Ex Parte Plank et al

Patent Trial and Appeal Board

Sep 6, 2013

12256726 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL PLANK, JULIE LYNN EVERSON,
LISA ANNE EGENSPERGER, and BELINDA NEMETH
____________

Appeal 2011-005881
Application 12/256,726
Technology Center 3700
____________

Before NEAL E. ABRAMS, PHILLIP J. KAUFFMAN,
and CARL M. DeFRANCO Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Plank et al. (Appellants) seek our review under 35 U.S.C. §
134 from the Examiner’s decision rejecting claims 1-7. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
The claimed invention relates to gift packaging in the form of bags.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A gift bag assembly display comprising:
a panel having a plurality of fixtures attached thereto,
said fixtures supporting at least three different and separately
displayed components of a gift bag assembly including:
a plurality of gift bags in a variety of design
attributes with a transparent pocket on one panel of each of the
gift bags;
a plurality of cards in a variety of design attributes
dimensioned to fit within the transparent pockets of the gift
bags; and
a plurality of handles in a variety of design
attributes configured to be attached to the gift bags;
each of the plurality of gift bags, cards and handles being
generally grouped together on the panel of the gift bag
assembly display for selection and combination into a custom
gift bag assembly.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
McMaster US 3,884,443 May 20, 1975
Kaplan US 5,344,027 Sep. 6, 1994
Crowell US 5,613,312 Mar. 25, 1997
Roy US 6,113,267 Sep. 5, 2000

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THE REJECTIONS
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaplan, Crowell, and Roy.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crowell, Roy, Kaplan, and McMaster.
OPINION
Claims 1-5 – Obviousness
Kaplan, Crowell, and Roy
The Examiner has found that Kaplan discloses all of the subject
matter recited in independent claims 1 and 5, except for the presence of a
plurality of gift bags in a variety of design attributes with a transparent
pocket on one panel of each, a plurality of cards in a variety of design
attributes dimensioned to fit within the transparent pockets, and a plurality
of handles in a variety of design attributes configured to be attached to the
gift bags. Ans. 3.
The Examiner found that Crowell discloses a gift bag having a
transparent pocket on one panel, a handle, and a gift card dimensioned to fit
into the pocket, and has taken the position that it therefore would have been
obvious to substitute gift bags with handles, transparent pockets and cards
for those disclosed by Kaplan “for the predictable result” obtained
therefrom. Ans. 4. As for the separate handles, it is the Examiner’s view
that such are taught by Roy, and it would have been obvious to provide them
to the modified Kaplan arrangement to provide for easy removal to prevent
damage, as taught by Roy. Ans. 5. The Examiner concludes it would have
been obvious to separately display the plurality of gift bags, cards and

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handles to permit the consumer to select different components, as taught by
Kaplan in column 1, lines 6-12. Ans. 5.
Appellants’ initial argument regarding the rejection of independent
claims 1, 5, and 6 is that the combination of references cited by the
Examiner “does not describe a display offering gift bags, cards and handles
in a variety of design attributes” “found within each component [to] allow a
user to select and create a unique customized gift bag assembly” (emphasis
added). Br. 11. According to Appellants, “the term ‘design attributes’ may
refer to, as noted in the specification, color, theme, style, design, shape, or a
combination thereof.” Br. 11. This argument is present throughout the
Brief, and thus warrants attention at this juncture. Features that relate to
“ornamentation only and have no mechanical function whatsoever” cannot
be relied upon for the patentability of a claim in a utility application. In re
Seid, 161 F.2d 229, 231 (CCPA 1947). Appellants have not identified, nor
do we perceive, a mechanical function performed by any of the “design
attributes” thereof, and therefore this feature cannot be relied upon for the
patentability of the claims.
Appellants further argue that the Kaplan packaging is specific to the
products displayed on the panel and therefore one would not visit Kaplan to
purchase gift packaging for a gift not present there, and that Kaplan does not
include cards or individual handles. They also assert that Crowell does not
include a greeting card and that the card-receiving slit “is dimensioned with
a length greater than the conventional width of a typical greeting card.” Br.
11-12. However, one cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In

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re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Kaplan discloses a gift bag assembly display comprising a panel (10)
having a plurality of fixtures (brackets 22 and 26, shelves 30, bracket 38)
attached thereto for supporting at least three different and separately
displayed components (brushes 12, sponges 14, loofas 16, bath gels 18,
soaps 20) generally grouped together to permit a customer to select one or
more of the components. Fig. 1; Col. 2, ll. 14-25. Kaplan also provides
decorative bags (37), tissue wrapping material (44), and a gift tag (not
shown). Col. 2, ll. 53-55; Figs 2, 3. Kaplan’s panel (10) is provided with a
plurality of fixtures (brackets 22 and 26, shelves 30, bracket 38) which
clearly are capable of supporting a plurality of gift bags having transparent
panels for receiving cards, a plurality of cards, and a plurality of removable
handles for attachment to the gift bags. According to Kaplan (Col. 1, ll. 5-
11),
[t]his invention relates to a system for the display and
packaging of merchandise sold in retail stores . . . that permits a
customer to select and package one or more products so as to
create a ‘gift’ collection or assortment, wherein the packaging
or container for the various selected products is displayed in the
same display as the products,
and that “[a]ppropriate ‘gift’ packaging for all the items displayed on the
rack 10 is separately packaged and displayed on the rack” (Col. 2, ll. 45-47).
“The system presents to the customer not only the packaged merchandise but
also a decorative container for the items displayed on the rack” (Col. 3, ll. 6-

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8), so that “[a]t the same time that a customer selects the merchandise, he or
she may also select the packaging displayed on the rack, so that both the
merchandise and the packaging are purchased together” (Col. 3, ll. 12-16). .
Considering Kaplan’s objective that the purchaser “may create an
individualized gift collection or assortment of products, without the need for
going through a gift wrapping station or otherwise having to wait for a clerk
to wrap the items” (Col. 3, ll. 17-20), we agree with the Examiner that
Kaplan teaches one of ordinary skill in the art to display together on a panel
having a plurality of fixtures, those elements needed to assemble a complete
article of merchandise, such as a gift bag assembly. See Ans. 4-5.
All of the categories of items recited in Appellants’ claims are known
in the art. Appellants do not challenge the Examiner’s contention that in
Figure 23 Crowell discloses a gift bag (20) having attached handles (117)
and a transparent pocket that can accommodate a greeting card, which also is
illustrated. The Crowell bag provides for “a conventional greeting or
message bearing card 123 [that] can be easily inserted through [the]
elongated slit 122.” Col. 17, ll. 52-53. In view of Kaplan’s teaching to
provide on the panel all of the components necessary to create an
individualized gift collection, it is our view that it therefore would have been
obvious to further provide a plurality of cards on fixtures mounted on
Kaplan panel (10) to allow for convenient selection by the customer for use
with the Crowell gift bag. See Ans. 4.
By reference to two prior U.S. Patents, Roy discloses that it was
known in the art to provide handles to be affixed to gift bags by means of
adhesive tabs. Col. 1, ll. 1-39. Roy’s invention comprises a packet separate

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from the bags, which contains a pair of flexible cords and four plastic
members provided with adhesive so they can be attached to a bag. Col. 1, ll.
48-59; Col. 3, ll. 15-22. Slots are provided in the plastic members to allow
the cords to be installed and removed, as necessary. Col. 3, ll. 9-21; Fig. 3.
We agree with the Examiner that it would have been obvious to provide such
handles on the Kaplan panel in order to permit the customer to choose them
for the gift bags.
While we have carefully considered all of the arguments presented by
Appellants (Br. 11-13), for the reasons explained above, the rejection of
independent claim 1 is sustained.
Claim 2 adds to claim 1 the requirement that there be “an area of the
panel on which gift cards and tissue paper are displayed.” It is our view that
it would have been obvious to do so in keeping with Kaplan’s teaching of
facilitating the customer’s purchase of packaging displayed on the panel.
See Col. 3, ll. 6-21; contra Br. 13. The rejection of claim 2 is sustained.
Claim 3 requires that the gift bag assembly further comprise
“instructions for [the] selection and combination of components of a gift bag
assembly.” The Examiner pointed out that where the only difference
between a prior art product and a claimed product is printed matter that is
not functionally related to the product, the content of the printed matter will
not patentably distinguish the claimed product from the prior art (citing In
re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Ans. 14-15. Appellants’
arguments regarding claim 3 do not dispute the Examiner’s position, and
therefore the rejection of claim 3 is sustained. See Br. 13.

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Appellants have not taken issue with the Examiner’s conclusion that
the product-by-process limitation set forth in claim 4 adds no patentable
distinction to the claim. The rejection of claim 4 is sustained.
With regard to claim 5, Appellants argue that patentability lies in the
requirement that there be at least two components having differing “design
attributes” so as to give consumers a greater choice. Br. 13. As we
explained above, such design features cannot be relied upon for the
patentability of a claim in a utility application, and the rejection of claim 5 is
sustained.
Appellants also contend that the Examiner has based the rejections of
claims 1-5 on impermissible hindsight. Br. 13-15. While we have carefully
considered these arguments, we have concluded that they are not persuasive,
given the reasoning advanced by the Examiner for combining the teachings
of the references.
Claims 6 and 7 – Obviousness
Crowell, Roy, Kaplan, and McMaster
Independent claim 6 sets forth the invention in substantially the same
terms as claim 1, with the additional limitations of providing a plurality of
hang tags attached to the main panels of each of the gift bags, and display
tags associated with the cards. The Examiner utilized Crowell as the
primary reference for disclosing a gift bag with card slot and card, and
looked to Kaplan for teaching that it would have been obvious to display,
along with the Crowell elements, other gift bag components including the
handles of Roy, and to utilize hanger extensions for small articles, as
disclosed by McMaster. Ans. 9-12. With regard to the proviso that the
handles be die-cut, the Examiner asserts that this is a product-by-process

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limitation that does not result in a product different than that of the prior art,
and therefore cannot form the basis for patentability (Ans. 12).
Appellants’ arguments as to Crowell, Kaplan, and Roy are essentially
the same as were set forth against claims 1-5. With regard to the hang tags,
Appellants assert that the McMaster hang ties are peel-resistant, and
therefore are not suitable for use with the structure recited in claim 6, but
have not pointed out where language is found in claim 6 to support this
conclusion. Appellants have not argued the separate patentability of claim 7.
Although we have carefully considered all of the arguments set forth
by Appellants, we are not persuaded that the rejection of claims 6 and 7 is in
error, and therefore the rejection is sustained.
DECISION
The rejection of claims 1-5 as being unpatentable over Kaplan,
Crowell, and Roy is affirmed.
The rejection of claims 6 and 7 being unpatentable over Crowell, Roy,
Kaplan, and McMaster is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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