Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In order to expedite prosecution for Applicant/Appellant, The Office notes that the Board has already established:
“Claim 1
The Examiner finds that Meers discloses the invention substantially as claimed, except for the “odd number” limitation. Final Act. 3. In a first ground of rejection, the Examiner finds that it would have been obvious to modify Meers so that it could accommodate an array of bottles that had an odd number of bottles at each end edge. Jd. at 3-4. According to the Examiner, a person of ordinary skill in the art would have done this as a matter of optimizing a result effective variable. Jd. at 4. In a second ground of rejection, the Examiner finds that Stahl discloses a crate with a 3x5 bottle array. /d. at 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Meers to have a 3x5 array as taught by Stahl. /d. According to the Examiner, a person of ordinary skill in the art would have done this to hold a desired number of beverage containers. /d.
Meers is directed to a stackable, low depth beverage crate. Meers Abstract. William Apps is a co-inventor of both Meers and the instant application. Meers, page 1; Apps Affidavit. A review of the respective figures of Meers and the instant application reveals that the two crates disclosed therein share many features in common, such as the side columns, the contours of the upper band, and the contoured shape of the handles. Compare Meers Figs. 1-10; Instant Application Figs. 1-19. Meers’ crate holds 8 two-liter bottles in a 2x4 array. Meers J 18, Figs. 1, 7, 10.
Stahl is directed to a beverage crate. Stahl Abstract. Stahl’s crate accommodates 15 one-liter bottles in a 3x5 array. Stahl ¥ 31, Figs. 1-4. Appellant argues that Meers is for 2-liter bottles. Appeal Br. 16. According to Appellant, modifying Meers to hold an array of 15 bottles would make a loaded crate too heavy to carry. /d. at 17. Appellant’s arguments directed to each of the grounds are not persuasive. The background section of Appellant’s Specification admits that beverage containers come in a wide variety of sizes. Spec. 9 1. Appellant admits that 16 to 24 ounce bottles are carried in crates that feature a 4x6 array. Jd. Appellant further admits that it was known, in the prior art, to provide crates with an odd number of bottles (e.g., three bottles) along each end wall. /d. Moreover, Appellant admits that this is “typically done” with bottles that range in size from 28 ounces to 1.25 liters, “or larger.” Jd. ¥ 2. Beverage suppliers have been crating and shipping beverage containers for decades. With respect to size dimensions, no more than ordinary skill is required to figure out that a planform area of specified length and width can accommodate a relatively larger array of smaller bottles or a relatively smaller array of larger bottles. Appellant concedes that 4x6 arrays are known. Spec. 92. Stahl discloses that 3x5 arrays are known. Stahl Figs. 1-4. Meers discloses that 2x4 arrays are known. Meers Fig. 10.
Appellant’s argument that a 3x5 array of 2-liter bottles is too heavy to carry is not persuasive. Claim | is not limited to any particular bottle size. Claims App. The invention of claim 1 is nothing more than a predictable variation of Meers that includes an obvious modification to accommodate a greater number of smaller beverage containers. It is well settled that when a work, such as Meers, is available in one field of endeavor, design incentives and other market forces can prompt variations of it and, if a person of ordinary skill can implement a predictable variation, Section 103 likely bars its patentability. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Appellant admits that it was known, in the prior art, to provide beverage crates that accommodate bottles in a variety of arrays, including arrays with an odd number of bottles along each end wall, depending on the size of the bottles. Spec. ¥ 2.
Next, Appellant argues that a person of ordinary skill in the art would not modify Meers to accommodate an array of bottles with an odd number of bottles along each end wall. Appeal Br. 17. According to Appellant, such a modification would cause problems with the location and/or configuration of the handle. /d. Appellant essentially argues that the only solution that would be apparent to a person of ordinary skill in the art would be to “move the handle outward.” Jd. Appellant argues that such would have the undesired consequence of increasing the length and width of the crate to permit cross-stacking. Jd.
Appellant’s argument is not persuasive. Meers teaches that it was known to place a crate handle in an upper band portion above an end column. The 2x4 array of Meers features a single end column. Meers Fig. 1. A 3x5 array modification of Meers, as proposed by the Examiner’s rejection,’ would feature two end columns. Appellant’s argument about enlarging the length and width of the crate to accommodate a handle is a straw man that is predicated on the unfounded assumption that a person of ordinary skill in the art would only consider disposing a handle in the center of the end wall. As discussed in more detail below with respect to the rejection of claims 8 and 18, it was known in the prior art to produce beverage cartons and crates with offset handles.
The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well founded. In view thereof, we sustain each of the Examiner’s two grounds of rejection of claim 1.
Claim 15
Claim 15 is an independent claim that is substantially similar in scope to claim | except that it recites additional limitations directed to nesting and cross-stacking. Claims App. In traversing the rejection, Appellant argues that getting all of the claimed features into the same crate “is not easy and not obvious” for the same reasons offered in connection with the rejection of claim 1. Appeal Br. 18. Appellant’s claim 1 arguments are no more persuasive with respect to claim 15 than they were with respect to claim 1. We sustain each of the Examiner’s two grounds of rejection of claim 15.
Claim 16
Claim 16 depends from claim 15 and adds the limitation: “wherein the crate is cross-stacked on the identical crate loaded with bottles, with bottle caps of the bottles fully captured by the bottle capture areas of the crate.” Claims App. The Examiner finds that Meers is capable of being cross stacked. Final Act. 4. Appellant does not challenge the Examiner’s finding that Meers is capable of being stacked when loaded with bottles and is capable of being cross-stacked. Appeal Br. 18. Appellant merely argues in a vague and conclusory manner that “it is not obvious to make this all work in the same crate.” Id. Appellant does not articulate what is meant by “all this.” Jd. In submitting an Appeal Brief, an Appellant is expected, indeed required, to “explain why the examiner erred as to each ground of rejection contested.” 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s argument falls short of identifying any Examiner error. To the extent that we are to interpret Appellant’s “all this” argument as pertaining to whether it would have been obvious for a person of ordinary skill in the art to modify Meers in the manner proposed by the Examiner, we disagree with such a position.
With respect to the ground of rejection over Meers as a single reference, it is well settled that a claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason that would cause one of skill in the art to modify the prior art to obtain the claimed invention. Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 728 (Fed. Cir. 2002). In an obviousness analysis, “we do not ignore the modifications that one skilled in the art would make to a device borrowed from the prior art.” Jn re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). This follows from the prospect that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As previously discussed, we agree with the Examiner that a person of ordinary skill in the art would have found it obvious to modify Meers to accommodate an array with an odd number of bottles along the end wall. Expanding a 2x4 crate to accommodate a 3x5 array of smaller beverage bottles would have required no more than ordinary skill.
With respect to the combination of Meers and Stahl, Stahl explicitly discloses element 24 is a bottle top receiving area. Stahl 432. Stahl explicitly teaches that it can be stacked when loaded with bottles, id. 4 10. It is readily apparent from reviewing the Figures of Meers and Stahl that the bottles are spaced apart from each other the same distance in both the lengthwise and widthwise direction. Meers Figs. 7-10; Stahl Figs. 1—2.
Thus, the evidence before us inexorably leads to the conclusion that both Meers and Stahl can be cross-stacked when loaded. There is nothing in the Examiner’s proposed modification and combination that interferes with this cross-stacking capability and Appellant has certainly not brought anything to our attention to indicate otherwise.
We sustain each of the Examiner’s two grounds of rejection of claim 16.
Claims 2-6, 17, and 19
Appellant does not argue for the separate patentability of claims 2-6, which depend from claim 1, or for claims 17 and 19, which depend from claim 1. We sustain each of the Examiner’s two grounds of rejection of claims 2—6, 17, and 19. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability).
Unpatentability of Claims 8—14, and 25 over Meers and Kessler Claim &
Claim 8 is an independent claim that differs from claim 1, among other things, by reciting offset handles. Claims App. The Examiner relies on Kessler as disclosing a beverage case that features offset handles. Final Act. 4-5.
Appellant’s argument in traverse focuses on whether a person of ordinary skill in the art would have modified Meers with the teaching of offset handles from Kessler. Appeal Br. 19-21. Appellant’s argument, distilled to its essence, is that Kessler discloses a paperboard carton and Kessler uses an offset handle configuration to situate the handles in a place of strength where the paperboard overlaps with multiple folds. /d. at 20.
Appellant further argues that paperboard crates are “rarely relevant” to the design of plastic beverage crates. /d. at 21.
Appellant’s “rarely relevant” argument is wholly without merit. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. /nnovention Toys, LLC. v. MGA Entm'’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Kessler discloses a case for carrying beverage bottles. See Kessler col. 1, ll. 15-19. As such, it comes from the same field of endeavor as Appellant’s invention and, therefore qualifies as analogous art. See In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004) (explaining that prior art is analogous art for purposes of an obviousness analysis if it is from the same field of endeavor). It is well settled that the prior art need not be directed to the same purpose as that disclosed by Appellant in order to support the conclusion that the claimed subject matter would have been obvious. /n re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). “A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.” Jn re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). In the instant case, co-inventor Apps testifies that he considered it “counterintuitive” to offset the handles of a beverage carton. Apps Affidavit § 27. However, obviousness is decided from the standpoint of the hypothetical person of ordinary skill in the art, not the inventor. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). To determine patentability, a hypothetical person is presumed to know all the pertinent prior art, whether or not the applicant is actually aware of its existence. Jn re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). Consequently, under the correct analysis, a person of ordinary skill in the art would have known that a beverage carton could be fitted with offset handles, as taught by Kessler. See Kessler col. 3, ll. 28-31 (“the location of the two hand holes allows the carton to be carried conveniently with both hands if desired”). Thus, whether or not Mr. Apps and his colleagues considered offset handles to be “counterintuitive,” Kessler demonstrates that it was a known means by which a beverage carton can be carried “conveniently.” We sustain the rejection of claim 8.
Claims 9-14 and 25
Appellant does not argue for the separate patentability of claims 9-14 and 25 apart from arguments presented with respect to claim 8 which we have previously considered. We sustain the Examiner’s unpatentability rejection of claims 9-14 and 25. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability).
Unpatentability of Claim 18 over Meers, Stahl, and Kessler
Claim 18 depends directly from claim 17 and indirectly from claim 15 and adds the limitation: “wherein one of the handles is offset closer to one of the sides of the crate and the other of the handles is offset closer to the other of the sides of the crate.” Claims App.
In traversing this rejection, Appellant relies on the same arguments concerning offset handles that we previously addressed in connection with the rejection of claim 8. Appeal Br. 19-20. The same result obtains here. We sustain the Examiner’s unpatentability rejection of claim 18.
As mentioned above, Mr. Apps is a co-inventor of both Meers and the instant application. We have reviewed his affidavit testimony in its entirely, but do not find that it warrants a determination of patentability of the claims before us. Basically, Mr. Apps’s current application modifies his prior work in Meers in only two ways. First, the bottle array is increased from 2x4 to 3x5. Second, the handle is moved to an offset position on the end wall of the crate instead of in the middle of the end wall.
Paragraph 7 of Apps’s Affidavit demonstrates that he is aware of the wide variety of beverage bottle sizes available in the beverage packaging industry. Apps Affidavit § 7. He also demonstrates familiarity with arrays other than 2x4 arrays. /d. He also demonstrates familiarity with the relationship between bottle size and crate array, i.e., smaller bottles can be disposed in a larger array. /d. Mr. Apps testifies that a typical weight criteria for a fully loaded bottle crate is less than approximately 40 pounds. Id. Although the claims defining the invention are not limited to any specific size, we note that 15 one-liter bottles, as taught by Stahl, aggregates to a combined weight of about 33 pounds.
Apps admits that 4x6 array crates can be stacked and cross-stacked. Id. 411. Apps provides no persuasive testimony that it would be non- obvious to design a 3x5 array that allows stacking and cross-stacking using knowledge that it is generally known in the art for stacking crates of differing arrays.
Thus, in the final analysis, Mr. Apps’s Affidavit is useful only for pointing out the alleged advantages of using offset handles so that a person’s fingers can fit between bottles during manual carriage. /d. 434. There is no indication in Mr. Apps’s affidavit that he was aware of Kessler’s teaching of
offset handles at the time of the invention. Mr. Apps acknowledges that Kessler teaches the benefits of offsetting handles toward opposite side walls so that the carton can be carried more conveniently. /d. 437. Thus, Kessler and Mr. Apps arrived at the same conclusion on this matter. Kessler just arrived at it about 60 years before Mr. Apps did. Mr. Apps’s testimony does not apprise us of Examiner error.”
The Office also already provided:
“Appellant provides summaries in Appellant’s own words and then Appellant provides arguments beginning on page 10. Appellant states that “the crate disclosed in the present application achieves several competing and previously-contradictory design goals. Prior art that achieves one or two of these goals is almost completely irrelevant. Further, simply labeling one of these goals a “result-effective variable” does not rebut the fact that implementing the one goal (which is easy to do) in the prior art will historically undo achievement of at least one of the other goals. The rejections do not even acknowledge the competing nature of the design features or how one might achieve the claimed combination of features in light of the prior art. Appellant submitted the Rule 132 Affidavit of William P. Apps, one of the inventors of the present application, who (among other things) explains why these design goals were not previously achieved together in a single crate.” Appellant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Prior art that achieves the same goals as Appellant’s device is certainly not “almost completely irrelevant”. For example, Appellant does not appear to acknowledge that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Appellant also appears to be focusing on supporting case law provided by the Office without Appellant addressing entirety of the rejection. For example, with respect to “result-effective variable”, the entirety of the rejection actually included the following: “With respect to the number of capture areas, the Office notes that if the user desired less storage for more compact shipping and handling then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a three by one arrangement of which is an odd number and the Office notes that if the user desired more storage for holding more items then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a five by three arrangement of which is an odd number. Though not required, the Office further notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide an odd number of areas, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Though not required, if there is any question to the above, the Office notes that Stahl discloses an odd number of capture areas (fig 1 with a 3x5 arrangement of 15 total capture areas). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Meers in view of Stahl (by providing an odd number of capture areas, such as 3x5 arrangement) to hold a desired number of contents.” The case law that Appellant refers to is merely provided to support the motivation already provided previously. And with respect to the affidavit and the inventor’s “design goals”, as previously already provided, the Office notes that the affidavit by Appellant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Appellant then states, “regarding beverage crates in general, the following facts (which are also supported by common sense/general knowledge) set forth in the Apps Affidavit are not rebutted by any evidence” followed by a list from Appellant’s affidavit. The affidavit under 37 CFR 1.132 filed 10/05/2018 is insufficient to overcome the rejection of all the claims based upon the above prior art as set forth in the last Office action because: the affidavit amounts to an opinion of an expert with a vested interest in the outcome of the application and fails to outweigh the strength of the factual evidence of the prior art. Although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962). In assessing the probative value of an expert opinion, the examiner must consider the nature of the matter sought to be established, the strength of any opposing evidence, the interest of the expert in the outcome of the case, and the presence or absence of factual support for the expert's opinion. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,227 USPQ 657 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). In the instant case, the strength of the opposing evidence, such as Meers (20140110303), Meers (20140110303) and Kessler (2766933) as well as Meers (20140110303) and Kessler (2766933) and Stahl (20100230318). Further, the affidavit by Applicant include(s) statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of non-obviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716. Also, the affidavit by Applicant include(s) statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of non-obviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716. Also, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Also, states that the claimed subject matter solved a problem that was long standing in the art. However, in the affidavit by Applicant there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness.
With respect to Appellant’s statements to the weight of the device, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716. With respect to the odd number of bottles, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. The Office notes that Appellant does positively claim bottles in one claim (dependent claim 13), but Appellant fails to provide the number of bottles that Appellant intends to hold. In other words, based on what Appellant has provided, all of the captures areas need not actually be filled. The Office notes that the claims do provide capture areas having an odd number of which is addressed in the rejection and will be addressed below. With respect to moving handles outward, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Appellant has further not made clear Appellant’s statements with respect to moving handles “outward”. With respect to a length-ratio, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. With respect to width of the crate increased, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Appellant has further not made clear Appellant’s statements with respect to increasing width as well as full bottle capture, increasing footprint, etc. With respect to cross-stack, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. The Office notes that Appellants claims 15, 22, 25, merely provide the intended use of the crate “can be” cross stacked of as already provided in the rejection, Meers is capable of the intended use of where the device can be cross stacked on bottles such if the user rotated an additional device and stacked on top of the device with the intended contents such as incorporating bottles with caps. With respect to a 3x1 crate, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Further, the Office notes that Appellant provides no evidence that a smaller crate of 3x1 would be “unstable”. To the contrary, a smaller create with a singular row would provide increased stability to the ease of transport. Further, Appellant has not addressed that the rejection also provides for any odd number of capture areas, for example but not limited to a 3x5 arrangement. With respect to the type of bottle and weight, the Office again notes that, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Appellant then states “Before the present invention, if one of skill were to redesign the crate of Meers to have an odd number of bottle-receiving areas along each end wall, there would be a bottle aligned with the center of the handle in each end wall. One would therefore move the handle outward. If one wanted to maintain the ability to crossstack the Meers crate, one would also increase the width of the crate, and the bottle capture areas would have to be opened at the periphery of the crate. (Apps Aff. f29).” Again, the affidavit by Applicant refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of non-obviousness is commensurate in scope with the claims. See MPEP § 716. Appellant has further not made clear Appellant’s statements with respect to aligning a bottle at the center, etc. The rejection actually states that “With respect to the number of capture areas, the Office notes that if the user desired less storage for more compact shipping and handling then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a three by one arrangement of which is an odd number and the Office notes that if the user desired more storage for holding more items then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a five by three arrangement of which is an odd number. Though not required, the Office further notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide an odd number of areas, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Though not required, if there is any question to the above, the Office notes that Stahl discloses an odd number of capture areas (fig 1 with a 3x5 arrangement of 15 total capture areas). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Meers in view of Stahl (by providing an odd number of capture areas, such as 3x5 arrangement) to hold a desired number of contents.”
With respect to Appellant’s statements to paperboard cases, in response to appellant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kessler is not provided for the material and no such statements were provided in the rejection. For example, the rejection actually states that Kessler discloses handles offset (26s as shown in fig 2). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify The combined reference in view of Kessler (by offsetting handles towards opposing sides adjacent end columns) to provide suspension means and improved carrying convenience with both hands as well (Kessler col. 3: 20-40). Kessler discloses similar art with respect to a container for capturing bottles also having handles at each end. With respect to tearing cardboard, the Office again notes in response to appellant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kessler is not provided for the material and no such statements were provided in the rejection (see above). With respect to cardboard lids, the Office again notes in response to appellant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kessler is not provided for the material and no such statements were provided in the rejection (see above). Appellant then provides statements with respect to one hand, point of failure in paperboard, and moving handles. The prior art of Kessler states “As best shown in Figure 2, the case is provided with two hand grip holes 26-26 which are located in the end walls near the top of the case at diagonally opposite corner portions. The hand holes are in duplicate but are symmetrically opposite in location and direction of inclination, such that the case may be suspended, as shown in Figure 3, from either end. It will also be understood that the location of the two hand holes allows the carton to be carried conveniently with both hands if desired. (col. 3:20-40). Appellant has failed to make Appellant’s arguments with respect to one hand as Kessler provides for both hands. Again, with respect to paperboard, in response to appellant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Kessler is not provided for the material and no such statements were provided in the rejection. Appellant has also failed to make clear Appellant’s strength statements, as the rejection again actually states “It would have been obvious to one of ordinary skill in the art at the time of the invention to modify The combined reference in view of Kessler (by offsetting handles by moving handles towards opposing sides adjacent end columns) to provide suspension means and improved carrying convenience with both hands as well (Kessler col. 3: 20-40).”
Appellant then focuses on “result-effective variable” case law. Although already addressed above, the Office again notes the entirety of the rejection actually included the following: “With respect to the number of capture areas, the Office notes that if the user desired less storage for more compact shipping and handling then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a three by one arrangement of which is an odd number and the Office notes that if the user desired more storage for holding more items then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a five by three arrangement of which is an odd number. Though not required, the Office further notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide an odd number of areas, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Though not required, if there is any question to the above, the Office notes that Stahl discloses an odd number of capture areas (fig 1 with a 3x5 arrangement of 15 total capture areas). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Meers in view of Stahl (by providing an odd number of capture areas, such as 3x5 arrangement) to hold a desired number of contents.” The case law that Appellant refers to is merely provided to support the motivation already provided previously. In other words, if the user desired to hold a different number of contents, then it is well within the skill of one of ordinary skill in the art to modify the number of capture areas to hold the desired number of contents, such but not limited to 15 bottles, of which is an odd number.
With respect to the outstanding 112 rejection of claim 25, Appellant states that figure 25 provides support for the negative limitation of the handles opening not over the second end column. Appellant states “a handle opening formed in the upper band portion above each of the first end columns, but not over each of the second end columns,”. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff ’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). Appellant’s original specification does not provide support for the new claim. To the contrary, Appellant shows in at least Appellant’s figure 5 that the handle opening is above element 28 as 28 extends outward at the top of 28 directly below 30. In addition to the above, the Office further notes that when the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. “[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). Therefore, based on the above, Appellant cannot possibly use figure 5 as support for a written description issue. The 112 rejection stands.
Appellant then provides additional statements on pages 16-24 that appear to repeat the same statements previously provided by Appellant in Appellant’s brief but in different words. For example, Appellant states “Specifically, the Examiner offers two alternatives for modifying Meers: a three-by-one arrangement or a five-by-three arrangement. Neither alternative is supported by the evidence. In fact, the evidence shows that these alternatives are not feasible or obvious.” The Office has already addressed these above. Appellant then provides additional statements to 2-liter bottles, weight, and a 3x1 arrangement. The Office has already addressed these above. Nevertheless, the Office again notes that that Appellant provides no evidence that a smaller crate of 3x1 would be problematic. To the contrary, a smaller create with a singular row would provide increased stability to the ease of transport. Further, Appellant has not addressed that the rejection also provides for any odd number of capture areas, for example but not limited to a 3x5 arrangement. Also, in response to Appellant's argument that the references fail to show certain features of appellant’s invention, it is noted that the features upon which appellant relies (i.e., 2-liter bottles, weight, 3x1) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, the Office notes that Appellant does positively claim bottles in claim 13, but Appellant fails to provide the number of bottles that Appellant intends to hold. The Office notes that the claims do provide capture areas having an odd number of which is addressed in the rejection and extensively addressed above. Appellant then provides statements again with respect to centering bottles and moving handles outward. The Office has already addressed these statements above. Appellant then provides additional statements to design goals and cross-stacking. The Office has already addressed these statements above. Appellant then provides further statements with respect to the material of Kessler, one hand intended use, odd number of capture areas, as well as additional statements again to cross-stacking and further statements to the odd number of capture areas as well as weight. The Office has already addressed these statements above. Nevertheless, the Office notes that Appellant’s Background of the Invention, Appellant admits to an odd number of captures areas as being prior art. Appellant states “Many designs for crates for carrying beverage containers are known….bottles arranged with an odd number of bottles (e.g. three bottles) along each end wall, one of the bottles is aligned with the center of the handle, thus reducing the amount of space for the user's fingers. This is more typically done with larger bottles, such as 28 oz, 32 oz, 1 liter or 1.25 liter bottles, or larger.” As indicated by Appellant and as evidenced above, an odd number of capture areas within a crate is very much well known in the art.
Accordingly, Appellant has not demonstrated error in the factual findings or reasoning set forth by the Office and the Office maintains all of the rejections.”
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9-14, 28, 33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 9 and 28 and now 33, Applicant now provides an upper band portion extending completely and continuously around a periphery of the base, the upper band portion having a constant distance between an upper edge of the upper band portion and a lower edge of the upper band portion completely and continuously around the periphery of the base; a lower wall portion extending between the upper band portion and the base, the lower wall portion offset inwardly from the upper band portion. Applicant fails to provide the above in Applicant’s original specification, as for example the portion having a constant distance. Applicant’s original specification states “the upper band portion 18 is 3.25″ tall from the upper edge to the lower edge, but taking into account the wave shape, it is 3.5″ from peak to peak.” 3.25” does not equal 3.5” and Applicant has not provided a constant distance. Furthermore, Applicant provides variable distances, as evidenced below:
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Claims 10-14 is/are rejected as being dependent on the above rejected claim(s). Applicant must remove the above impermissible new matter in order to overcome the rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 15, 21-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meers (20140110303) in view of Delbrouck (4095720).
Meers discloses a crate (figs 1-11), base (12 with edges at side and ends as shown in fig 1), capture areas/recesses (areas/recesses adjacent 62 capable of capturing bottles, also shown below 62
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as such in figure 2 and provided above), side columns (18), end column (22), upper band portion/side, end walls (24 with handle 32; valley 30, 32; upper and lower handle portion as shown in fig 4 where 34 is convex; intended use of being able to nest to identical crate as in figure 9; peak 26, 28; Meers further discloses side columns adjacent 18 and end column 22, 20; Meers further discloses at bottom of fig 2 capture ribs in the above figure as well with “capture” as the recesses/area include a rib along the edge of recess). With respect to the number of capture areas, the Office notes that if the user desired less storage for more compact shipping and handling then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a three by one arrangement of which is an odd number and the Office notes that if the user desired more storage for holding more items then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a five by three arrangement of which is an odd number. Though not required, the Office further notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide an odd number of areas, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Meers discloses the claimed invention above with the exception of the following which is disclosed by Delbrouck: capture ribs extend along an outer periphery of each recess and with a peripheral portion aligned with edge of base (with a recess adjacent area within 9s on bottom such as in fig 2, with edge of 9 in line with base piece above, both at end edges and side edges). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Meers in view of Delbrouck (by adding or moving the location of ribs) in order to accommodate different types of contents in variable shapes and sizes.
With respect to 3x5 array, the Office notes the above was already extensively addressed in the parent Application and by the Board. Nevertheless, with respect to the number of capture areas, the Office notes that if the user desired more storage for holding more items then it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the number of areas to provide a five by three arrangement of which is an odd number. Though not required, the Office further notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide an odd number of areas, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Re claim 15, the combined reference discloses the claimed invention above with the exception of the following that is taught by Kessler: handles offset (26s as shown in fig 2 from a centerline; the Office notes that Meers already discloses that the handle positioned along centerline and that adjustmen