Ex Parte SmalleyDownload PDFPatent Trial and Appeal BoardNov 7, 201713268264 (P.T.A.B. Nov. 7, 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. 13/268,264 10/07/2011 Brian Smalley R029 16250US.1 4786 26158 7590 11/09/2017 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER POON, ROBERT ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 11/09/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDocketing@WCSR.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN SMALLEY Appeal 2016-007803 Application 13/268,264 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brian Smalley (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—21 and 27—33.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Graphic Packaging International, Inc. Appeal Br. 1. 2 Claims 22—26 are withdrawn. Final Act. 1. Appeal 2016-007803 Application 13/268,264 THE CLAIMED SUBJECT MATTER Claims 1, 12, and 32 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A carton for holding a plurality of containers, the carton comprising: a plurality of panels extending at least partially around an interior of the carton, the plurality of panels comprising a bottom panel, a first side panel foldably connected to the bottom panel, a top panel foldably connected to the first side panel, a second side panel foldably connected to the bottom panel, and a reinforcement: panel foldably connected to the second side panel, the top panel at least partially overlapping the reinforcement panel; a reinforcement side flap foldably connected to the reinforcement panel and extends from the reinforcement panel to an Inner top reinforcement flap foldably connected to the reinforcement panel the reinforcement panel at least partially overlapping the inner top reinforcement flap, wherein a cutout extends in at least the inner top reinforcement: flap: and a reinforcement end flap foldably connected to the reinforcement panel adjacent the inner top reinforcement flap, wherein the cutout in the inner top reinforcement flap is at least partially formed by the reinforcement end flap. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Negelen US 6,766,940 B2 July 27,2004 Holley US 6,905,066 B2 June 14,2005 Spivey US 2011/0011924 A1 Jan. 20, 2011 THE REJECTIONS I. Claims 12—16, 18, and 32 stand rejected under 35 U.S.C. § 102(b) as anticipated by Holley. Final Act. 2—3. 2 Appeal 2016-007803 Application 13/268,264 II. Claims 12—16, 18, and 32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Holley and Spivey. Id. at 3—5. III. Claims 1—15, 17, 19—21, and 27—33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Negelen and Spivey. Id. at 5—11. OPINION Rejection I The Examiner finds that Holley discloses, inter alia, (i) “a reinforcement side flap (112) foldably connected to the reinforcement panel (26);” (ii) “an inner top reinforcement flap (40) foldably connected to the reinforcement panel [(26)], the reinforcement panel (26) at least partially overlapping the inner top reinforcement flap (40, Fig. 5);” and (iii) “a reinforcement end flap (96) foldably connected to the reinforcement panel (26) at (102). . . and being separable from the inner top reinforcement flap [(40)] along a cut line (to the sides of 96 since 96 is a yieldable tab.” Final Act. 2—3; see also Holley, Fig. 1. As to (i) the reinforcement side flap 112 “being positioned to extend from the reinforcement panel and abut the first side panel” and (ii) the reinforcement panel 26 (a) “at least partially overlapping] the inner top reinforcement flap [40] when the carton is formed from the blank” or (b) “being at least partially in face-to-face contact with the inner top reinforcement flap [40],” as claimed, the Examiner takes the position that Holley’s reinforcement side flap 112 is “capable of extending from the reinforcement panel [26] and abutting the first side panel [16]” and that Holley’s reinforcement panel 26 is “capable of partially overlapping the inner top reinforcement flap [40].” Id. 3 Appeal 2016-007803 Application 13/268,264 First, Appellant argues that “handle-reinforcing panel 112 forms part of the strap handle 200 and is not a reinforcing side flap extending from the first top panel 26 to abut a side panel.” Appeal Br. 11; see also, e.g., id. at 25. The Examiner responds that the limitation relating to the reinforcement panel abutting the first side panel “is a statement of intended use which is given little patentable weight.” Ans. 17. The Examiner continues that because “Holley discloses the prior art structure as recited,... it would be capable of being folded such that the reinforcement side flap abuts the first side panel.” Id. We agree with the Examiner that Holley discloses a side flap 112 foldably connected to a reinforcement panel 26 along fold line 114 {id.) that is positioned to abut the first side panel (e.g., side flap 112 can abut first side panel 16 if side flap 112 is folded along fold line 114 in the opposite direction than so as to be joined to strap handle 200 defined within panel 26). Second, Appellant argues that “upper end flap 40 is not folded into face-to-face contact with the first top panel 26 and is not overlapped by the first top panel 26.” Appeal Br. 12. Appellant asserts that “upper end flap 40 [instead] is adhered to the inside surface of the upper end flap 36 that cooperates with other end flaps to fully enclose an end of the carton 12.” Id. at 23 (citing Holley, 4:62—63, 6:61—64); see also, e.g., id. at 24, 26, 27. The Examiner responds that because “Holley discloses a blank having the structure as recited, then it would be capable of being folded such that the reinforcement panel [26] does at least partially overlap the inner top reinforcement flap [40].” Ans. 17. We agree with the Examiner that Holley discloses an inner top reinforcement flap 40 foldably connected to a reinforcement panel 26 along fold line 212 that is capable of being at least 4 Appeal 2016-007803 Application 13/268,264 partially in face-to-face contact with, or overlapping, reinforcement panel 26 when folded along fold line 212 toward reinforcement panel 26. Id. at 15. The Examiner maintains that the “recitation ‘in face [-]to[-]face contact with a reinforcement panel’ is treated as a statement of intended use since a blank is defined in the art as a panel that has not yet been folded for construction.” Id. at 15—16. According to the Examiner, “so long as the prior art has the structure as recited, then it can be folded such that the upper end flap 40 is in face[-]to[-]face contact with inner top panel 26.” Id. at 16. We agree with the Examiner that independent claims 12 and 32 do not distinguish structurally over the prior art of Holley, and Appellant has not convinced us that Holley’s device is incapable of having the reinforcement panel at least partially overlap the inner top reinforcement flap when the carton is formed from the blank or be at least partially in face-to-face contact with the inner top reinforcement flap, as claimed. Appellant additionally argues that “modifying Holley’s blank 10 so that the inner top panel 26 overlaps the upper end flap 40 would result in the yieldable tab 96 and the forked end portion 208 also being folded away from the end of the carton” and “[accordingly, the yieldable tab 96 ... of the modified blank would not be an end flap.” Appeal Br. 28. We are not persuaded of Examiner error in that folded yieldable tab 96 could still be considered an end flap in that it is positioned at an end or edge of the folded structure (e.g., at fold line 212). Third, Appellant argues that “as shown in Figure 1 of Holley, the yieldable tab 96 is continuous with the upper end flap 40 [and] [accordingly, the yieldable tab 96 is not separable from the upper end flap 40 along a cut line.” Appeal Br. 26; see also id. at 28. We are not 5 Appeal 2016-007803 Application 13/268,264 persuaded by Appellant’s argument in connection with independent claim 12 because we agree with the Examiner’s finding that inner top reinforcement flap 40 is separable from reinforcement end flap 96 along a cut line that is “to the sides of 96 since 96 is a yieldable tab.” Final Act. 3. Holley describes that “yieldable tab 96 is struck from the forked end portion 208 and foldably joined to the upper end flap 40” and that “[t]he adjacent ends of the tabs 96 and 98 are initially interconnected by severable means such as half cut 102 that is aligned with the fold line 212.” Holley, 5:54—60. We determine that this disclosure supports by a preponderance of the evidence the Examiner’s finding that the sides of yieldable tab 96 are cut lines, in that the disclosure only describes tab 96 as being foldably connected to flap 40 at a first end and being connected to tab 98 by a half cut at an opposing second end, and the yieldable nature of the tab would require the sides to be cut. In connection with independent claim 32, Appellant similarly argues that “yielding tab 96 remains flat with the upper end flap 40 and does not form a cutout in the upper end flap 40.” Appeal Br. 12; see also id. at 23 (citing Holley, 7:58—59); see also id. at 24 (italics omitted) (“Holley’s blank 10 does not include any cutouts formed in the upper end flap 40.”). For the same reasons as described above in connection with the analysis for independent claim 12, we determine that there is a cutout extending in at least the inner top reinforcement flap 40 (i.e., to the sides of yieldable tab 96), with the cutout in inner top reinforcement flap 40 being at least partially formed by the reinforcement end flap 96 as claimed in independent claim 32. For the foregoing reasons, we do not find that the Examiner erred in finding that Holley anticipates independent claims 12 and 32. We sustain the rejection of claims 12 and 32. We also sustain the rejection of claims 6 Appeal 2016-007803 Application 13/268,264 13—16 and 18, which depend therefrom, and for which Appellant apparently relies on the same arguments and reasoning we found unpersuasive in connection with the independent claims. Rejection II The Examiner provides an alternative rejection “based on the viewpoint that Holley does not disclose a reinforcement side flap that is foldably connected to the reinforcement panel (26) and does not extend from the reinforcement panel and abut[] the first side panel when folded.” Ans. 17; see also Final Act. 3—5. In this alternative rejection, the Examiner relies on Spivey to teach “it was known in the art to incorporate a reinforcing side flap (219) to a reinforcement panel (206) on the top of a carton (Fig[.j 10) such that it extends downward and abut a side panel (40) for restraining containers adjacent to a side panel of the carton.” Final Act. 4 (citing Spivey 139). Having determined that the rejection is sustainable on the basis of anticipation by Holley, we need not consider in depth the Examiner’s alternative basis (obviousness) for the rejection. It is well settled that “anticipation is the epitome of obviousness.” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly, we sustain the rejection of claims 12—16, 18, and 32 under 35 U.S.C. § 103(a) as unpatentable over Holley and Spivey.3 3 In affirming a multiple reference rejection under 35 U.S.C. § 103, the Board may rely on fewer than all of the references relied on by the Examiner in an obviousness rationale. In re Bush, 296 F.2d 491, 496 (CCPA 1966). 7 Appeal 2016-007803 Application 13/268,264 Rejection III The Examiner finds that Negelen teaches most of the limitations of independent claim 1, except for a reinforcement side flap4 and a reinforcement end flap. Final Act. 5—6; see also Negelen, Fig. 1. The Examiner finds that Spivey teaches “reinforcement end flaps (212, 214, Fig[.] 2) foldably connected to reinforcement panel (206) adjacent to an inner top reinforcement flap (12, Figs[.] 4, 8) for closing the container.” Final Act. 6 (citing Spivey 131). The Examiner concludes that one of ordinary skill in the art would have found it obvious “to incorporate reinforcement end flaps to the Negelen reinforcement panel as suggested by Spivey in order to join with the inner top reinforcement flap (22) of Negelen to close the container.” Id. The Examiner further explains that it would have been obvious to one of ordinary skill in the art specifically to “integrate the features of the reinforcing flap taught by Spivey to the Negelen blank in order to form a single blank with reinforcing top features” and that “[integrating the Spivey reinforcing flap would have resulted in the reinforcement end flap (212, Spivey) partially forming the cutout (24) of Negelen, thus making the inner top reinforcement flap separable from the reinforcement end flap along a cut line which is formed by the outer edge of Spivey reinforcement end flap not connected to the reinforcement panel.” Id. at 6—7. The Examiner makes similar findings and conclusions in connection with independent claims 12 and 32. Id. at 8—10. Appellant argues that Spivey fails to teach reinforcing end flaps that are connected to the same reinforcement panel that an inner top 4 The Examiner finds that Spivey teaches that “it was known in the art to incorporate a reinforcing side flap (219) to a reinforcement panel (206) on 8 Appeal 2016-007803 Application 13/268,264 reinforcement flap is connected to. Appeal Br. 16. Appellant argues that, instead, Spivey teaches that reinforcing end flaps 212, 214 are connected to reinforcement panel 206 (central panel 206) of insert blank 203 used to form a reinforcing insert 206 for use in carton 5, whereas inner top reinforcement flap 12 is connected to top panel 10 of blank 3 used to form the carton 5. Id. Appellant also argues that further modification of Spivey’s flaps 212, 214 would be required to incorporate them into Negelen’s panels 22 because Spivey’s flaps 212, 214 extend along the entire edge of the panel to which they are connected (i.e., reinforcing end flaps 212, 214 would have to be shrunk with respect to the panel to which they are connected). Id. at 17. These arguments do not persuade us of error. Even if some adaptation of Spivey’s reinforcing end flaps 212, 214 will be required so as to incorporate them into Negelen’s panel having inner top reinforcement flaps 22, Appellant has not provided any persuasive evidence or technical reasoning to show that the Examiner’s proposed modification of Negelen’s blank with Spivey’s reinforcing end flaps would have been beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). An artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the the top of a carton (Fig[.] 10) such that it extends downward and abut[s] a side panel (40) for restraining containers adjacent to a side panel of the carton” and concludes that it would have been obvious to incorporate a reinforcing side flap to the reinforcement panel of Negelen “in order to restrain containers adjacent the side panel.” Final Act. 6 (citing Spivey 139). 9 Appeal 2016-007803 Application 13/268,264 exercise of independent judgment. Lear Siegler Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). The Examiner reasons that an artisan of ordinary skill would integrate Spivey’s reinforcing end flaps 212, 214 with Negelen’s inner top reinforcement flaps 22 to provide reinforcement during closing of the container. Final Act. 6. Appellant does not persuasively argue that this reasoning lacks rational underpinnings. For example, with respect to Appellant’s argument that Negelen teaches that “cut away portions 24 are included ‘to facilitate folding of the hinges 23’” and exist even without the reinforcement end flaps (Appeal Br. 16 (quoting Negelen, 2:18—20)), this does not explain why additional reinforcement during closing of the container, as articulated by the Examiner, would not be beneficial. Additionally, the Examiner has adequately explained that, even when modified to include reinforcing end flaps 212, 214, Negelen’s cutouts “would still exist and perform their intended function.” Ans. 13. With respect to Appellant’s argument that “[t]he Examiner has not provided any basis for the assertion that one skilled in the art would have found it obvious to modify the reinforcing end flaps 212, 214 of Spivey and the secondary end panels 22 of Negelen so that they can be foldably connected to the same panel and to modify the cut away portions 24 of Negelen so that they are formed by the reinforcing end flaps 212, 214 of Spivey in the specific way as suggested in the final Office Action” and that the rejection is based on “impermissible hindsight” (Appeal Br. 17) (emphasis omitted), Appellant does not persuasively address the Examiner’s articulated reasoning based on integrating flaps into a single blank for additional reinforcement during closing of the container. 10 Appeal 2016-007803 Application 13/268,264 With respect to Appellant’s arguments that Spivey’s reinforcing end flaps 212, 214 “do not form any cutouts in any other feature” (Appeal Br. 16) and “[i]t appears that the Examiner is modifying the disclosures of Negelen and Spivey according to the present application to include a cut line that is not disclosed by either reference” {id. at 21 (emphasis omitted)), we agree with the Examiner that “Negelen already discloses cutout (24) on the inner top reinforcement flap (22)” (Ans. 12) and that even after modification “the cutouts would remain in place” with “flaps (212, 214) being hingedly attached to reinforcement panel (15) of Negelen” {id. at 13). For the foregoing reasons, we do not find that the Examiner erred in concluding that the subject matter of independent claims 1,12, and 32 is unpatentable over Negelen and Spivey. We sustain the rejection of claims 1, 12, and 32. We also sustain the rejection of claims 2—11, 13—15, 17, 19—21, 27—31, and 33, which depend therefrom, and for which Appellant apparently relies on the same arguments and reasoning we found unpersuasive in connection with the independent claims. DECISION The Examiner’s decision to reject claims 12—16, 18, and 32 under 35 U.S.C. § 102(b) as anticipated by Holley is affirmed. The Examiner’s decision to reject claims 12—16, 18, and 32 under 35 U.S.C. § 103(a) as unpatentable over Holley and Spivey is affirmed. The Examiner’s decision to reject claims 1—15, 17, 19—21, and 27—33 under 35 U.S.C. § 103(a) as unpatentable over Negelen and Spivey is affirmed. 11 Appeal 2016-007803 Application 13/268,264 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 12 Copy with citationCopy as parenthetical citation