Ex Parte Abergel

Board of Patent Appeals and Interferences

Feb 25, 2009

10698415 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALINE ABERGEL
____________

Appeal 2008-3779
Application 10/698,415
Technology Center 3700
____________

Decided: February 25, 20091
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Aline Abergel (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-16, 18 and 25-33. Claims 17 and
19-24 are canceled and claims 25-28 are withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b) (2002). An oral hearing was held
on February 12, 2009, with Christopher Bullard, Esq., appearing on behalf
of Appellant.
SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is to a device for packaging a product,
preferably a cosmetic product, having a support or base and a lid articulated
to the support or base. The support has a cavity containing the product. In
one claimed embodiment, the support and lid are articulated to each other by
an arrangement comprising a sticker forming a mirror, the sticker being
adhesively bonded to onto a face of the lid and onto one of the surfaces of
the support. (Appeal Br., Claims Appendix, claim 1). In another claimed
embodiment, the support and the lid are articulated to each other by an
arrangement comprising an adhesive sheet fixed onto one face of the lid and
onto one of the faces of the support. (Appeal Br., Claims Appendix, claim
16). This latter claimed embodiment also provides that the cavity containing
the product opens on both a first and second side of the support, and that the
adhesive sheet that articulates the lid to the support also closes off the
second opening of the cavity, and further that the portion of the adhesive
sheet covering the second opening directly faces a second side of the product
contained in the cavity. (Id.).
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Claims 1 and 16, reproduced below, are representative of the claimed
subject matter:
1. A device for packaging a product comprising:

a support having a flat overall shape and having
two faces, said support further including at least
one cavity that passes at least partially through said
support and which opens on a first face of said two
faces through a first opening, and wherein said
cavity contains a product;

a lid having a flat overall shape, and wherein said
lid is articulated to the support; and

wherein the support and the lid are articulated to
each other by an arrangement comprising a sticker
forming a mirror adhesively bonded onto a face of
the lid and onto one of the faces of the support.

16. A device for packaging a product comprising:

a support having two faces, said support further
including at least one cavity that passes through
said support and which opens on a first face of said
two faces through a first opening, wherein the
cavity opens on a second side of said two faces
through a second opening, and wherein said cavity
contains a product having a first side adjacent said
first opening and a second side adjacent said
second opening;

a lid, wherein said lid is articulated to the support;
and

wherein the support and the lid are articulated to
each other by an arrangement comprising an
adhesive sheet fixed onto one face of the lid and
onto one of the faces of the support, wherein the
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adhesive sheet closes off said second opening of
the cavity with a portion of said adhesive sheet
which covers said second opening directly facing
said second side of said product contained in said
cavity.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Matney US 4,469,226 Sep. 4, 1984
Coburn, Jr. US 4,491,389 Jan. 1, 1985
Parrotta US 4,890,872 Jan. 2, 1990
Destanque US 6,412,640 B1 Jul. 2, 2002
Kelly US 2004/0003825 A1 Jan. 8, 2004
Verespej US 7,025,220 B2 Apr. 11, 20062
Guiard3 WO 9715910 May 1, 1997

The Examiner has rejected:
(1) Claims 1-3, 8, 9, and 13-15 under 35 U.S.C. § 103(a) as being
unpatentable over Kelly in view of Coburn, Jr. (hereafter
“Coburn”) and Destanque;
(2) Claim 10 under 35 U.S.C. § 103(a) over Kelly in view of
Coburn and Destanque, and further in view of Guiard, Verespej
and Matney;
(3) Claims 11 and 12 under 35 U.S.C. § 103(a) over Kelly in view
of Coburn and Destanque, and further in view of Parrotta;

2 Previously published as US 2003/0159403 A1, on August 28, 2003.

3 Specific cites to the Guiard reference herein are to the English language
translation dated May 2008, of record.
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(4) Claims 7, 16, 18 and 33 under 35 U.S.C. § 103(a) over Kelly in
view of Guiard and Parrotta;
(5) Claims 4-6 and 29 under 35 U.S.C. § 103(a) over Kelly in view
of Guiard and Parrotta, and further in view of Coburn; and
(6) Claims 30-32 under 35 U.S.C. § 103(a) over Kelly in view of
Guiard, Parrotta, and Coburn, and further in view of Verespej
and Matney.
ISSUES
(A) The Examiner concluded that the combined teachings of
Kelly, Coburn, and Destanque render unpatentable a packaging
device having a lid and a support, the support having a cavity
therein, and a mirror sticker attached to a face of the lid and
support to articulate the lid and support relative to each other.
Appellant urges that none of the cited references
discloses a mirror sticker that provides a reflective surface as
well as being bonded onto a face of each of the lid and support,
and serves to articulate the lid and support relative to each
other.
The issue joined is: has Appellant demonstrated that the
Examiner erred in interpreting the teachings of the references,
and in combining the teachings in the manner done in reaching
the conclusion of unpatentability.
(B) The Examiner concluded that the combined teachings of
Kelly, Guiard and Parrotta renders unpatentable a packaging
device having a lid and a support, the support having a cavity
extending therethrough and open at both faces thereof, wherein
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an adhesive sheet is fixed onto a face of the lid and support to
articulate them relative to each other, and wherein the adhesive
sheet closes off one opening of the cavity and directly faces a
second side of a product contained in the cavity.
Appellant contends that the combination of the teachings
of these references do not render obvious a packaging device in
which an adhesive sheet covering an opening in a cavity
directly faces a second side of a product contained in the cavity.
The issue joined is: has Appellant demonstrated that the
Examiner erred in interpreting the teachings of the references,
and in combining the teachings in the manner done in reaching
the conclusion of unpatentability.
FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Kelly patent discloses a device for packaging a product that
includes a support having a flat overall shape, two faces, and at least one
cavity containing a product, the cavity being open on one of the faces, and a
lid articulated to the support. (Kelly, Fig. 1; p. 2, ¶[0018]).
FF 2. The Guiard reference discloses a first technique for fixing a
cosmetic product into a cavity in a package by force fitting the product into
the cavity. (Guiard, p. 8, l. 21).
FF 3. Kelly discloses that the product can be force fit into cavity 14a,
and be adhesively bonded to hinge base section 24a, as an alternative to
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bonding the product to base 14. (Kelly, p. 3, ¶[0027]). In that embodiment,
the cavity 14a would have no bottom surface, and the product would directly
contact the portion of the adhesive strip underlying the base.
FF 4. Guiard discloses two alternate embodiments as options for the
cavity in the support that will hold the cosmetic product, a cavity that
extends completely through the support to be open at both faces, and a
cavity that is a blind hole not open to the bottom face of the support.
(Guiard, p. 6, ll. 8-12).
FF 5. Hinge 24 in Kelly is disclosed as being adhesively bonded to
base 14 and lid 16, as well as, in one embodiment, to pan 12a. (Kelly, p. 2,
¶[0020]; p. 3, ¶[0027]).
FF 6. Kelly discloses that the cosmetic materials may be inserted
directly into cavities, without requiring the use of pans. (Kelly, p. 5,
¶[0036]).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int’l., 550 U.S. at ___, 127 S. Ct. at
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1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
"[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR
Int’l, 550 U.S. at __, 127 S.Ct. at 1740, citing United States v. Adams, 383
U.S. 39, 50-52.
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading limitations disclosed in the specification into the claim.
See, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05
(CCPA 1969).
ANALYSIS
Claims 1-3, 8, 9, and 13-15
Appellant argues these claims as a group, and we will treat claim 1 as
the representative claim of the group.
The Examiner relies on the Kelly patent as teaching a device for
packaging a product that includes a support having a flat overall shape, two
faces, and at least one cavity containing a product, the cavity being open on
one of the faces, and a lid articulated to the support. (Answer 3; FF 1). The
Examiner also asserts that Kelly discloses an arrangement comprising a
sticker 24 adhesively bonded to one of the faces of the lid and one of the
faces of the support. (Answer 3). The Examiner notes that Kelly does not
disclose that the sticker 24 forms a mirror. (Id.)
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The Examiner cites to Coburn as teaching the forming of a mirrored
sticker, and cites to Destanque as teaching the desirability of providing
multiple mirrored surfaces on a packaging device, including both internal
and external surfaces. (Answer 3-4). The conclusion reached by the
Examiner is that it would have been obvious, in view of these teachings, to
modify the Kelly structure to form the sticker 24 as a mirrored sticker, and,
once so modified, the mirrored sticker would be adhesively bonded onto a
face of the lid and onto one of the faces of the support and would serve to
articulate the lid and support to each other. (Answer 11-12).
Appellant counters that Coburn does not disclose its mirror being in
the form of a sticker (Appeal Br. 6), and further that none of the Kelly,
Coburn and Destanque patents discloses or suggests providing a mirrored
element that is capable of articulating a lid and a support relative to one
another. (Appeal Br. 8). Rather, Appellant contends, each of the three
patents discloses single mirrors on single faces. (Reply Br. 7).
We are persuaded that it was error to conclude that the combined
teachings of the Kelly, Coburn and Destanque patents would suggest to a
person of ordinary skill in the art to use a mirror element in a manner
whereby it would articulate a lid to a support. As pointed out by Appellant,
each of the three patents discloses single mirrors on single faces, with the
possibility that more than one mirrored surface could be provided on a single
package. None suggests providing a mirrored element capable of
articulating a lid and a support relative to one another, however. (Appeal Br.
7-8).
We will not sustain the rejection of claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Kelly in view of Coburn and Destanque. Similarly, we
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will not sustain the same rejection directed to claims 2, 3, 8, 9, and 13-15,
which depend from claim 1.
Claim 10
Claim 10, which depends from claim 1, is rejected under 35 U.S.C.
§ 103(a) over Kelly in view of Coburn and Destanque, and further in view of
Guiard, Verespej and Matney. Appellant presents no separate argument for
the patentability of this claim.
The Examiner has pointed to no teachings in the Guiard, Verespej and
Matney patents that overcome the deficiencies noted above with respect to
the Kelly, Coburn and Destanque disclosures, and we see none either.
The rejection of claim 10 will not be sustained.
Claims 11 and 12
Claims 11 and 12, which depend from claim 1, are rejected under
35 U.S.C. § 103(a) over Kelly in view of Coburn and Destanque, and further
in view of Parrotta. Appellant presents no separate argument for the
patentability of these claims.
The Examiner has pointed to no teachings in the Parrotta patent that
overcome the deficiencies noted above with respect to the Kelly, Coburn and
Destanque disclosures, and we see none either.
The rejection of claims 11 and 12 will not be sustained.
Claims 7, 16, 18 and 33
Appellant argues these claims as a group, and we will treat claim 16
as the representative claim of the group. Claims 7, 18 and 33 depend from
claim 16, and will stand or fall with that claim.
The Examiner again relies on the Kelly patent as teaching a device for
packaging a product that includes a support having a flat overall shape, two
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faces, and at least one cavity containing a product, the cavity being open on
one of the faces, and a lid articulated to the support. (Answer 6; FF 1). The
Examiner also asserts that Kelly discloses an arrangement comprising an
adhesive layer or sticker 24 adhesively bonded to one of the faces of the lid
and one of the faces of the support. (Answer 6). The Examiner notes that
Kelly does not disclose that the at least one cavity opens on both a first side
and a second side of the two faces. (Id.).
The Examiner cites to the Guiard reference as disclosing a packaging
device in the form of a support having a cavity containing a product, the
cavity passing through the support and opening on both faces of the support,
with an adhesive sheet closing off a second opening of the cavity, and
directly facing a second side of the product. (Answer 6, 13-14). The
Examiner further cites to the Parrotta patent as disclosing that it was known
in the packaging art to mount a cosmetic composition in a cavity backed
directly by an adhesive sheet. (Answer 7, 14). The Examiner concludes that
it would have been obvious to modify the Kelly packaging device to have a
cavity extending completely through the support, in view of Guiard, the
resulting structure thus having the Kelly adhesive sheet closing off a second
opening, and directly facing a second side of the product disposed in the
cavity. (Answer 6, 13). Parrotta is relied on as providing a teaching of
supporting a cosmetic product directly on an adhesive film, in the event that
the cosmetic product and surrounding pan disclosed in either Kelly or
Guiard is not interpreted as reading on the claimed “product”. (Answer 7,
14).
Appellant attempts to discredit the Examiner’s conclusion by
attacking the references individually, and by arguing that there is no
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motivation to combine the teachings of the references to arrive at the
claimed packaging device. (Appeal Br. 10-11). Appellant further argues
that, even with the proposed modification of Kelly, the combination does not
result in the claimed device. (Appeal Br. 11).
Appellant asserts that the Guiard packaging device does not include a
base and a lid, and that the adhesive fixation sheet 22 in Guiard that is fixed
to a surface of support 11 and retains the product (tray 18, compacted
powder 20) in the recess 16 is not also fixed to a face of a lid, because the
Guiard device fails to disclose a lid. (Appeal Br. 10). It is plainly apparent
that Guiard does not disclose a lid, just as it is plainly apparent that the
rejection is not founded on the teachings of Guiard alone. As noted above,
the Guiard reference is relied upon for its teaching of a cavity that extends
through the entire support to be open at both faces, in the assertion that it
would have been obvious to provide such a cavity in the support 14
disclosed in the Kelly device, which device does include a lid.
Appellant continues with a contention that a person of ordinary skill
in the art would not be motivated to modify the Kelly packaging device to
incorporate a cavity extending through to both opposing faces of the support.
First, we note that in the KSR case, the Supreme Court held that a rigid
application of a “teaching, suggestion, motivation” test was incompatible
with its precedent concerning obviousness. KSR Int’l., 398 U.S. at ___, 127
S.Ct. at 1734.
Second, Appellant attempts to establish a lack of motivation to
combine based upon an alleged distinction between the Kelly and Guiard
devices which does not exist. Appellant contends that, in Kelly, the product
is force fit into cavity 14a and may be adhesively bonded to the base 14 or
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the hinge base section 24a, whereas, in Guiard, “without the means
[adhesive fixation sheet] 22, the tray 18 could conceivably fall through the
second hole in [the] Guiard [device].” (Appeal Br. 10). The Guiard
reference discloses that a first technique for fixing the product in the cavity
is by force fitting the product into the cavity. (FF 2). So, in both devices,
the product is force fit into the cavity.
Further, the Kelly patent itself appears to suggest an embodiment in
which, like Guiard, the cavity extends completely through the base or
support. This is evidenced in the passage referred to by Appellant above. In
the case where the product in Kelly is force fit into cavity 14a, and is
adhesively bonded to hinge base section 24a (as opposed to the base 14), the
cavity 14a would have no bottom surface, and the product would directly
contact the portion of the adhesive strip underlying the base. (FF 3).
Beyond this apparent teaching in Kelly itself of the alternative use of a
cavity open at both surfaces, Guiard even more clearly identifies these two
alternatives as options for the cavity in the support that will hold the
cosmetic product. (FF 4). The use of one cavity configuration or the other
is thus shown by at least Guiard as being nothing more than a simple
substitution of one type of known cavity for another, with the obtention of
predictable results. KSR Int’l., 398 U.S. at ____, 127 S.Ct. at 1740.
Appellant’s argument that the combined teachings of the cited
references do not result in the claimed device also falls short of the mark.
Appellant contends that, in the resulting combination:
the cosmetic material 12 would still be separated
from the hinge 24 (which is not an adhesive sheet)
by the pan 12a. At best, the hinge 24 would cover
a second opening directly facing a bottom surface
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of the pan 12a, not the cosmetic material 12. Thus
the hinge 24 would not be an adhesive sheet which
covers a second opening directly facing a second
side of the product contained in the cavity, as
presently claimed.

Appeal Br. 11 (emphasis in original).
The principal contention here involves the interpretation of the claim
term, “product”. In the Kelly and Guiard references, the cosmetic material is
disclosed as preferably being held in a pan (Kelly) or in an aluminum tray
(Guiard). The emphasized portions of Appellant’s argument quoted above
indicate that Appellant contends that the pan or tray is not properly
considered a part of the claimed “product” (presumably only a cosmetic
material would be the product), and thus the adhesive sheet4 in the modified
Kelly device is not directly facing the product.
We are constrained, in cases before us, to give claim elements their
broadest reasonable interpretation, consistent with the specification, and the
scope of a claim cannot be narrowed by reading limitations disclosed in the
specification into the claim. In re Morris, 127 F.3d at 1054; In re Zletz, 893
F.2d at 321; In re Prater, 415 F.2d at 1404-05. Appellant, in urging us to
interpret the claimed “product” as being limited to a “cosmetic material” is
seeking to have us restrict claim 16 to an embodiment of the invention which
is not so limited by the claim language.

4 Appellant states, without any evidence or reasoning in support, that hinge
24 of Kelly is not an adhesive sheet. Hinge 24 is, however, adhesively
bonded to base 14 and lid 16, as well as, in one embodiment, to pan 12a.
(FF 5). We are not persuaded by Appellant’s unsupported assertion that
Kelly fails to disclose an adhesive sheet as claimed.

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Claim 16 calls for a “device for packaging a product”, and nowhere
else in the claim is the term “product” further limited or restricted. (Appeal
Br., Claims Appendix). The device in Kelly packages a “product”
preferably comprising a cosmetic material contained within a pan5, and,
similarly, the device in Guiard packages a “product” comprising a cosmetic
material contained in a tray. We decline to, and indeed cannot, narrow the
scope of claim 16 by interpreting it to be limited to the disclosed
embodiment in which the “product” consists solely of a cosmetic material.
Appellant has failed to establish that the Examiner erred in rejecting
claim 16 under 35 U.S.C. § 103(a) as unpatentable over Kelly in view of
Guiard and Parrotta. We will sustain the rejection of claim 16, as well as
that of claims 7, 18 and 33, which depend from claim 16 and are argued as
standing or falling therewith.
Claims 4-6 and 29
Claims 4-6 and 29, which depend from claim 16, are rejected under
35 U.S.C. § 103(a) over Kelly in view of Guiard and Parrotta, and further in
view of Coburn. Appellant presents no separate arguments for the
patentability of these claims, relying on the same arguments as presented for
claim 16.
Those arguments directed to claim 16 do not address the claim
elements set forth in claims 4-6 and 29, and are thus unpersuasive as to the
existence of any error in the rejection of these claims, as well.
The rejection of claims 4-6 and 29 will be sustained.
Claims 30-32

5 Kelly discloses, alternatively, that the cosmetic materials may be inserted
directly into cavities, without requiring the use of pans. (FF 6).
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Claims 30-32, which depend from claim 16, are rejected under 35
U.S.C. § 103(a) over Kelly in view of Guiard and Parrotta, and further in
view of Coburn, Verespej and Matney. Appellant presents no separate
argument for the patentability of these claims.
Those arguments directed to claim 16 do not address the claim
elements set forth in claim 30, and are thus unpersuasive as to the existence
of any error in the rejection of this claim, as well.
Claim 31 includes a recitation of “said make-up product”, whereas
claims 16, 29 and 30 from which claim 31 depends, recite (via language in
claim 16), only a “product”. Claim 32 depends from claim 31, and thus is
interpreted as also including the claim element, “said make-up product”.
While the term “make-up product” is arguably narrower in scope than
the term “product” discussed above with respect to claim 166, Appellant has
presented no evidence or reasoning that persuades us that it would be
unreasonable to interpret “make-up product” as being sufficiently broad to
encompass a cosmetic material contained within a pan or tray. Accordingly,
as with claim 16 above, we are not persuaded that error exists in the
rejection of claims 31 and 32
The rejection of claims 30-32 will be sustained.

CONCLUSION
Appellant has established that reversible error exists in the rejection of
claims 1-3 and 8-15 under 35 U.S.C. § 103(a). Appellant has not established

6 The term “said make-up product” also appears to lack proper antecedent
basis in the claims.
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that reversible error exists in the rejection of claims 4-7, 16, 18, and 29-33
under 35 U.S.C. § 103(a)
ORDER
The decision of the Examiner to reject claims 1-3 and 8-15 is
REVERSED. The decision of the Examiner to reject claims 4-7, 16, 18, and
29-33 is AFFIRMED.
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) (2008).

AFFIRMED-IN-PART

vsh

OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VIRGINIA 22314