Ex parte Kelly et al.

Board of Patent Appeals and Interferences

Jul 29, 1998

08091894 (B.P.A.I. Jul. 29, 1998)

Application for patent filed July 14, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DANIEL E. KELLY
and
TED LEMKE
_____________
Appeal No. 96-2296
Application 08/091,8941
______________
ON BRIEF
_______________
Before CALVERT, MEISTER and CRAWFORD, Administrative Patent
Judges.
Appeal No. 96-2296
Application 08/091,894
2
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 to 4, 6 and 7. Claims 8, 9, 11 and 12, the other claims
remaining in the application, have been allowed.
The subject matter in issue concerns a stackable
tray for bottles or cans. The appealed claims are reproduced
on pages 9 to 11 of appellants’ brief.
The references applied in the final rejection are:
deLarosiere 4,410,099 Oct. 18,
1983
Van Onstein et al. (Van Onstein) 4,944,400 July 31,
1990
Claims 1 to 4, 6 and 7 stand finally rejected under
35 U.S.C. § 103 as unpatentable over Van Onstein in view of
deLarosiere.
Van Onstein discloses a tray 2 (Figs. 3 and 4) for a
plurality of containers 3, e.g., bottles, which is made of
molded plastic (col. 6, lines 50 to 55) and has a bottom wall,
Appeal No. 96-2296
Application 08/091,894
3
side walls and end walls, there being free-standing pillars
7a,b,c,d spaced about the perimeter of the bottom wall to form
U-shaped openings visually exposing a substantial portion of
the bottles. The deLarosiere patent discloses a tray 10 for a
plurality of multipacks 2 of bottles 4. The tray shown in
Fig. 3 is exemplary and holds four six-packs of bottles, each
in a receptacle 26. For each six-pack a hollow, tapered
pillar 40 extends above the base of the tray. As disclosed in
col. 3, lines 18 to 41, and col. 5, lines 29 to 49, each
pillar 40 fits within the space between four bottles of a six-
pack, and the taper allows the empty trays to be nested on top
of one another with each pillar of the lower tray fitting into
the hollow interior of the corresponding pillar of the upper
tray, as shown in Fig. 4. This allows the trays (cases) to be
“nested efficiently when empty” (col. 3, lines 60 and 61).
The examiner takes the position that (answer, page
3):
It would have been obvious to make the
pillars of Van Onstein et al tapered as
shown by de Larosiere in order to enhance
the handling of containers in the tray and
to make the trays nestable together so that
Appeal No. 96-2296
Application 08/091,894
4
a compact packing may be formed to save
storage space when the trays are empty.
Appellants argue on pages 7 and 8 of their brief that, in
essence (1) Van Onstein does not disclose a tray with tapered
free standing pillars spaced about the periphery of the base;
(2) deLarosiere “merely discloses a tray having a single
tapered supporting pillar 40 located substantially in the
center of the center of the square defined by the four ver-
texes 30A, 30B, 30C and 30D,” which “is dimensioned to fit
within a space between four bottles of a six pack”; and (3)
the combination of
references,
therefore, does not contemplate the problem
solved by the claimed structure as set out
in these claims and therefore the factual
predicate necessary to establish a prima
facie case of obviousness has not been
demonstrated.
After fully considering the record in light of the
arguments presented by appellants and the examiner, we con-
clude that the subject matter recited in claim 1 is unpatent-
able under 35 U.S.C. § 103.
Appeal No. 96-2296
Application 08/091,894
5
With reference to appellants’ arguments, supra, it
is inaccurate to state that the tray of deLarosiere only has a
single pillar, since, as discussed previously, the tray shown
in Figure 3, for example, has four pillars 40, one for each
six-pack. These tapered pillars fit into the interior of the
corresponding pillars of the overlying tray when the trays are
stacked (Fig. 4).
Appellants’ assertion that the combination of refer-
ences “does not contemplate the problem solved by the claimed
structure” is not germane to the propriety of making the
combination, since it is settled that:
As long as some motivation or suggestion to
combine the references is provided by the
prior art taken as a whole, the law does
not require that the references be combined
for the reasons contemplated by the inven-
tor.
In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992). See also In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996) (“the motivation in the
prior art to combine the references does not have to be iden-
Appeal No. 96-2296
Application 08/091,894
6
tical to that of the applicant to establish obviousness. In
re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (in banc).”). In the present case, there is ample
motivation in the cited references from which one of ordinary
skill in the art would have found it obvious to combine the
references in the manner proposed by the examiner. Van
Onstein notes the importance of being able to stack the empty
trays so that “their reduced height saves storage space” (col.
5, lines 22 to 25), and, as noted earlier, deLarosiere
discloses that the use of hollow, tapered columns allows the
columns to fit one within the other, so that empty trays can
be nested one on top of the other, thereby reducing height
(col. 3, lines 60 to 64). This teaching of deLarosiere would
have readily suggested to one of ordinary skill the use of
hollow, tapered columns as the columns of Van Onstein in order
to obtain the disclosed advantages thereof.
Claims 2 to 4 and 7, being grouped with claim 1
(brief, page 4), fall therewith. Appellants group claim 6
separately, but since they present no explanation as to why
they believe it
Appeal No. 96-2296
Application 08/091,894
7
to be separately patentable, it also falls with claim 1.
37 CFR § 1.192(c)(7).
Conclusion
The examiner’s decision to reject claims 1 to 4, 6
and 7 is affirmed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-2296
Application 08/091,894
8
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