Ex Parte Stebbins et alDownload PDFPatent Trial and Appeal BoardAug 28, 201814274245 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/274,245 05/09/2014 26158 7590 08/30/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Brian Jay Stebbins 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 ATTORNEY DOCKET NO. R60999 10770US.l (0685.3) CONFIRMATION NO. 8564 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN JAY STEBBINS, MARIELLE ANITRA KEYNA DES ET AGES, LAY A KATINA HORTON, PANKAJPATEL, GRAHAM STUART SIMONS, JEAN ANDRE PRUD'HOMME, and MICHAEL HILL Appeal2017-010875 Application 14/274,245 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brian Jay Stebbins et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Action (dated Oct. 28, 2016, hereinafter "Final Act.") rejecting claims 1, 4--9, and 12-16. 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 R. J. Reynolds Tobacco Company is identified as the real party in interest in Appellants' Appeal Brief (dated Mar. 21, 2017, hereinafter "Br."). Br. 2. 2 Claims 2, 3, 10, and 11 are canceled and claims 17-21 are withdrawn from consideration. Br. 14, 16, and 17 (Claims App.). Appeal2017-010875 Application 14/274,245 We AFFIRM. SUMMARY OF DECISION INVENTION Appellants' invention relates to a packaging device for displaying containers at a point of sale. Spec. 3, 11. 19-21. Claims 1 and 9 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A convertible packaging device, comprising: a package configurable between a closed configuration and a display configuration, the package comprising a plurality of panels configurable to define an inner cavity substantially enclosed by the panels in the closed configuration and configured to hold a plurality of products, wherein the panels comprise a reconfigurable portion and a base portion, the reconfigurable portion being configured to move relative to the base portion to define an opening to the inner cavity and configured to engage the base portion to define a display in the display configuration; and an insert received within the package, the insert defining a plurality of compartments each respectively positioned at one of a plurality of differing heights, only one of the compartments being positioned at each of the differing heights and supporting only one of the products at each of the differing heights. REJECTIONS I. Claims 1, 4--9, and 12-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldstein (US 3,167,179, iss. Jan. 26, 1965) and Markson et al. (US 7,537,121 B2, iss. May 26, 2009, hereinafter "Markson"). 2 Appeal2017-010875 Application 14/274,245 II. Claims 4--7 and 12-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldstein, Markson, and Dolan (US 6,003,664, iss. Dec. 21, 1999). III. Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Goldstein, Markson, and Brooks, Jr. (US 1,821,960, iss. Sept. 8, 1931, hereinafter, "Brooks"). ANALYSIS Rejection I Appellants do not present arguments for the patentability of claims 4-- 9 and 12-16 apart from claim 1. See Br. 3-12. Therefore, in accordance with 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 4--9 and 12-16 standing or falling with claim 1. The Examiner finds that Goldstein discloses most of the limitations of independent claim 1 including, inter alia, a configurable package having panels that define an inner cavity, a reconfigurable portion 140, and a stepped configuration insert 130, 133, but relies on Markson for disclosing an insert having one compartment at each of differing heights 22a-22f. 3 See Final Act. 3--4 (citing Goldstein, Figs. 12-15, Markson, Fig. 4). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to modify or replace the insert of Goldstein with Markson's insert "to provide an enhance[d] display of products that improves time and labor and ease of loading while also permitting enhanced visuals that will result in improves sales." Id. at 4 (citing Markson, col. 1, 1. 5--col. 2, 1. 43). 3 Examiner refers to these heights as "22s" as in the plural of "22." 3 Appeal2017-010875 Application 14/274,245 Appellants first argue that because both Goldstein and Markson disclose displaying multiple products in each compartment, the display package of Goldstein, as modified by Markson, fails to have each compartment, at each differing height, for only one product, as called for by claim 1. See Br. 7-10. According to Appellants, in Goldstein's Figure 13 and Markson's Figure 4, multiple products are positioned at the same height in each compartment. Id. at 7-8. Appellants' arguments are not persuasive because Appellants do not explain adequately why Markson's products 70a-70c, shown in Figure 8, do not constitute one product per compartment, with each compartment at a differing height, as the Examiner correctly finds. See Examiner's Answer 6 (dated May 25, 2017, hereinafter "Ans."). Accordingly, as Figure 8 of Markson shows products 70a-70c positioned in compartments 46a--46c, respectively, in a stepped (differing height) configuration, Markson discloses that each compartment, at each differing height, is for only one product, as called for by claim 1. See also Markson, col. 6, 11. 3 9--41. Secondly, Appellants argue that "Markson may not be combined with Goldstein" because Markson is a hanging product, whereas Goldstein is a floor-standing product, which Markson teaches against. Br. 10-11 (citing Markson, col. 1, 11. 19-26). We are not persuaded by Appellants' arguments because the mere fact that there are differences between references is insufficient to establish that such references "teach away" from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Here, Markson's disclosure of a more complex or labor intensive product is not a teaching away because prior art does not teach away from claimed subject matter 4 Appeal2017-010875 Application 14/274,245 merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, the Examiner's rejection modifies the shape of Goldstein's insert 130, 133 to that of Markson's stepped insert 44 that has one compartment 46a- 46c to hold one product 70a-70c, respectively, per differing heights. See Ans. 7. As Goldstein already discloses an insert in a stepped configuration (see Goldstein, Fig. 14; see also Final Act. 3), the Examiner's modification is an improvement to Goldstein's packaging device to have a stepped configuration in the same way as taught by Markson to lead to a predictable result, and the modification is well within the skill of one having ordinary skill in this art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thirdly, Appellants argue that the Examiner is improperly construing the phrase "configured to" to mean "capable of." Br. 12 (citing In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014)). According to Appellants, the Examiner's construction of the limitation of "a package comprising a plurality of panels ... configured to hold a plurality of products" "as meaning a package merely capable of holding a plurality of products [is] in direct contradiction to the ruling of In re Giannelli." Id. Hence, Appellants contend that the Examiner "has provided no rational basis for concluding that one of ordinary skill in the art would view Markson as disclosing a self- supporting container for either modifying the insert of Goldstein or replacing the insert thereof." Id. We are not persuaded by Appellants' arguments because although we appreciate that the term "configured to" is used to mean "made to" or "designed to" consistent with Giannelli, nonetheless, Appellants do not 5 Appeal2017-010875 Application 14/274,245 adequately explain why Markson's insert 44 is not "made to" hold a plurality of products. Specifically, as the Examiner correctly finds, Figure 8 of Markson shows the insert 44 of Markson holding three (a plurality of) products 70a, 70b, and 70c within compartments 46a, 46b, and 46c, respectively. See Ans. 8. Appellants also argue that "[ t ]he Office has provided no rational basis for concluding that one of ordinary skill in the art would view Markson as disclosing a self-supporting container for either modifying the insert of Goldstein or replacing the insert thereof." Appeal Br. 12. Notwithstanding that claim 1 does not require a self-supporting container/insert, nonetheless, we note that Goldstein discloses "an upstanding tab 156 engaging through a slot 157 in the panel 143 to effectively prevent displacement of the top member." Goldstein, col. 8, 11. 34--36, Fig. 15. We, thus, agree with the Examiner that Goldstein's hook element 156 would provide support to an insert with a hole, such as Markson's insert 44 with hole 42. See Ans. 7. Appellants do not provide persuasive reasoning as to why Goldstein's hook element 156 would not support Markson's insert. Finally, we are not persuaded by Appellants' argument that the Examiner's rejection is based on impermissible hindsight (see Br. 4) because the Examiner provides reasoning with rational underpinnings for the modification, namely, "to provide an enhance display of products that improves time and labor and ease of loading while also permitting enhanced visuals that will result in improves sales" (see Final Act. 5); see Ans. 5; see also In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir. 2016). As such, we agree with the Examiner that Appellants have not persuasively argued why 6 Appeal2017-010875 Application 14/274,245 impermissible hindsight was employed in the rejection. See Ans. 4--5. Moreover, Appellants do not provide persuasive evidence or technical reasoning that Markson's insert would not enhance product display and improve loading while permitting enhanced visuals. Nor do Appellants persuasively argue that the modification to or replacement of Goldstein's insert with that of Markson's would have been unpredictable. As the Examiner's modification leads to a predictable result, the modification is well within the skill of a person having ordinary skill in this art. KSR, 550 U.S. at 417. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Goldstein and Markson. Claims 4--9 and 12-16 fall with claim 1. Re} ections II and III With respect to the rejection of dependent claims 4--8 and 12-16, Appellants rely on the arguments discussed supra. See Br. 5 ("Accordingly ... only the rejection with regard to the independent [c]laims is discussed."). Therefore, for the same reasons discussed above, we likewise sustain the rejections under 35 U.S.C. § 103(a) of claims 4--7 and 12-15 as unpatentable over Goldstein, Markson, and Dolan and of claims 8 and 16 as unpatentable over Goldstein, Markson, and Brooks. DECISION The Examiner's decision to reject claims 1, 4--9, and 12-16 under 35 U.S.C. § 103(a) is affirmed. 7 Appeal2017-010875 Application 14/274,245 No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation