Ex Parte Tanbo et al

Patent Trial and Appeal Board

Aug 29, 2016

12155998 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/155,998 06/12/2008
127226 7590 08/31/2016
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
FIRST NAMED INVENTOR
Hitoshi Tanbo
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. CONFIRMATION NO.
1131-0617PUS1 8059
EXAMINER
CHEUNG, CHUN HO!
ARTUNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI TANBO, RYUICHI KASHIMURA,
NAOTO BONO, and HIROYUKI YAMASHITA
Appeal2014-007660
Application 12/155,998
Technology Center 3700
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hitoshi Tanbo et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 3, 4, and 11-13 under
35 U.S.C. § 103(a) as unpatentable over Sendo (US 7,353,940 B2, iss. Apr.
8, 2008) and Masui (US 4,834,244, iss. May 30, 1989). i, 2 Appeal Br. 7. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Claim 2 has been canceled, and claims 5-10 have been withdrawn from
consideration. Appeal Br. 3.
2 Claims 12 and 13 were added after the Final Action in an Amendment filed
November 29, 2013, which was entered in an Advisory Action dated
December 13, 2013. The Advisory Action stated that claims 12 and 13 are
rejected. We, like Appellants, understand the ground of rejection of claims
Appeal2014-007660
Application 12/155,998
THE CLAIMED SUBJECT MATTER
Claim 13, reproduced below, is illustrative of the claimed subject
matter.
13. A cigarette package comprising:
a parallelepiped box body having an open end,
a lid joined to the box body and capable of opening and
closing the open end, said lid provided with a tongue which is
adapted to overlie a front wall of the box body, said
tongue containing connecting lugs laterally extending from
opposite sides of the tongue for bonding to the box body side
walls,
a comer boundary connecting the box body and the lid,
said comer boundary being formed by a parting line having
perforations arranged in one direction at specified intervals
and connecting portions connecting the adjacent perforations,
said connecting portions defining fatigue joints having an outer
concave face and an inner convex face,
whereby, folding along the parting line causes a further
breaking of the linkage of fibers at the locations of the fatigued
joints, enabling the lid to be effectively separated from the
box body along the parting lines.
DISCUSSION
The Examiner finds that Sendo discloses a cigarette package
comprising, in pertinent part, a tongue lid 16 and connecting lugs (guard
lugs 30) for bonding the tongue to the box body, with a comer boundary
between the tongue lid and the connecting lugs formed by cutting line 283 or
12 and 13 to be the same as that applied to claims 1, 3, 4, and 11 in the Final
Action. See Appeal Br. 7.
3 On page 2 of the Answer, the Examiner refers to "cutting line (29)," but
this is clearly an inadvertent typographical error, as Sendo does not use the
reference numeral "29," but does disclose "cutting lines 28." See, e.g.,
Sendo, col. 5, 1. 14; col. 6, 1. 39.
2
Appeal2014-007660
Application 12/155,998
fragile folding lines 78 at which the blank (depicted in Figure 5) is folded.
Ans. 2; Final Act. 2. Sendo's folding lines have perforations arranged at
specified intervals and connecting portions connecting the adjacent
perforations (depicted in Figures 10 and 11 ). Final Act. 2-3. 4 When the
tongue is opened for the first time, the tongue lid is separated from lugs 30
along cutting/folding lines 28/78. Sendo, col. 5, 11. 12-14. The Examiner
finds that "Sendo does not disclose each of the connecting portions has an
outer concave face and an inner convex face," and breaking of the linkage of
fibers at the connecting portions, as called for in claim 13. Final Act. 3.
The Examiner finds that Masui recognizes that using single cut
perforations makes it difficult to guide the tearing force from one perforation
to another, such that the tearing force "may go astray from the direction of
the perforation and no smooth tearing can be performed." Ans. 3 (citing
Masui, col. 1, 11. 39--43). To address this problem, Masui teaches applying
"additional ruled line ( 18) embossed on the perforations ... to [enable]
accurate, easy[,] and efficient formation of the opening." Id. (citing Masui,
col. 2, 11. 46--48; col. 1, 11. 63---64). The Examiner concludes that it would
have been obvious to modify Sendo's cutting/folding line 28/78 by applying
the embossing technique taught by Masui onto the perforated line "to enable
accurate, easy[,] and efficient formation of the opening along the cutting line
of Sendo to tear along the embossed perforations line without the path of the
tearing action being allowed to deviate from the perforations." Id.
4 The Examiner refers to Figure 11, which depicts connecting portions
(tearing lines 80) remaining after opening the tongue, but perforations 78 are
illustrated in Figure 10. See also Sendo, col. 9, 11. 47-53.
3
Appeal2014-007660
Application 12/155,998
Appellants point out that Masui' s embossed perforated tear line 18 is
formed in the center of flat top wall 12 of tissue case 11, rather than at a
comer boundary of the case. Appeal Br. 9. Appellants submit that "it is not
possible to apply the embossed perforated tear line 18 of [Masui] directly to
the comer boundary of [Sendo] and even if, for sake of argument," this were
possible, "the comer boundary with the parting line of the present invention
with its completely different construction, could not be obtained." Id. In
particular, Appellants contend that a ruled line in the form of a V-shaped
groove, as taught by Masui, would obstruct the folding at Sendo' s
cutting/folding line 28/78. Id. (discussing this issue, with reference to
Masui's Figure 4, in terms of downward folding of cover plate portion 14 of
Masui relative to top wall 12 along line 18). Further, according to
Appellants, even if such folding were possible at an embossed perforated
tear line as taught by Masui, the outer face of the resulting comer boundary
"would merely form a single inclined face where the two faces of the V-
shaped groove are located in the same plane," and, thus, would "not form an
outer concave face like that of the present invention." Id. at 9-10.
In response to Appellants' argument, the Examiner states:
When folding the V-shaped embossed comer boundary of Sendo
as modified with ninety degrees bend, the exterior surface of V-
shaped groove would open slightly wider at the comer and the
V-shaped ridge on the inner surface would rotate forty-five
degrees inward. The widened V-shaped comer boundary of
Sendo as modified would still [meet] the limitation as claimed
by [Appellants].
Ans. 5.
The Examiner's response is speculative and, further, does not directly
address Appellants' contention that, when Sendo' s tongue is folded at a
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Appeal2014-007660
Application 12/155,998
ninety degree angle at cutting/folding line 28178 (modified in view of Masui
to be scored as well as perforated), the V-shaped groove will widen to such a
degree that the two opposing faces of the V-shaped groove will end up in a
common plane, forming, in essence, a truncated outer comer, rather than an
outer concave face, as called for in each of Appellants' independent claims
1, 12, and 13. Appellants' contention appears to be predicated on an
assumption that the angle of the apex of the V-shaped groove formed by the
embossing is a ninety degree angle, as well as speculation as to how the
faces of the groove will move upon folding. 5 Thus, while Appellants'
contention as to the shape and orientation that the faces of the V-shaped
groove will take on during the subsequent folding step to form the cigarette
package is somewhat speculative, it does highlight the uncertainty as to what
shape the outer face of the comer boundary resulting from the folding step
will have. As pointed out by the Examiner, Masui discloses an alternative
form of embossment, depicted in Figures 5 and 6, in which both faces of the
blank are embossed. See Ans. 4; Masui, col. 2, 11. 55-57. However, this
particular embossment form is likewise unavailing, as it is unlikely to result
in a comer boundary having an inner convex face, as also required in each of
Appellants' independent claims 1, 12, and 13.
For the above reasons, the Examiner's rejection lacks the requisite
findings and reasoning to establish by a preponderance of the evidence that
the comer boundary connecting Sendo' s box body and lid resulting from the
Examiner's proposed combination of Sendo and Masui would have the outer
5 Although the groove apex angle depicted in Masui' s Figure 4 appears to be
a ninety degree angle, Appellants do not direct our attention to, nor do we
discern, any explicit disclosure in Masui indicating either that this angle is a
ninety degree angle or that the drawing is to scale.
5
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Application 12/155,998
concave face and inner convex face called for in Appellants' claims.
Accordingly, we do not sustain the rejection of claims 1, 3, 4, and 11-13
under 35 U.S.C. § 103(a) as unpatentable over Sendo and Masui.
DECISION
The Examiner's decision rejecting claims 1, 3, 4, and 11-13 is
reversed.
REVERSED
6