Ex Parte GasiorDownload PDFPatent Trial and Appeal BoardNov 22, 201713737659 (P.T.A.B. Nov. 22, 2017) 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. 13/737,659 01/09/2013 Wayne P. Gasior 21151-P1-USA/GPP0012USP 7056 31743 7590 11/22/2017 Georgia-Pacific LLC 133 Peachtree Street NE - GA030-42 ATLANTA, GA 30303 EXAMINER DEMEREE, CHRISTOPHER R ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 11/22/2017 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 WAYNE P. GASIOR Appeal 2017-0001041 Application 13/737,6592 Technology Center 3700 Before ANTON W. FETTING, KENNETH G. SCHOPFER, and ALYSSA A. FINAMORE, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 from the rejection of claims 1—5, 9-13, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed May 27, 2016) and Reply Brief (“Reply Br.,” filed Sept. 19, 2016), and the Examiner’s Answer (“Ans.,” mailed July 26, 2016) and Final Office Action (“Final Act.,” mailed Feb. 2, 2016). 2 According to Appellant, the real party in interest is Georgia-Pacific Corrugated LLC. Appeal Br. 2. Appeal 2017-000104 Application 13/737,659 BACKGROUND According to Appellant, “[t]he subject matter disclosed [in the Specification] relates to containers, particularly to packing containers, and more particularly to packing containers suitably configured for stacking one on top of another.” Spec. 12. REPRESENTATIVE CLAIM Claim 1 is illustrative of the appealed claims and recites: 1. A container, comprising: a plurality of panels having a defined thickness integrally arranged with respect to each other and with respect to a set of orthogonal x, y and z axes, the z-axis defining a direction line in which the container is configured to support a stacking load; wherein the plurality of panels comprise a first panel comprising a first planar surface, and a second panel comprising a second planar surface, wherein the second panel is disposed adjacent the first panel, wherein the first panel and the second panel form a contiguity with a fold line disposed therebetween, wherein the first planar surface is disposed parallel to the x-z plane or the y-z plane, wherein the fold line comprises at least one cutout region having a first dimension that extends along the fold line and a second dimension that extends across the fold line from the first planar surface to the second planar surface, wherein the at least one cutout region comprises a first planar edge oriented perpendicular to the first planar surface and perpendicular to the z-axis; wherein the plurality of panels further comprise a third panel comprising a third planar surface disposed parallel with the first planar surface, wherein the third panel comprises an outer edge having at least one projection that is contiguous and planar with the third planar surface, wherein the at least one projection comprises a second planar cut edge oriented perpendicular to the third planar surface and perpendicular to the z-axis; wherein the second panel, the third panel, and two other panels of the plurality of panels, form a contiguity having three 2 Appeal 2017-000104 Application 13/737,659 fold lines that separate the third panel from the second panel, wherein the three fold lines of the contiguity are oriented parallel with each other; wherein the at least one projection is disposed within a respective one of the at least one cutout region; and wherein the at least one projection extends outward from the respective outer edge no more than the defined thickness of the plurality of panels. Appeal Br. 15—16. REJECTIONS 1. The Examiner rejects claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Kuhn3 in view of Robinson.4 2. The Examiner rejects claims 3—5 under 35 U.S.C. § 103(a) as unpatentable over Kuhn in view of Robinson and Moen.5 3. The Examiner rejects claims 9—13 and 16 under 35 U.S.C. § 103(a) as unpatentable over Kuhn in view of Robinson and Smith.6 DISCUSSION Kuhn in view of Robinson With respect to claim 1, the Examiner finds that Kuhn discloses a container as claimed except that Kuhn does not teach that the projection extends outward no more than a defined thickness of the plurality of panels. Final Act. 2—3 (citing Kuhn Figs. 1, 4). With respect to this limitation, the Examiner finds that Robinson teaches a container with “a locking tab that 3 Kuhn et al., US 3,744,705, iss. July 10, 1973. 4 Robinson, US 3,375,967, iss. Apr. 2, 1968. 5 Moen, US 2006/0196920 Al, pub. Sept. 7, 2006. 6 Smith et al., US 5,392,985, iss. Feb. 28, 1995. 3 Appeal 2017-000104 Application 13/737,659 does not extend beyond a planar surface of the panel comprising a locking slot.” Final Act. 3 (citing Robinson Figs. 1—6; col. 1,11. 38-42). 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 Kuhn’s carton to shorten the locking tab in order to give the carton a smoother, more aesthetic appearance, as taught by Robinson.” Final Act. 3. The Examiner also explains: Further, the modification of Kuhn in view of Robinson is simply drawn to known tab and slot engagements; not separate cover constructions, and comer post reinforcements as Applicant seems to be arguing. It would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to modify Kuhn’s carton to shorten the locking tab in order to give the carton a smoother, more aesthetic appearance, as taught by Robinson. It would have been an obvious matter of design choice to make Kuhn’s tab shorter, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ237 (CCPA 1955). Id. at 5. We agree with and adopt the Examiner’s findings and conclusions with respect to the rejection of claim 1. See Final Act. 2—3, 5; see also Ans. 5. As discussed below we are not persuaded of reversible error by Appellant’s arguments. Appellant first argues that the Examiner erred in stating that the claims are not limited to a unitary blank. Appeal Br. 8—9 (citing Final Act. 5). Even if we were to find that the Examiner’s statement is incorrect, we see no indication that the rejection relies on such a finding, and we do not understand the rejection to rely on such a finding. In particular, the rejection 4 Appeal 2017-000104 Application 13/737,659 relies on Robinson insofar as Robinson discloses a tab that does not extend beyond the thickness of the planar structure and that the use of such a tab is a “known tab and slot engagement[].” Final Act. 3,5. The rejection does not rely on Robinson’s teaching of a separate base and separate cover. See Ans. 5 (indicating that the proposed modification is not related to “separate cover constructions”). Appellant also argues that the proposed modification would render Kuhn unsuitable for its intended purpose. Specifically, Appellant argues: Additionally Appellant submits that for a prior art reference to disclose or teach a missing element (the claimed projection that forms a compression reinforcement feature), it is well established that the reference being modified must remain suitable for its intended purpose, and to modify Kuhn to reduce the length of the tab 42 to the degree claimed and as taught by Robinson would not necessarily provide the requisite engagement of front panel 14 to top panel 22 when pressure is applied to the flap 24 until the adhesive has set, as required by Khun [sic], thereby rendering modified Kuhn unsuitable for its intended purpose. As such Appellant submits that one skilled in the art would not look to make such a modification to Khun [sic] to arrive at the claimed invention. Appeal Br. 11. However, we find that modifying Kuhn’s tab 42 to have a length equal to the thickness of the panel would still allow the tab to fully engage aperture 48 such that panel 14 could still be pushed and maintained in a fixed relationship with top panel 22 until the adhesive has set. Appellant provides no evidence that a shorter tab as proposed would not serve the same purpose as the longer tab Kuhn discloses, and we disagree that Kuhn’s tab is “described as being extended for this purpose.” Reply Br. 3. Although Kuhn depicts tab 42 extending beyond the surface of the box (Fig. 4), Kuhn does not specifically describe that the tab is extended to serve 5 Appeal 2017-000104 Application 13/737,659 the purpose Appellant asserts. See Kuhn col. 3,11. 63—65. Rather, Kuhn describes only that tab 42 “may be pressed against front panel” and “pressure can be maintained until the adhesive has set,” and Kuhn does not specifically indicate that it is the extended portion of the tab that must be pressed against the front panel. Id. We are not persuaded that Kuhn’s tab would not serve this purpose if it was shortened as proposed. Appellant also argues that the Examiner’s proposed motivation for the combination “falls wholly short of identifying an apparent reason to combine known elements in the fashion claimed.” Appeal Br. 11 (emphasis omitted). Regarding the Examiner’s statement that the proposed combination would provide a more aesthetic appearance, Appellant indicates that the Examiner’s statement is conclusory without any rational underpinning. And with respect to the Examiner’s statement that the modification would be an obvious design choice, Appellant argues that the Examiner cannot rely on a finding of design choice based on a change in size because “Appellant’s claimed invention is directed to a structural enhancement. . . resulting from a calculated tab size that improves the compression strength of a container formed by folding a plurality of panels.” Id. at 12. We are not persuaded of error because we agree with the Examiner’s conclusion that one of ordinary skill in the art would be motivated to make the proposed combination in order to provide a container with a smooth outer surface. We agree with the Examiner that Robinson provides sufficient motivation for the modification because Robinson states that providing a “smooth outermost surface” prevents the cover from “catching on projections to thereby facilitate packaging and form a secure assembly.” 6 Appeal 2017-000104 Application 13/737,659 Robinson col. 1,11. 38-42; see also Final Act. 3 (citing Robinson col. 1,11. 38-42). And to the extent the Examiner also relies on the conclusion that the proposed modification would have been a design choice, we are not persuaded by Appellant’s argument to the contrary. See Garner v. TEC Syst. Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also MPEP § 2144.04(IV)(A). As noted above, we are not persuaded that changing the relative size of Kuhn’s tab would have caused Kuhn’s device to perform differently. Based on the foregoing, we are not persuaded of reversible error with respect to the rejection of claim 1. Appellant does not provide separate arguments with respect to the rejection of claim 2, and thus, we are not persuaded of reversible error with respect to the rejection of claim 2 for the same reasons. Accordingly, we sustain the rejection of claims 1 and 2. Kuhn in view of Robinson and Moen Each of claims 3—5 ultimately depend from independent claim 1. Appellant does not raise separate arguments with respect to the rejection of these claims. Accordingly, for the reasons provided above, we are not persuaded of reversible error, and we sustain the rejection of claims 3—5. Kuhn in view of Robinson and Smith Claims 9—12 Appellant groups claims 9—12 together with claim 1 and does not provide separate argument with respect thereto. See Appeal Br. 7—12. 7 Appeal 2017-000104 Application 13/737,659 Accordingly, for the reasons provided above with respect to claim 1, we sustain the rejection of claims 9—12. Claims 13 and 16 Independent claim 13 is similar to independent claim 1 and additionally requires, in pertinent part, “a second cutout region comprising a planar edge . . . wherein the planar cut edge of another projection is not disposed within the second cutout region.” Appeal Br. 18—19. In rejecting this claim, the Examiner relies on Kuhn as modified by Robinson as described above, and the Examiner additionally relies on Smith for the limitation quoted above. Final Act. 4. Specifically, the Examiner states: Kuhn, as modified above, discloses the claimed invention except for a plurality of cutouts along fold lines. Smith teaches a container for shipping storing and displaying articles wherein cutout regions (57) are along fold lines that adjoin the sidewalls of a box to allow ventilation (fig. 4; col 4 line 20). It would have been obvious to one of ordinary skill in the art to further modify Kuhn to have a plurality of cutouts along fold lines in order to ventilate the contents, as taught by Smith. Id. We agree with and adopt the Examiner’s findings and conclusion with respect to the rejection of claim 13. See Final Act. 4; see also Ans. 6. As discussed below, we are not persuaded of reversible error by Appellant’s arguments. To the extent Appellant relies on the same arguments with respect to the rejection of claim 13 as those discussed above with respect to claim 1, we are not persuaded of reversible for the same reasons provided above. Additionally, Appellant argues “that while the disclosure of Smith teaches vent openings, it does not teach the claimed features that serve as compression reinforcement features.” Appeal Br. 13. Thus, Appellant 8 Appeal 2017-000104 Application 13/737,659 contends “that one skilled in the art would not be motivated by Smith to further modify Kuhn and Robinson ... to arrive at the claimed invention, directed to compression reinforcement features of a container, where the reference relied upon (Smith) is directed to venting.” Id. at 13—14. However, we agree with and adopt the Examiner’s response to this argument. See Ans. 6. Specifically, the fact that Appellant uses cutouts for a different purposes does not alter the conclusion that their use in the prior art would have been obvious for the purpose disclosed in the references. See In reLintner, 458 F.2d 1013, 1016 (CCPA 1972). Here, the Examiner finds that one of ordinary skill in the art would have been motivated to include extra cutouts as vents as taught by Smith, and the fact that Appellant discloses an alternative purpose for the cutouts does not show error in the Examiner’s findings or conclusion. Based on the foregoing, we are not persuaded of reversible error in the rejection of claim 13. For the same reasons, we are not persuaded of reversible error in the rejection of dependent claim 16, for which Appellant does not raise separate arguments. Accordingly, we sustain the rejection of claims 13 and 16. CONCLUSION We AFFIRM the rejections of claims 1—5, 9—13, and 16 for the reasons provided herein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation