Appeal No. 2006-1451
Application No. 08/802,472
Therefore, we find the appellant's arguments as to claim 23 to be unpersuasive.
Accordingly, we sustain the examiner’s rejection of claim 23 as rejected under 35
U.S.C. § 103 as being unpatentable as obvious over Gossard in view of Schaffer.
New Grounds of Rejection Under 37 CFR § 41.50(b)
Pursuant to 37 CFR § 41.50(b), we enter the following new grounds of rejection:
Claims 18 and 19 are rejected under 35 U.S.C. § 112, first paragraph, as not being
fully described or enabled to the extent of the scope of the claim.
More particularly, claim 18 has a limitation in which an outer layer of packaging is
shaped to visually suggest the associated activity. However, claim 18 was not
presented with the original filing, 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. 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.
And on p. 12
To continue the theme, three of the packaging 52 items can
be located in a box 54 resembling that which is used to contain or
sell golf balls
Accordingly, a claim to the shape of the outer packaging is described and
enabled only to the extent of a box that is shaped to resemble the type of box the iconic
shape is ordinarily enclosed in, not to the extent that it is shaped to resemble any
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