Ex Parte Rentzel et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613402304 (P.T.A.B. Dec. 20, 2016) 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. 2224-0001 9790 EXAMINER VAN BUSKIRK, JAMES M ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 13/402,304 02/22/2012 28078 7590 12/20/2016 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 Michael Rentzel 12/20/2016 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 MICHAEL RENTZEL, JOSH GORDON, and CHARLES KELLEY1 Appeal 2015-003599 Application 13/402,304 Technology Center 3600 Before MICHAEL C. ASTORINO, ROBERT L. KINDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s non-final rejection of claims 4—16 and 22—24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Innovative Packaging Solutions. App. Br. 2. Appeal 2015-003599 Application 13/402,304 Appellants ’ Invention Appellants’ “invention relates to boxes, and more specifically, to boxes formed from paper board.” Spec. 1,11. 2—3. One purpose of the claimed box design is to allow the stacking of multiple cable pay out boxes in order to achieve simultaneous payout of several cables while also addressing movement and falling of boxes from the stack. Id. at 2,11. 1—9. Claims on Appeal Claims 4, 9, and 10 are the independent claims on appeal. Claim 4 is illustrative of the claimed subject matter and reads: 4. A corrugated paper container comprising, a plurality of sides integrally formed from a corrugated paper blank; a retaining tab formed from a first side such that the first side includes a void having a shape substantially the same as a shape of the retaining tab; a slot aligned with and spaced from the retaining tab, the slot configured to receive a corresponding retaining tab of another corrugated paper container, the slot defined in and surrounded by an external surf ace of the first side, wherein the retaining tab includes a body portion and a head portion, the body portion having a first end attached to the first side, and the head portion is attached at a second end of the body portion; and wherein the width of the head portion exceeds a width of the slot. App. Br. 21 (Claims App’x). 2 Appeal 2015-003599 Application 13/402,304 Examiner’s Rejections I. The Examiner rejected claims 4, 9, 10—14, and 22—24 under 35 U.S.C. § 102(a) as being anticipated by Fleishman (US 2011/0107706 Al, filed Nov. 3, 2010, pub. May 12, 2011). Office Act. 2—3 (mailed Jan. 29, 2014). II. The Examiner rejected claims 5—8, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Fleishman and Chen (US 6,016,911, issued Jan. 25, 2000). Id. at 5—6. ANALYSIS I. Anticipation Based on Fleishman Appellants argue the rejection of claims 4, 9, 10, and 22 separately because Appellants contend each claim recites different elements not found in Fleishman. App. Br. 8. We consider each claim in turn. Claim 4 Claim 4 requires, in pertinent part, “a retaining tab formed from a first side such that the first side includes a void,” and “the retaining tab includes a body portion and a head portion, the body portion having a first end attached to the first side.” Appellants contend that Fleishman does not disclose a first side with both the claimed “void” and “the body portion having a first end attached” as required by claim 4. App. Br. 9. Appellants contend that Fleishman’s void with the shape of tab 36 is on front side 32 of the building block, but the end of tab 36 is attached to top side 12 of the block. Reply Br. 2. Thus, according to Appellants, the two claimed structures are on distinct sides of Fleishman and not on the “first side” as claimed. 3 Appeal 2015-003599 Application 13/402,304 The Examiner acknowledges that Fleishman’s front side 32 and top side 12 are walls. See Ans. 9. The Examiner finds this does not matter because the walls “are connected by a fold line 24,” which “would mean that wall 12 and 32 are a single unit and that the tab 36 is attached to a single side wall.” Id. In response, Appellants contend that “[mjultiple walls cannot be considered a single ‘wall’ merely because they are connected.” Reply Br. 3. Appellants explain: Moreover, the fact that a single sheet is folded into multiple walls does not make the multiple walls a single wall. If this were the case, then the containers of neither Fleishman, nor the disclosed embodiment of the invention, would have a “plurality of sides integrally formed from a corrugated paper blank”, as claimed. Id. As noted by Appellants, claim 4 also requires “a plurality of sides.” The Examiner does not persuasively explain how the walls form “a single unit,” yet still meet the “plurality of sides” limitation. We are therefore not persuaded Fleishman discloses the claimed first side with both the claimed “void” and “the body portion having a first end attached.” For the reasons set forth above, we do not sustain the Examiner’s rejection of claim 4 as anticipated by Fleishman. Claim 9 Claim 9 does not have the same limitations discussed above for claim 4. For claim 9, Appellants argue Fleishman does not disclose “a corrugated paper container” and “a retaining tab formed from a first side such that the first side includes a void having a shape substantially the same as a shape of the retaining tab.” App. Br. 22. We find each contention unpersuasive and address each in turn. 4 Appeal 2015-003599 Application 13/402,304 The preamble of claim 9 recites “[a] corrugated paper container.” App. Br. 22. Appellants first do not explain why the preamble should be limiting. We presume, however, that this limitation is limiting because claim 9 later recites “another corrugated paper container” referring back to the paper container set forth in the preamble. Id. Appellants’ primary contention is that “Fleishman discloses building blocks, not containers.” Id. at 10. The Examiner has persuasively established that Fleishman’s building blocks may be considered containers under the broadest reasonable interpretation of that term. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). A container may be “anything that contains or can contain something, as a carton, box, crate, or can.”2 Usage of the term “container” in the Specification is consistent with this plain meaning. The Examiner relies on paragraph 42 of Fleishman (Ans. 12), which describes hollow building blocks that can be filled with material: The building block 10 may be hollow or not hollow. The building block 10 may also be blow molded as a single hollow piece. . . . Alternatively or in addition, the building blocks 10 can each be filled internally with, for example, structurally reinforcing or insulative material. Fleishman, 142; see also Office Act. 3 (applying Fleishman 142 to claim 9). Appellants contend there is no disclosure that the building blocks function as containers, but Appellants do not persuasively address the Examiner’s finding that Fleishman’s building block may filled with 2 Dicitionary.com “container” (Dec. 12, 2016), available at: http ://www. dictionary, com/browse/ container 5 Appeal 2015-003599 Application 13/402,304 insulative material. App. Br. 10. Because Fleishman’s building block may be hollow and contain insulative or other materials, the Examiner has persuasively established that the building block is a container. Appellants also contend that Fleishman fails to disclose the limitation “a retaining tab formed from a first side such that the first side includes a void having a shape substantially the same as a shape of the retaining tab” because the void of Fleishman allegedly does not have substantially the same shape as the retaining tab. We disagree. Appellants contend the void “only matches the head portion of the fastener element 36, not the entire fastener element 36.” App. Br. 11. Examining Fleishman Figures 2 and 8, only a small portion of the void is not matched by the retaining tab, or fastener element 36. The claim requires the retaining tab as only “having a shape substantially the same,” not entirely the same, as the void. The Examiner has persuasively established that Fleishman discloses this limitation. For the reasons set forth above, we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 102(a). Claim 10 Appellants contend “Fleishman does not anticipate claim 10 because Fleishman does not disclose or suggest ‘a first corrugated paper container’ and ‘a second corrugated paper container’ for reasons similar to those discussed above in connection with claim 9.” App. Br. 12. For the reasons set forth above for claim 9, we sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 102(a). 6 Appeal 2015-003599 Application 13/402,304 Claim 22 Claim 22, dependent from claim 10, recites “wherein the retaining tab extends at least in part along the first side of the second container.” App. Br. 24. We find persuasive Appellants’ contention that Fleishman does not disclose this limitation. As explained by Appellants, “Fleishman uses a different tab connection scheme, wherein the tab is directly mated to an opposite slot, similar to an electrical plug into an outlet.” Id. at 13. This direct fit precludes any extension of the retaining tab along the first side of the second container when the containers are coupled, as required by claim 10. See Fleishman, Figs. 2, 4, 10. We have considered the Examiner’s findings and response (Ans. 10) but find that they are not supported on the record before us. The Examiner conflates anticipation with obviousness, but we also disagree with the Examiner’s finding that design choice would have dictated the claimed feature. Id. (relying on argument and case law related to obviousness). Fleishman’s retaining tab does not extend at least in part along the first side of the second container. See Reply Br. 6 (“When the Fleishman blocks are connected, the means of attachment is not readily exposed.”). Instead, Fleishman’s tab was meant to securely lock together blocks as part of a building structure and extension of a retaining tab along the side of the container would seemingly not be compatible with this objective. See Fleishman, Abstract, Figs. 4, 7, 10, 16. For the reasons set forth above, we do not sustain the Examiner’s rejection of claim 22 as anticipated by Fleishman. Claims 11—14, 23, and 24 Claims 11—14, 23, and 24 depend, directly or indirectly, from claim 7 Appeal 2015-003599 Application 13/402,304 10. Appellants do not separately argue these claims. Inasmuch as we are not persuaded by any of Appellants’ argument regarding claim 10, we sustain the rejection of claims 11—14, 23, and 24. II. Obviousness Over Fleishman and Chen Claims 5—8 Claims 5—8 depend, directly or indirectly, from claim 4. Because Appellants argue the Examiner’s rejection of claims 5—8 is erroneous for the same reasons that the rejection of claim 4 is erroneous (App. Br. 14), and because the Examiner does not rely on Chen to correct the deficiency we noted above for Fleishman, we do not sustain the Examiner’s rejection of claims 5—8 under 35 U.S.C. § 103(a). Claims 15 and 16 Claim 15, dependent from claim 10, requires “wherein the first corrugated paper container contains first wound media, and the second corrugated paper container contains second wound media.” App. Br. 23. Claim 16 depends from claim 15 and further requires “a void through which the first wound media is fed.” Id. at 24. The Examiner relies on Chen as teaching a container with wound media and finds “it would have been obvious to one having ordinary skill in the art at the time [of] the invention was made to add the coil as taught by Chen to the containers of [Fleishman] so that both boxes would contain coils.” Office Act. 7. Appellants contend that there is no reason to modify Fleishman’s building blocks to contain wound media. App. Br. 18 (“no reason is ever given for modifying any of Fleishman’s building blocks to contain wound media in the first place”). Appellants argue the shape of Fleishman’s building blocks “does not resemble containers for wound media (cables, 8 Appeal 2015-003599 Application 13/402,304 rope, etc.)” and “one of ordinary skill in the art would not have any reason to combine Fleishman’s teaching of triangular building blocks with Chen’s teaching of a cable container.” Reply Br. 6—7. The Examiner has not persuasively explained why a person of ordinary skill in the art would have combined Chen’s teaching of a wound media container with the building blocks of Fleishman. The Examiner finds the structures of Chen can be bodily incorporated into the containers of Fleishman and determines that they would be combined “so that both boxes would contain coils.” Office Act. 7; Ans. 11—12. The Examiner’s reasoning appears to involve hindsight reconstruction based upon knowledge gleaned only from Appellants’ disclosure. The Examiner does not provide a persuasive rationale for modifying the building block of Fleishman to include wound media as required by claims 15 and 16. For these reasons, we do not sustain the Examiner’s rejection of claims 15 and 16 under 35 U.S.C. § 103(a). CONCLUSION The rejection of claims 4 and 22 under 35 U.S.C. § 102(a) as being anticipated by Fleishman is reversed. The rejection of claims 9—14, 23, and 24 under 35 U.S.C. § 102(a) as being anticipated by Fleishman is affirmed. The rejection of claims 5—8, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Fleishman and Chen is reversed. 9 Appeal 2015-003599 Application 13/402,304 DECISION We AFFIRM the Examiner’s decision to reject claims 9—14, 23, and 24. We REVERSE the Examiner’s decision to reject claims 4—8, 15, 16, and 22. 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 10 Copy with citationCopy as parenthetical citation