Application of Meng

• Citation: 181 USPQ 94,492 F.2d 843
• Decision Date: 07 March 1974
• Docket Number: Patent Appeal No. 9169.
• Court: United States Court of Customs and Patent Appeals
• Parties: Application of John G. MENG and Gerald J. Driessen.

181 USPQ 94, 492 F.2d 843 (1974)

Application of John G. MENG and Gerald J. Driessen.

Patent Appeal No. 9169.

United States Court of Customs and Patent Appeals.

March 7, 1974.

Herman J. Gordon, William S. Feiler, Chicago, Ill. (Dressler, Goldsmith, Clement & Gordon, Chicago, Ill.), attorneys of record, for appellants.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Fred Sherling, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

This is an appeal from the decision of the Board of Appeals, affirming the rejection under 35 U.S.C. § 103 of claims 1 to 9 of appellants' application serial No. 81,687, filed October 19, 1970, for "Package with Staggered Product Slices and Process and Apparatus for Producing the Same." We reverse.

The Invention

The invention relates to a package containing a stack of individual product slices formed of a flexible material, such as processed cheese, wherein the lateral edges of adjacent slices are offset relative to one another to provide "gripping portions having a dimension that is sufficient to facilitate manual separation of the slices but insufficient to allow the gripping portions to sag out of the plane of the major portion of the slice." The lateral edges of alternating slices remain aligned with one another to provide parallel surfaces at the sides of the stack. Figure 5 of the specification illustrates the package:

Independent claim 1 is directed to the package in general with claims 2 to 4 specifying the amount of offset at "less than 5/16 inch," "greater than 1/8 inch" and "between 1/8 inch and 5/16 inch," respectively.

Claims 5 to 8 are drawn to the process of producing the claimed package from product ribbons interleaved to create the offset relationship and then severed into individual stacks. Claim 9 claims the package as a product of the process of claim 6.

The Decision Below

Beck et al. (Beck)¹ is directed to a novel method of packaging food products, such as cheese slices, which results in a package containing several food-filled pouches. No description is given of any relationship of the individual product slices. The following illustration of the pouches is found in Figure 10 of the patent:

Palmer² discloses the acknowledged prior art method of producing processed cheese which entails the formation of ribbons of the cheese, stacking the ribbons, and severing the same into individual blocks of cheese slices with all of their edges completely aligned.

The examiner rejected claim 1 under 35 U.S.C. § 102 as anticipated by the upper portion of the package shown in Figure 10 of Beck. Claims 2 to 4 were deemed unpatentable under 35 U.S.C. § 103 as obvious choices for the amount of offset for the slices in the Beck pouch. Claim 1 was also rejected under 35 U.S. C. § 103, as were claims 5 to 9, as unpatentable over Beck in view of Palmer.

The board refused to sustain the § 102 rejection because Beck does not state and the Beck drawings "do not make it clear" that all the slices in his pouches were of the same external dimensions, whereas claim 1 specifically requires that the slices have "substantially the same external dimensions."

The § 103 rejections covering the package claims were sustained however, on the following reasoning:

The package illustrated in Figure 10 of Beck et al., in our opinion, renders, at least, obvious the package defined by claims 1 through 4 and 9. One being aware of the problem of separation of individual slices of a material from a stack of such slices, viewing the Beck et al. package would readily recognize that the offset illustrated would provide a means for separating the individual slices. However, whether one would recognize the solution to the aforementioned problem is not here controlling since the package defined by the claims is illustrated by Figure 10.

* * * * * *

Nor do the claims patentably distinguish on the basis of the amount of offset. The offset illustrated in Figure 10, appears to be of a dimension in which the edges do not sag, since no sag is illustrated. Moreover, the determination of an appropriate amount of offset for the particular material being packaged in order to prevent sag and to facilitate gripping, in our opinion, would not be unobvious to the packager.

The total absence from the Beck text of any reference to any offset of the slices was dismissed in these words:

The drawings clearly disclose the offset relationship of the individual slices, and are, therefore, available as a reference for that purpose. * * *

Appellants had submitted two affidavits. The Bush affidavit was not mentioned by the board. The affidavit of Beck, co-inventor of the Beck reference, to the effect that the concept of offset slices was entirely novel to him and had not been contemplated in his patent, was found unpersuasive, the board saying, "What a patentee may have intended or may have seen cannot negate what is conveyed by his patent disclosure."

The rejection of process claims 5 to 8 was similarly sustained, "the modification of Palmer to produce the Beck et al. package" being considered "obvious to a worker of merely ordinary skill in this art."

OPINION

The problem solved by appellants may be stated, "How can packaged slices be more rapidly and easily separated, without damaging the slices, in fast food restaurants and like institutions?" Prior to the first office action, appellants called attention to sixteen prior patents, among them the Beck and Palmer patents relied upon in the rejections before us. The issue to be decided is, "would one of ordinary skill in the art, presented with that problem and those sixteen prior patents — and totally unaware of appellants' solution — be led to do what appellants did?" We think not.

We arrive at our conclusion against the background of the scope and content of the prior art, the differences between the claims and that art, and the level of ordinary skill in that art.³ Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

The fundamental error below lay in an over-evaluation of the scope and content of the prior art. That made the claimed differences appear inconsequential and caused the level-of-skill evidence to be given insufficient weight.

We read, as we must, the primary reference to Beck without the benefit of appellants' teachings. Beck is devoted solely to packaging by the use of envelopes and associated dividers. It has nothing whatever to do with separating food slices. In one part of one figure, Figure 10, it shows slices with alternately offset edges. Only that portion of one figure is alleged by the examiner and the board to render appellants' invention obvious. In the other half of the same figure, the edges of the slices are shown as randomly offset, some extending beyond both edges of the adjacent slice. Appellants say that was a positive showing of slices having nonidentical external dimensions. We agree. Figure 7, a partial longitudinal view, and Figure 10, a lateral cross-section, show offsets at both the lateral and longitudinal edges of the slices. Figure 6 shows the cheese to be Swiss, which, appellants and affiant Beck say, is cut from a block or wheel in slices of varying external dimensions and thereafter individually stacked.

The erroneous evaluation of the prior art herein is illustrated by the statement of the examiner's opinion (after saying that the Beck affidavit could not overcome the Beck reference):

* * * Most individuals, upon observing carefully the cheese stack shown in the upper portion of Fig. 10 of Beck et al, would conclude that the slices were offset in order to facilitate manual separation of slices, as the Examiner believes the honorable Board will appreciate. * * * (Emphasis the examiner\'s)

The board stated the same view, as set forth in the quotation from the board's opinion, supra.

But "whether one would recognize the solution to the aforementioned problem" is controlling. It begs the question to say that the claimed package is "illustrated by Fig. 10." A claimed invention is "illustrated," in the sense of 35 U.S.C. § 103, by a drawing which, independently of an applicant's disclosure, would lead those skilled in the art to recognize the claimed invention as the solution to the problem it solved, i.e., by a drawing which renders the invention "obvious."

In our view, the claimed package is not illustrated in Figure 10. We find no warrant for the assumption that one lacking knowledge of appellants' teachings would be sure to disregard the lower half of Figure 10, the relationship...