Ex Parte Gardner et al

Board of Patent Appeals and Interferences

Feb 27, 2008

10423742 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY M. GARDNER and NICHOLAS A. PHILIPS
____________

Appeal 2007-4063
Application 10/423,742
Technology Center 3700
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Decided: February 27, 2008
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Before TERRY J. OWENS, JENNIFER D. BAHR, and ANTON W.
FETTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jeffrey M. Gardner and Nicholas A. Philips (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 2. We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

Appeal 2007-4063
Application 10/423,742

The Invention
Appellants’ claimed invention is “an apparatus for forming Bliss-type
shipping containers without the need for supplying precut end blanks”
(Specification 1:4-5). Appellants’ Bliss box former forms containers from
two blanks, namely, a body panel 2 and a box liner 4 (fig. 1). The blanks,
which have been pre-cut and pre-scored, are folded into a box or carton at a
Bliss box forming machine. In the past, according to Appellants, the box
liner blanks would be pre-cut and scored and then delivered in stacks to the
Bliss former (Specification 2:16-18). Appellant's disclosed invention is to
have a dedicated slitter/scorer directly coupled to the Bliss box former, so
that the blanks do not need to be stored, thereby permitting changes in box
liner dimensions without having to keep a large box liner inventory and
improving overall speed of the assembly operation (Specification 4:16-19).
The corrugated sheets supplied to the slitter/scorer to form box liner blanks
have a width equal to the length of the box liner blanks and a length that is a
whole number multiple of the width of the box liner blanks, which is
desirable so no waste is created (Spec. 3:31-34).
Claims 1 and 2, the only pending claims, read as follows:
1. Equipment for forming a Bliss-type corrugated
shipping container comprising a Bliss box former
in direct combination with a slitter scorer, the
container being formed from a preformed cut and
scored body blank and a box liner blank, the slitter
scorer providing the box liner blanks, the
slitter/scorer receiving a stack of corrugated
containerboard sheets, singulating the sheets,
advancing the sheets to a station where box liner
blanks are cut and scored, and delivering the box
liners to the Bliss former for combination with the
body blank.
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Application 10/423,742

2. The container forming equipment of claim 1 in
which the corrugated sheets supplied to the
slitter/scorer have a width which is equal to the
length of the box liner blanks and a length which is
a whole number multiple of the width of the box
liner blanks.

The Rejection
Appellants seek review of the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 103(a) as unpatentable over Moen (US 4,197,789, issued
April 15, 1980) in view of Cahill (US 5,727,367, issued March 17, 1998).1
The Examiner provides reasoning in support of the rejection in the
Answer (mailed March 16, 2006). Appellants present opposing arguments
in the Appeal Brief (filed January 3, 2006).

FINDINGS OF FACT
Moen
There is no dispute that Moen discloses equipment for forming a
Bliss-type corrugated shipping container. In fact, Appellants cite this
reference as teaching a conventional Bliss box former (Spec. 2:13-15).
Moen's machine includes a high hopper assembly 18 for holding a supply of
stacked inner body blanks I and a low hopper assembly 20 for containing a
stack of outer body blanks O (col. 1, ll. 53-59; fig. 1). The blanks I and O
are pre-cut and pre-scored (col. 2, ll. 14-15 and 23), but Moen does not
disclose a slitter/scorer.

1 A rejection of claims 1 and 2 under 35 U.S.C. § 102(b) has been withdrawn
(Answer 2).
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Appeal 2007-4063
Application 10/423,742

Cahill
There does not appear to be any dispute that Cahill discloses a
slitter/scorer for forming carton blanks. Cahill, however, discloses feeding
those blanks to a packing machine and forming them into a container around
the contents, such as cigarettes, of the container (col. 1, ll. 5-9). Cahill does
not teach feeding blanks to a Bliss box former.
Cahill teaches that “[w]here the packing machine is capable of
operating continuously, blanks 50 may be fed directly into the machine, e.g.,
from the conveyors 64, without the need to stack the blanks. This
arrangement allows higher speeds than are generally possible with
arrangements involving an intermediate stacking process” (col. 6, ll. 8-13).
This teaching would have provided a person of ordinary skill in the art at the
time of Appellants’ invention with a reason to directly couple a blank
slitter/scorer with downstream equipment for forming the blanks into
containers, whether in a packing machine or simply a box former.

DISCUSSION
Appellants argue “[t]he Examiner has failed to establish a prima facie
case of obviousness by failing to show any suggestion or motivation to
combine the teachings of the cited references” (Appeal Br. 10). Appellants
also argue that Moen teaches away from any suggestion to directly connect
the box former of Moen with a slitter/scorer, as called for in claim 1,
because Moen's box former uses upper and lower hoppers to store the inner
and outer blanks prior to the blanks entering the box former (Br. 11).
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Application 10/423,742

Appellants further argue that Cahill teaches feeding blanks to a packaging
machine, not a Bliss box former (Br. 11-12).
Initially, we note that while the requirement of demonstrating a
teaching, suggestion, or motivation (the TSM test) to combine known
elements in order to show that the combination is obvious may be “a helpful
insight,” it cannot be used as a rigid and mandatory formula. KSR Int’l. Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). Further, while there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
As to the specific question of “teaching away,”
[a] reference may be said to teach away when a
person of ordinary skill, upon [examining] the
reference, would be discouraged from following
the path set out in the reference, or would be led in
a direction divergent from the path that was taken
by the applicant. The degree of teaching away will
of course depend on the particular facts; in general,
a reference will teach away if it suggests that the
line of development flowing from the reference’s
disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Simply that there are
differences between two references is insufficient to establish that such
references “teach away” from any combination thereof. See In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992).
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Appeal 2007-4063
Application 10/423,742

Moen's disclosure of hoppers for feeding the blanks is not a teaching
away from the combination proposed by the Examiner. There is no teaching
or indication by Moen that other forms of feeding would be inappropriate or
that direct feeding from the slitter/scorer would be unsuitable or infeasible.
Cahill, as noted in our findings above, teaches direct feeding of blanks from
the slitter/scorer to a downstream processing apparatus that forms the blanks
into a box, without the need to stack the blanks, to allow higher speeds than
are generally possible with arrangements involving an intermediate stacking
process. This would have provided a reason for one of ordinary skill in the
art to connect or combine a blank slitter/scorer directly to the Bliss box
former of Moen. While Cahill specifically discloses a slitter/scorer feeding
to a packing machine, that is, a machine that forms the container around
contents, a person of ordinary skill in the art would appreciate that: (1) a
slitter/scorer is required to provide the blanks for Moen's Bliss box former
and (2) the teaching by Cahill of connecting a slitter/scorer directly to a
packing machine, without the need to stack the blanks, would likewise be
applicable to the supply of blanks to a Bliss box former, another type of
downstream box-forming processing apparatus (without the filling feature of
a packing machine), to similarly improve the Bliss box former by allowing
higher speeds than are generally possible with arrangements involving an
intermediate stacking process.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
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Application 10/423,742

and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
KSR, 127 S.Ct at 1740. Appellants have not alleged, much less shown, that
the direct combination of a slitter/scorer, of the type taught by Cahill, for
example, to the Bliss box former of Moen would have been uniquely
challenging to a person of ordinary skill in the art. Thus, on this record, we
conclude that the direct combination of Cahill’s slitter/scorer to Moen’s
Bliss box former to arrive at the subject matter of claim 1 would have been
obvious. The rejection of claim 1 is sustained.
Appellants additionally argue that neither Moen nor Cahill teaches or
suggests the corrugated sheets supplied to the slitter/scorer being "a whole
number multiple of the width of the box liner blanks," as called for in claim
2 (Br. 13). This argument is not persuasive. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 1742.
Additionally, we observe that an artisan must be presumed to know
something about the art apart from what the references disclose2 and that the
conclusion of obviousness may be made from “common knowledge and
common sense” of the person of ordinary skill in the art.3 To feed
appropriately sized corrugated sheets to the slitter/scorer to avoid waste of
material would appear to involve merely the exercise of common sense and
ordinary creativity and thus would have been obvious to a person of ordinary

2 See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
3 See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
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skill in the art. Appellants’ argument thus does not persuade us of reversible
error in the rejection of claim 2. The rejection is sustained.

CONCLUSION
The decision of the Examiner to reject claims 1 and 2 under 35 U.S.C.
§ 103(a) 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

JRG

WEYERHAEUSER COMPANY
INTELLECTUAL PROPERTY DEPT., CH 1J27
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