Ex Parte Clark et al

Patent Trial and Appeal Board

Nov 8, 2018

13880084 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/880,084 09/23/2013
11632 7590 11/09/2018
Hoffmann & Baron, LLP
6900 Jericho Turnpike
Syosset, NY 11791
FIRST NAMED INVENTOR
Kerri Clark
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.
1421-355 PCT/US 1821
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
11/09/2018 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 KERRI CLARK, BRIAN HAWTHORNE,
MAXIMILIANO RODRIGUEZ, ALLEN SYDNEY ALDRIDGE,
CHRISTOPHER J. FELTMAN, ALEJAMDRA BUITRAGO, and
SIMON RICHARD GAINEY
Appeal2017-001253
Application 13/880,084 1
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Kerri Clark et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Oct. 23,
2015, hereinafter "Final Act.") rejecting claims 1 and 3-9 under 35 U.S.C.
§ 103(a) as being unpatentable over Helps et al. (EP 1 801 032 Al,
1 According to Appellants' Appeal Brief (filed June 20, 2016, hereinafter
"Appeal Br."), Intercontinental Great Brands LLC is the real party in
interest. Appeal Br. 1.
Appeal2017-001253
Application 13/880,084
published June 27, 2007, hereinafter "Helps") and Burrows (US 7,192,628
B2, issued Mar. 20, 2007). 2,3
Appellants' representative presented oral argument on October 31,
2018. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants' invention is directed "to a package closure using magnetic
material." Spee. 1, 11. 14--15.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A package for containing and dispensing contents
compnsmg:
a housing having a package interior for accommodating
said contents;
said housing including a pair of package portions and
defining an opening for accessing said package interior;
a closure formed of magnetic material applied to at least
one of said packaging portions for permitting re-openable
closure of said package portions, said closure having a magnetic
field strength of between about 50-400 gauss, measured at a
2 Claim 2 is canceled. Appellants' Amendment 3 ( filed July 21, 2015).
3 The Examiner has withdrawn the rejection of claims 1 and 7 under 35
U.S.C. § 112, second paragraph, as being indefinite, and the rejection of
claims 1, 8, and 9 on the ground of nonstatutory double patenting over claim
1 of Bourbeau et al. (US 8,893,955 B2, issued Nov. 25, 2014). See
Examiner's Answer 2 (dated Sept. 8, 2016, hereinafter "Ans."); see also
Final Act. 2, 5---6.
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Application 13/880,084
distance of no greater than 1 mm and said magnetic field
strength is no greater than about 10 gauss measured at a
distance of 5mm.
ANALYSIS
Appellants have not presented arguments for the patentability of
claims 3-9 apart from claim 1. See Appeal Br. 3-7. Therefore, in
accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 3-9 standing or falling with claim 1.
The Examiner finds that Helps discloses a package including a
housing 10 having an interior for holding contents, a pair of packaging
housing portions 13, 14 defining an opening for accessing the interior, and a
magnetic closure 30, 31. Final Act. 3 (citing Helps, Fig. 4). The Examiner
further finds that Burrows discloses "a package which includes magnetic
material having a magnetic field strength of between about 50-400 gauss,
measured at a distance of no greater than I mm." Id. (citing Burrows, col.
20, 1. 35---col. 21, 1. 32). Thus, the Examiner concludes that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the closure of
Helps to be of similar magnetic strength to the magnetic
material of Burrows in order to provide a closure which does
not require a thick, heavy magnetized material ... but that still
may be easily reopened and secured.
Id. ( citing Burrows, col. 2, 11. 35-36). However, the Examiner finds that the
combined teachings of Helps and Burrows fail to disclose a "magnetic field
strength ... no greater than about 10 gauss measured at a distance of 5mm."
Id. As such, the Examiner further determines that
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Application 13/880,084
[I]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the
magnetic material so that its magnetic field strength is no
greater than about 10 gauss measured at a distance of 5mm for
manufacturer preference, since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art.
Id. at 3--4 (citing In re Boesch, 617 F.2d 272 (CCPA 1980)).
Appellants argue that "the Examiner's determination of obviousness is
based on impermissible hindsight" because the Examiner purportedly has
used Appellants' own description of the problem and the solution provided
to the problem. Appeal Br. 5---6. According to Appellants, "the variables
optimized ... were not those known to be considered effective" and the
results obtained were "unexpectedly good." Id. at 6. Appellants contend
that "[t]he references of record" fail to disclose a magnetic field strength, as
called for by claim 1. Id. at 5. Appellants further assert that Burrows does
not contemplate selecting an appropriate magnetic field strength "such that it
will not adversely impact certain devices which are susceptible to magnetic
interference if placed in close proximity to a magnet." Reply Brief 2 ( filed
Oct. 27, 2016, hereinafter "Reply Br.").
We are not persuaded by Appellants' arguments because the
Examiner is correct that Burrows specifically discloses a magnetic field
strength of about 50--400 gauss, measured at a distance of less than 1 mm,
for magnetically attaching substrate 10 and play pieces 34. See Ans. 2
(citing Burrows, col. 20, 1. 35---col. 21, 1. 32). More specifically, Burrows
discloses that when a magnetized layer 44 is placed adjacent to a substrate
10 with a non-magnetized, but magnetizable layer 14, "the magnetic field
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Application 13/880,084
from the layer 44 induces magnetism in the layer 14, and the magnetized
layers attract." Burrows, col. 12, 11. 15-20, Fig. 12 (bolding omitted).
Burrows further discloses that "[ t ]he strength of the magnetic force is
determined by the strength of the [magnetic] field from the magnetized layer
44, where it passes through the non-magnetized layer 14." Id., col. 12, 11.
20-23 (bolding omitted). Stated differently, when a permanently
magnetized area interacts with a non-magnetized, but magnetizable area, the
permanently magnetized area generates a magnetic field that induces
magnetism in the non-magnetized area to form an attractive force
determined by the strength of the magnetic field. Hence, the magnetic field
strength is determined by the permanently magnetized area without
contribution from the non-magnetized, but magnetizable area.
As noted above, the Examiner points to Burrows' example of a
maximum magnetic field strength of approximately 200 gauss between a
permanently magnetized area 44 and a non-magnetized, but magnetizable
area separated by 100 µm (0.1 mm). See Ans. 2; see also Burrows, col. 20,
11. 43--46, Fig. 13 4• In view of the discussion above, this means that
permanently magnetized area 44 generates a magnetic field having a
strength of 200 gauss at a distance of 100 µm (0.1 mm) that induces
magnetism in the non-magnetized area. Hence, the Examiner is correct in
that Burrows discloses "a magnetic field strength of between about 50-400
4 As the top surface of the non-magnetized, but magnetizable area is 100 µm
(0.1 mm) below the printed surface of substrate page 10, and the separation
between permanently magnetized area 44 and the non-magnetized layer is
likewise 100 µm (0.1 mm), we appreciate that play piece 34 is positioned
adjacent to substrate page 10. See Burrows, col. 20, 11. 29-32, Figs. 13, 14.
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Application 13/880,084
gauss, measured at a distance of no greater than I mm," as recited in claim
I. See Ans. 2. Additionally, the Examiner has provided a reason with
rational underpinning to provide the magnetic field strength of Burrows to
the magnetic closure 30, 31 of Helps, namely, "to provide a closure which
does not require a thick, heavy magnetized material ... but that still may be
easily reopened and secured." See Final Act. 3; In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness") (cited with approval in KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007)). Appellants have not persuasively argued
the Examiner's findings or that the conclusion lacks rational underpinning.
Further, we note that it is well settled that where a variable is known
to affect a particular desirable result, i.e., a "result-effective" variable, "it is
not inventive to discover the optimum or workable ranges by routine
experimentation," because the desire to improve results would motivate
skilled artisans to experiment with, and improve upon, known conditions in
the prior art. In re Applied Materials, Inc., 692 F.3d 1289, 1295-96 (Fed.
Cir. 2012) (citations and quotations omitted). In this case, because Burrows
discloses that one of "[t]he "key factors in creating a magnetic interaction
between a permanently magnetized play piece [34] and a permanently
magnetized play surface [ 1 OJ" is "the strength of the induced [magnetic]
fields," Burrows discloses that the magnetic field strength affects a particular
result, i.e., magnetic interaction, and, thus, constitutes a result-effective
variable. Burrows, col. 10, 11. 24--31, col. 22, 11. 8-14, Figs. 1, 8 ( emphasis
added).
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Burrows further discloses, as the Examiner correctly finds, that the
magnetic field strength on one side 12 of substrate 10 should attract
substrate 10 and play pieces 34, but should not magnetically affect the other
side 12 of substrate 10. See Ans. 3 (citing Burrows, col. 21, 11. 43-57).
Stated differently, Burrows discloses a magnetic field strength that creates a
magnetic interaction for attracting substrate 10 and play pieces 34 on one
side 12 of substrate 10, but at the same time does not magnetically affect the
other side 12 of substrate 10. Hence, in contrast to Appellants' argument,
Burrows does contemplate selecting an appropriate magnetic field strength
"which would not have adverse interaction with [other] magnetic attractable
materials at a short distance from the magnets themselves." Reply Br. 3.
Therefore, in light of Burrows' disclosure discussed supra, we agree with
the Examiner that "[a]rriving at ... [a] magnetic [field] strength ... no
greater than 10 gauss [ measured at a distance of 5mm] is therefore within
[ the skill ofJ one of ordinary skill in the art as discovering the optimum
value ofa result[-]effective variable." Ans. 3.
Lastly, as Burrows discloses a magnetic field strength that
magnetically affects one side 12 of substrate 10, but not the other, we agree
with the Examiner that in Burrows "it is desirable to not have a significant
magnetic [field] strength when there is [a] distance equal to the thickness of
the substrate [10]." Ans. 3 (citing Burrows, col. 7, 11. 36-37). Burrows
discloses that the thickness of substrate 10 is 500 µm, which is 0.5 mm. 5 See
5 Although the Examiner erroneously converts the thickness of substrate 10
from 500 µm to 5 mm, rather than 0.5 mm, the Examiner correctly points to
column 7, lines 36-37 as evidence that Burrows discloses a substrate
thickness of 500 µm.
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Application 13/880,084
Burrows, col. 7, 11. 36-37. Therefore, having an extremely low magnetic
field strength of "no greater than about 10 gauss" at a distance of 5 mm,
which is a distance that is ten times larger than the distance of Burrows,
would be predictable and not "unexpected," as Appellants urge.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Helps and
Burrows. Claims 3-9 fall with claim 1.
SUMMARY
The Examiner's decision to reject claims 1 and 3-9 under 35 U.S.C.
§ 103(a) as unpatentable over Helps and Burrows 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)(l )(iv).
AFFIRMED
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