Ex Parte Carlson et al

Patent Trial and Appeal Board

Jan 29, 2016

12867363 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/867,363 08/12/2010
23908 7590 02/02/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Daniel L. Carlson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RANPP0395USB 9488
EXAMINER
NASH, BRIAND
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
02/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL L. CARLSON and
TIMOTHY A. FREDERICK
Appeal2014-000842
Application 12/867 ,363 1
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel L. Carlson et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-22. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
According to Appellants, the real party in interest is Ranpak
Corporation. Appeal Br. 2.
Appeal2014-000842
Application 12/867,363
INVENTION
Appellants' invention is "directed to a relatively inexpensive
packaging system and method for dispensing an appropriate amount of void-
fill dunnage to fill a void in a container." Spec. 1, 11. 8-10.
Claims 1, 12, 21, and 22 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. (Original) A packaging system, comprising
a manual input device that provides multiple input
options for selection by a packer, the input options
representing relative degrees to which a container is
filled by one or more products to be packaged;
an input device that identifies one or more
characteristics of a container; and
a controller that provides an output signal
indicating a quantity of dunnage to dispense to the
container based on the selected input option and the one
or more identified characteristics of the container.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1--4, 7-17, and 20-22 under 35
U.S.C. § 102(b) as being anticipated by Armington (US
6,877,297 B2, iss. Apr. 12, 2005).
II. The Examiner rejected claims 5---6, and 18-19 under 35 U.S.C.
§ 103(a) as unpatentable over Armington.
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Appeal2014-000842
Application 12/867,363
Rejection I
ANALYSIS
In regard to claim 1, Appellants assert the Examiner fails to identify
evidence from Armington showing the following limitation, "a manual input
device that provides multiple input options for selection by a packer, the
input options representing relative degrees to which a container is filled by
one or more products to be packaged." According to the Examiner,
Armington satisfies that limitation by providing an input option that
"represents" relative degrees to which a container is filled. Ans. 3. The
Examiner finds Armington provides such an input option by disclosing
"such a device wherein a user manually selects a part to be packaged from a
drop down list and said part number corresponds to a specific part requiring
a specific amount of dunnage material to be produced and filled into the
packaging container, i.e., an input option 'representing' a relative degree to
which a container is filled." Id. (citing Armington col. 16: 12-col. 19:22).
Appellants counter by arguing, "the manual input device [of claim 1]
is used to select an input option representing a relative degree of container
fullness, and inputting a part number and having the system output the box
size and the precise quantity of dunnage that is needed fails to anticipate the
manual input device." Reply Br. 5---6. As support for their position,
Appellants point out that, "[ w ]hen a packer identifies a part number, and
then a controller both selects a container and calculates the required dunnage
for the container identified by the controller, the packer cannot be selecting
how full a container is because the packer does not know how big the
container is when the part number is being input." Reply Br. 5.
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Appeal2014-000842
Application 12/867,363
We are persuaded the Examiner erred. Claim 1 requires the manual
input device to provide multiple input options for selection by a packer.
Each of the multiple input options must represent relatively how much one
or more products to be packaged fills a container. As a result, for any given
container holding one or more products, the input device must present
multiple options that are indicative of how much the product( s) fill that
container. This understanding of the claim is confirmed by the
Specification, which states:
The input options represent the relative degrees to which a
container has been filled by one or more objects to be packaged.
The relative degrees of fill is an estimate or approximation of
how full the container is, such as nearly empty, half full, and
nearly full.
Spec. 4. One of the primary purposes of the claimed invention is to allow
"an inexperienced packer to effectively assist in determining the appropriate
amount of dunnage to dispense, even when the packer has never performed
the task before."
While we appreciate the Examiner's position that the use of the term
"representing" creates breadth to the claim scope, it does not vitiate the
requirement of claim 1 for the input device to present multiple options to a
packer that are indicative of how much a product( s) fills a container.
Armington's apparatus and operation are fundamentally different from the
claimed invention because Armington seeks to eliminate packer involvement
in determining the appropriate amount of dunnage to dispense or even which
container to use. See Armington col. 3: 1-25, col. 4:43-53. The system of
Armington "identifies the part or parts to be packaged and retrieves
predetermined packaging instructions which are used to generate one or
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Appeal2014-000842
Application 12/867,363
more pieces of packaging material of the proper length or amount (such as
dunnage) and provide detailed operator packaging instructions which are
displayed in a display monitor." Id. col. 3: 16-25.
None of the evidence cited by the Examiner is sufficient to show the
system of Armington presents a packer with multiple options to identify how
much one or more products fills a container. As noted above, the system of
Armington intends to eliminate such variable by having pre-established rules
that select a container and dunnage based on the identification of the part.
See Armington col. 16: 13---60. There is simply no need in Armington's
system to provide the packer with any options for selecting how much a
product fills a container because the apparatus in Armington already decides
this.
The fact that a packer may select a part number from a list also does
not show Armington' s system provides multiple options to identify how
much a product fills a container. All Armington discloses is that each part
has a pre-determined container associated with it, but it fails to suggest how
much the parts fill the containers. The Examiner has not offered evidence
there is any variation in the degree a part fills its respective container. To
the extent the Examiner is relying on an inherent characteristic, "[i]nherency
... may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
omitted).
Therefore, we do not sustain the Examiner's rejection that Armington
anticipates claim 1, and claims 2--4 and 7-11 depending therefrom.
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Appeal2014-000842
Application 12/867,363
Like claim 1, independent claims 12, 21 and 22 each include a
limitation similar to claim 1 requiring a packer to manually input into a
packaging system the relative degree to which a container is filled by one or
more products to be packages or a device allowing a packer to provide such
manual inputs into a packaging system. See Appeal Br. 20, 22 (Claim
App.). Furthermore, the Examiner's rejection of claims 12, 21 and 22 relies
on the same proof and analysis provided for claim 1. As a result, we
likewise do not sustain the Examiner's rejection that Armington anticipates
claims 12, 21 and 22, and claims 13-172 depending from claim 12.
Rejection II
Claims 5---6 depend from claim 1, and claims 18-193 depend from
claim 12. The Examiner's rejection, therefore, of claims 5---6, and 18-19
under 35 U.S.C. § 103(a) as unpatentable over Armington relies on the same
2 We note that claims 13-17 each state "[a] packaging method as set forth in
claim 1." See Appeal Br. 20-21 (Claim App.). Claim 1, however, is for a
packaging apparatus. Id. at 18. Claim 12, on the other hand, is for a
method of packaging. Because the dispositive limitation in this appeal is
substantially the same in claims 1 and 12, we have elected to treat this as a
typo and proceeded with the understanding that claims 13-17 depend from
claim 12. However, should there be further prosecution of this application,
the Examiner and Appellants must ensure the claims are amended to correct
their dependency.
3 We note that claims 18-19 also state "[a] packaging method as set forth in
claim 1." See Appeal Br. 21-22 (Claim App.). For the same reasons
discussed above, we have elected to treat this as a typo and proceeded with
the understanding that claims 18-19 depend from claim 12. Again,
however, should there be further prosecution of this application, the
Examiner and Appellants must ensure the claims are amended to correct
their dependency.
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Appeal2014-000842
Application 12/867,363
unsupported findings discussed above with respect to independent claim 1.
See Final Act. 2. The Examiner does not remedy the deficiencies of claim 1.
For similar reasons set forth above for independent claim 1, we likewise do
not sustain the Examiner's rejection of claims 5---6, and 18-19 under 35
U.S.C. § 103(a) as unpatentable over Armington.
SUMMARY
The Examiner's decision to reject claims 1-22 is reversed.
REVERSED
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