Ex Parte Whiteside

Patent Trial and Appeal Board

Jun 7, 2016

11082984 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111082,984 03/18/2005
85003 7590 06/09/2016
Howard B. Rockman, P.C.
150 N. Wacker Drive, Suite 1450
Chicago, IL 60606
FIRST NAMED INVENTOR
Michael G. Whiteside
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
N oferi on appeal 9664
EXAMINER
NEWAY,BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
06/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hrockman@rockmanip.com
rockmanpatents@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL G. WHITESIDE
Appeal2014-004465
Application 11/082,984
Technology Center 3700
Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael G. Whiteside (Appellant) 1 seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 4, 5, 8, 14, 15, 20-23,
25-28, 30-34, 36, and 37.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Mikraljo International, LLC as the real party in
interest. Appeal Br. 1.
2 Although claims 16-19 are listed as rejected in the Office Action
Summary (Final Act. 1 (dated July 5, 2013)), the Examiner did not discuss
those claims in the body of the Office Action or in the Answer. Appellant
considers those claims canceled. Appeal Br. 31 (Claims App.). We do not
consider claims 16-19 rejected.
Appeal2014-004465
Application 11/082,984
BACKGROUND
The disclosed subject matter "is directed to transit packaging of
reduced content, for use in shipping walled [ c ]ontainers of glass, aluminum,
steel, plastic or other materials, being shipped as a multi-pack format, and
incorporating the use of multiple strapping." Spec. 1. Claims 21, 22, 30,
and 37 are independent. Claim 21 is reproduced below, with emphasis
added:
21. A transit package comprising:
a wrapper extending around a plurality of
like, vertically positioned containers, said wrapper
having a central portion, and side panels attached to
said central portion, said side panels foldable to
extend substantially perpendicular to said central
portion to form a tray having said vertically
positioned containers positioned therein in mutually
abutting symmetrically arranged relation, and each
container in abutment with all adjacent containers;
at least one container holding device located
in said central portion, said at least one container
holding device engaging an end portion of at least
one of said containers, said container holding device
securing said containers against movement in a
horizontal plane;
at least two laterally extending tensioned
straps having low elongation characteristics, said
straps being in contact with a portion of said
containers, each of the at least two straps securing
the wrapper about the assembled containers and
engaging the wrapper with certain of the containers
in separate horizontal planes to compressively
secure said containers in two horizontal planes, the
containers remaining compressively secured in a
vertical position under a load applied to the transit
package; and
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Appeal2014-004465
Application 11/082,984
said at least one container holding device in
combination with said at least two straps securing
said containers in a mutually immobilizing relation
and integrating the wrapper and the at least two
straps with said containers to form a dynamically
loadable structural transit package that forms a load
bearing structure adapted to be assembled as part of
a stable, multi-tier transit load bearing structure.
EVIDENCE RELIED ON BY THE EXAMINER
Stoecklin US 4,079,566 Mar. 21, 1978
Novatny US 4,158,410 June 19, 1979
Whiteside US 6,039,181 Mar. 21, 2000
Gloyer Machine Translation of NI A
EP 0 093 302
REJECTIONS
1. Claims 4, 5, 20, 21, 23, 25-28, and 36 are rejected under
35 U.S.C. § 102(b) as anticipated by Whiteside.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Whiteside and Stoecklin.
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Whiteside and Novatny.
4. Claims 22, 30-34, and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Whiteside and Gloyer.
5. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Whiteside, Gloyer, and Stoecklin.
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Appeal2014-004465
Application 11/082,984
DISCUSSION
Rejection 1 - The rejection of claims 4, 5, 20, 21, 23,
25-28, and 36 under 35 U.S.C. § 102(b)
Independent claim 21 recites "vertically positioned containers" with
"each container in abutment with all adjacent containers." Appeal Br. 31-32
(Claims App.). For these limitations, the Examiner identified containers 36
in Figure 1 of Whiteside as the "containers" and cited column 2, lines 9-11
and column 3, lines 60-63 of Whiteside. Final Act. 2.
Appellant argues that Figures 1-3 of Whiteside do not show
"containers compressed into abutment with all adjacent containers" but
rather "show spaces between the containers in the package." Appeal Br. 14;
see also id. at 13 (stating that Figure 3 of Whiteside "shows containers with
clearly defined spaces between each container, and chime locks located in
these defined spaces").
The Examiner responds that the Specification "does not specifically
define the term 'abut'" and states that "the figures show that abutment could
either mean the containers having physical contact (as shown in horizontally
arranged adjacent containers 88 in figure 7) or the containers having contact
through a projecting part[,] i.e., the wrapper (as shown in diagonally
arranged adjacent containers 88 in figure 7)." Ans. 2. The Examiner also
states that "[i]n the Merriam Webster dictionary, the term 'abut' is defined
as 'to touch along a border or with a projecting part."' Id. Applying this
construction, the Examiner states that "each of the containers of Whiteside
... are in abutment with all adjacent containers through the wrapper" and
states that Figure 1 of Whiteside "shows that the containers are both vertical
and in abutment through a projecting part 12." Id. at 3.
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Appeal2014-004465
Application 11/082,984
On the record here, we agree with Appellant that the Examiner has
applied the construction of "each container in abutment with all adjacent
containers" in an unreasonably broad manner. See Reply Br. 2 (arguing that
"[t]he Examiner projects this definition beyond its broadest reasonable
interpretation"). Construing "in abutment" as "touching along a border or
with a projecting part"-in line with Merriam Webster's Dictionary (see
Ans. 2}-is not, by itself, unreasonable in light of the Specification. The
Examiner's application of that construction to the facts here, however, is
unreasonable because, as argued by Appellant, "the dictionary definition
relied upon by the Examiner ... requires that the 'projecting part' be a part
of the article or articles that are in abutment, and not a separate, non-
contiguous structure extending between items that are not themselves in
abutment." Reply Br. 2 (also arguing that element 12 of Whiteside "is
clearly not a 'projecting part' of the containers themselves"). Because
element 12 in, for example, Figure 1 of Whiteside, is not a "projecting part"
of the identified "containers," the Examiner has not shown that Whiteside
satisfies the limitation at issue, as construed.
As to the Examiner's discussion of Figure 7 of the Specification (Ans.
2), we agree with Appellant (Reply Br. 2-3), that one of ordinary skill in the
art would not consider pairs of diagonally spaced containers 88 to be "in
abutment" with each other.
For these reasons, we do not sustain the rejection of claim 21, or the
rejection of claims 4, 5, 20, 23, 25-28, and 36, which depend from claim 21.
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Appeal2014-004465
Application 11/082,984
Rejections 2 and 3 -The rejection ofclaims 8
and 14 under 35 U.S.C. § 103(a)
Claims 8 and 14 depend from claim 21. Appeal Br. 30, 31 (Claims
App.). The Examiner's reliance on Stoecklin (Rejection 2) and Novatny
(Rejection 3) does not remedy the deficiencies in the teachings of Whiteside,
discussed above (see supra Rejection 1 ). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 8 and 14.
Rejection 4 - The rejection of claims 22, 30--34,
and 37 under 35 U.S.C. § 103(a)
Independent claims 22, 30 and 37 each recites a limitation similar to
that recited in claim 21 and discussed above (see supra Rejection 1 }-"each
container abutting all adjacent containers." See Appeal Br. 32, 34, 36. For
these claims, the Examiner relies on the same deficient findings and
conclusions with regard to Whiteside discussed above with regard to claim
21. Compare Final Act. 2, with id. at 7, 8, 11. Moreover, the Examiner's
reliance on Gloyer does not remedy the deficiencies in the teachings of
Whiteside. Thus, for the same reasons discussed above, we also do not
sustain the rejection of claims 22, 30, and 37, and the claims in this
Rejection depending therefrom.
Rejection 5 -The rejection of claim 15
under 35 U.S.C. § 103(a)
Claim 15 depends from claim 22. Appeal Br. 31 (Claims App.). The
Examiner's reliance on Stoecklin does not remedy the deficiencies in the
combined teachings of Whiteside and Gloyer, discussed above (see supra
Rejection 4). Thus, for the same reasons discussed above, we do not sustain
the rejection of claim 15.
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Appeal2014-004465
Application 11/082,984
DECISION
We REVERSE the decision to reject claims 4, 5, 8, 14, 15, 20-23, 25-
28, 30-34, 36, and 37.
REVERSED
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