Appeal No. 2006-1451
Application No. 08/802,472
department store about a decade ago and come up with some
reason to combine and modify, the theory of the rejection still does
not work. The Examiner mentions ''adding plastic bubble enclosing
the contents for sale in a store as well as for shipping purposes, to
protect the contents,'' but this is not a teaching of the claimed outer
layer of packaging shaped to visually suggest information about the
associated activity. The Examiner also theorizes ''also printing the
contents or various characteristics of the contents on the outside
layer of packaging which in the instant case may include ''Baseball
shaped sports memorabilia Bank'' or a similar phrase, along with
the location of the manufacturer, does not teach the claimed outer
laver of packaging shaped to visually suggest information about the
associated activity. In sum, even forgiving a mass of error, the
theory still does not reach the claim requirements.
In sum, the Examiner has not made out a case of prima facie
obviousness based on Gossard alone. [See Brief at p. 54-55]
We note that all of this argument is misplaced because neither the examiner nor the
appellant has construed what is meant by the phrase “outer laver of packaging shaped
to visually suggest the associated activity.” This claim is not an originally presented
claim, but was added by amendment on 6/29/1998 (certified as deposited in U.S. mail
on 6/22/1998), over a year after initial filing. Therefore, we must consult the
specification to determine the proper scope and interpretation of the phrase that would
support the claim.
The support in the specification is on p. 7
Additionally, a protective sleeve such as that employing the
protective cover can be packaged thematically. For example, if the
sleeve is used for a golf bag, this sleeve can be housed in a plastic
assembly resembling a golf ball, which in turn can be located in a
box resembling that which is used to house golf balls, thereby
suggesting the use to which the sleeve can be applied.
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