Ex Parte Watson et al

Patent Trial and Appeal Board

Dec 11, 2013

12145859 (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte TYLER T. WATSON, SCOTT W. OSIECKI, and 7
MARK A. FERGUSON 8
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Appeal 2012-001502 11
Application 12/145,859 12
Technology Center 3700 13
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Before MEREDITH C. PETRAVICK, MICHAEL C. ASTORINO, and 17
THOMAS F. SMEGAL, Administrative Patent Judges. 18
SMEGAL, Administrative Patent Judge. 19
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DECISION ON APPEAL 23
24
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Application 12/145,859

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STATEMENT OF THE CASE1 1
Tyler T. Watson, Scott W. Osiecki, and Mark A. Ferguson 2
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 3
1-3, 5, 6, 8-17, and 19-24, the only claims pending in the application on 4
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
6
SUMMARY OF DECISION 7
We AFFIRM-IN-PART and enter a new ground of rejection pursuant 8
to 37 C.F.R. § 41.50 (b). 9
10
CLAMED SUBJECT MATTER 11
Appellants’ claimed subject matter is a battery package (Specification 12
1, ¶ [0002]). 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1 which is reproduced below. 15
1. A battery package comprising: 16
a rear member; 17
a front member pivotally connected to the rear member 18
by a C shaped pivot; 19
the front member being pivotable about the rear member 20
at the C shaped pivot, with the battery package having a closed 21
position wherein the front member is engaged with the rear 22
member and defining an interior space therebetween, the 23
battery package also including an open position allowing access 24
to the interior space; 25

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 27, 2011) and the Examiner’s Answer (“Ans.,” mailed July
21, 2011).
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batteries in the interior space; 1
at least one of the front member and the rear member 2
including support structure for supporting the batteries in the 3
interior space; 4
the rear member including a foot allowing the battery 5
package to stand substantially upright on a horizontal surface; 6
and 7
the front member and the rear member including aligned 8
openings; 9
a resealable closure including a rear pull tab connected to 10
the rear member and a front pull tab connected to the front 11
member, the rear pull tab and the front pull tab are proximate 12
each other, and the resealable closure maintains the closed 13
position until the front pull tab is removed; and 14
wherein the battery package can alternatively be 15
positioned on the horizontal surface and be hung on a rod by 16
extending the rod through the aligned openings for display 17
purposes. 18
19
REFERENCES 20
The Examiner relies upon the following prior art: 21
Wolfe US 5,333,729 Aug. 2, 1994 22
Samberg US 5,485,919 Jan. 23, 1996 23
Jacobus US 6,244,444 B1 Jun. 12, 2001 24
25
REJECTIONS ON APPEAL 26
Claim 24 stands rejected under 35 U.S.C. § 112, first paragraph, for 27
failing to comply with the written description requirement. 28
Claims 1-3, 5, 6, 8-17, and 19-24 stand rejected under 35 U.S.C. 29
§ 103(a) as being unpatentable over Samberg, Jacobus, and Wolfe. 30
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FINDINGS OF FACT 1
We find that the findings of fact (FF), which appear in the Analysis 2
below, are supported by at least a preponderance of the evidence. Ethicon, 3
Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 4
evidentiary standard for proceedings before the U.S. Patent and Trademark 5
Office). Additional facts may appear in the analysis. 6
Facts relating to Appellants’ disclosure 7
FF1. Appellants’ Specification states: “The first side wall 30 includes 8
a first side inwardly extending U-shaped channel section 46 defining the first 9
side stay member 42 and the second side wall 32 includes a second side 10
inwardly extending U-shaped channel section 48 defining the second side 11
stay member 44”. Spec. 5, ¶ [0018]. 12
Facts Related to the Prior Art 13
Jacobus 14
FF2. Jacobus discloses a package that has a lid “which is hinged to a 15
base, and which is reclosable after purchase and initial removal of batteries”. 16
Jacobus, col. 1, ll. 61-66. 17
FF3. Jacobus states: 18
What is needed is a multi-battery package which 19
can be supported on a retail peg for attractive point of 20
sale display while at the same time restraining a subset of 21
the batteries within the package to serve as a container 22
after it has been opened. 23
Emphasis added. Jacobus, col. 2, ll. 6-10. 24
FF4. Jacobus states: “The battery package of this invention has a 25
thermoformed thermoplastic clam shell container with a lid which snaps 26
closed on a battery containing body”. Jacobus, col. 2, ll. 14-16. 27
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FF5. Jacobus states: 1
A strip of adhesive tape may extend from the body onto the rear 2
surface of the lid to close the package during retail display. 3
After purchase, the tape is cut or broken, the card is removed 4
and discarded, and the lid is reclosable on the body to retain 5
unconsumed batteries for later use. 6
Jacobus, col. 2, ll. 26-31. 7
FF6. Jacobus states: “It is also an object of the present invention to 8
provide a reclosable battery package which has provision for mounting on a 9
peg within a retail environment”. Jacobus, col. 2, ll. 41-43. 10
FF7. Jacobus states: “The hinge 32 is generally D-shaped, and extends 11
from a peripheral flange 46 on the lid 34”. Jacobus, col. 3, ll. 45-46. 12
FF8. Jacobus states: “A pull tab 134 extends upwardly from the lid 13
cover wall 110, and provides a position for gripping the lid 84 and opening 14
the package”. Jacobus, col. 5, ll. 49-51. 15
FF9. Jacobus states “any conventional press fit or snaps fit closure 16
mechanisms may be employed, as well as one or more pull tabs disposed at 17
various locations.” Jacobus, col. 6, ll. 5-8. 18
Samberg 19
FF10. Samberg states: 20
Flanges 22 and 24 are shaped to form complimentary 21
fitting and interlocking ridges and grooves (not specifically 22
shown), so that the two halves 12 and 14 can be snapped 23
together to hold the package in its closed condition at least 24
temporarily for loading and assembly convenience. 25
Samberg, col. 6, ll. 53-57. 26
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FF11. Samberg states “namely package 10 can be hung from an 1
outwardly extending peg or stood upright on its feet 64, 66 as previously 2
described”. Samberg, col. 8, ll. 25-26. 3
FF12. Samberg states: 4
Foot 64 coacts with foot 66 formed in a similar location on 5
package half 14 to provide a stable base for package 10. This 6
permits package 10, if desired, to stand upright (as viewed in 7
FIG.1) on a retail shelf for display, thereby occupying a small 8
area on the shelf. 9
Samberg, col. 8, ll. 9-14. 10
11
ANALYSIS 12
Claim 24 is rejected under 35 U.S.C. § 112, first paragraph, for 13
failing to comply with the written description requirement. 14
We are not persuaded by Appellants’ argument that the Examiner 15
erred in finding that the original patent application, filed June 25, 2008, fails 16
to provide the required written description support for claim 24’s recitation 17
of “support structure . . . that solely support the batteries”. Appellants cite 18
only to Specification’s paragraphs [0016] and [0017] in contending that “the 19
support structure 24 is disclosed as being the only elements that support the 20
batteries 12 in one embodiment” (App. Br. 6). However, Specification’s 21
paragraphs [0016] and [0017] do not support Appellants’ contention. 22
What Specification’s paragraph [0017], lines 12-14 discloses is that: 23
“As illustrated in FIG. 3, a first side stay member 42 abuts against a first end 24
of the batteries 16 and a second side stay member 44 abuts against a second 25
end of the batteries 16” (Ans. 14). Therefore, we find Appellants’ 26
argument unpersuasive as it fails to point to any portion of the original 27
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specification which reasonably conveys possession of the claimed “support 1
structure. . . that solely support the batteries”. 2
“[T]he test for sufficiency [of the written description] is whether the 3
disclosure of the application relied upon reasonably conveys to those skilled 4
in the art that the inventor had possession of the claimed subject matter as of 5
the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 6
(Fed. Cir. 2010) (en banc) (citations omitted). “And while the description 7
requirement does not demand any particular form of disclosure, or that the 8
specification recite[s] the claimed invention in haec verba, a description that 9
merely renders the invention obvious does not satisfy the requirement.” Id. 10
at 1352 (internal citations omitted). 11
Obviousness of claims 1-3, 5, 6, 8-17, and 19-24 based on Samberg, 12
Jacobus and Wolfe. 13
We are persuaded by Appellants’ arguments that the Examiner erred 14
in rejecting claims 1-3, 5, 6, 8-17, and 19-24 under 35 U.S.C. § 103(a) as 15
being unpatentable over the combined teachings of Samberg, Jacobus, and 16
Wolfe. In particular, we agree with Appellants that the Examiner has failed 17
to establish a prima facie showing of obviousness by not clearly articulating 18
the reasons why the claimed invention would have been obvious in 19
combining Samberg, Jacobus, and Wolfe. 20
As Appellants point out, combining Wolfe “to provide for a package 21
that can be readily opened permitting the content to be removed and then 22
permitting the package to be easily re-closed to secure the contents” (App. 23
Br. 11) as argued by the Examiner (Ans. 13) adds nothing to Samberg that 24
“already has features for keeping the first half 12 and second half 14 of the 25
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package together (fitting and interlocking ridges and grooves in the flanges 1
22 and 24)” (App. Br. 11). The Supreme Court stated that: “[R]ejections on 2
obviousness grounds cannot be sustained by mere conclusory statements; 3
instead, there must be some articulated reasoning with some rational 4
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. 5
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting in re Kahn, 441 F.3d 977, 6
988 (Fed. Cir. 2006)). 7
Accordingly, we will not sustain the Examiner’s rejection of claims 1-8
3, 5, 6, 8-17, and 19-24 under 35 U.S.C. § 103(a) as being unpatentable over 9
the combined teachings of Samberg in view of Jacobus and Wolfe. 10
NEW GROUND OF REJECTION 11
Pursuant to our authority under 37 C.F.R. 41.50(b), we enter a NEW 12
GROUND OF REJECTION of independent claims 1, 13, and 24 under 35 13
U.S.C. § 103(a) as being unpatentable over Jacobus and Samberg. While we 14
have exercised our discretion under 37 C.F.R. 41.50(b) in rejecting 15
independent claims 1, 13, and 24, upon any further prosecution, the 16
Examiner should consider whether the following new ground applies to the 17
remainder of the claims. 18
We will take claim 1 as representative. 19
Section 103(a) forbids issuance of a patent when “the 20
differences between the subject matter sought to be patented 21
and the prior art are such that the subject matter as a whole 22
would have been obvious at the time the invention was made to 23
a person having ordinary skill in the art to which said subject 24
matter pertains.” 25
KSR, 550 U.S. at 406. It is well established that ordinary creativity is 26
presumed on the part of one of ordinary skill in the art. Id. at 421(“A 27
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person of ordinary skill is also a person of ordinary creativity, not an 1
automaton.”). 2
We find that Jacobus teaches a package, including a resealable battery 3
containing body (FF2, 4 and 6) with an interior space for supporting 4
batteries (FF3) which can be positioned on a horizontal surface or hung on a 5
rod (FF6) that includes front and rear members connected by a pivot hinge 6
(FF7). The battery package of Jacobus also has a removable front tab (FF5) 7
and pull tabs (FF8 and 9) for opening the package to retrieve batteries. 8
Samberg teaches a package including a reclosable container (FF10) having a 9
foot on a rear member to allow the container to stand upright on a horizontal 10
surface as well as aligned openings to hang the container on a rod (FF11 and 11
12). 12
We find that it would be obvious to one of ordinary skill in the art to 13
modify Jacobus to include a foot for upright support and aligned openings in 14
the front and rear members as taught by Samberg as such would be nothing 15
more than the simple substitution of one known element for another to yield 16
the predictable result of positioning the battery package of Jacobus on a 17
horizontal surface or a peg. See KSR, 550 U.S. at 416 (“when a patent 18
claims a structure already known in the prior art that is altered by the mere 19
substitution of one element for another known in the field, the combination 20
must do more than yield a predictable result.” (Citation omitted)). 21
DECISION 22
The Examiner’s decision to reject claim 24 under 35 U.S.C. 23
§ 112, first paragraph, is AFFIRMED. 24
The Examiner’s decision to reject claims 1-3, 5, 6, 8-17, and 19-24 as 25
being obvious over Samberg, Jacobus, and Wolfe is REVERSED. 26
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We enter a new ground of rejection of independent claims 1, 13, and 1
24 under 35 U.S.C. §103 (a) as being obvious over Jacobus and Samberg. 2
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides 3
Appellants may file a single request for rehearing within two months from 4
the date of the original decision of the Board.” 5
This decision contains a new ground of rejection pursuant to 37 6
C.F.R. §41.50(b). Section 41.50(b) provides: “A new ground of rejection 7
pursuant to this paragraph shall not be considered final for judicial review.” 8
Section 41.50(b) also provides that Appellants, WITHIN TWO 9
MONTHS FROM THE DATE OF THE DECISION: 10
must exercise one of the following two options with respect to 11
the new ground of rejection to avoid termination of the appeal 12
as to the rejected claims: 13
(1) Reopen prosecution. Submit an appropriate amendment of 14
the claims so rejected or new evidence relating to the claims so 15
rejected, or both, and have the matter reconsidered by the examiner, in 16
which event the proceeding will be remanded to the examiner . . . 17
(2) Request rehearing. Request that the proceeding be 18
reheard under § 41.52 by the Board upon the same record . . . 19
Should Appellants elect to prosecute further before the Examiner 20
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 21
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 22
the effective date of the affirmance will be deferred until the prosecution 23
before the Examiner concludes unless, as a mere incident to the limited 24
prosecution, the affirmed rejection is overcome. 25
If Appellants elect prosecution before the Examiner and this does not 26
result in allowance of the application, abandonment or a second appeal, this 27
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case should be returned to the Patent Trial and Appeal Board for final action 1
on the affirmed rejection, including any timely request for rehearing thereof. 2
No time period for taking any subsequent action in connection with 3
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 4
§ 1.136(a) (1)(iv). 5
6
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b). 7
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