Ex Parte Remaks et al

Board of Patent Appeals and Interferences

Jan 12, 2007

10209736 (B.P.A.I. Jan. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. REMAKS and RONALD D. TIMBROOK
____________

Appeal 2006-2365
Application 10/209,736
Technology Center 3700
____________

Decided: January 12, 2007
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR
and LINDA E. HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 USC § 134(a) from the examiner's
final rejection of claims 1-11, all of the claims pending in the application.
We REVERSE.
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Application 10/209,736

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BACKGROUND
The appellants’ invention relates to a container blank and container with a
hazard warning feature. Claim 1, reproduced below, is representative of the
subject matter on appeal. A copy of all of the claims can be found in the appendix
to the appellants’ brief.

1. A blank for a container having a plurality of sidewalls, corner walls,
and bottom panels configured to form a container having truncated
corners, the blank comprising:
a plurality of substantially triangular shaped corner tabs each
having an upper surface; and
an indicia on the upper surface;
wherein the blank is formed from a corrugated material.

The examiner relies upon the following as evidence of unpatentability:
Cummings D90,803 Oct. 03, 1933
Watts 3,373,922 Mar. 19, 1968
Croley 4,225,078 Sep. 30, 1980
Kuchenbecker 5,259,550 Nov. 09, 1993
Batchelor 5,746,318 May 05, 1998
Giampapa

6,059,179 May 09, 2000
Wiley (The Wiley Encyclopedia of Packaging Technology, pp. 204, 216,
and 217)
Questar (Questar Boxes) showing StarBox2000 & StarBox2400,
http://questarusa.com/boxes/boxes.html
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Application 10/209,736

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The following rejections are before us for review:
1. Claims 1, 2, 4-7, and 9 stand rejected under 35 USC § 103(a) as being
unpatentable over Kuchenbecker in view of Watts or Giampapa and further
in view of Batchelor.
2. Claims 3, 8, and 9 stand rejected under 35 USC § 103(a) as being
unpatentable over Kuchenbecker in view of Watts or Giampapa and further
in view of Batchelor and Wiley.
3. Claims 1, 2, 4-7, 9, and 10 stand rejected under 35 USC § 103(a) as being
unpatentable over Croley in view of Cummings or Questar.
4. Claims 3, 8, and 11 stand rejected under 35 USC § 103(a) as being
unpatentable over Croley in view of Cummings or Questar and further in
view of Wiley.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellants regarding this appeal, we make reference to the
examiner's answer (mailed October 19, 2005) for the examiner's complete
reasoning in support of the rejections and to the appellants’ brief (filed March 3,
2004) for the appellants’ arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellants’ specification and claims, the applied prior art, and the respective
positions articulated by the appellants and the examiner. As a consequence of our
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Application 10/209,736

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review, we make the determinations that follow. It is our view that, after
consideration of the record before us, we cannot sustain the examiner’s rejections.

KUCHENBECKER IN VIEW OF WATTS OR GIAMPAPA
AND FURTHER IN VIEW OF BATCHELOR
Claims 1, 2, 4-7, and 9 stand rejected under 35 USC § 103(a) as being
unpatentable over Kuchenbecker in view of Watts or Giampapa and further in view
of Batchelor. Independent claims 1, 4, and 9 all require substantially triangular-
shaped corner tabs or panels having indicia on the upper surface of the corner
panels.
In the rejection of independent claims 1, 4, and 9, the examiner determined
that Kuchenbecker meets all of the claimed limitations except for indicia on the
upper surface of the triangular-shaped corner tabs. The examiner relied on either
Watts or Giampapa for the teaching that it is known in the art to provide indicia on
a container. The examiner found that it would have been obvious to one of
ordinary skill in the art to provide indicia on a container in Kuchenbecker, as
taught by Watts or Giampapa, to provide advertisement and/or to decorate the box.
Answer, p. 3. The examiner further relied on Batchelor to teach that it was known
in the art to make a container from corrugated material, and found that it would
have been obvious to make the container of Kuchenbecker from corrugated
material to provide added strength. Answer, pp. 3, 4.
Appeal 2006-2365
Application 10/209,736

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The appellants argue that there is there is no teaching, suggestion, or
motivation to add indicia on the upper surface of the end flaps (51-56) of
Kuchenbecker because these end flaps are internal structural supports for their
respective octagonal end panels (42 and 44), and thus, the end flaps are not
externally visible when the container is formed. Brief, p. 9. We agree with the
appellants’ position.
As shown in Figure 5, the triangular end flaps (51, 51’, 52, 52’, 54, 54’, 56,
and 56’) of Kuchenbecker are inwardly folded such that they underlie and support
each of the respective octagonal end panels (42, 44) to form a rigid end to the
octagonal prism (col. 3, lines 18-23 and col. 4, lines 54-57).1 We find that the
teachings of Watts, Giampapa, and Batchelor, when combined with Kuchenbecker,
would not have led one of ordinary skill in the art to the claimed invention. Watts
relates to a container (19) made from a blank. Watts discloses that the outside
surface of the container is laminated with a sheet of metallic foil and treated to give
the appearance of a basket weave (col. 3, lines 23-27). Watts, similar to
Kuchenbecker, teaches adding a decorative pattern only to the outer surface of the
container. As such, there is no motivation in the combined teachings of Watts and

1 We note that Kuchenbecker teaches that the outer surface of the blank (B1)
is preferably printed with a decorative pattern for display to the consumer (col. 4,
lines 61-63). Because the end flaps of Kuchenbecker are not externally visible to
the consumer, however, we find it speculative to read this disclosure of
Kuchenbecker to teach or suggest printing a decorative pattern on the hidden
portions of the blank. Rather, we interpret this disclosure of Kuchenbecker to
teach or suggest adding decorative printing only on the portion of the blank (B1)
that is disposed on the outer surface of the container, and thus visible to the
consumer, once the container is formed.
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Kuchenbecker to add indicia to the upper surface of the hidden triangular end flaps
of Kuchenbecker.
Giampapa relates to a container formed from a single continuous portion of
sheet plastic or cardboard and having indicia on its inside surface so that it can be
unfolded and laid out to serve as an eating or activity mat (col. 3, lines 33-35 and
col. 4, lines 25-27). We find no motivation to modify the container of
Kuchenbecker to add indicia on the inside surface, as taught by Giampapa.
Kuchenbecker relates to a tissue carton. The container of Giampapa is a picnic
basket or a container used for carrying games or arts and crafts materials. There is
no motivation to add such indicia as described in Giampapa to a tissue carton,
because the tissue carton of Kuchenbecker is not a continuous surface when
unfolded and laid out (see e.g., Figure 1). As such, the blank of Kuchenbecker
would not be useful as an eating or activity mat, as taught by Giampapa.
The examiner relied on Batchelor to teach only that it is known to make
containers from corrugated cardboard. Batchelor does not cure the deficiencies of
Kuchenbecker, Watts, and Giampapa, in that it does not teach or suggest
triangular-shaped panels having indicia on the upper surface. Batchelor, like
Kuchenbecker, relates to a tissue box (col. 1, line 6). The container of Batchelor is
square and thus does not teach or suggest triangular-shaped panels (see e.g.,
Figures 1-4). Further, Batchelor contains no teaching or suggestion of any indicia
on any panels of the box.
As such, we find that a person having ordinary skill in the art at the time the
invention was made, possessed with the teachings of Kuchenbecker, Watts,
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Giampapa, and Batchelor, would not have been led to make the combination
recited in claims 1, 4, and 9. Claims 2 and 5-7 depend from and further limit
independent claims 1 and 4. As such, these dependent claims are also not rendered
unpatentable based on the prior art relied upon by the examiner. Accordingly, we
do not sustain the examiner’s rejection of claims 1, 2, 4-7, and 9 under 35 USC
§ 103(a) as being unpatentable over Kuchenbecker in view of Watts or Giampapa
and further in view of Batchelor.

KUCHENBECKER IN VIEW OF WATTS OR GIAMPAPA
AND FURTHER IN VIEW OF BATCHELOR AND WILEY
Claims 3, 8, and 92 stand rejected under 35 USC § 103(a) as being
unpatentable over Kuchenbecker in view of Watts or Giampapa, further in view of
Batchelor, and further in view of Wiley. The examiner relied on Wiley only for its
teaching of using a fluorescent color on packaging materials. Answer, p. 4. Wiley
does not cure the deficiencies of the teachings of Kuchenbecker, Watts, Giampapa,
and Batchelor. Specifically, Wiley does not teach or suggest a blank or container
having substantially triangular-shaped panels with indicia on the upper surface.
Rather, the excerpt from Wiley relied upon by the examiner relates only to
colorants for packaging materials. As such, we do not sustain the examiner’s
rejection of claims 3, 8, and 9 under 35 USC § 103(a) as being unpatentable over
Kuchenbecker in view of Watts or Giampapa and further in view of Batchelor and
Wiley.

2 We note that claim 11, not claim 9, requires that the indicia is either a fluorescent
or day-glow color.
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CROLEY IN VIEW OF CUMMINGS OR QUESTAR
Claims 1, 2, 4-7, 9, and 10 stand rejected under 35 USC § 103(a) as being
unpatentable over Croley in view of Cummings or Questar. The examiner
determined that Croley meets all of the claimed limitations except for the claimed
indicia on the upper surface. The examiner relied on Cummings to teach that it is
known in the art to provide pattern indicia on a box blank and thus it would have
been obvious to one of ordinary skill in the art to provide pattern indicia in Croley,
as taught by Cummings, to advertise and/or identify the container easily. Answer,
p. 4.
The appellants argue that Croley, like Kuchenbecker, uses triangular flaps
(22b, 24b, 26b, 28b) as internal structural supports such that the flaps are not
externally viewable and therefore there is no motivation to print indicia on the
flaps. We agree with the appellants’ position.
Based on the same reasoning discussed supra, we find that even if one
having ordinary skill in the art were to combine the teachings of Cummings, which
shows indicia printed on the externally visible portions of a box blank, with the
container of Croley, it would not lead that hypothetical person skilled in the art to
print indicia on the triangular flaps of Croley, which are not visible. The
examiner’s assertion that one would have been motivated to add indicia to the flaps
of Croley for advertising or identification does not make sense, because the flaps
are not visible once the box of Croley is constructed.
Similarly, Questar does not cure the deficiencies of Croley. The depiction of
the Questar boxes on the web site shows that the visible external portions of the
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box are bright yellow, but the internal portions, for example on the inside of the top
flaps, are a natural paperboard color. As such, there is no teaching or suggestion
from the Questar boxes that would have led one having ordinary skill in the art to
modify the triangular flaps of Croley to add indicia to the upper surface of the
flaps. Accordingly, we do not sustain the examiner’s rejection of claims 1, 2, 4-7,
9, and 10 as being unpatentable over Croley in view of Cummings or Questar.

CROLEY IN VIEW OF CUMMINGS OR QUESTAR AND
FURTHER IN VIEW OF WILEY
Claims 3, 8, and 11 stand rejected under 35 USC § 103(a) as being
unpatentable over Croley in view of Cummings or Questar and further in view of
Wiley. For the same reasons discussed supra, we find that Wiley does not cure the
deficiencies of the teachings of Croley, Cummings, and Questar, because Wiley
does not teach or suggest a blank or container having substantially triangular-
shaped panels with indicia on the upper surface. As such, we do not sustain the
examiner’s rejection of claims 3, 8, and 11 under 35 USC § 103(a) as being
unpatentable over Croley in view of Cummings or Questar and further in view of
Wiley.

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CONCLUSION
To summarize, the rejections by the examiner of claims 1-11 are reversed.
REVERSED

)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-2365
Application 10/209,736

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