Ex Parte Terrell et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11043606 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. TERRELL, JON C. PORTER,
and W. PATRICK DUFFEY
____________

Appeal 2009-008413
Application 11/043,606
Technology Center 3700
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

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 on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Michael A. Terrell et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-20, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to packaging, shipping, storing,
and dispensing roll products such as gift wrap rolls. Spec. 1, para. [0003].
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method for shipping and displaying rolls of material in a
carton, the method comprising the following steps:
constructing a container having an enclosed bottom end
and an open top end;
providing a removable panel in a side of the container;
reinforcing a portion of the container by extending a
panel horizontally across the container between the open end of
the container and the removable panel;
providing graphics on the container; and
enclosing the container with a shipping container having
an enclosed top and an open bottom, the shipping container
being sized and dimensioned to extend over and enclose the
open top end of the container and to extend to the enclosed
bottom end of the container to cover the graphics during
shipping; and
removing the shipping container and removable panel to
display the rolls of material and the graphics at a sales location.
THE REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over
Vosbikian (US 5,415,343, issued May 16, 1995), Philipson (US 6,070,717,
issued Jun. 6, 2000), and Marondel (US 3,343,659, issued Sep. 26, 1967).
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2. Rejection of claims 6, 7, 10, 12, 14-16, 18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Vosbikian, Marondel, and Parker (US
3,190,439, issued Jun. 22, 1965).
3. Rejection of claims 8, 9, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Vosbikian, Marondel, Parker, and Whiteside (US
2,099,783, issued Nov. 23, 1937).
4. Rejection of claims 11 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Vosbikian, Marondel, Parker, and Philipson.
5. Rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Vosbikian, Marondel, Parker, and Jes (US 4,565,316, issued Jan. 21, 1986).
ISSUES
The issues presented by this appeal are:
1. Does Vosbikian or Marondel teach away from the Examiner’s proposed
modification?
2. Does Vosbikian disclose a panel that extends horizontally across the
container between the open end of the container and the removable panel as
called for in claim 1?
3. Does the proposed combination disclose graphics provided on a container
so that the shipping container covers the graphics during shipping as called
for in claim 1?
4. Does Vosbikian disclose the reinforced bridging panel of independent
claim 6?
5. Does Parker disclose the step of “storing the rolls of material in the
container” of claim 6?
6. Does the evidence of non-obviousness presented by Appellants outweigh
the evidence of obviousness of the subject matter of claims 1-20?
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ANALYSIS
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review, we
have determined that the applied prior art establishes the prima facie
obviousness of claims 1-20. Appellants have submitted a declaration to
show evidence of secondary considerations regarding obviousness.
Considering all the evidence anew, it is our conclusion that the evidence for
obviousness of these claims out weighs the evidence against obviousness.
Our analysis follows.
Rejection of claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over
Vosbikian, Philipson, and Marondel
The Examiner found that Vosbikian discloses the invention as claimed
except for the use of indicia on the container and the use of a shipping
container. Ans. 3-4. The Examiner found that Philipson discloses use of
indicia on a container for identifying and promoting the contents of the
container, and that Marondel discloses a shipping container (cover 6) for
protecting the contents of the container during shipment. Ans. 4. The
Examiner concluded that it would have been obvious to modify the container
of Vosbikian to include indicia as disclosed by Philipson and to include a
shipping container as disclosed by Marondel for the purpose of identifying
and protecting the contents of a package. Id. We adopt the Examiner’s
findings with respect to Vosbikian, Marondel, and Philipson contained in the
Answer as our own.
Appellants argue claims 1-5 as a group. Br. 5-8. We select claim 1 as
the representative claim, and claims 2-5 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
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Teaching Away
Claim 1 is a method claim that includes the steps of constructing a
container and enclosing that container with a shipping container.
Appellants contend that Vosbikian provides a stiff and sturdy box
(box 25) having an integral top that remains in place during shipping. Br. 7.
Appellants contend that Marondel discloses a two-part shipping container
having a case-like cover (cover 6) that produces stability of the package for
shipping so that the box covered may be made of relatively thin wall
material. Br. 7-8. Appellants assert that a person of ordinary skill in the art
would not be motivated to provide Marondel’s cover intended for thin-
walled construction on Vosbikian’s sturdy box, and would not be motivated
to replace Vosbikian’s integral top with Marondel’s separate enclosure.
Br. 8.
We see nothing in either reference that would lead a person of
ordinary skill in the art away from using Marondel’s cover 6 with
Vosbikian’s sturdy box (box 25). Marondel discloses a two-part package
comprised of a case-like cover 6 that is adapted to be slipped over a packing
container 1 that creates a stable structure with relatively small wall thickness
for the container 1 and cover 6. Marondel, col. 1, ll. 34-36, 42-43; col. 2,
ll. 4-5, 8-10; fig. 1. Vosbikian discloses a reinforced product display box.
Vosbikian, col. 1, ll. 10-12. Because both Marondel and Vosbikian seek to
create stable (sturdy) structures, we see nothing in either reference that
would lead a person of ordinary skill in the art in a direction divergent from
that chosen by Appellant. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (citation omitted) (“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference would be led in a
direction divergent from the path that was taken by the applicant.”).
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We also do not find anything in either reference that would lead a
person of ordinary skill in the art away from replacing Vosbikian’s integral
top with Marondel’s separate enclosure. We agree with Appellants (Br. 7)
that Vosbikian discloses a box having a top that is preferably integral to the
box for containing the product during shipping. Vosbikian, col. 1, ll. 53-56;
col. 3, ll. 24-26, 55-59. Rather than containing the product during shipping
with an integral top, the product could also be contained by a shipping
container having an enclosed top (such as Marondel’s cover 6). Vosbikian
does not criticize, discredit, or otherwise discourage enclosing the box
within a shipping container having an enclosed top for containing the
product during shipping. Vosbikian, passim. Consequently, Vosbikian does
not teach away from use of Marondel’s cover 6 to cover Vosbikian’s box 25.
In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992) (a reference that
discloses one alternative is preferable to another is insufficient to teach away
from a combination using the non-preferred alternative).
Reinforcing portion
Claim 1 calls for the reinforcing portion of the container to be
positioned between the open end of the container and the removable panel.
Appellants contend that Vosbikian’s reinforcing portion (strip 31) is
spaced down from the open end of the container (box 42), and therefore is
not positioned between the open end of the container and the removable
panel as called for in claim 1.2 Br. 8.
Appellants’ argument is not commensurate in scope with the claim.
Appellants argue as if claim 1 calls for the reinforcing portion to be adjacent
to the open end of the container. Claim 1 contains no such limitation.

2 Here Appellants refer to Figure 6 of Vosbikian.
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Rather, claim 1 calls for the reinforcing portion of the container to be
positioned “between the open end of the container and the removable panel.”
Further, we agree with the Examiner (Ans. 12-13) that Vosbikian’s
container (box 42) includes a reinforcing portion (slats 102 and 103 folded
to substantially abut panel 110) of the container (box 42) positioned between
the open end of the container (top of box 42) and the removable panel
(removable front 34). Vosbikian, col. 7, l. 65 – col. 8, l. 5; fig. 8.
Graphics
Claim 1 includes the steps of providing graphics on the container, and
enclosing the container with a shipping container so that the graphics are
covered during shipping.
Appellants contend: (1) none of the cited references disclose graphics
that are provided on a container and which are enclosed under a shipping
box, (2) Philipson is a substantially different shipping container, and
(3) Philipson’s graphics are not covered during shipment. Br. 8.
Appellants’ first two contentions are unconvincing individual attacks.
The rejection is not based on the finding Philipson discloses graphics on a
container that are enclosed by a shipping box; rather, the rejection is based
on the combination of the references. Additionally, the proposed
combination relies upon Marondel and not Philipson for the shipping
container. Ans. 4.
Appellants’ third contention that Philipson’s graphics are not covered
during shipment is factually incorrect. Philipson discloses a point-of-sale
display box that contains items during shipment and serves as a display.
Philipson, col. 1, ll. 5-8; fig. 1. Philipson’s box 10 includes a cover 32 that
during shipment is positioned on top of the box 10, and during display
stands in slot 39 so that indicia on the cover 32 is displayed. Philipson,
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col. 2, ll. 45, 62-63; col. 3, ll. 7-10, 20-35; fig. 1. Because cover 32 has
indicia on both sides, when in the shipping position (i.e., with cover 32 on
top of box 10), the indicia on the inside of cover 32 are covered during
shipment. Philipson, col. 3, ll. 27-29; fig. 1. Therefore, the subject matter of
claims 1-5 is prima facie obvious in view of Vosbikian, Philipson, and
Marondel.
Rejection of claims 6, 7, 10, 12, 14-16, 18, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Vosbikian, Marondel, and Parker
The Examiner found that Vosbikian discloses the invention as claimed
except the use of a shipping container and use of rolls of material arranged
in the container. Ans. 5-6. The Examiner concluded that it would have been
obvious to modify the container of Vosbikian to include a shipping container
as disclosed by Marondel for the purpose of identifying and protecting the
contents of a package, and to include use of a display box for holding rolls
of gift wrap as disclosed by Parker for the purpose of appealing to
customers. Id. We adopt the Examiner’s findings with respect to Vosbikian,
Marondel, and Parker contained in the Answer as our own.
Appellants argue claims 6, 7, 10, 12, 14-16, 18, and 20 as a group.
Br. 9-10. We select claim 6 as the representative claim, and claims 7, 10,
12, 14-16, 18, and 20 stand or fall with claim 6. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellants repeat the arguments used against the
rejection of claim 1.3 Br. 9.

3 Appellants’ argument related to the graphics on the container is
inapplicable to independent claim 6, which does not contain such a
limitation. However, we apply this argument to claims 11 and 13, infra.
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Teaching Away
Independent claim 6, like independent claim 1, calls for a container
having an open top and an enclosed bottom that is enclosed by a cover
(referred to in claim 1 as a shipping container) having an open bottom and
an enclosed top. Also like the rejection of independent claim 1, the rejection
of independent claim 6 uses Vosbikian’s container (box 42) and Marondel’s
cover (cover 6). Given these similarities between claim 1 and claim 6, the
analysis of Appellants’ teaching away argument against claim 1, supra,
applies equally well here. Consequently, Vosbikian does not teach away
from the use of Marondel’s cover 6 to cover Vosbikian’s box 42.
Reinforcing Portion
Independent claim 6 calls for the step of folding the lower part of the
upper panel to overlap the upper part of the upper panel to form a horizontal
reinforced bridging panel above the removable panel.
Appellants contend that Vosbikian does not disclose a horizontal
reinforced bridging panel as called for in claim 6. Br. 9 (incorporating
arguments made for patentability of claim 1, which includes on page 8 the
argument that none of the cited references disclose a reinforcement panel
extending horizontally across the container between the open end of the
container and the removable panel). Contrary to Appellants’ contention,
Vosbikian discloses a horizontal reinforced bridging panel (slats 102 and
103 folded to substantially abut panel 110) above the removable panel
(removable panel 34) formed by folding (at fold lines 104 and 105) the
lower part of the upper panel (slat 103) to overlap the upper part of the upper
panel (slat 102). Vosbikian, col. 7, ll. 59-60; col. 7, l. 65 – col. 8, l. 11; fig.
8.
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For Shipping Rolls of Material
Independent claim 6 recites the step of “storing the rolls of material in
the container.”
The Examiner found that Parker discloses this limitation. Ans. 5-6.
Appellants argue that Parker discloses a one-piece container for shipping
rather than the two-piece shipping container (the container and cover) of
independent claim 6. Br. 9.
We are unpersuaded by this individual attack on Parker as the
rejection relies on Vosbikian and Marondel for the container and cover.
Ans. 5-6. Therefore, the subject matter of claims 6, 7, 10, 12, 14-16, 18, and
20 is prima facie obvious in view of Vosbikian, Philipson, and Parker.
Rejection of claims 11 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Vosbikian, Marondel, Parker, and Philipson
Claim 11 depends from independent claim 6, and claim 13 depends
from independent claim 12. Similar to claim 1, claims 11 and 13 each call
for the step of providing graphics on the container so that the graphics are
enclosed by the cover during shipping. Appellants do not present separate
arguments for the patentability of claims 11 and 13. Br. 11 (requesting that
the rejection of dependent claims 11 and 13 be reversed by virtue of their
dependence from claims 6 and 12). We find nothing in claims 11 and 13
warranting a deviation from our conclusion regarding claim 1, supra.
Therefore, the subject matter of claims 11 and 13 is prima facie obvious in
view of Vosbikian, Marondel, Parker, and Philipson.
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Rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Vosbikian, Marondel, Parker, and Jes; and rejection of claims 8, 9, and 17
under 35 U.S.C. § 103(a) as unpatentable over Vosbikian, Marondel,
Parker, and Whiteside
Claims 8 and 9 depend, directly or indirectly, from independent claim
6. Claims 17 and 19 depend from independent claim 12. Appellants do not
present separate arguments for patentability of claims 8, 9, 17, and 19.
Br. 11 (requesting that the rejection of dependent claims 8, 9, 17, and 19 be
reversed by virtue of their dependence from claims 6 and 12). For the
reasons explained in the analysis of the rejection of claims 6, supra, the
subject matter of claim 19 is prima facie obvious in view of Vosbikian,
Marondel, Parker, and Jes, and the subject matter of claims 8, 9, and 17 is
prima facie obvious in view of Vosbikian, Marondel, Parker, and Whiteside.
Evidence of Secondary Considerations – Commercial Success
As noted above, we have concluded the subject matter of the claims
on appeal is prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and an appellant further furnishes
evidence of secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully considering the evidence for obviousness with
respect to the evidence against obviousness. See, e.g., In re Eli Lilly & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that the objective
evidence of non-obviousness in any given case may be entitled to more or
less weight depending on its nature and its relationship to the merits of the
invention. See Stratoflex, Inc. v. Aeroquip, Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983). To be given substantial weight in the determination of
obviousness or non-obviousness, evidence of secondary considerations must
be relevant to the subject matter as claimed, and therefore we must
determine whether there is a nexus between the merits of the claimed
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invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
Appellants have presented insufficient evidence of a nexus between
the claimed features and the commercial success of the claimed invention.
The declarant offered evidence of increased sales where those sales involved
the claimed features of a removable panel, reinforcement extending above
the removable panel, and a shipping container to enclose the gift wrap rolls
during shipping. Declaration of Paul D. Murphy, 2:¶6 – 3:¶8. However,
while the declarant’s opinion is that these sales are attributable to the recited
claim features, this evidence in unconvincing due to its lack of
completeness. We have no evidence to enable us to determine whether the
increased sales are due to unclaimed features, such as the gift wrap itself,
increased advertising, growth the entire market, or other economic and
commercial factors unrelated to the technical quality of the claimed subject
matter. See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (objective
evidence of non-obviousness, including commercial success, must be
commensurate in scope with the claims).
Further, the declarant provides only his opinion as to why customers
purchased the declarant’s product. Unfortunately, Appellants failed to
provide any declarations or statements from the customer explaining the
reason for purchase. An opinion from an employee of the assignee of the
claimed invention as to the purchaser's reason for buying the product is
insufficient to demonstrate a nexus between the sales and the claimed
invention. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (there holding
an inventor’s opinion regarding commercial success was insufficient
because the “applicant must submit some factual evidence that demonstrates
the nexus between the sales and the claimed invention-for example, an
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affidavit from the purchaser explaining that the product was purchased due
to the claimed features”). See also Cable Elec. Prods. v. Genmark, Inc., 770
F.2d 1015, 1026 (Fed. Cir. 1985) (“[A] nexus between the merits of the
claimed invention and the evidence of secondary considerations is required
in order for the evidence to be given substantial significance in an
obviousness decision.”) (internal quotation marks omitted).
Further, though the declarant provides gross sales figures regarding
market share, the declarant does not provide information regarding the size
of the market, the market share percentage, or market share growth. Murphy
Decl. 2:¶6. Rather the declarant provides the conclusory statement that
commercial success is clearly indicated by sales figures “substantially
increasing our market share.” Murphy Decl. 2:¶7. Appellants have failed to
provide persuasive evidence as to market share so as to put the evidence of
gross sales figures into perspective in the context of the particular market at
hand. See Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27
(Fed. Cir. 1985) (gross sales figures do not show commercial success absent
evidence as to market share); In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996) (without evidence that the sales are a substantial quantity in the
relevant market, “bare sales numbers” are a “weak showing” of commercial
success, if any).
Appellants have provided insufficient evidence of a nexus between
sales and the merits of the invention, and insufficient evidence of market
share. Considering all the evidence anew, we conclude that the evidence for
the obviousness of the subject matter of claims 1-20 outweighs the evidence
for non-obviousness of the subject matter of these claims.
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CONCLUSIONS
Vosbikian and Marondel do not teach away from the Examiner’s
proposed modification.
Vosbikian discloses a panel that extends horizontally across the
container between the open end of the container and the removable panel as
called for in claim 1.
The proposed combination discloses graphics provided on a container
so that the shipping container covers the graphics during shipping as called
for in claim 1.
Vosbikian discloses the reinforced bridging panel of independent
claim 6.
Parker discloses the step of “storing the rolls of material in the
container” of claim 6.
The evidence for obviousness of the subject matter of claims 1-20
outweighs the evidence of secondary considerations of non-obviousness
presented by Appellants.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-20.

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