Ex Parte Olsen et al

Patent Trial and Appeal Board

Jan 22, 2014

11512677 (P.T.A.B. Jan. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT OLSEN and CHRISTOPHER J. LUDWIG
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Appeal 2012-000730
Application 11/512,677
Technology Center 3700
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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.
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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
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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.
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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
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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
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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 . . .”).
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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
evidence”). 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
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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

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