Ex Parte Cohen

Patent Trial and Appeal Board

Aug 11, 2016

11547569 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111547,569 10/06/2006 Plutarco Cohen
86378 7590 08/15/2016
Pearne & Gordon LLP
1801East9th Street
Suite 1200
Cleveland, OH 44114-3108
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BUG-41433 1076
EXAMINER
BRADEN, SHAWNM
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PL UT ARCO COHEN
Appeal2014-007560
Application 11/547,569
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Plutarco Cohen ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 24, 27-36, 41--43, 51-53, 55,
56, 58, and 59. 1'2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant submits the real party in interest is FREE PACK NET GmbH.
Appeal Br. 1.
2 Claims 1-23, 25, 26, 37--40, 44--50, and 54 are canceled. Claim 57 is
withdrawn. Id. at 9-12.
Appeal2014-007560
Application 11/547,569
THE CLAIMED SUBJECT MATTER
Claim 24, reproduced below, is illustrative of the claimed subject
matter.
24. A package of returnable and reusable type, comprising:
- a plurality of confining elements mutually assembled in
a removable manner and defining a holding volume and having
at least a first interfacing surface for contacting an interfacing
surface of another package when two packages are (a) stacked,
(b) flanked, or ( c) stacked and flanked, the confining elements
being effective (a) to be assembled around an item to be
transported from a first location to a second location, (b) when
the item reaches the second location, to be disassembled from
around the item, and ( c) to be subsequently reassembled around
a second item to be transported from a third location to a fourth
location;
- grip means provided on said first interfacing surface, said
grip means defining a first directrix and a second directrix, said
first directrix comprising a first curvilinear stretch developing
along a first path, said second directrix comprising a second
curvilinear stretch developing along a second path, said first and
second stretches being side by side, said first and second paths
being (a) concentric circular paths or (b) concentric elliptic paths,
each stretch being defined by a series of individual engagement
protrusions which are separate from each other and which are
spaced apart along said stretch, each engagement protrusion
extending from said first interfacing surface, wherein the grip
means are effective to permit a pair of said packages to be
engaged via stacking or flanking and then to be lifted m
engagement together without slipping relative to each other.
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Appeal2014-007560
Application 11/547,569
REJECTIONS3
1) Claims 24, 27-29, 31-34, 36, 41-43, 51-53, 55, 58, and 59 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Flanders
(US 4,050,604, iss. Sept. 27, 1977) in view of Perez Carballo (US
2007/0122581 Al, pub. May 31, 2007).
2) Claims 30, 35, and 56 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flanders in view of Perez Carballo and Brink
(US 3,616,943, iss. Nov. 2, 1971).4
DISCUSSION
The Examiner finds that "Flanders discloses the invention
substantially as claimed" except for the "grip means provided on said first
interfacing surface" in independent claim 24. Final Act. 3--4. The Examiner
finds that Perez Carballo discloses the recited grip means and concludes it
would have been obvious "to add grip as taught by Perez Carballo to the
container of Flanders in order to keep the packages from sliding around."
Id. at 5.
Appellant contends that the Examiner's combination of Flanders and
Perez Carballo does not meet the limitation "wherein the grip means are
effective to permit a pair of said packages to be engaged via stacking or
flanking and then to be lifted in engagement together without slipping
3 The Examiner withdrew a rejection of all pending claims except claims 30,
35, and 36 under 35 U.S.C. 112, second paragraph as being indefinite. Ans.
2.
4 The Examiner included canceled claims 25 and 26 in the Office Action
Summary but did not include claims 30, 35, and 56 therein. Final Act. 1.
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Appeal2014-007560
Application 11/547,569
relative to each other." Appeal Br. 5. In support of this contention,
Appellant argues that neither reference discloses engaging packages with
each other through gripping means. Id. The Examiner responds that this
claim limitation is functional but the rejection meets the claim language
because "[a]dding grip to the same place on two or more packages would
mesh up." Ans. 4. For the following reasons, we do not sustain the
rejection.
We initially note that in certain circumstances functional language
may be used to add limitations to an apparatus claim. See K-2 Corp. v.
Salomon S.A., 191F.3d1356, 1363 (Fed. Cir. 1999); Wright Med. Tech.,
Inc. v. Osteonics Corp., 122 F.3d 1440, 1443--44 (Fed. Cir.
1997). Functional language adds a structural limitation to an apparatus
claim if the language describes something about the structure of the
apparatus rather than merely listing its intended or preferred uses. In this
case, the language deemed functional by the Examiner is more than a listing
of intended or preferred uses for the apparatus and the Examiner must show
that the limitation is satisfied by the proposed combination of Flanders and
Perez Caraballo.
The Examiner asserts in the Answer that grip can be added to the top
surface of Flanders' container and to a small overhang near the top and
bottom of the side walls of Flanders' container, but does not assert that grip
can be added to the bottom. See Ans. 4 (Examiner's annotations to Fig. I
and Fig. 3 of Flanders). The Examiner does not provide a rational basis for
the conclusion that grip means located on the top surface but not the bottom
surface of Flanders' container can provide the capability "to permit a pair of
said packages to be engaged via stacking." With respect to the small
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Application 11/547,569
overhangs near the top and bottom of the side walls of Flanders' container,
claim 24 recites that grip means is provided on a "first interfacing surface."
The interfacing surface is recited in claim 24 as part of "a plurality of
confining elements ... defining a holding volume." Flanders' holding
volume is bordered by lid 28, floor member 20, and side walls 34--37. See
Flanders, col. 5, 11. 40-46, col. 6, 11.13-14, Fig. 1, Fig. 3. The small
overhangs near the top and bottom of the sides of Flanders' container, thus,
do not define the holding volume and are not the recited first interfacing
surface. In the absence of grip means on a vertical interfacing surface, the
Examiner has not shown that the combination of Flanders and Perez
Caraballo results in a package with the capability "to permit a pair of said
packages to be engaged via ... flanking." The Examiner, thus, does not
establish by a preponderance of the evidence that the combination of
Flanders and Perez Caraballo results in a package with the capability of
engaging a pair of packages by either "stacking or flanking." Because the
rejection is based on an erroneous factual finding, the conclusion of
obviousness cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (holding that "[t]he legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand."). We do not sustain the rejection of claim 24 and claims 27-
29, 31-34, 36, 41--43, 51-53, 58, and 59 which are dependent on claim 24.
Independent claim 55 is similar to claim 24 but recites "a planar
vertical first interfacing surface" and the capability of engaging a pair of
containers by "flanking." Appeal Br. 11 (Claims App.)( emphasis added).
The Examiner rejects claim 55 based on the same combination of Flanders
and Perez Carballo. Final Act. 3. As noted above, the Examiner's finding
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Application 11/547,569
of grip means on a vertical interfacing surface capable of engaging a pair of
containers by flanking is not supported by a preponderance of the evidence.
Therefore, we do not sustain the rejection of claim 55 for the same reasons
as claim 24.
The Examiner rejects dependent claims 30, 35, and 56 based on the
combination of Flanders, Perez Caraballo, and Brink. Final Act. 7. The
Examiner does not rely on Brink to cure the deficiencies of Flanders and
Perez Caraballo noted above. Id. Therefore, we do not sustain the rejection
of claims 30, 35, and 56.
DECISION
The Examiner's decision rejecting claims 24, 27-36, 41--43, 51-53,
55, 56, 58, and 59 is reversed.
REVERSED
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