Ex Parte Olsen et alDownload PDFPatent Trial and Appeal BoardJan 22, 201411512677 (P.T.A.B. Jan. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT OLSEN and CHRISTOPHER J. LUDWIG ____________ Appeal 2012-000730 Application 11/512,677 Technology Center 3700 ____________ Before: STEFAN STAICOVICI, WILLIAM A. CAPP and BART A. GERSTENBLITH, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 2, 4-8 and 10-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-000730 Application 11/512,677 - 2 - THE INVENTION Appellants’ invention relates to flexible carriers for containers. Spec. 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A flexible carrier for carrying a plurality of containers comprising: a flexible sheet having two rows of container receiving apertures formed therein, each container-receiving aperture in each row of container-receiving apertures including at least three generally straight segments forming a taper toward the other row of container-receiving apertures, each container receiving aperture tapering to a plateau including one of the at least three generally straight segments and each container- receiving aperture elongated so that a length that extends longitudinally along flexible carrier is between 2 and 4 times greater than a corresponding width, wherein a maximum width of each container-receiving aperture is approximately equal to a spacing between adjacent transverse pairs of container- receiving apertures; and a handle formed along one row of container-receiving apertures. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Olsen ’989 Edwards Weaver Marco Olsen ’994 Olsen ‘075 US 4,064,989 US 4,624,363 US 4,782,955 US 5,653,334 US 6,148,994 US 7,510,075 B2 Dec. 27, 1977 Nov. 25, 1986 Nov. 8, 1988 Aug. 5, 1997 Nov. 21, 2000 Mar. 31, 2009 Appeal 2012-000730 Application 11/512,677 - 3 - The following rejections are before us for review: 1. Claims 1, 2, 5-8, 10-12 and 14-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Edwards, Weaver and Marco. 2. Claims 4 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Edwards, Weaver, Marco and Olsen ’994. 3. Claims 1, 2, 5-8, 10-12 and 14-16 are rejected on the grounds of non-statutory obviousness-type double patenting over Olsen ’989 and claims 1, 6, 7, 9, 13, 16, 18 and 30 of Olsen ‘075.1 4. Claims 4 and 13 are rejected on the grounds of non-statutory obviousness-type double patenting over claims 1, 6, 7, 9, 13, 16, 18 and 30 of Olsen ’075, Olsen ’989 and Olsen ’994. OPINION Unpatentability of Claims 1, 2, 5-8, 10-12 and 14-16 Appellants argue claims 1, 2, 5-8, 10-12 and 14-16 as a group. App. Br. 7-9. We select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds, and Appellants do not dispute, that Edwards discloses all of the elements of claim 1 except for a straight plateau and a handle. Ans. 5-6. The Examiner relies on Weaver for the straight plateau and Marco for the handle. Ans. 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to have modified Edwards’ apertures with a straight plateau segment as taught by Weaver. Ans. 6-7. According to the Examiner, a 1 The application on appeal is a continuation-in-part of the application that issued as Olsen ’075. Appeal 2012-000730 Application 11/512,677 - 4 - person of ordinary skill in the art would have done this to create a tighter fit for containers. Id. Appellants traverse the rejection by arguing that Edwards lacks a straight segment plateau. App. Br. 8. Appellants argue that Weaver does not remedy the alleged defect in Edwards. Id. Appellants acknowledge that Weaver has a flat edge (i.e., plateau) near the center of the carrier. App. Br. 9. Appellants argue that Weaver’s apertures are oval, which Appellants distinguish from having a taper. Id. Appellants contend that their claimed aperture results in a carrier that will not invert relative to the containers and, in addition, will result in a carrier that will not move upward, downward or laterally relative to the containers. Id. (citing Spec. 7-8). The Examiner responds by pointing out that Weaver has a straight segment in the same location as the curved segment of Edwards. Ans. 10. The Examiner further states that substituting the curved segment for a straight segment would still result in apertures that are tapered as claimed. Id. The Examiner further responds by noting that Weaver’s oval shape results in a tapering toward the straight segment since the width of the aperture is reduced as it approaches the straight segment. Ans. 11, annotated fig. 1 of Weaver. In response to Appellants’ argument that the instant invention results in a carrier that is less likely to invert, the Examiner notes that the claims under review do not contain limitations directed to inversion reduction. Ans. 12. The Examiner states the reason to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem and that it is not necessary that the prior art suggest the proposed combination in order to achieve the same advantage or result Appeal 2012-000730 Application 11/512,677 - 5 - discovered by Appellants. Id. (citing In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)). In their Reply, Appellants argue that it would not have been obvious to a person of ordinary skill in the art to use a straight segment in the plateau area of Edwards because Edwards already has three straight sections. Reply Br. 3. In presenting this new argument, Appellants essentially concede that use of straight segments in an aperture for cylindrical containers provides a stretch in the flexible material that facilitates retention of the containers. Reply Br. 2-4. Finally, Appellants argue that the Examiner has failed to establish that the straight segment must be positioned on the inward side of the aperture. Reply Br. 4. In studying the respective figures of Appellants’ Application and Edwards, the apertures for holding the containers are substantially similar in shape. Compare figs. 1, 5 with Edwards, figs. 1, 2. Both sets of figures present straight segments that taper toward the center of the container carrier (i.e., the mid-line separating the two rows of apertures). Id. The respective inventions are substantially similar in that neither continues the tapering until it reaches a point, such as the apex of a triangle or V-shape. Id. The inventions differ primarily in that as Appellants’ taper approaches the center of the carrier, the respective tapering segments transition to a short straight segment that truncates the V-shape. Id. Edwards, on the other hand, truncates the tapering straight segments with a single, long-radius curvilinear segment. See Edwards, figs. 1, 2. One problem with Appellants’ position is that claim 1 does not contain any limitation directed to a lower limit of the length of the straight Appeal 2012-000730 Application 11/512,677 - 6 - plateau segment. Clms. App’x., Claim 1.2 Since the claim covers plateau segments of very short length, together with the fact that the claim does not preclude the use of curvilinear transitions between the tapering segments and the plateau segment, claim 1 is broad enough to cover a shape that is almost exactly identical to the shape depicted in Edwards. See Edwards, fig. 1, 2.3 Weaver discloses a straight segment disposed on the interior edge of the aperture. Weaver, fig. 1. We thus agree with the Examiner that it would have been obvious to modify Edwards by incorporating a straight (or “generally†straight) plateau section, like Weaver’s, into the segment of the aperture disposed between the two tapering straight segments. The Examiner has articulated sufficient reasoning with a rational underpinning as to why one of ordinary skill in the art would have been prompted to make the proposed combination at the time of invention. See Ans. 6-7. With respect to Appellants’ argument that the claimed invention is less likely to invert, this argument amounts to nothing more than 2 The upper limit of the length of the plateau is bounded by the claim limitation directed to the length-to-width ratio of the aperture. See Clms. App’x., Claim 1 3 Although the Examiner does not include it in the findings of fact, the relatively long radius of the curvilinear segment of Edwards plateau, or some subset thereof, may arguably be considered as defining a “generally†straight segment. Words of approximation, such as “generally†and “substantially,†are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter. See Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). Thus, a “generally†straight segment need not be perfectly straight. Id. We decline to exercise our discretionary authority here to make new and additional findings of fact and/or enter a new grounds of rejection; nevertheless, we have taken the overall shape of the Edwards aperture into account in our analysis under 35 U.S.C. § 103 (a) (“. . . differences between the subject matter sought to be patented and the prior art are such that subject matter as a whole would have been obvious . . .â€). Appeal 2012-000730 Application 11/512,677 - 7 - unsubstantiated attorney argument. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for competent evidence). Appellants’ reliance on statements from the Specification to support the attorney argument is to no avail as such does not amount to evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments relying on factually unsupported assumptions to rebut a prima facie case of obviousness “can hardly be considered factual evidenceâ€). As we discussed in more detail above, the shape of Edwards’ apertures is nearly identical to the claimed aperture shape, which provides no lower limit for the range of possible lengths. As such we are not persuaded that a person of ordinary skill in the art would not reasonably expect the two apertures to function similarly. A prima facie case of obviousness exists where the claimed ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). In view of the foregoing discussion, we believe the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1, 2, 5-8, 10-12 and 14-16. Unpatentability of Claims 4 and 13 Appellants do not argue for the separate patentability of claims 4 and 13 apart from arguments that we have previously considered with respect to claim 1. App. Br. 7-9. For the same reasons expressed above with respect Appeal 2012-000730 Application 11/512,677 - 8 - to claim 1, we sustain the Examiner’s unpatentability rejection of claims 4 and 13. 37 C.F.R. § 41.37(c)(1)(vii). Non-Statutory Double Patenting We do not reach the Examiner's provisional rejection of claims 1, 2, 4- 8 and 10-16 on the ground of non-statutory obviousness-type double- patenting. See Ex parte Moncla, 95 U.S.P.Q.2d 1884 (BPAI 2010) (precedential). DECISION The decision of the Examiner to reject claims 1, 2, 4-8 and 10-16 on the grounds of non-statutory double patenting is AFFIRMED. The decision of the Examiner to reject claims 1, 2, 4-8 and 10-16 as unpatentable under 35 U.S.C. § 103(a) 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)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation