Ex Parte Johansson et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10450445 (B.P.A.I. Jun. 15, 2009)

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.
10/450,445 10/28/2003 Tord Johansson JOHA3004/REF 5041
7590 06/15/2009
Bacon & Thomas
4th Floor
625 Slaters Lane
Alexandria, VA 22314-1176
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
06/15/2009 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TORD JOHANSSON, and NILS-AKE LARSSON

Appeal 2009-003455
Application 10/450,445
Technology Center 3700
____________

Decided1: June 15, 2009
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 2, 4, 5, and
7-10. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The claims are directed to a non-folded paper container wall. Claims
1, 4, and 8 are illustrative:
1. A non-folded paper container wall of a container with a
predominantly circular or elliptic cross-section, which paper is a highly
extensible Kraft paper that has an extension of 5% to 20% and which wall
has at least one outwards from the periphery extending stretched portion.
4. The non-folded paper container wall according to claim 1, wherein
the extension is 10% to 15%.
8. The non-folded paper container wall according to claim 1, wherein
the container wall has several outwards from the periphery extending
portions.

The Examiner relies on the following evidence:
Jaisle et al. US 3,997,696 Dec. 14, 1976
Zadravetz US 6,126,584 Oct. 3, 2000
Slat US 6,264,053 Jul. 24, 2001

Paperonweb, http://www.paperonweb.com/dict11.htm, “Pulp and Paper
Dictionary, Extensible Kraft” 1-28, (accessed October 24, 2006).

The rejection presented by the Examiner is as follows:
Claims 1, 2, 4, 5, and 7-10 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Zadravetz, Paperonweb, Jaisle, and
Slat.
We affirm the rejection as to claims 1, 2, 5, and 7-10. We reverse the
rejection as to claim 4.

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ISSUE

Have Appellants met their burden of establishing error in the
Examiner’s prima facie case of obviousness?

FINDINGS OF FACT
FF 1. Zadravetz teaches “[a] method of forming a paper container us[ing] a
three ply corrugated material having at least one inner or outer sheet of paper
that may be stretched or compressed circumferentially to permit subsequent
rolling of the corrugated material about a mandrel” (Zadravetz, Abstract).
For clarity we reproduce Zadravetz’s Figures 1 and 11 below:

“FIG. 1 is a perspective view of a cup manufactured according to . . .
[Zadravetz’s] invention in partial cut away and showing an outer paper layer
peeled away to reveal an inner corrugated layer” (Zadravetz, col. 2, ll. 30-
33). FIG. 11 is a cross section of the cup showing an embossed outer layer
(Zadravetz, col. 2, ll. 66-67).

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FF 2. Zadravetz teaches that
outer paper layer 24 may expand along the circumferential
direction . . . to permit the rolling without tearing of the outer
paper layer 24 or a crushing of the flutes of the corrugated
paper layer 20. The expansion of the outer paper layer 24 is
necessary because of the substantially greater thickness of the
blank 28 than a single sheet of paper normally used for the
upstanding wall 12 of a cup. This greater thickness of wall
material displaces the outer paper layer 24 to a greater radius
than the inner paper layer 18 requiring a significant increase in
the circumferential length of the outer paper layer 24. An
expansion of the outer paper layer 24 of 2 to 15% is believed to
be adequate for most standard container sizes with necessary
thickness of the corrugated material.

(Zadravetz, col. 3, l. 64 - col. 4, l. 10.)
FF 3. Zadravetz teaches that “the outer paper layer 24 may be a so-called
extensible craft paper which provides a stretching at the fiber level of the
paper. Extensible Kraft is commercially available under the tradename of
XKL extensible from Thilmany Pulp and Paper Company of Kaukauna,
Wis” (Zadravetz, col. 3, ll. 52-56).
FF 4. Paperonweb teaches that extensible Kraft paper stretches
approximately 6% (Paperonweb, at 28).
FF 5. Jaisle teaches that “Saturating Clupak paper is a commercially
available extensible kraft paper” that can be stretched 8% in one direction
and 2-4% in the other (Jaisle, col. 5, ll. 10-13).
FF 6. Zadravetz teaches that the outer paper layer “may also be a paper
with embossing 25, where the embossing 25 may flatten when the paper is
put under tension allowing the paper to lengthen” (Zadravetz, col. 3, ll. 57-
60).
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FF 7. Slat teaches a container that comprises vertical ribs (Slat, col. 1, ll.
54-63). For clarity, we reproduce Slat’s figure 3 below:

Figure 3 is a perspective view of a container within the scope of Slat’s
disclosure (Slat, col. 2, ll. 41-43).
FF 8. Slat teaches that the container “can be easily handled” (Slat, col. 1,
ll. 41-42).

PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). On
appeal to this Board, Appellants must show that the Examiner has not
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sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606,
1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115,
1118 and 1123 (BPAI 2008) (precedential); Ex parte Catan, 83 USPQ2d
1569, 1570 and 1577 (BPAI 2007) (precedential); Ex parte Smith, 83
USPQ2d 1509, 1512-1514, 1519 (BPAI 2007) (precedential).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.

Id. at 421. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”). “In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
The law is replete with cases in which the difference
between the claimed invention and the prior art is some range
or other variable within the claims . . . . These cases have
consistently held that in such a situation, the applicant must
show that the particular range is critical, generally by showing
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that the claimed range achieves unexpected results relative to
the prior art range.

In re Woodruff, 919 F.2d 1575, 1578 (1990) (internal citations omitted).
“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004).

ANALYSIS
Appellants provide separate arguments for the following groups of
claims: (I) claims 1, 2, 5, 7, 9, and 10; (II) claim 8; (III) claim 4.
Accordingly, we limit our discussion to representative claims 1, 8, and 4. 37
C.F.R. § 41.37(c)(1)(vii).

Claim 1:
Claim 1 is drawn to a non-folded paper container wall of a container
with a predominantly circular or elliptic cross-section. Claim 1 requires the
paper to be highly extensible Kraft paper that has an extension of 5% to
20% . In addition, claim 1 requires the wall to have at least one outward
from the periphery extending stretched portion.
Zadravetz teaches a non-folded paper container with a predominantly
circular or elliptic cross-section (see FF 1 at Fig. 1). Zadravetz teaches that
the paper container has at least one wall made out of a sheet of paper (24)
that may be stretched circumferentially (FF 1-2). We are not persuaded by
Appellants’ contention that Zadravetz’s element 24 is not a wall, but instead
is one component of a wall that comprises an inner layer, middle layer, and
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an outer layer encompassing Zadravetz’s elements 12, 18, 20, 22, and 24
(App. Br. 3). Appellants offer no evidence to support their contention that a
person of ordinary skill in the art would not consider the inner and outer
layers of Zadravetz’s container to be walls2 as the Examiner found.
Zadravetz teaches that the outer sheet of paper can be extensible Kraft
paper (FF 3). The evidence on this record establishes that extensible Kraft
paper can be stretch approximately 6% to 8% (FF 4-5). 6-8% falls within
Appellants’ required range of 5% to 20% for highly extensible Kraft paper.
“[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.”
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d at 1322 (Fed. Cir.
2004).
The only question that remains is whether a person of ordinary skill in
the art would place at least one stretched portion extending outward from the
periphery of the wall? The evidence on this record establishes that a
container can be handled more easily if ribbing is placed on the outside of
the container (FF 7-8). In this regard, we find no error in the Examiner’s
conclusion that “[i]t would have been obvious to modify the embossing of
Zadravetz to be longitudinal grooves or ribs as motivated by the improved
grip and enhanced manual handling such provides” (Ans. 5). “The
combination of familiar elements according to known methods is likely to be

2 By analogy we find that those of ordinary skill in this art would recognize
that if they are standing in a room that is separated from a hallway by a wall
that they would be viewing the inner wall of the room. However, when they
walk out of the room and into the hallway they will be viewing the outer
wall of the room.
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obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416.
We recognize Appellants’ contention that “one of ordinary skill in the
art would not stretch the paper to form embossment which is then stretched
again as this would clearly increase the likelihood of tears” (App. Br. 5).
There is no persuasive evidence on this record to support this contention.
We also recognize Appellants’ contention that Zadravetz’s
“embossing is no longer present once the outer wall has been rolled into the
shape of a container because the stretching of the outer wall during rolling
causes the embossing to flatten out” (App. Br. 4-5 (emphasis removed)).
We are not persuaded. Contrary to Appellants’ contention, Zadravetz does
not require the embossing to be removed when the paper is stretched around
the container, instead Zadravetz teaches that “the embossing 25 may flatten
when the paper is put under tension allowing the paper to lengthen” (FF 6
(emphasis added)).
Nevertheless, taken in view of Slat, we are compelled to agree with
the Examiner’s conclusion that a person of ordinary skill in the art would
recognize that Zadravetz’s container can be improved by providing grooves
or ribs on the outer wall to improve handling (Ans. 5). It is proper to “take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. 398, 418. See also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). Therefore, assuming arguendo that a person of ordinary skill
in the art would interpret Zadravetz’s embossing embodiment to be mutually
exclusive of Zadravetz’s extensible Kraft paper embodiment, we agree with
the Examiner that a person of ordinary skill in the art would recognize that
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the paper can be embossed to provide grooves or ribs on the outer wall to
improve the handling of the container. There is no persuasive evidence or
argument on this record to support a contrary conclusion.
For the foregoing reasons we find no error in the Examiner’s
conclusion that claim 1 is prima facie obviousness in view of the
combination of Zadravetz, Paperonweb, Jaisle, and Slat.

Claim 8:
Claim 8 depends from and further limits the container wall of claim 1
to have several outwards from the periphery extending portions (claim 8).
Appellants contend that “[i]n the final rejection, the Slat reference is
relied upon to show outward from the inner periphery extending portion in
the form of longitudinal grooves or ribs” (App. Br. 10). In addition to the
foregoing arguments, which we found unpersuasive, Appellants contend that
“claim 8 specifically requires that the wall has several outwards from the
periphery extending portions” (id.). We are not persuaded as Slat teaches
that improved handling can be obtained through the use of several portions
(e.g., grooves or ribs) that extend outward from the periphery of the
container (FF 7-8).
Likewise, we are not persuaded by Appellants focus on Slat’s
teaching that the ribs provide the container with the capability of flexing to
accommodate the expansion and contraction of container in response to
changes in temperature (App. Br. 10). While it is true that Slat teaches this
benefit with regard to the ribs of the container, it cannot be ignored that Slat
also teaches that the ribs provide the container with improved handling (FF
8).
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For the foregoing reasons we find no error in the Examiner’s
conclusion that claim 8 is prima facie obviousness in view of the
combination of Zadravetz, Paperonweb, Jaisle, and Slat.

Claim 4:
Claim 4 depends from and further limits the container of claim 1 to
requires that the Kraft paper has an extension of 10% to 15% (claim 4).
The evidence provided by the Examiner fails to teach Kraft paper that
has an extension of 10% to 15%, or suggest that those of ordinary skill in
this art would recognize that Kraft paper would be capable of extending 10-
15%.
Nevertheless, to make up for this deficiency in the evidence, the
Examiner concludes that
it would have been obvious to modify the extension to be
within the 10-15% range as motivated by this range being
expected by engineering principles and the material of paper
and this range representing an optimum extension as a higher
extension would provide a container too flimsy to support its
weight and the weight of its contents while a lower extension
would provide a container too rigid to be shaped without tears
or damage being risked.

(Ans. 5.)
We are not persuaded. While the Examiner reasons that it would have
been obvious to modify Kraft paper to be capable of extending to 10-15%,
there is no evidence on this record to suggest that those of ordinary skill in
this art would recognize that such a modification to Kraft paper would be
possible (see generally, App. Br. 9-10).
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For the foregoing reasons we agree with Appellants’ contention that
the Examiner has failed to meet his burden of establishing a prima facie case
of obviousness with regard to claim 4.

CONCLUSION OF LAW
Appellants failed to met their burden of establishing error in the
Examiner’s prima facie case of obviousness with regard to claims 1 and 8.
Accordingly, we affirm the rejection of claims 1 and 8 under 35 U.S.C
§ 103(a) as unpatentable over the combination of Zadravetz, Paperonweb,
Jaisle, and Slat. Claims 2, 5, 7, 9, and 10 fall together with claim 1.
Appellants met their burden of establishing error in the Examiner’s
prima facie case of obviousness with regard to claim 4. Accordingly, we
reverse the rejection of claim 4 under 35 U.S.C § 103(a) as unpatentable
over the combination of Zadravetz, Paperonweb, Jaisle, and Slat.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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BACON & THOMAS
4TH FLOOR
625 SLATERS LANE
ALEXANDRIA VA 22314-1176