Ex parte Stovin

Board of Patent Appeals and Interferences

Aug 31, 2000

08982616 (B.P.A.I. Aug. 31, 2000)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARFIELD STOVIN et al.
____________
Appeal No. 2000-1202
Application No. 08/982616
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS, and NASE,
Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-9, which
are all of the claims pending in this application.
We REVERSE.
Appeal No. 2000-1202 Page 2
Application No. 08/982616
BACKGROUND
The appellants’ invention relates to an apparatus for folding box blanks and
depositing panels into the box. An understanding of the invention can be derived from a
reading of exemplary claim 1, which appears in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Doman 4,778,554 Oct. 18, 1991
Fluent et al. (Fluent) 5,024,045 Jun. 18, 1991
Claims 1, 2 and 4 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Fluent.
Claims 3 and 5-9 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Fluent in view of Doman.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Answer (Paper
No. 10) and the first office action (Paper No. 3) for the examiner's complete reasoning in
support of the rejections, and to the Brief (Paper No. 9) for the appellants’ arguments
thereagainst.
Appeal No. 2000-1202 Page 3
Application No. 08/982616
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection Under 35 U.S.C. § 102(b)
The invention before us is directed to the sorting and packing of panels such as
vinyl siding in corrugated paper boxes. According to the appellants, in the prior art these
endeavors were accomplished essentially by hand in several locations, and it is the
objective of their invention to provide a combined sorting and box folding machine that
automatically folds and positions a box adjacent to a panel receiving station (specification,
pages 2 and 3). In furtherance of this objective, independent claim 1 is directed to a
“unitary” packing and folding machine which comprises a panel receiving station for
positioning in line with a panel extrusion production line, and a box folding section
positioned “generally adjacent said panel receiving station” and having “means for folding
a corrugated paper box blank” along predetermined fold lines to form a container for the
Appeal No. 2000-1202 Page 4
Application No. 08/982616
Anticipation is established only when a single prior art reference discloses, either1
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994).
As explained in Fluent, a “blank” is a flat, substantially rectangular sheet of material2
(column 3, line 47).
panels from the panel receiving station. Claim 1, along with dependent claims 2 and 4,
stands rejected as being anticipated by Fluent. 1
Fluent was cited by the appellants on page 2 of their specification as being
representative of the type of prior art system over which they believe their invention to be
an improvement. This reference discloses separate machines for folding the boxes and
for filling them with panels. As shown in Figure 1 and explained in columns 3 and 4, box
blanks (10) having predetermined score lines are received at a container folding area (A)2
where they are pre-folded before being passed to a forming area (B) to be erected and
have the end flaps glued. At this juncture, a plurality of erected boxes are stacked one on
top of another
and moved to area C, as by a wheeled cart, to the container storage and
transfer section 300 of the panel packer/tray closer 35 for packing with a
predetermined number of panels 33, as each issues from extrusion
operations 32 (column 4, lines 54-58, emphasis added).
As shown and described with regard to Figures 3 and 3A, a stack of boxes is placed on a
platform (303) on the panel packer unit, whereupon they are individually moved into the
Appeal No. 2000-1202 Page 5
Application No. 08/982616
See, for example, Merriam Webster’s Collegiate Dictionary, Tenth Edition, 1996,3
pages 14 and 1293.
loading position and filled with panels. The loaded boxes then are closed, sealed and
moved to a palletizer.
Two key requirements of the appellants’ claim 1 are that the panel packing and
folding machine be “unitary,” and that the box folding section be positioned “generally
adjacent” to the panel receiving section. The common definition of “unitary“ is “having the
character of a unit,” that is, “undivided” or “whole,” and of “adjacent” is “not distant,” “having
a common endpoint or border,” “immediately preceding or following.” The appellants3
describe the orientation of the box folding section and the panel packing section in the
specification in a manner which is in accord with these definitions. It is abundantly clear to
us from the portion of the description quoted above that in the Fluent system the box
folding section is not “unitary” with the panel receiving section. Nor, in our view, can it be
considered to be “generally adjacent” thereto, in view of the fact that the assembled boxes
are moved in a wheeled cart from the box folding section to the container packing area.
This also establishes that box “blanks” are not present at the panel receiving section, and
thus there is no means for folding box blanks at that location, as is recited in the claim.
Fluent thus does not disclose or teach some of the structure recited in claim 1, and
therefore cannot be anticipatory thereof. This being the case, we will not sustain the
rejection of claim 1 or, it follows, of claims 2 and 4, which depend therefrom.
Appeal No. 2000-1202 Page 6
Application No. 08/982616
The test for obviousness is what the combined teachings of the prior art would4
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The Rejection Under 35 U.S.C. § 103
Independent claims 5, 8 and 9 stand rejected as being obvious in view of the4
combined teachings of Fluent and Doman, the latter being cited for its disclosure of using
arm means for folding boxes. Claims 5 and 8 require that the box folding section be
“adjacent” the panel receiving section, and claim 9 that it be “sidewardly adjacent” thereto.
All three of these claims also recite that the box folding section includes means acting
upon box blanks. For the reasons explained above, Fluent actually teaches away from
such arrangements. Doman is concerned with closing the top flaps of a corrugated
container that has previously been erected and filled with goods, and which has arrived at
the machine from “a previous operating station” (column 3, lines 35 and 36). While
Doman does teach folding the flaps of the box into the closed position by means of arms, it
certainly does not provide teachings that would cure the deficiencies in Fluent that are
discussed above. Moreover, from our perspective, no other evidence is before us which
Appeal No. 2000-1202 Page 7
Application No. 08/982616
would have suggested to one of ordinary skill in the art that it would have been obvious to
modify Fluent in order to meet the claim limitations.
It therefore is our conclusion that a prima facie case of obviousness has not been
established with regard to the subject matter of independent claims 5, 8, and 9, and we will
not sustain the rejection of these claims or of claims 6 and 7, which are dependent from
claim 5.
In view of the highly developed nature of the packaging arts, however, we feel
constrained to suggest that the examiner consider further review with regard to the issue of
whether it would have been obvious to one of ordinary skill in the art to modify the Fluent
system by placing the box folding section adjacent to the panel receiving section.
CONCLUSION
Neither of the rejections is sustained.
The decision of the examiner is reversed.
Appeal No. 2000-1202 Page 8
Application No. 08/982616
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:lmb
Appeal No. 2000-1202 Page 9
Application No. 08/982616
WILLIAM BRUCE DAY
SWANSON MIDGELY LLC
2420 PERSHING ROAD, SUITE 400
KANSAS CITY , MO 64108
APPEAL NO. 2000-1202 - JUDGE ABRAMS
APPLICATION NO. 08/982616
APJ ABRAMS
APJ McCANDLISH
APJ NASE
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 27 Apr 01
FINAL TYPED: