Ex Parte Marco et al

Patent Trial and Appeal Board

Mar 28, 2013

10681524 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/681,524 10/08/2003 Leslie S. Marco 13727 9641
7590 03/28/2013
Raymond W. Campbell
TAYLOR & AUST, P.C.
142 S. Main St.
P.O. Box 560
Avilla, IN 46710
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
03/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LESLIE S. MARCO and ARTHUR R. SLATERS
________________

Appeal 2011-000360
Application 10/681,524
Technology Center 3700
________________

Before MICHAEL L. HOELTER, PATRICK R. SCANLON and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000360
Application 10/681,524

2
STATEMENT OF THE CASE
Leslie S. Marco and Arthur R. Slaters (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a) claims 1-7 as unpatentable over Slomski (US 5,868,659; issued
Feb. 9, 1999) and Broskow (US 5,487,465; issued Jan. 30, 1996).1,2 Claims
14-19 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention relates to “a method for making a carrier
with handles between rows of containers in both two-wide and three-wide
configurations, and with the handle portion and container holding portion
formed from different sheets connected together.” Spec. para. [10]; figs. 1, 3
and 4.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A method of making a container carrier, comprising steps
of:
providing a handle sheet and a carrier sheet;
positioning the handle sheet on at least a portion of the
carrier sheet;
connecting the handle sheet and the carrier sheet along a
line of attachment;
forming a container holding portion only in the carrier
sheet, including forming first and second rows of container

1 The Examiner has withdrawn the rejection of claims 1-7 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement
requirement. Ans. 3.
2 Claims 8-13 have been allowed by the Examiner. Final Rej. 5.
Appeal 2011-000360
Application 10/681,524

3
receiving apertures in the carrier sheet on opposite sides of the
line of attachment after said steps of positioning and
connecting;
forming a handle portion only in the handle sheet,
including forming holes in the handle sheet simultaneously with
forming the first row of apertures; and
said step of forming holes in the handle sheet and said
forming the first row of container receiving apertures in the
carrier sheet being performed by cutting through overlying
portions of said handle sheet and said carrier sheet and thereby
forming said holes of the handle sheet and said first row of
container receiving apertures of the carrier sheet in overlying
arrangement and in substantially the same configurations one
over the other.

ANALYSIS
Independent claim 1 recites “forming said holes of the handle sheet
and said first row of container receiving apertures of the carrier sheet . . . in
substantially the same configurations one over the other.” App. Br., Claims
Appendix. (Italics added). The Examiner takes the position that “the holes
and the first row of apertures [of Slomski are] formed in substantially the
same configurations.” Ans. 4; Slomski, fig 4; see also App. Br. 19-20. We
disagree with the Examiner’s position for the following reasons.
We agree with Appellants that (1) the container receiving apertures of
Slomski are “substantially rectangular openings in the carrier sheet;” and (2)
the holes in the handle sheet of Slomski “are of two types, both long and
narrow, with the outer holes being more or less a flattened L-shape and a
central hole being an []elongated, thin slit.” App. Br. 20; see also Slomski,
col. 5, ll. 19-30; figs. 2, 4. Accordingly, we further agree with Appellants
that “the apertures in the carrier sheet and the holes in the handle sheet of
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Application 10/681,524

4
Slomski are not ‘formed in substantially the same configurations,’” as
required by claim 1. Id.
The Examiner relies on Broskow “to show the teaching of having the
step of forming container holding portion comes after the step of positioning
and connecting sheets.” Ans. 7. The Examiner does not rely on Broskow to
cure the above-noted deficiency with Slomski. Id. Accordingly, for the
foregoing reasons, the Examiner’s rejection of claims 1-7 under 35 U.S.C.
§ 103(a) as unpatentable over Slomski and Broskow cannot be sustained.

DECISION
The Examiner’s rejection of claims 1-7 is reversed.

REVERSED

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