portion of the package such that the cavity
is isolated from the interior portion of the package . . . [but] Brower fails to
teach or suggest this feature” (id. at 9-10).
This argument is not persuasive. As discussed above, Brower
recognizes the advantage of having an arrangement that not only opens both
the enclosure and the applicator at the same time, but also ensures that the
applicator is closed as long as the enclosure remains unopened, so that the
cavity in the applicator is “generally kept free of fluid during storage”; i.e.,
isolated from the interior of the enclosure (FF8, FF9, FF10).
Claim 52 (and claim 53 which depends from claim 52)
Claim 52 depends from claim 51, which depends in turn from claim 1.
Appellants contend that claim 52 “recites that the seam seals selected inner
surface portions of the article together and selected inner surface portions of
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the package together . . . [and] further recites that the seam is a common seal
to both said package and said article” (App. Br. 10). Appellants contend
that Brower’s tearable edge 82 “only joins the upper sheet 76 of the
enclosure 74 to the lower sheet 78 of the enclosure 74 . . . [and] [n]one of the
edges 80 are a seam on the applicator” (id. at 10-11).
This argument is not persuasive, for the same reasons discussed above
in connection with claim 1: Brower shows that it’s conventional to close a
package with a seam. One of ordinary skill in the art would have recognized
that a simple way to close both the package and the article at the same time,
and likewise open both the package and the article at the same time, would
be to use a common seam that goes through both the package and the article.
Claim 54 (and claim 55 which depends from claim 54)
Claim 54 depends from claim 1 directly, but otherwise mirrors the
language of claim 52. Appellants’ argument regarding claim 54 is the same
as the argument for claim 52, and is unpersuasive for the same reasons.
Claim 58
Claim 58 is directed to:
A packaged article as recited in claim [1, wherein after opening
of said seam a portion of said seam maintains part of said
article connected to part of said package], wherein said portion
of said seam extends transverse to a remainder of said seam.

While we agree with the Examiner that replacing the openable edge
with a common seam that goes through both the enclosure and the article
would have been obvious for the reasons discussed above, we agree with
Appellants that extending a portion of the seam transverse to the rest of the
seam to maintain a connection between the article and the enclosure would
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not have been obvious over Brower as no part of Brower’s tearable openable
edge 82 extends transverse to a remainder of the openable edge.
Claim 9
The Examiner rejected claim 9 as unpatentable over Brower and
Gruenbacher. Appellants contend that claim 9 depends from claim 1 and is
not obvious for the same reasons.
This argument is not persuasive for the reasons discussed above in
connection with claim 1.
CONCLUSIONS OF LAW
Appellants have not established that the Examiner erred in concluding
that a packaged article, with a common seam extending through and closing
both the article and the package surrounding it, would have been obvious
over Brower’s disclosure.
SUMMARY
• The rejection of claims 1, 4-7, 10, and 51-58 under 35 U.S.C. § 103(a)
as unpatentable over Brower is affirmed with respect to claims 1, 4-7,
10, and 51-57, and reversed with respect to claim 58.

• The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Brower and Gruenbacher is affirmed.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

cdc

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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