Matthews, Giles Frederick. et al.

Patent Trials and Appeals Board

Feb 4, 2020

14512843 - (D) (P.T.A.B. Feb. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/512,843 10/13/2014 Giles Frederick Matthews 740613 1160
23460 7590 02/04/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GILES FREDERICK MATTHEWS,
NATHANAEL ANDREW HUNT, and WARWICK JAMES BROWN
____________

Appeal 2019-004073
Application 14/512,843
Technology Center 3700
____________

Before WILLIAM A. CAPP, RICHARD H. MARSCHALL, and
BRENT M. DOUGAL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3, 4, and 6–11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies CA Acquisitions, LLC as the real
party in interest. Appeal Br. 1.
Appeal 2019-004073
Application 14/512,843
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THE INVENTION
Appellant’s invention is a packaging device for hanging and
displaying retail goods such as car floor mats. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A packaging container for a car floor mat
including:
a main body;
at least one post member extending from the main body for
supporting the car floor mat;
a securing arrangement releasably secured to the post
member, the car floor mat being supported and retained on the
post member when the securing arrangement is secured to the
post member;
wherein the securing arrangement includes a catch
integrally formed together with and supported on the main body
by a hinged connection, the catch including a ring member for
encircling the post member when engaging the post member,
the ring member having an inwardly directed engagement
member for engaging an overbite provided on the post member
when the catch is hinged towards and interlocks with the post
member, wherein the engagement member includes a tooth
extending inwardly within the ring member and located at an
outermost position relative to the hinged connection, and
wherein the tooth is displaceable away from the location of the
hinged connection by deformation of the ring member into an
elongate shape having an elongate axis extending though the
hinged connection and the tooth respectively; and
first and second discrete finger rests positioned on
diametrically opposed sides of the ring member and arranged
on opposite sides of the tooth.

Appeal 2019-004073
Application 14/512,843
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Hutchinson ’938 US 5,075,938 Dec. 31, 1991
Hutchinson ’139 US 5,199,139 Apr. 6, 1993
Cheng US 6,330,736 B1 Dec. 18, 2001
Karmeli US 6,584,656 B1 July 1, 2003
Fiumefreddo US 9,301,625 B2 Apr. 5, 2016
The following rejections are before us for review:
1. Claims 1 and 6–9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fiumefreddo, Hutchinson ’139, and Karmeli.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fiumefreddo, Hutchinson ’139, Karmeli, and Hutchison ’938.
3. Claims 4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fiumefreddo, Hutchinson ’139, and Cheng.
OPINION
Unpatentability of Claims 1 and 6–9
over Fiumefreddo, Hutchinson ’139, and Karmeli
Claim 1
The Examiner finds that Fiumefreddo discloses the invention
substantially as claimed, except for a catch that includes a ring member for
encircling a post member and that includes a tooth and overbite engagement
arrangement as claimed, for which the Examiner relies on Hutchinson ’139.
Final Action 3–4. The Examiner further finds that Fiumefreddo lacks finger
rests that are discrete, for which the Examiner relies on Karmeli. Id. 4–5.
The Examiner concedes that the prior art fails to disclose the claimed
Appeal 2019-004073
Application 14/512,843
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arrangement of a tooth disposed relative to a hinge, but takes the position
that modifying the prior art to conform to the claimed arrangement entails no
more than a simple rearrangement of parts involving only routine skill in the
art. Id. at 4. The Examiner relies on In re Japikse, 181 F.2d 1019 (CCPA
1950), as support for the rearrangement of parts determination.
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
The patent applicant may then attack the Examiner’s prima facie
determination as improperly made out, or the applicant may present
objective evidence tending to support a conclusion of nonobviousness. In re
Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). However, where the
Examiner fails to set forth a prima facie case of obviousness, the burden to
rebut the Examiner’s findings and conclusion never shifts to Appellant. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Here, the Examiner did not make out a prima facie case of
obviousness, because the Japikse decision, which is crucial to the
Examiner’s case, does not support the Examiner’s position. Japikse
involved a hydraulic power press. Japikse, 181 F.2d at 1031. The Japikse
inventor’s claim 3 read on a certain prior art reference (Cannon), except for
relocating the position of the starting switch. Id. The Court held that there
is no invention in relocating the starting switch to a different position, “since
operation of the device would not thereby be modified.” Id. (emphasis
added). In the instant case, it is clear that the relative locations of: (1) the
post, including the location of the overbite thereon, (2) the catch, including a
ring member with a tooth thereon, (3) the hinge; and (4) the finger rests are
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Application 14/512,843
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all critical to the operation of Appellant’s securing device. See Figs. 2– 3.
In such regard, we note that the claim explicitly recites that – “the tooth is
displaceable away from the location of the hinged connection by
deformation of the ring member into an elongate shape.” Claims App.,
claim 1. Under the circumstances, it cannot be said that “operation of the
device would not thereby be modified” if the various components of the
securing arrangement were relocated to different positions relative to each
other. Japikse, 181 F.2d at 1031.
Inasmuch as the Examiner failed to make out a prima facie case of
unpatentability, we need not address Appellants’ arguments and evidence.
We do not sustain the rejection of claim 1.
Claims 6–9
Claims 6–9 depend from claim 1. Claims App. The Examiner’s
rejection of these claims suffers from the same infirmity that we have
discussed above with respect to claim 1. For the same reasons, we do not
sustain the rejection of claims 6–9.
Unpatentability of Claim 3
over Fiumefreddo, Hutchinson ’139, Karmeli, Hutchinson ’938
Claim 3 depends from claim 1 and adds the limitations:
wherein the post member includes a tapered surface at a free
end of the post member for engaging the ring member when the
catch initially comes into contact with the post member, and
wherein the overbite is located at the free end of the post
member immediately adjacent the tapered surface.
Claims App. The Examiner relies on Hutchinson ’938 for the tapered
surface limitation. Final Action 6. Otherwise, the rejection relies on the
same inappropriate application of Japikse that caused us not to sustain the
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Application 14/512,843
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rejection of claim 1. Id. at 5. For the same reasons given above with respect
to claim 1, we do not sustain the rejection of claim 3.
Unpatentability of Claims 4, 10, and 11
over Fiumefreddo, Hutchinson ’139, and Cheng
Claim 4 is an independent claim that is substantially similar in scope
to claim 1 and claims 10 and 11 depend directly from claim 4. Claims App.
The Examiner’s rejection relies on the same inappropriate application of
Japikse that caused us not to sustain the rejection of claim 1. Id. at 5. For
the same reasons given above with respect to claim 1, we do not sustain the
rejection of claims 4, 10, and 11.
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s) Aff’d Rev’d
1, 6-9 103 Fiumefreddo, Hutchinson ’139,
Karmeli
1, 6-9
3 103 Fiumefreddo, Hutchinson ’139,
Karmeli, Hutchinson ’938
3
4, 10, 11 103 Fiumefreddo, Hutchinson ’139,
Cheng
4, 10, 11
Overall
Outcome
1, 3, 4,
6-11

REVERSED