12117376 (P.T.A.B. Apr. 16, 2013)

Ex Parte Carroll

Patent Trial and Appeal BoardApr 16, 2013

12117376 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARCH W. CARROLL, JR. ____________ Appeal 2011-002350 Application 12/117,376 Technology Center 3700 ____________ Before WILLIAM V. SAINDON, WILLIAM A. CAPP and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002350 Application 12/117,376 - 2 - STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 10 and 22-29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention relates to packaging for shipment of automotive windshields. Spec., p. 1, paras. [0002], [0003]. Claim 10, reproduced below, is illustrative of the subject matter on appeal. 10. A suspension packaging system for securing a curved product including a concave back surface, the system comprising: a suspension pad comprising a front side, a rear side, a top edge, a bottom edge, a left edge and a right edge; a first notch on said bottom edge of said suspension pad; a second notch on said top edge of said suspension pad; and a stretch wrapping film received in said first and second notches and stretched around said suspension pad and overwrapping itself and enveloping a majority of the product and at least a portion of said suspension pad for securing the product to said suspension pad to substantially prevent movement of the product relative to said suspension pad; wherein the product is secured within the perimeter of the suspension pad including said first and second notches wherein said first notch is constructed and arranged to be in close proximity to the bottom edge of the product when the product is secured to said suspension pad, wherein said suspension pad bends to increase the contact area between the product and the suspension pad when the product is secured to said suspension pad by said wrapping film, wherein the pad forms a planar curve that substantially conforms to the periphery of the concave back surface and wherein said suspension pad is constructed and arranged to secure the product in a vertical orientation. Appeal 2011-002350 Application 12/117,376 - 3 - THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Sullivan, Belshe and each of Lidgard and Voytko. 2. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Belshe and each of Lidgard and Voytko. 3. Claims 22-29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sullivan and Taylor each and Belshe and Voytko. OPINION Unpatentability of Claim 10 Over Sullivan, Belshe and Lidgard The Examiner finds that Sullivan discloses a suspension packaging system as claimed except that it fails to disclose a stretch wrapping film and also fails to disclose that the suspension pad bends to form a planar curve that substantially conforms to the product (windshield). Ans. 4-5. The Examiner relies on Belshe as disclosing the use of stretch wrapping film in a packaging application. Ans. 5. The Examiner relies on Lidgard as disclosing a suspension pad that is capable of bending to form a planar curve that substantially conforms to the shape of the windshield. Id. The Examiner concludes that it would have been obvious to substitute Belshe’s Voytko Lidgard Sullivan Belshe Taylor US 3,403,778 US 3,884,356 US 4,865,200 US 5,934,473 US 2004/0074798 A1 Oct. 1, 1968 May 20, 1975 Sep. 12, 1989 Aug. 10, 1999 Apr. 22, 2004 Appeal 2011-002350 Application 12/117,376 - 4 - stretch wrap film for Sullivan’s film, because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Id. The Examiner also concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Sullivan’s suspension pad with a planar curve as taught by Lidgard. Ans. 5-6. According to the Examiner, a person of ordinary skill in the art would have been motivated to do this to further support the product on the suspension pad. Ans. 6. Appellant acknowledges that Lidgard discloses the packaging of curved windshields. App. Br. 10. Nevertheless, Appellant argues that Lidgard packages windshields differently than the claimed invention. Id. Appellant argues that the Examiner’s proposed modification of Sullivan by Lidgard would not have been met with a reasonable expectation of success, because Sullivan folds packaging material at a 90 degree angle, which causes the packaging material to resist bending into a curved shape. App. Br. 14-15. Appellant argues that folded material in Lidgard would also prevent Lidgard from conforming to a curved shape. App. Br. 17. Appellant asserts that a person of ordinary skill in the art would not have a reasonable expectation of success of modifying any of the cited references to form a planar curve that substantially conforms to the periphery of the concave back surface. Id. The Examiner responds by reiterating that Lidgard’s support pad does form a planar curve that substantially conforms to the periphery of the windshield. Ans. 13. The Examiner further observes that Lidgard discloses that the support pad is mounted against the convex side of the windshield and that the windshield has a concave back surface opposite the convex surface. Id. With respect to whether the support is positioned adjacent the Appeal 2011-002350 Application 12/117,376 - 5 - convex or concave side of the windshield, the Examiner states that Appellant has not sufficiently defined the positioning of the concave surface of the windshield with respect to the support pad to define over Lidgard. Id. Otherwise, the Examiner states that Lidgard teaches a support conforming to the shape of a curved product that is suspended on the support. Id. We agree with the Examiner that the combination of Sullivan, Belshe and Lidgard teach or suggests all of the limitations of claim 10. In particular, we side with the Examiner on whether Lidgard substantially conforms to the planar curve shape of a windshield. The following language from Lidgard supports the Examiner’s position and refutes the Appellant’s position on this issue. It will be noted that the outermost crease lines 36 of the tabs 32 and the outermost crease lines 38 and 60 respectively of the tabs 34 and 54, are preferably biased so that when the outer extremities of these tabs 32, 34 and 54 are enfolded between the doubled portions of the carton flaps 70a and 70b to draw the support structure 12 toward the carton side 70, a curvature of the support structure sheet 16 can thus be effected to generally conform with the expected curvature of the article 14, being facilitated by the provision of vertical crease lines 43 on the sheet 16 as seen in FIGS. 1, 3 and 11. Lidgard, col. 6, ll. 19-31 (emphasis added). Our reviewing court maintains that words of approximation, such as ‘generally’ and ‘substantially,’ are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter. Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1310-11 (Fed. Cir. 2003). The above quote passage from Lidgard satisfies the limitation requiring the suspension pad to “substantially” conform to the required shape. We also agree with the Examiner that the claim language directed to the support pad forming a planar curve does not define over Lidgard with respect to the location of the Appeal 2011-002350 Application 12/117,376 - 6 - support pad vis-à-vis either the convex or concave side of the windshield. Ans. 13. The effective claim language defines the overall shape, not the location, of the support pad. Finally, we have considered Appellant’s argument that the suspension pad of Sullivan contains 90 degree folds that resist bending to assume the shape of a planar curve. App. Br. 15-16. While the argument is not altogether without merit, we are persuaded that a person of ordinary skill, armed with the knowledge gained from Lidgard, would have been able to modify the notched, support pad of Sullivan so that it could bend and that it could have been accomplished with the exercise of only ordinary creativity. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (a person of ordinary skill is also a person of ordinary creativity, not an automaton). In view of the foregoing discussion, we sustain the Examiner’s rejection of claim 10 as unpatentable over Sullivan, Belshe and Lidgard. Unpatentability of Claim 10 Over Taylor, Belshe and Lidgard The Examiner finds that Taylor, like Sullivan, discloses a packaging system with a suspension pad and notches. Ans. 6. The Examiner combines Taylor with Belshe and Lidgard using similar fact findings and reasons to combine references as with the combination of Sullivan, Belshe and Lidgard. Ans. 6-8. Appellant traverses the rejection using essentially the same arguments with respect to Taylor as Appellant raised with respect to the Sullivan combination. App. Br. 10-19. For similar reasons as the Sullivan combination, Appellant’s arguments are unpersuasive because a preponderance of the evidence supports the Examiner’s conclusion that a person of ordinary skill in the art Appeal 2011-002350 Application 12/117,376 - 7 - would have found it obvious to modify Taylor with Belshe and Lidgard to achieve the claimed invention. We sustain the Examiner’s rejection of claim 10 over the combination of Taylor, Belshe and Lidgard for essentially the same reasons we have identified above with respect to the combination of Sullivan, Belshe and Lidgard.1 Unpatentability of Claims 22-29 Appellant elected to argue all of the rejected claims under all grounds of rejection as a single group and expressly acknowledged that, for purposes of this appeal, claims 10 and 22-29 stand or fall together. App. Br. 8, 9. Thus, Appellant has expressly waived the right to argue for the separate patentability of claims 22-29. App. Br. 8, 9. Inasmuch as we have sustained the Examiner’s rejection of claim 10, in accordance with Appellant’s express waiver, claims 22-29 fall with claim 10. Accordingly, we also sustain the Examiner’s rejection of claims 22-29. DECISION The decision of the Examiner to reject claims 10 and 22-29 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh 1 Inasmuch as we have sustained the Examiner’s rejection of claim 10 over the alternative combinations of: (1) Sullivan, Belshe and Lidgard; and (2) Taylor, Belshe and Lidgard, we do not reach the issue of whether claim 10 is also unpatentable over combinations that include Voytko.