95002351 (P.T.A.B. Oct. 7, 2014)

Ex Parte 7726480 et al

Patent Trial and Appeal BoardOct 7, 2014

95002351 (P.T.A.B. Oct. 7, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,351 09/14/2012 7726480 12-29270 3534 23363 7590 10/07/2014 CHRISTIE, PARKER & HALE, LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER FETSUGA, ROBERT M ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 10/07/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ AVC CORP. Respondent, Requester v. WINTERBORNE, INC. Appellant, Patent Owner ________________ Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B21 Technology Center 3900 ________________ Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON and DANIEL S. SONG, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 Issued June 1, 2010 to Joseph Nazari (the “’480 patent”). The ’480 patent issued from Appl. No. 11/374,769, filed March 14, 2006. The ’480 patent, along with related U.S. Patent 8,205,747 B2 (subject of Inter Partes Reexamination Control No. 95/002,352), has been the subject of litigation as detailed on page 2 of the “Patent Owner’s Appeal Brief under 37 C.F.R. § 41.67,” dated November 7, 2013 (“Appeal Brief” or “App. Br. PO”). As presently advised, pending litigation between the Patent Owner and the Requester is stayed. (See App. Br. PO 2) Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 2 STATEMENT OF THE CASE 1 The Patent Owner, Winterborne, Inc., appeals from the Examiner’s 2 final decision rejecting claims 1–14. Claim 1 is amended. (Cf. “Right of 3 Appeal Notice” mailed August 8, 2013 (“RAN”) at 4 (stating that the 4 amendment made no “substantive amendment”)). We have jurisdiction over 5 the Patent Owner’s appeal under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) 6 (2011). 7 This appeal comes before the Board on the briefs and an oral 8 argument held on September 24, 2014. The Examiner’s Answer mailed 9 January 14, 2014, incorporates by reference the grounds of rejection as 10 stated in the RAN. The Patent Owner relies on the “Patent Owner’s Appeal 11 Brief under 37 C.F.R. § 41.67,” dated November 7, 2013 (“Appeal Brief” or 12 “App. Br. PO”), and on the “Patent Owner’s Rebuttal Brief on Appeal,” 13 dated February 14, 2014 (“Rebuttal Brief” or “Reb. Br. PO”). The 14 Requester, AVC Corp., relies on the “Third Party Requester Respondent’s 15 Brief” dated December 6, 2013 (“Resp. Br. Req’r”). We also refer to the 16 Requester’s “Request for Inter Partes Reexamination of Patent,” dated 17 September 14, 2012 (“Request”). 18 We sustain the rejection of claims 1–14 under 35 U.S.C. § 103(a) 19 (2011) as being unpatentable over Ritter (US 7,207,441 B2, issued Apr. 24, 20 2007) and Loheed (GB 1,142,773, publ. Feb. 12, 1969) (RAN 68). This 21 holding constitutes a general affirmance of the Examiner’s rejection of 22 claims 1–14. Therefore, we need not address separately the rejection of 23 claim 8 under §103(a) as being unpatentable over Ritter and Spiess (US 24 2,637,251, issued May 5, 1953) (RAN 8). See 37 C.F.R. § 41.77(a). 25 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 3 1 CLAIMED SUBJECT MATTER 2 Claim 1 is illustrative and self-explanatory: 3 1. A display pack for a product, 4 comprising: 5 a first and a second overlaying corrugated 6 cardboard sheets, the first cardboard sheet having a 7 first upper facing, a first lower facing and a first 8 inner corrugated member with first corrugations 9 between the first upper and first lower facings, the 10 second cardboard sheet having a second upper 11 facing, a second lower facing and a second inner 12 corrugated member with second corrugations 13 between the second upper and second lower 14 facings, the first and second overlaying corrugated 15 cardboard sheets having an outer peripheral edge 16 and an original thickness, at least one of the 17 cardboard sheets defining at least one opening; 18 at least one container having a flat insertion 19 portion and a chamber portion for holding the 20 product, the insertion portion being sandwiched 21 between the two cardboard sheets and the chamber 22 portion protruding from a plane of the cardboard 23 sheets via the opening, the overlaying cardboard 24 sheets having an inner portion extending around 25 the opening and covering the insertion portion, and 26 a peripheral area extending from the inner portion 27 to and including at least a segment of the outer 28 peripheral edge; and 29 an adhesive between the first and the second 30 corrugated cardboard sheets in at least a portion of 31 the peripheral area to adhere the two corrugated 32 cardboard sheets, 33 wherein the inner portion has substantially 34 the original thickness, and the peripheral area of 35 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 4 the first and second overlaying corrugated 1 cardboard sheets having a portion of the first upper 2 facing, the first inner corrugated member, the first 3 lower facing, the second upper facing, the second 4 inner corrugated member, and the second lower 5 facing is crushed more than approximately 50% of 6 the original thickness. 7 (App. Br. PO 17 (Claims App.)). 8 9 ISSUE 10 Neither the Patent Owner nor the Requester distinguishes among the 11 claims on appeal when arguing the patentability of the claimed subject 12 matter. Therefore, the claims on appeal stand or fall as a group for purposes 13 of the rejection under §103(a) as unpatentable over Ritter and Loheed. 14 Claim 1 is representative. See 37 C.F.R. § 41.67(c)(1)(vii). 15 We adopt and incorporate by reference the Examiner’s findings at 16 page 7, lines 1–14 of the RAN. Ritter describes a display pack 12 for a 17 product. The display pack 12 includes a conventional plastic blister cavity 18 20 defining a chamber portion surrounded by an insertion portion in the 19 form of a flange 22. Front and back cards 16, 24 made from corrugated 20 cardboard material sandwich the insertion portion 22 while the chamber 21 portion protrudes forwardly through a hole 18 in the front card 16. An 22 adhesive in the form of a heat-seal coating placed on the inside facing 23 surfaces of the front and back cards 16, 24 adheres the two corrugated cards 24 together. (Ritter, col. 8, l. 64 – col. 9, l. 30 and Figs. 1, 2 and 3). 25 The Patent Owner appears to agree with the Examiner and the 26 Requester that Ritter describes a display pack 12 including each and every 27 limitation recited in claim 1 except one: Ritter does not describe a display 28 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 5 pack in which the peripheral area of the corrugated cardboard sheets has, as 1 recited in claim 1, “a portion of the first upper facing, the first inner 2 corrugated member, the first lower facing, the second upper facing, the 3 second inner corrugated member, and the second lower facing . . . crushed 4 more than approximately 50% of the original thickness.” (See Reb. Br. PO 5 3). The sole issue in this appeal is whether one of ordinary skill in the art 6 familiar with the teachings of Ritter and Loheed would have had reason to 7 modify Ritter’s display pack 12 to satisfy this limitation. 8 9 FINDINGS OF FACT 10 The record supports the following findings of fact (“FF”) by a 11 preponderance of the evidence. 12 1. Ritter teaches enhancing the security of a display pack 12 13 against theft by joining the front and back cards 16, 24 of the display pack 14 together with the blister cavity 20 by means of a heat-seal coating placed on 15 the inside facing surfaces of the front and back cards 16, 24. (Ritter, col. 9, 16 ll. 21–26). Ritter also teaches that the hot-melt coating material may be used 17 “sparingly, e.g., . . . primarily only around the common peripheral regions of 18 the respective front and rear cards.” (Ritter, col. 12, ll. 31–37). 19 2. Loheed describes: 20 [I]n a method of manufacturing a corrugated fibre 21 board blank having two spaced paper liners and an 22 intervening corrugated paper layer[,] the crests of 23 the corrugation of which are bonded to the liners, 24 at certain edge areas the board is crushed so that 25 the liners and paper layer are bonded at those areas 26 into a solid mass of substantially inseparable fibres 27 with a thickness less than half the thickness of the 28 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 6 uncrushed fibre board area, the solid board having 1 parallel surfaces. 2 (Loheed 1, ll. 52–63). 3 3. Loheed teaches that, when certain of the edge areas of the board 4 are crushed in this fashion: 5 [T]he adhesive, or bonding agent used to bond the 6 liners with the corrugated medium[,] will spread 7 out between the liners and corrugated medium 8 during the crushing process, to provide a solid 9 board of intertwining and intermingled fibres from 10 all three layers, the layers losing to a substantial 11 degree their identity as such by the crushing and 12 bonding operation. 13 (Loheed 3, ll. 55–63). 14 4. Loheed also describes a technique for fabricating a box for 15 containing a liquid from a corrugated cardboard blank. The technique 16 includes crushing ends of the blank, including upper edge area 36, into solid 17 board. (See Loheed 3, l. 126  4, l. 7 and Fig. 4). The technique preferably 18 also includes coating both sides of the blank with a hot melt adhesive 19 coating to render both surfaces of the blank impervious to liquid. (See 20 Loheed 4, ll. 26–29). 21 5. Loheed then teaches folding the blank and sealing overlapping 22 ends as at 40 to form a tube of rectangular cross-section. (See Loheed, 4, ll. 23 29–37 and Fig. 3). Loheed describes the “manufacturer’s joint” 40 as 24 “effected by heat sealing the overlapped ends 34 and 48, the hot melt 25 adhesive coating applied to the opposite sides of the blank being sufficient to 26 form the joint, when the overlapped ends are subjected to heat and pressure.” 27 (Loheed 4, ll. 29–37). Loheed teaches that: 28 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 7 The bonding of the crushed layers in the solid fibre 1 board areas together with the surface coating of hot 2 melt adhesive permits overlapped portions of such 3 solid board to be bonded together by the 4 [application] of heat and pressure, such that any 5 two or more superimposed areas of such solid fibre 6 board areas become in [effect] a single solid fibre 7 board section of thickness corresponding to the 8 number of superimposed layers bonded together. 9 (Loheed 4, ll. 54–64). 10 6. In order to close and seal the upper end of the box, one moves 11 upper opposite portions 130, 132 of the upper crushed edge portion 36 12 toward one another to form a fin or flattened cuff 141 running along the 13 center line 140 of the tube. (See Loheed 4, ll. 81–88 and Figs. 10, 10A, 10B 14 and 11). One then squeezes the fin or flattened cuff 141 between heating 15 and pressure bars 200, 202. (See Loheed 4, ll. 103–07; cf. Request 12 (“the 16 fin 141 is created by overlapping and gluing the opposing crushed edges”)). 17 Sufficient heat is applied to the cuff to fuse the hot 18 melt adhesive plastic coating material between the 19 facing surfaces of the cuff, whereby the cuff is 20 bonded into a solid fin, the fin 141 being 21 continuous, and of a thickness double the thickness 22 of the solid board [initially formed by crushing the 23 upper edge area 36] except as at the 24 manufacturer’s joint 40, where three thicknesses 25 may be evident. 26 (Loheed 4, ll. 107–15). 27 7. Loheed teaches that sufficient adhesive either must be used in 28 manufacturing the corrugated cardboard material or must be added to the 29 material after manufacture to produce the solid board of intertwining and 30 intermingled fibers when an edge is crushed. (See, e.g., Loheed 6, ll. 92–31 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 8 111). That said, Loheed recognizes that the “selective application of 1 adhesive to the corrugated layer during manufacture of the corrugated board 2 will evidence savings in the amount of adhesive employed.” (Loheed 7, ll. 3 28–32). 4 5 ANALYSIS 6 The Examiner in the RAN correctly concludes that it would have been 7 obvious “to crush the Ritter adhesive area, in order to enhance strength.” 8 (RAN 7). Ritter teaches enhancing the security of a display pack 12 against 9 theft by joining the front and back cards 16, 24 of the display pack together 10 with the blister cavity 20 by means of a heat-seal coating placed on the 11 inside facing surfaces of the front and back cards 16, 24. (FF 1). This 12 teaching would have provided one of ordinary skill in the art reason to seek 13 means for creating a strong, theft-resistant bond between the front and back 14 cards 16, 24. (See Resp. Br. Req’r 5). 15 Loheed teaches that crushing an edge of a corrugated cardboard blank 16 containing sufficient adhesive or bonding agent produces an edge consisting 17 of a solid board of intertwining and intermingled fibers. (FF 2 and 3). 18 Loheed also teaches forming a fin or flange joining edges of corrugated 19 cardboard material by crushing the edges; coating the edges with a hot melt 20 adhesive plastic coating material; moving the edges together; and squeezing 21 the edges together between heating and pressure bars. (FF 6). Loheed 22 teaches that the joint formed in this manner is continuous and has a thickness 23 double that of the crushed edges (id.); and that forming a “manufacturer’s 24 joint” by applying heat and pressure to overlapping, crushed edges of 25 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 9 corrugated cardboard material would yield, in effect, a single solid fiber 1 board section of thickness double that of the crushed edges (FF 5). 2 These teachings would have provided one of ordinary skill in the art a 3 reasonable expectation that crushing the peripheries of the front and back 4 cards of a display pack; coating the peripheries with a hot melt adhesive 5 plastic coating material; and squeezing the peripheries together between 6 heating and pressure bars would succeed in yielding strong and tenacious 7 joints between the front and back cards. (See Resp. Br. Req’r 5–6). These 8 teachings provide a rational underpinning for the Examiner’s conclusion that 9 it would have been obvious to modify Ritter’s display package by crushing a 10 portion, thereby satisfying the limitation reciting “a portion of the first upper 11 facing, the first inner corrugated member, the first lower facing, the second 12 upper facing, the second inner corrugated member, and the second lower 13 facing . . . [was] crushed more than approximately 50% of the original 14 thickness.” 15 The Patent Owner argues that “Loheed’s main purposes for crushing 16 the edge of a corrugated cardboard sheet is, in combination with sufficient 17 glue, to seal the edges from liquid penetration. . . . A secondary benefit 18 disclosed by Loheed is that crushing reduces the thickness of the 19 manufacturer’s joint that is eventually created.” (App. Br. PO 10). A patent 20 is prior art for what it reasonably discloses or suggests, In re Aslanian, 590 21 F.2d 911 (CCPA 1979), and not merely for what may be cast, in retrospect, 22 as its “main purpose.” As the Requester points out, a “person of ordinary 23 skill in the art ‘need not see the identical problem addressed in a prior art 24 reference to be motivated to apply its teachings.’” (Resp. Br. Req’r 6, citing 25 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 10 Cross Med. Prods. Inc. v. Medtronics Sofamor Danek Inc., 424 F.3d 1293, 1 1323 (Fed. Cir. 2005)). Even assuming without deciding that the Patent 2 Owner’s characterization of “Loheed’s main purposes” is correct, one of 3 ordinary skill in the art familiar with the teachings of Ritter and Loheed as a 4 whole would have had reason to modify Ritter’s display pack in the fashion 5 claimed in claim 1. 6 The Patent Owner points out that Loheed teaches the addition of 7 sufficient adhesive or bonding agent to the corrugated cardboard material 8 during manufacture to produce a solid board when an edge of the material is 9 crushed. (See FF 7). Ritter teaches at one point that the hot melt adhesive 10 used to join the front and back cards of a display pack should be used 11 sparingly. (See FF 1). The Patent Owner argues that these teachings would 12 have discouraged one of ordinary skill in the art from using a method such 13 as that taught by Loheed to join the front and back cards of a display pack 14 such as Ritter’s. (Reb. Br. PO 6). 15 Our reviewing court instructs us that “a given course of action often 16 has simultaneous advantages and disadvantages, and this does not 17 necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 18 437 F.3d 1157, 1165 (Fed. Cir. 2006). Loheed itself recognizes that the 19 sparing use of adhesive in manufacturing the corrugated cardboard material 20 may result in cost savings. (FF 7). Nevertheless, one of ordinary skill in the 21 art would have had reason to adopt a method similar to that of Loheed for 22 joining the peripheries of the front and back cards for better joint strength or 23 ease of manufacture notwithstanding additional costs which might have been 24 incurred due to the amount of adhesive required in the manufacture of the 25 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 11 corrugated cardboard used in the cards. See Orthopedic Equipment 1 Company, Inc. et al. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) 2 ("the fact that the two disclosed apparatus would not be combined by 3 businessmen for economic reasons is not the same as saying that it could not 4 be done because skilled persons in the art felt that there was some 5 technological incompatibility that prevented their combination. Only the 6 latter fact is telling on the issue of nonobviousness."). 7 The Patent Owner also argues that the “sealed glue joint of Loheed 8 requires additional costs beyond just the cost of added glue at the edges, e.g., 9 the cost attributed to the additional labor for manually applying the glue 10 and/or equipment to selectively apply the glue only to the edge regions.” 11 (Reb. Br. PO 6). Nevertheless, Ritter’s suggested solution to the problem of 12 applying the glue sparingly is selectively applying glue only to the edge 13 regions. (FF 1). This additional cost is not a persuasive reason why one of 14 ordinary skill in the art might have been discouraged from modifying 15 Ritter’s display pack as proposed by the Examiner. See Orthopedic, 702 16 F.2d at 1013. 17 We sustain the rejection of claims 1–14 under § 103(a) as being 18 unpatentable over Ritter and Loheed. 19 20 DECISION 21 We AFFIRM the Examiner’s decision rejecting claims 1–14. 22 Requests for extensions of time in this inter partes reexamination 23 proceeding are governed by 37 C.F.R. § 1.956. 24 In the event neither party files a request for rehearing within the time 25 provided in 37 C.F.R. § 41.79, and this decision becomes final and 26 Appeal 2014-006678 Reexamination Control 95/002,351 Patent No. 7,726,480 B2 12 appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 1 timely serve notice on the Director of the United States Patent and 2 Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 3 4 AFFIRMED 5 6 peb 7 8 Patent Owner: 9 CHRISTIE, PARKER & HALE, LLP 10 PO BOX 29001 11 GLENDALE, CA 91209-9001 12 13 Third Party Requester: 14 LAUSON & TARVER LLP 15 880 APOLLO STREET 16 SUITE 301 17 EL SEGUNDO, CA 90245 18