Ex parte Luburic et al.

Board of Patent Appeals and Interferences

Apr 15, 1998

08285349 (B.P.A.I. Apr. 15, 1998)

Application for patent filed August 3, 1994.1
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANO LUBURIC
and
ROBERT R. ROPER
_____________
Appeal No. 97-2712
Application 08/285,3491
______________
ON BRIEF
_______________
Before CALVERT, COHEN and MEISTER, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 97-2712
Application 08/285,349
Our understanding of this document is derived from a2
reading of a translation thereof prepared in the United States
Patent and Trademark Office. A copy of the translation is
appended to this opinion.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 14, 16, 17, and 19 through 24. These claims constitute
all of the claims remaining in the application.
Appellants’ invention pertains to a container, a
plastic injection-molded bucket, and to a method of storage of
materials. An understanding of the invention can be derived from
a reading of exemplary claims 1, 9, and 24, copies of which
appear in the APPENDIX to appellants’ brief (pages 15 through 18
of Paper No. 16).
As evidence of obviousness, the examiner has applied
the documents listed below:
Chadwick 1,436,754 Nov. 28, 1922
Koefelda et al. (Koefelda) 5,292,024 Mar. 8, 1994
French Patent Application 73.27848 Mar. 8, 1974
(French Patent)2
Appeal No. 97-2712
Application 08/285,349
3
The following rejections are before us for review.
Claims 1 through 14, 16, 17, 19 through 22, and 24
stand rejected under 35 U.S.C. § 103 as being unpatentable over
the French Patent in view of Chadwick.
Claim 23 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the French Patent in view of Chadwick, as
applied above, further in view of Koefelda.
The full text of the examiner's rejections and response
to the argument presented by appellants appears in the answer
(Paper No. 17), while the complete statement of appellants’
argument can be found in the brief (Paper No. 16).

OPINION
Appeal No. 97-2712
Application 08/285,349
Claim 24 sets forth a “generally rectangular external3
shape” for the external ring means (specification, page 9).
However, we note that the appearance of the ring means in the
drawing (Figure 1) is generally square.
In our evaluation of the applied teachings, we have4
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
In reaching our conclusion on the issues raised
in this appeal, this panel of the board has carefully con-
sidered appellants’ specification and claims, the applied 3
teachings, and the respective viewpoints of appellants and the4
examiner. As a consequence of our review, we make the
determinations which follow.
We reverse each of the examiner’s respective rejections
of appellants’ claims under 35 U.S.C. § 103.
In our opinion, the combined teachings of the French
Patent and the Chadwick reference would not have been suggestive
to one having ordinary skill in the art of the modification pro-
posed by the examiner. Simply stated, we perceive no reason for
Appeal No. 97-2712
Application 08/285,349
5
altering the shape of the packaging (container) of the French
Patent on the basis of the Chadwick disclosure, as proposed.
In particular, it appears to us that such a modification would
not have been undertaken by an artisan since a conically shaped
side wall would not permit the packaging to maintain disclosed
significant relationships between the internal casing and the
external casing, i.e., the interface between pull tabs 10 and
ribs and guides 15, 16, and the interface between flexible and
elastic projection tabs 17N that catch in breaking lines 7.
While the patent to Koefelda clearly teaches a plastic
pail with flat surfaces thereon for mating with flat surfaces of
adjacent pails to prevent relative movement therebetween, and a
draft angle for the sidewalls of the pails to allow the pails to
be easily empty nested for more compact storage and transport,
this document nevertheless does not overcome the deficiency
discussed above relative to the teachings of the French Patent
and the Chadwick document.
Appeal No. 97-2712
Application 08/285,349
Claims are considered to be definite, as required by the5
second paragraph of 35 U.S.C. § 112, when they define the metes
and bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958 189 USPQ 149, 151 (CCPA 1976).
6
NEW GROUNDS OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of
the board introduces the following new grounds of rejection.
Claims 4 and 24 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. The language “two 5
or more” in its context of usage in claim 4, line 3, is not
understood, rendering the claim indefinite in meaning. As to
claim 24, the preamble indicates a “method of storage of
materials,” however, the body of the claim fails to include a
step providing material to the specified containers. Thus, what
is being claimed is in doubt. We also note an inconsistency in
claim 24 in the recital of “external ring means” (line 6) and
“said shoulder means” (lines 7, 8, and 10).
Appeal No. 97-2712
Application 08/285,349
Anticipation under 35 U.S.C. 102(b) is established only6
when a single prior art reference discloses, either expressly or
under principles of inherency, each and every element of a
claimed invention. See In re Paulsen, 30 F.3d 1475, 1478-1479,
31 USPQ2d 1671, 1675 (Fed. Cir. 1994), In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). However, the law of anticipation does
not require that the reference teach specifically what an
appellant has disclosed and is claiming but only that the claims
"read on" something disclosed in the reference, i.e., all
limitations of the claim are found in the reference. See Kalman
v. Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983); cert. denied, 465 U.S. 1026 (1984).
The test for obviousness is what the combined teachings of7
references would have suggested to one of ordinary skill in the
art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, it must also be kept in mind that
an obviousness question cannot be approached on the basis that an
artisan having ordinary skill would have known only what they
read in references, because such artisan must be presumed to know
(continued...)
7
Claim 1 is rejected under 35 U.S.C. § 102(b) as being
anticipated by the Chadwick patent. More specifically, the6
claimed container reads on the protector disclosed by Chadwick
(Fig. 3), which protector is clearly capable of being nestable
with other containers of the same size.
Claims 2 through 5 and 9 through 11 are rejected under
35 U.S.C. § 103 as being unpatentable over Chadwick in view of
the French Patent. In our opinion, it would have been obvious7
Appeal No. 97-2712
Application 08/285,349
(...continued)7
something about the art apart from what the references disclose.
See In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA
1962). Further, a conclusion of obviousness may be made from
common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a
particular reference. See In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549 (CCPA 1969).
While we have determined that claim 4 is indefinite,8
supra, we apply prior art thereto since we understand the claim
to the extent that it does require one or more supplementary
scoreline means, a feature clearly shown in the French Patent.
8
to one having ordinary skill in the art to replace the tearable
single strip configuration of Chadwick (Figure 3) with a known
alternative tearable multiple strip configuration, as disclosed
by the French Patent. As we see it, the motivation for this
modification on the part of one having ordinary skill in the art
would have simply been to obtain the self-evident benefit of
being able to selectively remove one strip at a time rather than
having a single strip dangling down as it is progressively torn
from the remaining portion thereof. The subject matter of
dependent claims 2, 4, and 5 would be addressed by the modified8
nestable protector of Chadwick. As to the recitation of
injection molding (claims 3 and 9) and plastic (claim 9), we view
Appeal No. 97-2712
Application 08/285,349
In proceedings before the Patent and Trademark Office,9
claims in an application are given their broadest reasonable
interpretation consistent with the specification. Additionally,
claim language is read in light of the specification as it would
be interpreted by one of ordinary skill in the art. See In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
9
the choice of a known synthetic material, such as plastic, and
the selection of the common fabrication technique of injection
molding, as being a basic and routine matter of design choice
for one having ordinary skill in the art, particularly in light
of the selection of a synthetic material in the French Patent.
Read in light of appellants’ disclosure of “containers or
buckets” (specification, page 6), we consider the recitation of9
a
“bucket” (claim 9) as broadly denoting an alternative expression
for the term “container”; this view is buttressed by the under-
lying disclosure which fails to include any defining aspects of a
bucket relative to a container. Based upon our above analysis,
we also determine that the content of claims 9 through 11 would
have been suggested by the applied evidence of obviousness.
In summary, this panel of the board has:
Appeal No. 97-2712
Application 08/285,349
10
reversed the rejection of claims 1 through 14, 16, 17,
19 through 22, and 24 under 35 U.S.C. § 103 as being unpatentable
over the French Patent in view of Chadwick; and
reversed the rejection of claim 23 under 35 U.S.C. §
103 as being unpatentable over the French Patent in view of
Chadwick and Koefelda.
Additionally, we have introduced NEW GROUNDS OF
REJECTION.
The decision of the examiner is reversed.
This decision contains new grounds of rejection pur-
suant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final 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.”
Appeal No. 97-2712
Application 08/285,349
11
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37 CFR
§ 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 con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED
37 CFR 1.196(b)
Appeal No. 97-2712
Application 08/285,349
12
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES M. MEISTER )
Administrative Patent Judge )
Appeal No. 97-2712
Application 08/285,349
13
J. Mark Holland
20271 S.W. Birch Street
Suite 100
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