Ex Parte FranicDownload PDFPatent Trial and Appeal BoardJun 23, 201510547022 (P.T.A.B. Jun. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/547,022 09/28/2005 Ivica Franic ELO-00036 (AB-LET/CVG/1) 6874 30853 7590 06/23/2015 WARN PARTNERS, P.C. PO BOX 70098 ROCHESTER HILLS, MI 48307 EXAMINER DEMEREE, CHRISTOPHER R ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 06/23/2015 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 ____________ Ex parte IVICA FRANIC ____________ Appeal 2012-012697 Application 10/547,0221 Technology Center 3700 ____________ Before LINDA E. HORNER, THOMAS F. SMEGAL, and BRANDON J. WARNER, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ivica Franic (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 36–40, 42–45, 47–50, 52–55, 57–61, 63–67, 70–72, 74–77, 79, 80, 85, and 86. Claims 46, 56, 62, 69, and 73 are not subject to any rejection based upon prior art, but instead are objected to as being dependent upon a rejected base claim, and are thus not before us on appeal.2 Claims 1–35, 41, 51, 68, 78, and 81–84 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). 1 According to Appellant, the real party in interest is Elopak Systems AG. Appeal Br. 10. 2 In the Final Action mailed January 4, 2011, claims 46, 56, 62, 69, and 73 were indicated to be allowable if rewritten in independent form to include Appeal 2012-012697 Application 10/547,022 2 We AFFIRM–IN–PART. CLAIMED SUBJECT MATTER Claims 36, 47, 57, 63, 74, 79, 80, 85, and 86 are independent. Claim 36, reproduced below, illustrates the claimed subject matter, with disputed limitations emphasized. 36. A carton blank for a rectangular gable-top carton and comprising a row of panels arranged side-by-side, the boundaries among said panels being defined by a set of lines of weakness parallel to each other, one of said panels including not only a first region for forming a first top obturating sub- panel comprising a first group of a plurality of substantially triangular sub-sub-panels defined by lines of weakness, but also, disposed outwardly thereof, a first top sealing sub-panel, another of said panels immediately adjacent said one of said panels including not only a second region for forming a quadrangular top obturating sub-panel having an opening zone, but also disposed immediately outwardly thereof and separated by a first linear weakness, a second top sealing sub- panel, and, immediately inwardly thereof, a body sub-panel, said second region including a boundary zone furthest from said first linear weakness, said boundary zone having a second linear weakness which is discontinuous and/or comprises linear weakness portions which extend transversely of said row of panels, and said opening zone includes respective opposite peripheral portions which extend to the region of the first and second linear weaknesses. Appeal Br. 41, Claims App. “all of the limitations of the base claim and any intervening claims.” See Final Act. 11. Appeal 2012-012697 Application 10/547,022 3 REJECTIONS ON APPEAL3 The following Examiner’s rejections are before us for review. 1. Claims 36, 37, 42, 43, 45, 63, 64, 70, and 72 are rejected under 35 U.S.C. §102(b) as anticipated by Thiersch (WO 01/23260 A1, pub. Apr. 5, 2001). 2. Claims 38–40, 44, 71, 85, and 86 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thiersch and Ljungstrom (US 5,803,349, iss. Sept. 8, 1998). 3. Claims 47, 52, 53, 55, 57–59, 61, 64, 74, 79, and 80 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thiersch and Pape (US 5,716,471, iss. Feb. 10, 1998).4 4. Claims 48–50, 54, 60, 6567, and 7577 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thiersch, Pape, and Ljungstrom. ANALYSIS Anticipation of claims 36, 37, 42, 43, 45, 63, 64, 70, and 72 by Thiersch Claims 36, 37, 42, 43, and 45 Regarding independent claim 36, the Examiner finds that Thiersch teaches, inter alia, a blank for making a stackable folding container, 3 The rejections of claims 36–40, 42–46, 6367, and 7173 under 35 U.S.C. § 112, first paragraph, and of claims 3640 and 4246 under 35 U.S.C. § 112, second paragraph, have been withdrawn. Answer 3–4. 4 Claim 51 was incorrectly listed by the Examiner in this rejection, and was argued at page 32 of the Appeal Brief, even though it was canceled by Appellant in the Amendment filed October 21, 2010. This canceled claim is not before us for review as part of the present appeal. Appeal 2012-012697 Application 10/547,022 4 including a second region with a “boundary zone having a linear weakness which is discontinuous and/or comprises linear weakness portions which extend transversely of said row of panels.” Final Act. 3–4 (citing Thiersch, Figure 6). Appellant argues that “there is absolutely no disclosure [in Thiersch] of a second top sealing sub-panel located immediately outwardly from the quadrangular top obturating sub-panel, which feature, the Appellant notes, has been omitted in the Examiner’s analysis of claim 36 in the Final Office Action.” Appeal Br. 27 (emphasis added). Appellant also points out that, in the Answer, “the Examiner has [again] omitted to recite the [claimed] feature that the second region which has the quadrangular top obturating sub-panel having the opening zone has disposed immediately outwardly thereof, and separated by a first linear weakness, the second top sealing sub-panel.” Reply Br. 5 (emphasis added); see Answer 12–13. Appellant explains that if one looks at Figure 6 of Thiersch reproduced in the Examiner’s Answer at the top of page 6 with his own labeling applied to it, it is plain that the obturating panel having the opening zone (rather than opening panel as stated by the Examiner) is labelled numeral 7. Immediate outwardly thereof is another obturating sub-panel before you reach the top sealing sub-panel; in other words the top sealing sub-panel in Thiersch is not located immediately outwardly of the sub-panel with the opening zone. Reply Br. 5 (emphasis added). Appellant’s argument is persuasive. We do not see in the articulation of the rejection that the Examiner addressed the limitation calling for the second top sealing sub-panel to be “disposed Appeal 2012-012697 Application 10/547,022 5 immediately outwardly” of the quadrangular top obturating sub-panel having an opening zone. Further, we agree with Appellant that top sealing sub- panel in Thiersch is disposed outwardly, but not immediately5 outwardly, of obturating panel 7. “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the Examiner’s decision rejecting independent claim 36, and claims 37, 42, 43, and 45 which depend therefrom, as anticipated by Thiersch. Claims 63, 64, 70, and 72 Regarding independent claim 63, the Examiner finds that Thiersch teaches, inter alia, a stackable folding container, including a fitment “adjacent to the edge between the roof sub-panel and the front [sub-]panel insofar as the word ‘adjacent’ by itself is a very broad locator of elements (i.e. the fitment is generally next to the boundary fold as can be seen in Figure 6). Examiner also notes that Thiersch discloses lines that progress inward as can be seen in Figure 12.” Final Act. 6. 5 We understand “immediately” to mean “having no object or space intervening; nearest or next.” Dictionary.com, http://dictionary.reference.com/browse/immediate?s=t, last accessed, June 23, 2015. Appeal 2012-012697 Application 10/547,022 6 However, as Appellant points out at page 6 of the Reply Brief, “a similar comment applies [to claim 63 that applied] to the omitted feature in claim 36,” referring to the recitation in claim 63 of “a further boundary zone opposite the first-mentioned boundary zone and between said roof sub-panel and a top sealing sub-panel disposed immediately outwardly of said roof sub-panel.” Appeal Br. 47–48 (emphasis added). See also Appeal Br. 29. For reasons similar to those discussed above regarding an omission from the Examiner’s factual findings of a claim recitation, we again agree with Appellant. See Net MoneyIN, 545 F.3d at 1371. For the foregoing reasons, we do not sustain the Examiner’s decision rejecting independent claim 63, and claims 64, 70, and 72 which depend therefrom, as anticipated by Thiersch. Obviousness of claims 38–40, 44, 71, 85, and 86 over Thiersch and Ljungstrom Claims 38–40, 44, and 71 The Examiner’s rejection of claims 38–40, 44, and 71, which are each dependent from one of claims 36 and 63, is based on the same erroneous findings discussed above with respect to the disclosure of Thiersch. Final Act. 7–8. The addition of Ljungstrom does not remedy the deficiencies of Thiersch, as discussed supra. Accordingly, for similar reasons as discussed above for claims 36 and 63, we do not sustain the Examiner’s rejection of claims 38–40, 44, and 71 over Thiersch and Ljungstrom. Appeal 2012-012697 Application 10/547,022 7 Claims 85 and 86 Regarding independent claims 85 and 86, the Examiner finds that “Thiersch teaches everything except weakness portions that are arcuate and bow shaped,” and that “Ljungstrom teaches a carton comprising weakness portions that are arcuate and bowed (700, 705) relative to a central zone of a second region (see Fig. 1).”6 Final Act. 7–8. The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time of applicant’s invention to modify Thiersch’s container to include arcuate and bow shaped linear weakness portions to provide an alternative design to the container that also allows for easier manipulation of the container.” Id. at 8 (citing Ljungstrom, col. 3, ll. 20–28). Appellant contends that the teaching of Ljungstrom is completely opposite to that of the present invention in that it teaches to use a tear-open arrangement rather than a pour spout fitment. A person of ordinary skill would thus immediately dismiss Ljungstrom as not relevant to solving the problem of increasing the through- flow cross-sectional area of the fitment of Thiersch. Appeal Br. 31. However, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification in order to support the conclusion that the claimed subject matter would have been obvious. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) 6 Arcuate and bowed portions 700, 705 are illustrated on the face sheet of Ljungstrom and on Figures 17, 18, and 22. We view the Examiner’s reference to Figure 1 as an inadvertent and harmless error. Further, Appellant does not traverse this rejection for this reason. See Appeal Br. 30–32. Appeal 2012-012697 Application 10/547,022 8 (“[N]either the particular motivation nor the avowed purpose of the [Appellant] controls” in an obviousness analysis.). Furthermore, Appellant is simply attacking Ljungstrom in isolation, rather than as combined with Thiersch. However, nonobviousness “cannot be established by attacking references individually” when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). The Examiner relies on Ljungstrom only “to teach the design choice modification of having curved or arcuate, lines of weakness,” and points out that “[t]he modification would allow the container to bulge, or flex, in accordance with the contents, and would not affect Thiersch’s dispensing means since Thiersch’s pour spout is located in-board from the affected lines of weakness.” Answer 15. Appellant’s further arguments in the Reply Brief do not apprise us of any error in the Examiner’s fact finding or reasoning, but merely clarify that “Appellant is not disputing the fact that Thiersch and Ljungstrom are analogous pieces of prior art.” See Reply Br. 8–9. For the foregoing reasons, we sustain the Examiner’s rejection of claims 85 and 86 as being unpatentable over Thiersch and Ljungstrom. Obviousness of claims 47, 52, 53, 55, 57–59, 61, 64, 74, 79, and 80 over Thiersch and Pape Claims 47, 52, 53, 55, 57–59, 61, 74, 79, and 80 In rejecting claims 47, 52, 53, 55, 57–59, 61, 74, 79, and 80 as obvious over Thiersch and Pape, the Examiner essentially repeats the earlier rejection of claims 36 and 45 as anticipated by Thiersch, merely adding that “there is no pre-formed linear weakness ‘immediately adjacent’ to a lowest Appeal 2012-012697 Application 10/547,022 9 and foremost portion of the fitment since the fitment is located in the center of a panel.”7 Final Act. 8–9 (emphasis added). The Examiner cites Pape only for its teaching of a carton blank of laminate material, stated to be lacking from Thiersch, concluding that “[i]t would have been obvious to one of ordinary skill in the art at the time of applicant’s invention to make Thiersch’s container of a laminate packaging material in order to provide an effective seal between the container and the pouring spout.”8 Id. (citing Pape, col. 2, ll. 51–64). Appellant points out that the Examiner’s rejection of these claims “uses the wording of claim 36 to show where features are disclosed in Thiersch,” but the Examiner’s rejection “does not include a recitation of the features of any of the rejected claims, in particular independent claims 47, 57, [74], 79 and 80.” Appeal Br. 33. By way of example, Appellant references claim 47, pointing out that “the Examiner has failed to recite the feature of that claim, that ‘the distance between each of said linear weakness portions and a central zone of the first-mentioned region initially decreases and then increases.’”9 Id. The Examiner responds to this assertion, as to claims 47 and 74, that 7 The Examiner is apparently referring only to claim 80, as the other independent claims 47, 57, 74, and 79 do not contain a similar limitation or even a recitation of “immediately adjacent.” See Appeal Br. 43, 44, 46, 50, and 51, Claims App. 8 Appellant points out that “a skilled person would immediately recognise [sic] the cartons of Thiersch to be made of laminate packaging material already, making the citation of Pape completely unnecessary.” Appeal Br. 36–37 (emphasis added). 9 Independent claim 74 recites substantially the same limitation. Appeal 2012-012697 Application 10/547,022 10 it is readily apparent that the prior art, Thiersch, teaches obliquely extending folds lines; said lines are considered to converge, or diverge, depending on one’s point of view. Furthermore, the broadest reasonable interpretation is given to the claim since the claim does not explicitly define the parameters of the “central zone” and “region.” Answer 15. While the Examiner argues that the fold lines of Thiersch “are considered to converge or diverge,” the Examiner does not identify, nor do we discern, where Thiersch describes “the distance between each of said linear weakness portions and a central zone . . . initially decreases and then increases,” as recited by claims 47 and 74. See Appeal Br. 43, 44, and 50, Claims App. Accordingly, Appellant’s argument is persuasive. Regarding independent claims 57 and 79, the Examiner points to Figure 13 of Thiersch as disclosing a discontinuous linear weakness between a row of panels. Final Act. 8. Appellant reasserts arguments previously submitted in the Appeal Brief and adds that the Examiner’s Answer fails to point out where a discontinuous linear weakness between the quadrangular top obturating sub- panel and the body sub-panel is disclosed in either Thiersch or Pape. Claims 58 and 59 are dependent on claim 57. Claim 79 is a parallel package claim to the carton blank claim 57 and thus the same comment applies. Reply Br. 10. Again, Appellant’s argument is persuasive. Regarding independent claim 80, Appellant also points out that “the Examiner does not proceed to mention where, for instance, in Thiersch or Pape is found the feature of there being no preformed linear weakness portion immediately adjacent to a lowest and foremost portion of the fitment.” Appeal Br. 34–35 (emphasis added). Appeal 2012-012697 Application 10/547,022 11 The Examiner responds that “claim 80 reads, ‘. . . said boundary being constituted by an edge having no pre-formed linear weakness portion immediately adjacent to a lowest and foremost portion of said flange,’” and that the claim states “immediately adjacent” which “[the] Examiner considers a plain panel portion to be immediately adjacent the flange, since a plain panel portion is between said flange and lines of weakness (i.e. fold lines).” Answer 16. We agree with Appellant that the Examiner’s comment regarding claim 80 is not commensurate with the claim language. Reply Br. 11 (arguing that “[i]t is . . . incorrect to look anywhere but the edge between the roof sub-panel and the front sub-panel [of Thiersch] for the lack of a pre- formed linear weakness” and concluding that “[the] edge in both Thiersch and Pape is formed with preformed linear weakness (i.e. a scoreline)”). We agree with Appellant that the Examiner fails to establish a prima facie case of obviousness of the subject matter of claims 47, 52, 53, 55, 57– 59, 61, 74, 79, and 80 over Thiersch and Pape based upon the insufficient factual findings discussed above. For the foregoing reasons, we do not sustain the rejection of claims 47, 52, 53, 55, 57–59, 61, 74, 79, and 80 over Thiersch and Pape. Claim 64 The Examiner’s rejection of claim 64, which is dependent from 63, is based on the same erroneous findings discussed above with respect to the disclosure of Thiersch. Final Act. 8–9. The addition of Ljungstrom does not remedy the deficiencies of Thiersch, as discussed supra. Appeal 2012-012697 Application 10/547,022 12 Accordingly, for similar reasons as discussed above for claim 63, we do not sustain the Examiner’s rejection of claim 64 over Thiersch and Ljungstrom. Obviousness of claims 48–50, 54, 60, 65–67, and 75–77 over Thiersch, Pape, and Ljungstrom. The Examiner’s rejection of claims 48–50 and 54, each dependent directly or indirectly from claim 47; of claim 60, dependent from claim 57; of claims 65–67, each dependent directly or indirectly from claim 63; and of claims 75–77, each dependent directly or indirectly from claim 74, is based on the same erroneous findings discussed above with respect to the disclosure of Thiersch. Final Act. 10. Furthermore, the addition of Ljungstrom does not remedy the deficiencies of Thiersch and Pape, as discussed supra. Accordingly, for similar reasons as discussed above for claims 47, 57, 63, and 73, we do not sustain the Examiner’s rejection of claims 48–50, 54, 60, 65–67, and 75–77 over Thiersch, Pape, and Ljungstrom. DECISION The rejection of claims 36, 37, 42, 43, 45, 63, 70, and 72 under 35 U.S.C. § 102(b) as anticipated by Thiersch is REVERSED. The rejection of claims 38–40, 44, and 71 under 35 U.S.C. § 103(a) as unpatentable over Thiersch and Ljungstrom is REVERSED. The rejection of claims 85 and 86 under 35 U.S.C. § 103(a) over Thiersch and Ljungstrom is AFFIRMED. Appeal 2012-012697 Application 10/547,022 13 The rejection of claims 47, 52, 53, 55, 57–59, 61, 64, 74, 79, and 80 under 35 U.S.C. § 103(a) as unpatentable over Thiersch and Pape is REVERSED. The rejection of claims 48–50, 54, 60, 65–67, and 75–77 under 35 U.S.C. § 103(a) as unpatentable over Thiersch, Pape, and Ljungstrom is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED–IN-PART llw Copy with citationCopy as parenthetical citation