Ex Parte Goodrich

Board of Patent Appeals and Interferences

Jul 30, 2004

09163042 (B.P.A.I. Jul. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID P. GOODRICH
____________
Appeal No. 2004-1165
Application No. 09/163,042
____________
HEARD: JULY 14, 2004
____________
Before FRANKFORT, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 12-14
and 19-29, which are all of the claims pending in this application.
We REVERSE.
BACKGROUND
The appellant’s invention relates to a method of producing a packaging material
for use in shipping a product (claims 19-25) and a method of producing such packaging
material and wrapping it around a product as a protective cushion wrap (claims 1, 12-14
Appeal No. 2004-1165
Application No. 09/163,042
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and 26-29). A copy of the claims under appeal is set forth in the appendix to the
appellant’s brief.
The examiner relied upon the following prior art references in rejecting the
appealed claims:
Thiebaut 707,183 Aug. 19, 1902
Snyder 1,470,200 Oct. 9, 1923
George 3,235,432 Feb. 15, 1966
The following rejections are before us for review.
Claims 1, 12-14, 24 and 26-29 stand rejected under 35 U.S.C. § 103 as being
unpatentable over George in view of Thiebaut and Snyder.
Claims 19-22 and 25 stand rejected under 35 U.S.C. § 103 as being
unpatentable over George in view of Snyder.
Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable over
George in view of Snyder and Thiebaut.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and examiner’s answer (Paper Nos. 18 and 23) for the examiner's complete
reasoning in support of the rejections and to the brief (Paper No. 22) for the appellant’s
arguments thereagainst.
OPINION
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Application No. 09/163,042
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In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
George discloses a composite corrugated board comprising a flexible web of
paper or similar bendable material embossed or scored at regular spaced apart lines
21, 22 which denote fold lines about which the web is sharply folded in succession into
a corrugated medium 23. The corrugated medium 23 comprises a continuous series of
V-shaped flutes having planar walls extending between apexes 25. A liner or facing
sheet 26, 27 may be fixedly secured to one or both sides of the corrugated medium by
means of a suitable adhesive. As illustrated in Figure 10, adhesive adheres and
permanently anchors the sharp, pointed apexes 25 of the corrugated medium 23 to
adjacent portions of the facing sheets 26, 27. According to George (column 5, first
paragraph),
[t]he adhesive 28, in addition to permanently securing the
apexes 25 in position relative to each other and to the
respective facing sheets 26 and 27, further serves the
purpose of reinforcing and rigidifying the apexes 25 of the
corrugated medium 23. It will thus be seen that the adhesive
28 serves a dual function in that it rigidifies the apexes 25
and the opposed planar walls 24 of the corrugated medium
23 and permanently anchors these apexes 25 to the facing
sheets 26 and 27. Gusset or fillet like portions 29 of the
adhesive 28 are disposed on each side of the apexes 25
between the planar walls 24 and the facing sheets 26 or 27
to provide a rigid determination of the angle of juncture
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Application No. 09/163,042
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between each planar wall 24 and the adjacent facing sheet
26 or 27 and thus serves to further define and reinforce the
included angle between the planar walls 24 of any given
flute.
George points out that the sharp folds of the inventive material are an
improvement over undulated corrugated material because they result in flutes which are
truly flat and planar and therefore maintain their inherent strength and resist stress and
deformation and discloses that “[a]n important field, yet by no means the only field for
utilizing the new article of manufacture, is for all of the purposes for which the known
corrugated paperboard formed with undulating or sine-like curved corrugated medium is
employed” (column 6, lines 70-74) and goes on to discuss boxes and shipping
containers and refers to the “novel container board of the invention” (column 7, line 12).
The examiner concedes that George lacks, inter alia, the at least one facing sheet 26,
27 being tissue paper, as required in each of independent claims 1, 19 and 26.
Thiebaut discloses a packing box or case comprising cardboard a folded at acute
angles, which enables it to resist pressure far better than the undulated cardboard
material used in the prior art discussed by Thiebaut on page 1, in lines 11-23, with
“cardboard, paper or any thin fabric” b pasted on one or both sides to prevent the folds
from becoming flattened or widened at their bases (page 1, lines 43-46). Thiebaut thus
obtains a covered and ribbed compressible or extensible sheet of cardboard applicable
not only to the purposes for which similar cardboard has been used, but also for the
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Application No. 09/163,042
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1 The corrugations appear to be sinusoidal in shape rather than pleated as required in appellant’s
claims.
manufacture of bottle envelopes which are capable of fitting the shape of the bottles as
shown in Figure 4.
The examiner relies on Thiebaut for a suggestion to enclose a product within
George’s corrugated board material and to conform the material to the shape of the
product. We note, in this regard, that George gives no suggestion or indication that the
packaging material disclosed therein is intended for such purpose or that such flexibility
is desirable.
Snyder discloses a method of packaging fragile articles, such as incandescent
lamps or light bulbs. The method includes providing an individual wrapper for each
lamp consisting of a piece of corrugated1 paper 1 secured to a cover of tissue paper 2
which is of greater width than the corrugated paper 1 so that the wrapper may be
loosely wrapped about an incandescent lamp and held in position by tucking inwardly
the ends 3 of the wrapper. According to Snyder (page 2, lines 35-40),
the ends of the wrapper being tucked in, in the manner contemplated by
me, furnish a cushioning means for the tip and base of the lamp, while the
corrugated portion protects the glass walls of the bulb.
Each of the examiner’s rejections is grounded in part on the examiner’s
determination that it would have been obvious to modify George’s composite corrugated
board to include a cover sheet layer made of tissue paper, as taught by Snyder, “in
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Application No. 09/163,042
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order to have a cushioning means for the object being protected, as suggested by
Snyder at page 2, lines 31-40" (final rejection, pages 5 and 8). We agree with
appellant’s argument on pages 21-22 of the brief that such a modification of George
would undermine the second purpose of the adhesive 28 of rigidifying and reinforcing
the apexes 25 by providing a rigid determination of the angle of juncture between each
planar wall 24 and the adjacent facing sheet 26 or 27 and thus serving to further define
and reinforce the included angle between the planar walls 24 of any given flute, as
taught by George. We share appellant’s view that one skilled in the art would have
recognized that tissue paper “simply lacks the structural integrity to cooperate with the
corrugated material” to provide a rigid determination of the angle of junction between
each planar wall and the adjacent facing sheet 26 or 27, one of the objectives of
George’s invention. Where the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan
Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Finding no suggestion to
modify George to make the facing sheet or sheets of tissue paper, it follows that we
cannot sustain any of the examiner’s rejections.
CONCLUSION
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Application No. 09/163,042
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To summarize, the decision of the examiner to reject claims 1, 12-14 and 19-29
under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
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Application No. 09/163,042
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