Ex Parte Cals et al

Board of Patent Appeals and Interferences

Mar 24, 2008

10303660 (B.P.A.I. Mar. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUBERTUS Y.M. CALS, ERWIN R.J. METHORST
KOEN KUYPERS and PIERRE H.G. KOBBEN
____________

Appeal 2007-3171
Application 10/303,660
Technology Center 3700
____________

Decided: March 24, 2008

Before TERRY J. OWENS, MURRIEL E. CRAWFORD and
DAVID B. WALKER, Administrative Patent Judges.

MURRIEL E. CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1, 4, 11 to 13, 16, 20, 30, 33, 37, 40, 83, 88, 119 and 121. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).1

1 The Examiner’s Answer erroneously states that claims 2, 5, 7, 8, 14, 35,
73, 76, 77, and 120 stand rejected. However, these claims have been
canceled (See Advisory Action of 7/21/06). Therefore, we will treat the
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Appellants invented a packing product and apparatus (Specification
1).
Claim 1 under appeal reads as follows:
1. A packing product comprising:
at least two face sheets, each face sheet having a length
dimension; and at least one randomly crumpled sheet
interposed between the at least two face sheets, the randomly
crumpled sheet attached to each face sheet at random locations;
wherein the at least one crumpled sheet extends substantially
the entire length of at least one face sheet.

The Examiner rejected claims 1, 4, 11 to 13, 20, 40, 119
and 121 under 35 U.S.C. § 102(b) as being anticipated by Morley.
The Examiner rejected claims 1, 13, 20, 37, and 40 under 35 U.S.C.
§ 102(b) as being anticipated by Weder.
The Examiner rejected claims 16, 30, 37, and 83 under
35 U.S.C. § 103(a) as being unpatentable over Morley in view of DeHeras.
The Examiner rejected claim 33 under 35 U.S.C. § 103(a) as being
unpatentable over Morley in view of Pactiv.
The Examiner rejected claim 88 under 35 U.S.C. § 103(a) as being
unpatentable over Pactiv in view of Morley.

Examiner’s listing of these claims in the statement of the rejection as a
clerical error. We also note that the Examiner states that the Appellant’s
listing of the claims, which does not include these claims, is correct (Answer
2).

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

DeHeras US 4,773,534 Sep. 27, 1988

Morley US 5,733,403 Mar. 31, 1998

Weder US 6,202,390 Mar. 20, 2001

Pactiv Corporation (Pactiv Packaging Hexacomb® H001PK, H007DCC and
H007DCCC brochures- 1996) (Pactiv).

Appellants contend that Morley does not disclose a randomly
crumpled sheet interposed between at least two face sheets or a method that
includes bringing the crumpled stock material together with at least one face
sheet such that at least one laterally outer edge of the face sheet extends
beyond a respective laterally outer edge of the crumpled stock material.
Appellants also contend that Weder does not disclose a crumpled
sheet interposed between the at least two face sheets and extending
substantially the entire length of at least one face sheet.
Appellants further contend that there is no motivation to combine the
teachings of Morley and DeHeras and Pactiv and Morley.

ISSUES
The first issue is whether the Appellants have shown that the
Examiner erred in finding that Morley discloses a randomly crumpled sheet
interposed between the at least two face sheets.
The second issue is whether the Appellants have shown that the
Examiner erred in finding that Morley discloses a method that includes
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bringing the crumpled stock material together with at least one face sheet
such that at least one laterally outer edge of the face sheet extends beyond a
respective laterally outer edge of the crumpled stock material.
The third issue is whether the Appellants have shown that the
Examiner erred in finding that Weder discloses a crumpled sheet interposed
between the at least two face sheets and extending substantially the entire
length of at least one face sheet.
The fourth issue is whether the Appellants have shown that the
Examiner erred in holding that there was a reason to combine the teachings
of Morley and DeHeras.
The fifth issue is whether the Appellants have shown that the
Examiner erred in holding that there was a reason to combine the teachings
of Pactiv and Morley.

FINDINGS OF FACT
Morley discloses a packing product that includes a sinusoidal sheet
attached to one of the face sheets by adhesive at 12 (Figure 1, col. 3, ll. 20 to
21). The corrugations of the sinusoidal sheet are then deformed by placing
the sinusoidal sheet and face sheet between a nip roller 40 to form a
crumpled sheet (Figure 7). The form of the deformation of the crumpled
sheet can be random (col. 3, ll. 26 to 28). Morley teaches that using the
crumpled sheets as packaging material provides resilience needed for
restoring the crumpled sheet after an impact so that it is ready to withstand
another impact (col. 1, 63 to 65).
Weder discloses a packing product which includes a face sheet 18 and
a tuft material 12 attached thereto (Figures 1 and 2). The tuft material 12 is
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comprised of a plurality or mass of individual, thin flexible strips of material
14 intertwined with one another to form a cohesive tuft (col. 2, ll. 13 to 15).
The tuft is bondably connected to a flexible backing sheet 16 so as to
substantially cover the backing sheet 16 (col. 2, ll. 62 to 65). The tuft
material is not itself crumpled.
DeHeras discloses a method of packing an article including the step of
positioning the article on at least one inner face sheet, folding a plurality of
outer face sheets towards the article so that the inner face sheets align with
the sides of the article and securing the plurality of outer face sheet walls to
maintain the outer face sheet walls in their folded state (Figures 1 to 3).
DeHaris teaches that folding a face sheet so as to surround the article allows
the article to be protected (col. 1, ll 19 to 21; col. 2, ll 62 to 64)
Pactiv discloses a method of packing an article including the step of
attaching a plurality of crumbled sheets that form a honeycomb to inner face
sheets and outer face sheets (Page 3). Pactiv also discloses positioning an
article on an inner face sheet and folding a plurality of outer face sheet walls
toward the article so that the outer face sheet aligns with the sides of the
article and securing the outer face sheet walls to maintain the folded state
(Page 5).
ANALYSIS
Anticipation
We will not sustain the rejection of claim 1 under 35 U.S.C. § 102(b)
as being anticipated by Morley, because Morley does not disclose that a
randomly crumpled sheet is interposed between at least two face sheets and
then attached to each of the face sheets. The sheet 16 initially has a non-
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random sinusoidal shape. The sheet 16 is attached to the face sheet at the
bottom loop of the sinusoidal shape. After attachment to one of the face
sheets, the sinusoidal sheet attached to the face sheet is placed through a nip
roller 40. The nip roller randomly deforms the sinusoidal upper loops to
form a crumpled sheet. As such, Morley does not disclose that a sheet that
has already been randomly crumpled is interposed between two face sheets
and attached to the face sheets. Therefore, the method of producing the
crumpled sheet in Morley is different from the method recited in claim 1.
We further note that the Examiner has not found that the product produced
by the Morley process in which the sheet is crumpled after attachment to the
face sheets is the same as the claimed product. In view of the foregoing, we
will not sustain this rejection as it is directed to claim 1. As to claims 4, 11
to 13, 20 and 40 dependent from claim 1, we will likewise not sustain the
rejection as it is directed to these claims.
We will not sustain the rejection of claim 119, and claim 121
dependent thereon for the same reason.
We will not sustain the Examiner’s rejection of claims 1 or claims 13,
20, 37, and 40, dependent thereon as being anticipated by Weder. Weder
does not disclose a crumpled sheet that extends substantially the entire
length of at least one face sheet as required by claim 1 from which claims
13, 20, 37 and 40 depend. This is so whether one considers the tuft to be the
crumpled sheet or whether one considers the individual strips each to be a
crumpled sheet. The tuft is a mass of individual, thin flexible strips of
material 14 intertwined with one another and is not itself crumpled and
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therefore is not a crumpled sheet. The individual strips are each crumpled
but do not extend substantially the entire length of the face sheet.

Obviousness
Morley in view of DeHeras
In the Examiner rejection of claims 16, 30, 37, and 83 under 35
U.S.C. § 103 as being unpatentable over Morley in view of DeHeras, the
Examiner relies on DeHaris for teaching a crumpled sheet that extends
beyond the at least one face sheet. The Appellants have chosen to argue this
rejection as it is directed to claim 83. We note that unlike claim 1, claim 83
does not recite that the sheet is crumpled before attachment to a face sheet,
but only that a randomly crumbled sheet is positioned in juxtaposition with a
face sheet.
Appellants argue that there is no reason to combine the teachings of
Morley and DeHeras. We agree with the Examiner that DeHaris provides the
motivation to combine the references by disclosing that folding the face
sheet around the article to be shipped protects the article. Therefore, we
hold that the Examiner has articulated a reason with rational underpinnings
to support the Examiner’s conclusion of obviousness. KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007).
In view of the foregoing, we will sustain the rejection of claim 83 as
being unpatentable over Morley in view of DeHeras.
We will also sustain the rejection as it is directed to claims 16, 30, and
37 because the Appellants have not argued the separate patentability of these
claims.
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Morley in view of Pactiv
We will not sustain the rejection of claim 33 under 35 U.S.C. § 103 as
being unpatentable over Morley in view of Pactiv. The Examiner relies on
Morley for teaching a randomly crumpled sheet attached to a face sheet
which we found lacking in Morley. Pactiv does not cure this deficiency.
Pactiv in view of Morley
We will not sustain the rejection of claim 88 under 35 U.S.C. § 103 as
being unpatentable over Pactiv in view of Morley. The Examiner relies on
Morley for teaching a plurality of crumpled sheet attached to a plurality of
face sheets. As stated above, Morley does not disclose a randomly
crumpled sheet attached to a face sheet as required by claim 88 and Pactiv
does not cure this deficiency of Morley.

AFFIRMED-IN-PART

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