Ex parte Lorens

Board of Patent Appeals and Interferences

Jun 9, 1998

08379181 (B.P.A.I. Jun. 9, 1998)

Application for patent filed January 27, 1995.1
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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STELLA LORENS
__________
Appeal No. 97-4151
Application 08/379,1811
__________
ON BRIEF
__________
Before CALVERT, FRANKFORT and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
3, 5 to 13 and 15 to 20, all of the claims remaining in the
Appeal No. 97-4151
Application 08/379,181
Claims 4 and 14 were canceled after final rejection by the amendment2
filed on February 7, 1997 (Paper No. 12).
2
application.2
Claim 1, as amended after final rejection, is
illustrative of the subject matter involved, and reads:
1. A compartmentalized tabletop organizer comprising:
a substantially rectangular container having
four peripheral sides and a bottom, the four
peripheral sides and the bottom configured to define
a compartment;
means contained within said peripheral sides for
displaying a graphic item allowing said means to
include a display pocket configured for insertion of
the graphic item into the display pocket;
a compartment divider disposed within the
compartment defined by the peripheral sides and the
bottom; and
a removable compartment adapted to fit within
the tabletop organizer.
The references applied by the examiner in the final
rejection are:
Albert 3,258,017 Jun. 28, 1966
Phibbs 3,433,383 Mar. 18, 1969
Trombly 4,047,633 Sep. 13, 1977
Lackie 5,439,108 Aug. 08, 1995
(Filed May 10, 1994)
Appeal No. 97-4151
Application 08/379,181
3
The claims on appeal stand finally rejected under 35 USC
§ 103 as unpatentable over the following combinations of
references:
(1) Claims 1, 2, 8 to 12 and 18 to 20, Phibbs in view of
Trombly;
(2) Claims 3, 5, 6, 13, 15 and 16, Phibbs in view of
Trombly and Albert;
(3) Claims 7 and 17, Phibbs in view of Trombly and
Lackie.
Rejections Under 37 CFR 1.196(b)
(I) Pursuant to 37 CFR 1.196(b), claims 1 to 3, 5 to 10,
12, 13 and 15 to 20 are rejected for failure to comply with
the second paragraph of 35 USC § 112, on the following
grounds:
(A) The recitation of a means for displaying in
lines 4 to 6 of claim 1 is indefinite. The claim recites a
“means . . . . for displaying a graphic item allowing said
means to include a display pocket”. This language is unclear
Appeal No. 97-4151
Application 08/379,181
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in that, according to what is recited, the means allows itself
to include a display pocket, which makes no sense. Apparently
what was intended, but is not clearly expressed, is that the
means includes a display pocket.
(B) Claims 2, 3, 5 to 7, 12, 13 and 15 to 17 are
indefinite when one attempts to read them in light of the
disclosure. Cf. In re Cohn, 438 F.2d 989, 993, 169 USPQ 95,
98 (CCPA 1971). The problem with these claims can be
described by referring to claim 3 as an example. Claim 3
recites (emphasis added) “The invention of claim 1 wherein
said compartment divider is a four compartment divider.” The
use of the singular verb “is” and noun “divider” in this claim
implies that the claim is drawn to a single element of
structure which divides the container compartment into four
compartments. Similar language is found in the disclosure on
page 8, lines 12 to 15, but the drawing (Fig. 4) does not
clearly show a single divider having three vertical members,
but rather appears to show three separate vertical dividers
(plural) 144 dividing the organizer 100 into four
compartments. The scope of these claims is therefore unclear.
(C) Claims 9, 10, 19 and 20 are indefinite in their
Appeal No. 97-4151
Application 08/379,181
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use of the term “comprising”. The use of this term, rather
than “consisting of”, renders the Markush groups recited in
these claims indefinite, in that their scope is unrestricted.
See Ex parte Morrell, 100 USPQ 317, 319 (Bd. Apps. 1953) and
MPEP
§ 2173.05(h). Likewise, the expression “may be selected from”
in claims 9, 10 and 19 is indefinite in that it indicates the
materials recited are merely exemplary, and therefore does not
define the metes and bounds of the claimed subject matter. Ex
parte Hasche, 86 USPQ 481, 482 (Bd. Apps 1949).
(II) Claims 7 and 17 are rejected for failing to comply
with the first paragraph of 35 USC § 112. These claims,
ultimately dependent on claims 1 and 11, respectively, each
recite (emphasis added) “The invention of [the parent claim]
further including at least two removable compartments . . . .
”. Since parent claims 1 and 11 have been amended to recite a
removable compartment, the recitation in claims 7 and 17 of an
organizer “further including”
at least two removable compartments would result in an
organizer having at least three removable compartments.
Appeal No. 97-4151
Application 08/379,181
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However, we find no written description of such an organizer
in the application as filed. Cf. In re Barker, 559 F.2d 588,
194 USPQ 470 (CCPA 1977), cert. denied, 434 U.S. 1064 (1978).
Rejections Under 35 USC § 103
In general, if a claim is indefinite such that it is
necessary to indulge in considerable speculation as to the
meaning of terms therein, it should be rejected under § 112,
and not under 35 USC § 103. In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). However, in some instances,
even though a claim is rejected under § 112, second paragraph,
the merits of a rejection of that claim under § 103 may still
be considered. See Ex parte Saceman, 27 USPQ2d 1472 (BPAI
1993).
In the present case, we would have to engage in such
considerable speculation as to the meaning of claims 2, 3, 5
to 7, 12, 13 and 15 to 17, that consideration of the § 103
rejections of those claims would not be appropriate, and
accordingly, said rejections will not be sustained, pro forma.
This is not to say, however, that claims 2, 3, 5 to 7, 12, 13
and 15 to 17 would necessarily be patentable over the applied
Appeal No. 97-4151
Application 08/379,181
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prior
art if the rejection under § 112, second paragraph, were
overcome. On the other hand, we do not consider that claims
1, 8 to 10 and 18 to 20 are so indefinite that their rejection
under § 103 should not be treated on the merits, and will
therefore proceed to consider rejection (1), supra.
Phibbs discloses in Fig. 1 a rectangular container 10
which is divided into several compartments by partitions
(dividers) 16 "for receiving various packaged or bottled
items" (col. 2, lines 4 and 5). Such items 37 are shown in
Fig. 2 as being boxes of washing powder and starch, and
bottles of bleach and fabric softener. Trombly discloses a
rectangular container having double walls of clear material
between which a decorative insert 13 may be placed. The basis
of the rejection is stated on pages 3 and 4 of the examiner's
answer as:
In the embodiment of figure 1 [of Phibbs] an
organizer is disclosed comprising a carrier made of
plastic with three compartments defined by divider
16. Trays 17 are provided in one of the
compartments which is considered [the] equivalent
Appeal No. 97-4151
Application 08/379,181
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[of] a removable compartment.
PHIBBS '383 discloses the claimed device except
for a means for displaying agraphic [sic] item.
TROMBLY '633 teaches that it is known to provide a
means 24 for displaying a graphic item. It would
have been obvious to one having ordinary skill in
the art at the time the invention was made to
construct the plastic carrier of PHIBBS '383 with
inner an [sic: and] outer transparent walls as
taught by TROMBLY '633, since TROMBLY '633 states at
column 2, lines 38-44 that such a modification would
provide a decorative appearance for eye appeal which
makes the container aesthetically appealing.
Appellant argues that it would not have been obvious to
add a graphic insert to the Phibbs container because the
container is collapsible, i.e., telescopic. However, this
argument is not relevant to the rejection, which, as the
examiner states, is based on the non-collapsible container
disclosed in Phibbs'
Fig. 1.
Appellant further argues that in her disclosed invention
the graphic material is not on clear material and is not
seated between the walls of the container, unlike that of
Trombly. However, the claims do not call for a graphic item
which is opaque or for the "display pocket" to be unsealed,
and it is axiomatic that claims will be given their broadest
Appeal No. 97-4151
Application 08/379,181
9
reasonable interpretation consistent with the specification,
and that limitations appearing in the specification will not
be read into the claims. In re Prater, 415 F.2d 1393, 1404,
162 USPQ 541, 550 (CCPA 1969).
Appellant also contends that Phibbs does not disclose a
removable compartment, as recited in claims 1 and 11. It is
not clear to us what the examiner means by his statement,
quoted above, that trays 17 of Phibbs (which are not disclosed
as removable) are considered the equivalent of a removable
compartment. Nevertheless, we consider that Phibbs discloses
a removable compartment as claimed.
In construing claims of a pending application
the PTO applies to the verbiage of the proposed
claims, the broadest reasonable meaning of the words
in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions
or otherwise that may be afforded by the written
description contained in the applicant's
specification.

In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d, 1023, 1027 (Fed.
Cir. 1997).
Here, if we look to the appellant's specification for
Appeal No. 97-4151
Application 08/379,181
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enlightenment as to the broadest reasonable meaning of the
term "removable compartment", we find that on page 10,
appellant discloses that the two removable compartments 408
and 410 "may be constructed to have planar peripheral sides or
may be constructed to have more curvilinear design such as
juice pitchers or maple syrup containers" (lines 8 to 11). In
view of this disclosure, it is evident that the term
"removable compartment" in appellant's claims encompasses
containers of items to be dispensed therefrom (such as juice
or maple syrup), and thus would include the containers of the
"various packages or bottled items" 37 disclosed by Phibbs,
from which washing powder, bleach, fabric softener or starch
would be dispensed. Phibbs therefore meets the "removable
compartment" limitation of the claims.
With regard to the examiner's combination of Phibbs and
Trombly, we agree with the examiner that the proposed
modification of Phibbs in view of Trombly would have been
obvious to one of ordinary skill in the art. While Trombly's
primary purpose for using a double-walled container may be for
insulation, the reference also discloses that such
Appeal No. 97-4151
Application 08/379,181
The preamble generally does not limit the claims. De George v.3
Bernier, 768 F.2d 1318, 1322 n.3, 226 USPQ 758, 761 n.3 (Fed. Cir. 1985).
11
construction allows the inclusion of a decorative insert in
the space between the transparent walls, and we consider that
this disclosure would have motivated one of ordinary skill to
provide the container 10 of Phibbs with transparent double
walls for the same reason. Such a modification of the Phibbs
container would not be the result of impermissible hindsight,
as argued by appellant, but would have been suggested by
Trombly's disclosure of using double walls with an insert
therebetween for the purpose of decoration.
In the reply brief, appellant contends that the Phibbs
container is not a "tabletop organizer," as recited in the
preamble of claims 1 and 11. It is not apparent how such a
recitation would limit the structure recited in the claims,
being only a statement of intended use , but in any event, the3
con-tainer 10 of Phibbs is a "tabletop organizer" in that it
is clearly capable of being placed on a table, and "organizes"
items therein in that it contains compartments into which the
items are placed, just as appellant's disclosed apparatus
does.
Appeal No. 97-4151
Application 08/379,181
12
With respect to claims 9, 10, 19 and 20, appellant argues
that it would not have been obvious to use the claimed
materials, which "have been selected for their strength,
attractiveness, and suitability for the practice of this
invention" (brief, page 12). The examiner's position is that
(answer, page 4):
it would have been obvious to one having ordinary
skill in the art at the time the invention was made
to employ any conventional material such as acrylic
resin, since it has been held to be within the
general skill of a worker in the art to select a
known material on the basis of its suitability for
the intended use as a matter of obvious design
choice. In re Leshin, [277 F.2d 197,] 125 USPQ 416
[(CCPA 1960)].
In spite of the statement on page 13 of appellant's brief
that "use of the claimed material in the invention is but one
type of material available from a wide range of other suitable
materials", claims 9, 10, 19 and 20 are not limited to one
particular material, but instead cover a very wide range of
materials, including, inter alia, such well known plastics as
polyethylene, polypropylene, polystyrene, etc., which are
commonly used to make such items as containers. In view of
the disclosure of both Phibbs (col. 2, line 1) and Trombly
Appeal No. 97-4151
Application 08/379,181
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(col. 1, line 61) that their containers may be made of
plastic, it would be remarkable if one of ordinary skill would
not have found it obvious to make the container of Phibbs, as
modified by Trombly, out of at least one of the plastics
claimed by appellant; as
stated in In re Leshin, 227 F.2d at 199, 125 USPQ at 417-18:
Mere selection of known plastics to make a
container-dispenser of a type made of plastics prior
to the invention, the selection of the plastics
being on the basis of suitability for the intended
use, would be entirely obvious; and in view of 35
U.S.C. 103 it is a wonder that the point is even
mentioned.
Accordingly, the rejection of claims 1, 8 to 11 and 18 to
20 under 35 USC § 103 will be sustained.
Conclusion
The examiner’s decision to reject claims 1 to 3, 5 to 13
and 15 to 20 is affirmed as to claims 1, 8 to 11 and 18 to 20
and reversed as to claims 2, 3, 5 to 7, 12, 13, and 15 to 17.
Claims 1 to 3, 5 to 10, 12, 13 and 15 to 20 are rejected
pursuant to 37 CFR 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
Appeal No. 97-4151
Application 08/379,181
14
rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-4151
Application 08/379,181
-15-
Affirmed-in-Part
37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Docketing
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