Ex Parte SchusterDownload PDFPatent Trial and Appeal BoardApr 12, 201310575997 (P.T.A.B. Apr. 12, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD L. SCHUSTER ____________________ Appeal 2010-009477 Application 10/575,997 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BENJAMIN D. M. WOOD and BRADFORD E. KILE, Administrative Patent Judges. KILE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Richard L. Schuster (Appellant) filed a Request for Rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated March 21, 2013, of our decision mailed February 1, 2013 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s rejections of claims 4, 5, 7-20, 36-39 and 41-46. Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. See 37 C.F.R. § 41.52(a)(1) (2011). Appeal 2010-009477 Application 10/575,997 2 OPINION Appellant’s Request is predicated on the assertion that the Board has misapprehended Appellant’s “argument that the proposed modification would impair the concertina folding of Brown.” Request at 2. Appellant’s Request, predicated on the above assertion, is discussed under three subheadings which parallel arguments Appellant made in Appellant’s initial Appeal Brief: (A) Brown cannot be modified as proposed without destroying its intended functionality, (B) no motivation exists to modify Brown or combine the art as proposed and (C) a prima facie case of obviousness has not been established. Request at 2-4; App. Br. 10-20 and Reply Br. 2-5. A. Brown Cannot Be Modified as Proposed Without Destroying its Intended Functionality. Appellant asserts that the Board overlooked the proposed modification of adding a panel of reinforcement with an enlarged handhold aperture to the Brown handhold would change the operation of Brown because Brown teaches, “[r]esponsive to subsequent application of extrinsic lifting forces at the handhold, each of the zones of weakness 18 is torn generally upward from the corresponding end of the score 15 towards the glue line 6, to facilitate the formation of an enlarged opening and a corresponding nascent, relatively narrower flap 3b, from intermediate between the glue line 6 and the intermediate score lines 7, 15.” Request at 3 (quoting from Brown, col. 6, ll. 33-40, emphasis Appellant’s). Contrary to Appellant’s assertion, the Board did not overlook this argument regarding the operation of Brown. Rather, our Decision explains that the proposed modification would not change the operation of Brown because Wilson’s hand apertures (handle openings 60) may be enlarged to fit Appeal 2010-009477 Application 10/575,997 3 around the periphery of the Brown handhold apertures so that Brown’s concertina folding is not impaired. Decision at 8-9. Appellant’s construct fails to take into consideration that if one of ordinary skill in the art thought it necessary or desirable to reinforce the sidewall of the paperboard container around a handhold, as taught by Wilson, an upper portion of an enlarged handhold opening of the inserted reinforcement layer would logically lie along glue line 6 of Brown to permit concertina folding of the Brown flaps as taught by the Brown patent. It is only common sense that one of ordinary skill in the art would apply the teachings of Wilson in a manner that would be consistent with the structure and function of Brown and not to interfere or destroy the operating concertina structure of Brown. As the Supreme Court reminded us in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) “[a] person of ordinary skill [in the art] is also a person of ordinary creativity, not an automaton.” Upon deciding to reinforce the handhold of Brown with an insert, as taught by Wilson, to enhance the strength of the Brown handhold, one of ordinary skill in the art would logically position the upper edge of the handhold insert along the Brown glue line to be compatible with the structure and intended function of Brown and not in conflict with it. Appellant also argues that Brown’s handle teaches away from the handle of the present invention, because adding a third layer to Brown would reinforce the handle and prevent the tearing of zones of weakness 18 up to glue line 6 which Brown discloses is necessary to form the flap 3b and provide a handhold with a “comfortable resilient feel”. Request at 3 (citing Brown, col. 6, ll. 51-54; see also col. 2, ll. 43-61). Appeal 2010-009477 Application 10/575,997 4 Appellant did not make this teaching away argument in either the Appeal or Reply Brief. A new argument in a request for rehearing, is not properly before the Board and will not be considered. See In re Schreiber, 128 F3d 1473, 1479 (Fed. Cir. 1997); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir 1998); see also 37 C.F.R. § 41.52(a)(1). B. No Motivation Exists to Modify Brown or To Combine the Art as Proposed. Appellant contends that overlooking the operation of the Brown carton led to the Board’s erroneous conclusion that Brown and Wilson could be combined as proposed. Request at 3. According to Appellant, because the Brown and Wilson patents are not operably compatible there is no motivation to combine them. Request at 3-4. This argument is premised on the assertion that the Board overlooked the impairment of Brown’s operation caused by the proposed modification. However, as explained supra, the Board did not overlook this alleged impairment. C. A Prima Facie Case of Obviousness Has Not Been Established. Appellant’s assertion with respect to a prima facie case is predicated on an argument that combining the Wilson panel insert with an enlarged handhold with the Brown paperboard box handhold to provide enhanced strength would change the principle of operation of the Brown patent. Request at 4. We do not agree. As we explain in section A., supra, the Board did not overlook Appellant’s argument regarding Brown’s operation. Appeal 2010-009477 Application 10/575,997 5 DECISION Appellant’s Request, having been duly considered, and finding no matters overlooked or misapprehended, we deny Appellant’s Request. 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) (2011). DENIED hh Copy with citationCopy as parenthetical citation