Ex Parte Baker

Board of Patent Appeals and Interferences

Jul 27, 2007

10462972 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL J. BAKER
____________

Appeal 2007-1593
Application 10/462,972
Technology Center 3700
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Decided: July 27, 2007
____________

Before WILLIAM F. PATE, III, HUBERT C. LORIN, and JENNIFER D.
BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paul J. Baker (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-11, 13, 14, and 21-23. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2007-1593
Application 10/462,972

Appellant’s claimed invention is directed to “a sample container for
relatively small objects configured to secure one or more cards, such as
business cards, onto an interior or exterior surface of the container”
(Specification [0002]). Claims 1 and 23 are the only independent claims
pending in this application and read as follows:
1. A container for storing, visually displaying and
dispensing small objects, the container comprising
a lid and a hollow base;
the base comprising a plurality of sides and
a bottom forming an inner volume; and
the lid comprising an inner surface and an
outer surface and a plurality of card securing
members, configured to secure one or more cards
to a surface of the container, wherein the container
is formed from a clear plastic which allows the
small objects to be visible without opening the
container.
23. A method of providing a visually apparent
sample of a product in a container to a recipient
with a business card integrally secured on the
container, said method comprising:
distributing to the recipient a clear plastic
container filled with small objects that are visible
without opening the container, the container
comprising a lid and hollow base, the base
comprising a plurality of sides and a bottom
forming an inner volume; and the lid comprising
an inner surface and outer surface and a plurality
of card securing members that secure the business
card to the container.
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Application 10/462,972

The Examiner relies upon the following as evidence of
unpatentability:
Alden US 3,415,407 Dec. 10, 1968
Schoberg US 4,790,434 Dec. 13, 1988
Perrin US 5,823,353 Oct. 20, 1998
Masoud US 6,240,989 B1 Jun. 05, 2001
Hobbs US 6,264,032 B1 Jul. 24, 2001
Danielson US 6,341,710 B1 Jan. 29, 2002
Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of:
(1) claims 1-9, 11, 13, 14, 21, and 23 as unpatentable over Alden in view
of Perrin or Hobbs,
(2) claim 10 as unpatentable over Alden in view of Perrin or Hobbs,
further in view of Masoud,
(3) claim 22 as unpatentable over Alden in view of Perrin or Hobbs,
further in view of Schoberg1,
(4) claims 1-4, 6, 7, 13, 14, 21, and 23 as unpatentable over Danielson in
view of Alden and Perrin or Hobbs,
(5) claim 22 as unpatentable over Danielson in view of Alden and Perrin
or Hobbs, further in view of Schoberg,
(6) claims 1-11, 13, 14, 21, and 23 as unpatentable over Masoud in view
of Alden and Hobbs or Perrin, and
(7) claim 22 as unpatentable over Masoud in view of Alden and Hobbs
or Perrin, further in view of Schoberg.

1 The Examiner cited Schoberg to support the official notice taken in the
Final Rejection (mailed May 27, 2005). See Office Communication mailed
December 5, 2005 and Answer 10, 12, and 14, for example.
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Application 10/462,972

The Examiner provides reasoning in support of the rejections in the
Answer (mailed August 11, 2006). Appellant presents opposing arguments
in the Appeal Brief (filed March 8, 2006), Reply Brief (filed July 3, 2006),
and Supplemental Reply Brief (filed October 16, 2006). Appellant’s counsel
presented oral argument on July 12, 2007.

OPINION
Rejections (1) through (3)
An issue pertinent to all of rejections (1) through (3) is whether it
would have been obvious to modify Alden’s mailer to make it transparent.
The Examiner contends that it would have been obvious to make Alden’s
mailer transparent to allow the user to view the contents within the mailer
without opening it (Answer 3). Appellant, on the other hand, argues that
modification to make Alden’s mailer transparent “would fly in the face of
Alden’s described use” and that “one skilled in the art would not
contemplate a clear container for a mailer since it is well understood that a
mailer would be opaque so not to disclose the contents thereof during
shipping “(Appeal Br. 4). Appellant further argues that making Alden’s
container, disclosed for use as a mailer for magnetic recording tapes (Alden,
col. 1, ll. 13-15), would destroy Alden, since “it is well known that magnetic
tape should be protected from exposure to ultra-violet light”2 (Reply Br. 2).

2 Appellant indicates that this assertion regarding protection of magnetic
tapes from ultraviolet light “has been consistently maintained by applicant”
and ignored by the Examiner (Reply Br. 2). After having reviewed the
electronic record of this application, however, we cannot find any earlier
instance of this assertion.
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Application 10/462,972

Alden discloses a mailer comprising a container 11 with a cover 12
connected to the container by a hinge 13. The container 11 and cover 12 are
provided with latching parts consisting of two recesses 15 on the container
and cooperating detents 16 on the cover. (Alden, col. 2, ll. 52-63.) Alden’s
cover 12 comprises a large sidewall3 21 including a central depressed
rectangular panel 22 discontinued at extreme corners of the rectangle along
diagonal lines 23. The sidewall 21 also includes vertically displaced, thin
flat retaining flanges 24 substantially coextensive with the discontinued
portions of the rectangle of panel 22. An address card 20 is inserted into the
spacing between the depressed sidewall 21 and retaining flanges 24. A
raised rim 25 provides a rectangular border around sidewall 21 inside which
the address card 20 is typically safe from snagging. (Alden, col. 3, ll. 6-31.)
The retaining flanges permit the address card to be non-adhesively and thus
removably secured to the cover so that the mailer can be used in hundreds or
more mail shipments without the problem of adhesive address labels
building up and eventually requiring removal (Alden, col. 1, ll. 14-15 and
35-55). Alden teaches a flexible plastic, such as isotactic polypropylene
(Alden, col. 3, ll. 37-40), as the material for the mailer. Alden is silent as to
transparency or opacity of the mailer.
Perrin and Hobbs evidence that it was well known at the time of
Appellant’s invention to make containers transparent to permit the contents
thereof to be seen without opening the container (Perrin, col. 4, ll. 16-19 and
Hobbs, col. 2, ll. 10-15). Neither Perrin nor Hobbs is specifically directed to
a mailer, much less a mailer for magnetic tapes.

3 As illustrated in Figs. 1 and 2, Alden’s “sidewall 21” in fact appears to be
what would conventionally be considered the top surface of the cover.
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Application 10/462,972

The Examiner’s position that, because Perrin’s business card holder is
capable of being mailed, it is appropriate to consider it a “mailer” (Answer
7) is not well taken. Appellant’s argument that it would not have been
obvious to combine Alden with Hobbs because Hobbs is not from
Appellant’s field of endeavor (Appeal Br. 6), however, is unsound. The
combinability of Alden with either Perrin or Hobbs does not turn on whether
Perrin or Hobbs is a “mailer” or whether either of them is from Appellant’s
field of endeavor.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the 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.” KSR
Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id., at 1740, 82 USPQ2d at 1396. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
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Further, when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, an implicit motivation to combine exists even absent any hint of
suggestion in the references themselves. “In such situations, the proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
Perrin and Hobbs establish that the use of transparency for containers
for the purpose of permitting the contents of the container to be seen whether
the container is open or closed was known at the time of Appellant’s
invention. The advantage of transparency is both notorious and technology-
independent. One of ordinary skill in the art at the time of Appellant’s
invention would have readily appreciated that transparency of Alden’s
mailer container and cover would likewise permit the contents of the
container to be seen without opening the container. Further, with increased
concerns about security in the mailing and shipping industries over the past
decade or so, one of ordinary skill in the art would have recognized that
transparency would permit postal and security inspectors to inspect the
contents of a mailer without having to open the mailer, thereby rendering the
mailer easier to use and less susceptible to mutilation by well-meaning
inspectors. See Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d
1157, 1162, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (“[O]ne of ordinary
skill in the art . . . would have found it obvious to combine the Bevan device
with the SSR to update it using modern electronic components in order to
gain the commonly understood benefits of such adaptation, such as
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Application 10/462,972

decreased size, increased reliability, simplified operation, and reduced
cost.”)
Appellant’s argument that making Alden’s mailer transparent would
render it unsuitable for its intended function, namely, shipping magnetic
tapes, because magnetic tapes must be protected from ultraviolet light, is not
persuasive. First, Appellant has not presented any evidence to support the
assertion that it is well known that magnetic tapes must be protected from
ultraviolet light. Appellant's attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646
(CCPA 1974). Further, even assuming Appellant is correct that the
magnetic tapes discussed by Alden must be protected from ultraviolet light,
Appellant has not asserted, much less proven, that selection of a suitable
material for Alden’s mailer which is both transparent for purposes of
permitting viewing therethrough and possessed of ultraviolet light shielding
characteristics would have been beyond the skill of one of ordinary skill in
the art at the time of Appellant’s invention.4
For the reasons set forth above, we conclude that Appellant has failed
to demonstrate the Examiner erred in determining that it would have been
obvious to modify Alden’s mailer to make it transparent. Accordingly, we
sustain rejection (1) as to claims 1-9, 11, 13, 14, and 21. Appellant’s only
argument with respect to rejection (2) is that Masoud does not overcome the
deficiencies of the combination of Alden with Perrin or Hobbs (Appeal Br.
7). Having found Appellant’s arguments as to the deficiencies of this

4 We note, in this regard, that ultraviolet light-filtering transparent plastics
for use in eyeglasses, for example, are notoriously well known.
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Application 10/462,972

combination themselves deficient in demonstrating error on the part of the
Examiner, we sustain rejection (2) as well.
With respect to rejection (1) as to claim 23, Appellant merely argues
that “the Examiner has completely failed to point out where the elements of
method claim 23 are found in the combination of Alden with Perrin or
Hobbs” (Appeal Br. 7). The Examiner responds to this argument by
pointing out that “the only method step [of claim 23] is to distribute to the
recipient a clear plastic container filled with small objects that are visible
without opening the container” and proceeding to clarify where the elements
of that step are found in Alden (Answer 9). To the extent that Appellant’s
arguments that the Examiner has ignored the claim requirements of small
objects present in the container and a business card secured to the container
and that the Examiner has not shown where the step of distributing to a
recipient is found in the prior art (Reply Br. 4) apply to rejection (1), such
arguments are not persuasive for the reasons that follow. Rejection (1) is
sustained as to claim 23.
The Examiner has addressed the “small objects” limitation from two
angles. First, the Examiner points out that “the business cards within the
container are considered small objects” (Answer 9). While this may be true,
it overlooks the fact that Alden does not teach filling the container with
business cards. Although Perrin teaches a container filled with business
cards, the Examiner has not made a determination that it would have been
obvious to combine that teaching of Perrin with Alden by placing business
cards, rather than a magnetic tape, in Alden’s mailer. The Examiner’s
alternative position, however, is well taken. The Examiner’s alternative
position is that, “[m]oreover, Alden discussed providing mailers for small
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Application 10/462,972

reels or cartridges, which are the small object as claimed” (Answer 9).
Alden teaches storage of plural objects or “reels” in the mailer (Alden, col.
2, ll. 57-58). Appellant has not explicitly defined the term “small” in the
Specification. We therefore give the term its ordinary and customary
meaning and, in so doing, we find the magnetic tape reels discussed by
Alden to be “small.”
As for the limitation of a business card being secured to the container,
Alden discloses an address card 20 non-adhesively secured to the cover 12.
An address card is a card having contact information, such as a name and
address, printed thereon and is thus a “business card.” Furthermore, the
printed contents of the claimed “business card” cannot distinguish the
invention from the prior art in terms of patentability. See In re Gulack, 703
F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not patentably distinguish the invention from the prior art.)
Alden also discloses use of the disclosed container for mail shipments
of the magnetic tapes therein and, as such, meets the step of distributing, in
the sense of giving out or delivering (see Webster’s Third New International
Dictionary, Unabridged 660 (G &C Merriam Co. 1961), the container with
the magnetic reels contained therein to the recipient.
Rejection (3) is also sustained. As evidenced by Schoberg, textured
surfaces on the base and lid of data cartridge cases “for aesthetic appeal if
desired” was well known in the art at the time of Appellant’s invention
(Schoberg, col. 3, ll. 66-68). Appellant argues that the aesthetic texturing
described on the base and lid of Schoberg is on the outer surfaces of base 18
and lid 30 (Appeal Br. 8), but Schoberg does not so limit the description.
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Application 10/462,972

One of ordinary skill in the art at the time of Appellant’s invention would
have recognized that the use of texturing for aesthetic appeal would improve
Alden’s mailer in the same way as Schoberg and, further, would have been
fully capable of applying such texturing on any desired surface of Alden’s
mailer with predictable results. Accordingly, the use of texturing on any
surface, including an inner surface of container 11, amounts to nothing more
than the predictable use of prior art elements according to their established
functions and thus would have been obvious.
Rejections (4) and (5)
In rejecting claims 1-4, 6, 7, 13, 14, 21, and 23, the Examiner starts
with the receptacle of Danielson, disclosed for containing small totable
products, such as compact batteries, vitamins, pharmaceuticals, keys, etc.
(Danielson, col. 1, ll. 14-20) and determines that it would have been obvious
to provide card securing means, of the type taught by Alden, on the outside
of the receptacle and to make the receptacle transparent to permit the
products contained inside to be viewed without opening the receptacle
(Answer 4-5 and 11). Appellant argues that the references provide no
suggestion to include card securing means on Danielson’s receptacle
(Appeal Br. 9) or suggestion to make Danielson’s receptacle transparent
(Appeal Br. 9-10). Accordingly, the issue presented with respect to rejection
(4) is whether Appellant has demonstrated the Examiner erred in
determining these modifications would have been obvious to one of ordinary
skill in the art.
As noted above, while there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness, a
specific teaching or suggestion for the modification need not be expressly
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Application 10/462,972

found in the references, as we “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l., 127 S.Ct. at 1741, 82 USPQ2d at 1396. As noted by the Examiner
(Answer 11), Alden evidences that a label or card may be secured on the
exterior surface of a container for shipping or for identification. We further
point out, as discussed above, that Alden teaches that providing a non-
adhesive securement of the identification/address label offers the advantage
that the container can be used hundreds of times or more without the
problem of adhesive labels building up and eventually requiring removal
(Alden, col., ll. 14-15 and 35-55). One of ordinary skill in the art at the time
of Appellant’s invention would have appreciated, first, that a non-adhesive,
reusable label system identifying the owner or recipient of the small totable
products, such as vitamins or pharmaceuticals, or the identity of the products
themselves, to prevent a mixup with the vitamins or drugs of others, would
be desirable and, further, that such a label system as taught by Alden could
be easily implemented on Danielson’s container to permit subsequent use by
other owners or recipients or for different items or drugs for subsequent
illnesses with predictable results. We therefore conclude that providing card
securing means on the receptacle of Danielson is nothing more than the
predictable use of prior art elements according to their established functions
and, thus, would have been obvious to one of ordinary skill in the art.
As for making Danielson’s receptacle transparent, Perrin and Hobbs
establish that the use of transparency for containers for the purpose of
permitting the contents of the container to be seen whether the container is
open or closed was known at the time of Appellant’s invention. The
advantage of transparency is both notorious and technology-independent.
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One of ordinary skill in the art at the time of Appellant’s invention would
have readily appreciated that transparency of Danielson’s receptacle would
likewise permit the contents of the container to be seen without opening the
container, thereby permitting the user to easily inventory the contents and
thus making the receptacle easier to use.
In light of the above, Appellant’s arguments do not demonstrate error
on the part of the Examiner in determining that it would have been obvious
to provide a plurality of card securing members on Danielson’s receptacle
and to make Danielson’s receptacle transparent. Rejection (4) is sustained
as to claims 1-4, 6, 7, 13, 14, and 21.
With respect to rejection (4) as to claim 23, Appellant additionally
argues that the Examiner ignores the limitation in claim 23 that the container
is filled with small objects (Reply Br. 4) and that the Examiner has failed to
show where a step of distributing to a recipient is found in the prior art
(Reply Br. 4). The first of these arguments is belied by Danielson’s express
disclosure of use of the receptacle for small totable products (Danielson, col.
1, ll. 17-20). While the step of distributing a receptacle to a recipient is not
likewise expressly taught by Danielson, the preparation of a receptacle with
vitamins or pharmaceuticals in it, by a caregiver, parent or guardian, for
example, for another (the user) and distribution of such receptacle to such
user (the recipient) is a readily foreseeable use of Danielson’s receptacle and
thus would have been obvious to one of ordinary skill in the art. Rejection
(4) is sustained as to claim 23.
Our discussion above with respect to rejection (3) applies equally to
rejection (5). For the same reasons, we sustain rejection (5). Specifically,
the improvement of texturing for aesthetic purposes is technology-
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Application 10/462,972

independent and would similarly improve a receptacle for holding small
totable objects, such as the one disclosed by Danielson.
Rejections (6) and (7)
The issue to be decided with respect to rejection (6) is whether
Appellant has demonstrated the Examiner erred in determining it would
have been obvious to provide a plurality of card securing members on
Masoud’s business card holder (Appeal Br. 12). The Examiner contends it
would have been obvious to provide card securing members, as taught by
Alden, if not for mailing, then for identification purposes (Answer 13).
We find no express teaching in either Masoud or Alden of the use of
Alden’s card securing members (depressed panel 22 and retaining flanges
24) on a business card holder for mailing or identification purposes. As
discussed above, however, while there must be some articulated rationale to
support the legal conclusion of obviousness, a specific teaching or
suggestion for the modification need not be expressly found in the
references. Rather, we can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ. We start with the
presumption that one of ordinary skill in the art of business cards and
business card holders and distribution would have been aware of the
common commercial practice of customers ordering business cards
imprinted with personalized information and manufacturers shipping or
mailing such cards, along with any accessories therefore, to the customer.
Against such background, the concept of securing a mailing label or address
card to a surface of the card holder of Masoud to associate it with the
customer for whom it was intended in preparation for shipping the business
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cards and card holder to the customer would not have been a great leap for
one of ordinary skill in the art.5 Moreover,
[c]ommon sense teaches . . . that familiar items
may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle. . . . A
person of ordinary skill is also a person of ordinary
creativity, not an automaton.
KSR Int’l., 127 S.Ct. at 1742, 82 USPQ2d at 1397. In this instance, it would
have been readily apparent to one of ordinary skill in the art that a
personalized card, such as a business card or non-adhesive address label
system, as taught by Alden, would have other obvious uses beyond its
primary (disclosed) purpose as a mailing label and that one such use would
be identification of the recipient or owner of the container on which the card
is secured or identification of the contents therein. Moreover, the
implementation of a non-adhesive card label system of the type taught by
Alden on Masoud’s container would have involved merely providing a
depressed panel and retaining flanges on the lid 102 of Masoud’s card holder
and, thus, would not have been beyond the capabilities of one of ordinary
skill in the art. In light of the above, we conclude that the modification of
Masoud’s card holder to provide a plurality of card securing members on the
lid thereof is merely a predictable variation of Masoud’s card holder.

5 In this regard, we take official notice of the practice of attaching one copy
of the prepared business cards to the container delivered to the customer to
both associate the container with the customer and to permit immediate
inspection of the business card by the customer for accuracy.
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Consequently, Appellant’s argument does not demonstrate the Examiner
erred in determining that such a modification would have been obvious.
Rejection (6) is sustained as to claims 1-11, 13, 14, and 21.
With respect to rejection (6) as to claim 23, Appellant further argues
that “[t]he Examiner has not set forth with the required particularity how the
elements of the method claim are met by the combination of [the applied
references]” (Appeal Br. 12-13). The Examiner has explained how the
elements of the method step are met (Answer 12) and Appellant has not
specifically challenged that position. Appellant thus has failed to
demonstrate Examiner error in rejection (6) as applied to claim 23. The
rejection is sustained.
Finally, our discussion above with respect to rejection (5) applies
likewise to rejection (7). Specifically, the improvement of texturing for
aesthetic purposes is technology-independent and would similarly improve a
business card holder, such as the one disclosed by Masoud. Rejection (7) is
sustained.
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SUMMARY
The decision of the Examiner to reject claims 1-11, 13, 14, and 21-23
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) (2006).
AFFIRMED

vsh

FITZPATRICK, CELLA,
HARPER & SCINTO
30 ROCKEFELLER PLAZA
NEW YORK, NY 10112
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