Ex Parte 8,205,747 B2 et al

Patent Trial and Appeal Board

Oct 7, 2014

95002352 (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.
95/002,352 09/14/2012 8,205,747 B2 12-29271 8995
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 2014-006971
Reexamination Control 95/002,352
Patent No. 8,205,747 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 26, 2012 to Joseph Nazari (the “’747 patent”). The ’747
patent issued from Appl. No. 12/790,747, filed May 28, 2010. The ’747
patent, along with related U.S. Patent 7,726,480 B2 (subject of Inter Partes
Reexamination Control No. 95/002,351), 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 18, 2013 (“Appeal Brief” or “App. Br. PO”). As
presently advised, pending litigation between the Patent Owner and the
Requester is stayed. (App. Br. PO 2).
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STATEMENT OF THE CASE 1
The Patent Owner, Winterborne, Inc., appeals from the Examiner’s 2
final decision rejecting claims 1–20, which were not amended during the 3
reexamination proceeding. (See “Right of Appeal Notice” mailed August 4
15, 2013 (“RAN”) at 4). We have jurisdiction over the Patent Owner’s 5
appeal under 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a) (2011). 6
This appeal comes before the Board on the briefs and an oral 7
argument held on September 24, 2014. The Examiner’s Answer mailed 8
January 14, 2014, incorporates by reference the grounds of rejection as 9
stated in the RAN. The Patent Owner relies on the “Patent Owner’s Appeal 10
Brief under 37 C.F.R. § 41.67,” dated November 18, 2013 (“Appeal Brief” 11
or “App. Br. PO”), and on the “Patent Owner’s Rebuttal Brief on Appeal,” 12
dated February 14, 2014 (“Rebuttal Brief” or “Reb. Br. PO”). The 13
Requester, AVC Corp., relies on the “Third Party Requester Respondent’s 14
Brief,” dated December 18, 2013 (“Resp. Br. Req’r”). We also refer to the 15
Requester’s “Request for Inter Partes Reexamination of Patent,” dated 16
September 14, 2012 (“Request”). 17
We sustain the rejection of claims 1–20 under 35 U.S.C. § 103(a) 18
(2011) as being unpatentable over Ritter (US 7,207,441 B2, issued Apr. 24, 19
2007) and Loheed (GB 1,142,773, publ. Feb. 12, 1969) (RAN 6–8). This 20
holding constitutes a general affirmance of the Examiner’s rejection of 21
claims 1–20. Therefore, we need not address separately the rejection of 22
claim 10 under §103(a) as being unpatentable over Ritter and Spiess (US 23
2,637,251, issued May 5, 1953) (RAN 8). See 37 C.F.R. § 41.77(a). 24
25
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CLAIMED SUBJECT MATTER 1
Claim 1 is illustrative and self-explanatory: 2
1. A display pack for a product, 3
comprising: 4
a corrugated cardboard sheet and a flat sheet 5
of paper overlaying each other in a stacked 6
configuration, the cardboard sheet having an upper 7
facing, a lower facing and an inner corrugated 8
member with corrugations defining air gaps 9
between the upper and lower facings, 10
the stacked configuration having an outer 11
peripheral edge and an original thickness, 12
the paper sheet defining at least one 13
opening; 14
at least one container having a flat insertion 15
portion and a chamber portion for holding the 16
product, the insertion portion being sandwiched 17
between the cardboard sheet and the paper sheet 18
and the chamber portion protruding from a plane 19
of the stacked configuration via the opening, 20
the stacked configuration having an inner 21
portion extending around the opening and covering 22
the insertion portion, and at least one peripheral 23
area extending from the inner portion to and 24
including at least a segment of the outer peripheral 25
edge; 26
and an adhesive between the corrugated 27
cardboard sheet and the paper sheet in at least a 28
portion of the peripheral area to adhere the 29
corrugated cardboard sheet and the flat sheet,2 30

2 The “flat sheet” is understood to be the same element as the “paper
sheet.”
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wherein the inner portion has substantially 1
the original thickness, and 2
the at least one peripheral area of the stacked 3
configuration having a portion of the upper facing, 4
the inner corrugated member, and the lower facing 5
is crushed with reduced air gaps therein to a 6
thickness up to approximately 50% of the original 7
thickness. 8
(App. Br. PO 20 (Claims App.)). 9
10
ISSUE 11
Neither the Patent Owner nor the Requester distinguishes among the 12
claims on appeal when arguing the patentability of the claimed subject 13
matter. Therefore, the claims on appeal stand or fall as a group for purposes 14
of the rejection under §103(a) as unpatentable over Ritter and Loheed. 15
Claim 1 is representative. See 37 C.F.R. § 41.67(c)(1)(vii). 16
We adopt and incorporate by reference the Examiner’s findings at 17
page 7, lines 1–14 and page 8, lines 9–11 of the RAN. Ritter describes a 18
display pack 12 for a product. The display pack 12 includes a conventional 19
plastic blister cavity 20 defining a chamber portion surrounded by an 20
insertion portion in the form of a flange 22. Front and back cards 16, 24 21
made from corrugated cardboard material sandwich the insertion portion 22 22
while the chamber portion protrudes forwardly through a hole 18 in the front 23
card 16. An adhesive in the form of a heat-seal coating placed on the inside 24
facing surfaces of the front and back cards 16, 24 adheres the two corrugated 25
cards together. (Ritter, col. 8, l. 64 – col. 9, l. 30 and Figs. 1, 2 and 3). 26
The Patent Owner appears to agree with the Examiner and the 27
Requester that Ritter describes a display pack 12 including each and every 28
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limitation recited in claim 1 except one: Ritter does not describe a display 1
pack in which the peripheral area of the corrugated cardboard sheets has, as 2
recited in claim 1, “a portion of the upper facing, the inner corrugated 3
member, and the lower facing . . . crushed with reduced air gaps therein to a 4
thickness up to approximately 50% of the original thickness.” (See Reb. Br. 5
PO 2). The sole issue in this appeal is whether one of ordinary skill in the 6
art familiar with the teachings of Ritter and Loheed would have had reason 7
to 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). Loheed also teaches that the hot-melt coating material may be 17
used “sparingly, e.g., . . . primarily only around the common peripheral 18
regions of 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
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with a thickness less than half the thickness of the 1
uncrushed fibre board area. 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, the solid board having parallel 13
surfaces. 14
(Loheed 3, ll. 55–63). 15
4. Loheed also describes a technique for fabricating a box for 16
containing a liquid from a corrugated cardboard blank. The technique 17
preferably includes crushing ends of the blank, including upper edge area 36, 18
into solid board. (See Loheed 3, l. 126  4, l. 7 and Fig. 4). The technique 19
also includes coating both sides of the blank with a hot melt adhesive 20
coating to render both surfaces of the blank impervious to liquid. (See 21
Loheed 4, ll. 26–29). 22
5. Loheed then teaches folding the blank and sealing overlapping 23
ends as at 40 to form a tube of rectangular cross-section. (See Loheed, 4, ll. 24
29–37 and Fig. 3). Loheed describes the “manufacturer’s joint” 40 as 25
“effected by heat sealing the overlapped ends 34 and 48, the hot melt 26
adhesive coating applied to the opposite sides of the blank being sufficient to 27
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form the joint, when the overlapped ends are subjected to heat and pressure.” 1
(Loheed 4, ll. 2937). Loheed teaches that: 2
The bonding of the crushed layers in the solid fibre 3
board areas together with the surface coating of hot 4
melt adhesive permits overlapped portions of such 5
solid board to be bonded together by the 6
[application] of heat and pressure, such that any 7
two or more superimposed areas of such solid fibre 8
board areas become in [effect] a single solid fibre 9
board section of thickness corresponding to the 10
number of superimposed layers bonded together. 11
(Loheed 4, ll. 54–64). 12
6. In order to close and seal the upper end of the box, one moves 13
upper opposite portions 130, 132 of the upper crushed edge portion 36 14
toward one another to form a fin or flattened cuff 141 running along the 15
center line 140 of the tube. (See Loheed 4, ll. 81–88 and Figs. 10, 10A, 10B 16
and 11). One then squeezes the fin or flattened cuff 141 between heating 17
and pressure bars 200, 202. (See Loheed 4, ll. 103–07; cf. Request 12 18
(“[seam] 141 was originally made by overlapping corrugated sheets 143 and 19
145, aligning their respective crushed edges, gluing those edges together, 20
then folding that edge over”)). 21
Sufficient heat is applied to the cuff to fuse the hot 22
melt adhesive plastic coating material between the 23
facing surfaces of the cuff, whereby the cuff is 24
bonded into a solid fin, the fin 141 being 25
continuous, and of a thickness double the thickness 26
of the solid board [initially formed by crushing the 27
upper edge area 36] except as at the 28
manufacturer’s joint 40, where three thicknesses 29
may be evident. 30
(Loheed 4, ll. 107–15). 31
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7. Loheed teaches that sufficient adhesive either must be used in 1
manufacturing the corrugated cardboard material, or must be added to the 2
material after manufacture, to produce the solid board of intertwining and 3
intermingled fibers when an edge is crushed. (See, e.g., Loheed 6, ll. 92–4
111). That said, Loheed recognizes that the “selective application of 5
adhesive to the corrugated layer during manufacture of the corrugated board 6
will evidence savings in the amount of adhesive employed.” (Loheed 7, ll. 7
28–32). 8
9
ANALYSIS 10
The Examiner in the RAN correctly concludes that it would have been 11
obvious “to crush the Ritter adhesive area, in order to enhance strength by 12
creating a solid sheet portion.” (RAN 7). Ritter teaches enhancing the 13
security of a display pack 12 against theft by joining the front and back 14
fibrous sheets 16, 24 of the display pack together with the blister cavity 20 15
by means of a heat-seal coating placed on the inside facing surfaces of the 16
front and back cards 16, 24. (FF 1). This teaching would have provided one 17
of ordinary skill in the art reason to seek means for creating a strong, theft-18
resistant bond between the front and back fibrous sheets 16, 24. (See Resp. 19
Br. Req’r 5). 20
Loheed teaches that crushing an edge of a corrugated cardboard blank 21
containing sufficient adhesive or bonding agent produces an edge consisting 22
of a solid board of intertwining and intermingled fibers. (FF 2 and 3). 23
Loheed also teaches forming a fin or flange joining edges of corrugated 24
cardboard material by crushing the edges; coating the edges with a hot melt 25
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adhesive plastic coating material; moving the edges together; and squeezing 1
the edges together between heating and pressure bars. (FF 6). Loheed 2
teaches that the joint formed in this manner is continuous and has a thickness 3
double that of the crushed edges (id.); and that forming a “manufacturer’s 4
joint” by applying heat and pressure to overlapping, crushed edges of 5
corrugated cardboard material would yield, in effect, a single solid fiber 6
board section of thickness double that of the crushed edges (FF 5). 7
These teachings would have provided one of ordinary skill in the art a 8
reasonable expectation that crushing the periphery of a back card of a 9
display pack; coating the peripheries of either the front sheet or the back 10
card, or both, with a hot melt adhesive plastic coating material; and 11
squeezing the peripheries together between heating and pressure bars would 12
succeed in yielding strong and tenacious joints between the front and back 13
fibrous sheets. (See Resp. Br. Req’r 5). These teachings provide a rational 14
underpinning for the Examiner’s conclusion that it would have been obvious 15
to modify Ritter’s display package by crushing a portion, thereby satisfying 16
the limitation reciting “a portion of the upper facing, the inner corrugated 17
member, and the lower facing [was] crushed with reduced air gaps therein to 18
a thickness up to approximately 50% of the original thickness.” 19
The Patent Owner argues that “Loheed’s main purposes for crushing 20
the edge of a corrugated cardboard sheet is, in combination with sufficient 21
glue, to seal the edges from liquid penetration. . . . A secondary benefit 22
disclosed by Loheed is that crushing reduced the thickness of the 23
manufacturer’s joint that is eventually created.” (App. Br. PO 12). A patent 24
is prior art for what it reasonably discloses or suggests, In re Aslanian, 590 25
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F.2d 911(CCPA 1979), and not merely for what may be cast, in retrospect, 1
as its “main purpose.” As the Requester points out, a “person of ordinary 2
skill in the art ‘need not see the identical problem addressed in a prior art 3
reference to be motivated to apply its teachings.’” (Resp. Br. Req’r 6, citing 4
Cross Med. Prods. Inc. v. Medtronics Sofamor Danek Inc., 424 F.3d 1293, 5
1323 (Fed. Cir. 2005)). Even assuming without deciding that the Patent 6
Owner’s characterization of “Loheed’s main purposes” is correct, the 7
teachings of Loheed nevertheless are sufficient that one of ordinary skill 8
would have had reason to modify Ritter’s display pack in the fashion 9
claimed in claim 1. 10
The Patent Owner points out that Loheed teaches the addition of 11
sufficient adhesive or bonding agent to the corrugated cardboard material 12
during manufacture to produce a solid board when an edge of the material is 13
crushed. (See FF 7). Ritter teaches at one point that the hot melt adhesive 14
used to join the front and back fibrous sheets of a display pack should be 15
used sparingly. (See FF 1). The Patent Owner argues that these teachings 16
would have discouraged one of ordinary skill in the art from using a method 17
such as that taught by Loheed to join the front sheet and back card of a 18
display pack such as Ritter’s. (Reb. Br. PO 4–5). Our reviewing court 19
instructs us that “a given course of action often has simultaneous advantages 20
and disadvantages, and this does not necessarily obviate motivation to 21
combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 22
2006). Loheed itself recognizes that the sparing use of adhesive in 23
manufacturing the corrugated cardboard material may result in cost savings. 24
(FF 7). Nevertheless, one of ordinary skill in the art would have had reason 25
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to adopt a method similar to that of Loheed for joining the peripheries of the 1
front sheet and the back card for better joint strength notwithstanding any 2
additional costs which might be incurred due to the amount of adhesive 3
required in the manufacture of the corrugated cardboard used in the cards. 4
See Orthopedic Equipment Company, Inc. et al. v. United States, 702 F.2d 5
1005, 1013 (Fed. Cir. 1983) ("the fact that the two disclosed apparatus 6
would not be combined by businessmen for economic reasons is not the 7
same as saying that it could not be done because skilled persons in the art 8
felt that there was some technological incompatibility that prevented their 9
combination. Only the latter fact is telling on the issue of nonobviousness."). 10
The Patent Owner also argues that the “sealed glue joint of Loheed 11
requires additional costs beyond just the cost of added glue at the edges, e.g., 12
the cost attributed to the additional labor for manually applying the 13
additional glue and/or equipment to selectively apply the glue only to the 14
edge regions.” (Reb. Br. PO 5). Nevertheless, Ritter’s suggested solution to 15
the problem of applying the glue sparingly is selectively applying glue only 16
to the edge regions. (FF 1). This additional cost is not a persuasive reason 17
why one of ordinary skill in the art might have been discouraged from 18
modifying Ritter’s display pack as proposed by the Examiner. See 19
Orthopedic, 702 F.2d at 1013. 20
We sustain the rejection of claims 1–20 under § 103(a) as being 21
unpatentable over Ritter and Loheed. 22
23
DECISION 24
We AFFIRM the Examiner’s decision rejecting claims 1–20. 25
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Requests for extensions of time in this inter partes reexamination 1
proceeding are governed by 37 C.F.R. § 1.956. 2
In the event neither party files a request for rehearing within the time 3
provided in 37 C.F.R. § 41.79, and this decision becomes final and 4
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 5
timely serve notice on the Director of the United States Patent and 6
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 7
8
AFFIRMED 9
10
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16
peb 17
Patent Owner: 18
CHRISTIE, PARKER & HALE, LLP 19
PO BOX 29001 20
GLENDALE, CA 91209-9001 21
22
Third Party Requester: 23
LAUSON & TARVER LLP 24
880 APOLLO STREET 25
SUITE 301 26
EL SEGUNDO, CA 90245 27