Ex Parte Wnek et alDownload PDFPatent Trial and Appeal BoardMay 18, 201813851452 (P.T.A.B. May. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/851,452 03/27/2013 26158 7590 05/22/2018 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 FIRST NAMED INVENTOR Patrick H. Wnek 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. R029 33717US.D2 8490 EXAMINER IMAM, TANZIM ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 05/22/2018 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 PATRICK H. WNEK, RONALD P. MARX, JAMES B. KLUZ, BRIAN R. O'HAGAN, and SCOTT W. MIDDLETON 1 Appeal2017-008518 Application 13/851,452 Technology Center 3700 Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and BRENT M. DOUGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patrick H. Wnek et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-9, 11-15, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Wnek (US 2002/0092791 Al, published July 18, 2002 ). Claims 10 and 16-18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Graphic Packaging International, Inc. is indicated as the "real party in interest" of the subject application. Appeal Brief 1 (hereinafter "Appeal Br.") (filed Feb. 8, 2017). Appeal2017-008518 Application 13/851,452 CLAIMED SUBJECT MATTER The claimed subject matter "relates generally to [ methods for forming] containers which are pressed into a predetermined formation with a punch and die, and more particularly to [ methods for forming] containers having desirable denesting characteristics." Spec. ,r 3, Figs. 1-3. Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A method of forming a nestable paperboard container, the method comprising: obtaining a die set for forming the container, the die set comprising a forming punch and a forming die, at least one of the forming punch and the forming die comprises features for forming a denesting feature of the container, features for forming a sidewall of the container, and features for forming a flange of the container; placing a blank between the forming punch and the forming die; and forming the container from the blank by moving at least one of the forming punch and the forming die relative to the other of the at least one of the forming punch and the forming die, wherein forming the container from the blank comprises forming the denesting feature of the container, forming the sidewall of the container, and forming the flange of the container, the denesting feature comprising an inner peripheral portion of the flange that is thicker than an outer portion of the flange, the inner peripheral portion of the flange extending from a perimeter of the sidewall, the inner peripheral portion of the flange comprising a first surface and the outer portion of the flange comprising a second surface, the first surface being offset from the second surface, and the first surface being an uppermost surface of the container. 2 Appeal2017-008518 Application 13/851,452 ANALYSIS Independent claim 1 is directed to "[a] method of forming a nestable paperboard container," wherein forming the container from a blank includes forming a denesting feature of the container, forming a sidewall of the container, and forming a flange of the container, "the denesting feature comprising an inner peripheral portion of the flange that is thicker than an outer portion of the flange, the inner peripheral portion of the flange extending from a perimeter of the sidewall." Appeal Br. 16, Claims App. The Examiner determines that "[t]he word 'flange' is a very broad term" and "that the upper portion of sidewall 22 of Wnek is part of the 'flange."' Ans. 1 O; see also id. at 3 (The Examiner's annotated version of Figure 6 (i.e., Figure 6x) of Wnek); Non-Final Act. 3; id. at 4 (The Examiner's annotated version of Figure 6 (i.e., Figure 6x) of Wnek). 2,3 The Examiner further determines that "the phrase 'perimeter of the sidewall' in claim 1 is a broad phrase which can be interpreted as being any perimeter of the sidewall from which the inner peripheral portion of the flange extends ... [ and] does not necessarily have to be the uppermost perimeter of sidewall 22 of Wnek." Ans. 10; see also id. at 13. Appellants contend that "[t]he combination of the peripheral rim 26 and a portion of the sidewall 22 of Wnek do not correlate at all with the flange as recited in claim 1." Appeal Br. 12. In particular, Appellants contend that "[t]he portion of Wnek's container that the Examiner labeled as the inner peripheral portion of the flange in the Examiner's extensively 2 Examiner's Answer (hereinafter "Ans.") (dated Mar. 22, 2017). 3 Non-Final Office Action (hereinafter "Non-Final Act.") ( dated Sept. 8, 2016). 3 Appeal2017-008518 Application 13/851,452 annotated 'Figure 6x' is clearly defined as part of the sidewall 22 by Wnek'' and that "[t]here is nothing in the disclosure of Wnek that would support the Examiner's construction wherein a portion of the sidewall 22 of Wnek purportedly is a portion of a flange extending from a perimeter of the sidewall 22 of Wnek." See Reply Br. 2-3; see also Appeal Br. 10-12. 4 Appellants further contend that "the Examiner's construction contradicts itself." Appeal Br. 13. In particular, Appellants contend that, in the Examiner's annotated Figure 6x of Wnek, "the circles indicating the inner peripheral portion of the flange and the upper portion of the sidewall in Wnek overlap." Appeal Br. 13; see also Non-Final Act. 4 (The Examiner's annotated version of Figure 6 (i.e., Figure 6x) of Wnek). In other words, "the purported inner peripheral portion of the flange as construed in the annotated figure is also a portion of the sidewall in Wnek as construed in the annotated figure." Appeal Br. 13 (underlining added); see also Non-Final Act. 4 (The Examiner's annotated version of Figure 6 (i.e., Figure 6x) of Wnek). Appellants contend that "[i]n contrast, claim 1 recites that the inner peripheral portion of the flange extends from a perimeter of the sidewall." Appeal Br. 13 ( emphasis added); see also Appeal Br. 16, Claims App. Wnek discloses that (1) container 20 "has a downwardly convergent, generally frustoconical sidewall 22 that is continuous ... along a circular upper edge with an outwardly directed flat peripheral rim 26" (Wnek ,r 35 (emphasis added)); (2) "[t]he container 20 is provided with a ring-like bulge 28 that projects inwardly from the inner surface 30 of the sidewall 22" (Id. ,r 36 ( emphasis added)); and (3) "the inwardly directed ring-like bulge 28 [is] on the inner swface of the sidewall [22]" (Id. ,r 38 (emphasis added)). 4 Reply Brief (hereinafter "Reply Br.") (filed May 19, 2017). 4 Appeal2017-008518 Application 13/851,452 In this case, we agree with Appellants that "[ t ]here is nothing in the disclosure of Wnek that would support the Examiner's construction wherein a portion of the sidewall 22 of Wnek purportedly is a portion of a flange." See Reply Br. 2-3. We further agree with Appellants that the Examiner's interpretation of Figure 6 of Wnek is an "[ un ]reasonable interpretation of the relationship between the peripheral rim 26 and the sidewall 22 of Wnek, and the Examiner has not provided any support for the alternative interpretation of a portion of the sidewall 22 of Wnek as being part of a flange." See Appeal Br. 13; See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) ("Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach."). We also agree with Appellants that it is not clear from the Examiner's annotated version of Figure 6 of Wnek "how an inner peripheral portion of the flange purportedly can extend from a perimeter of the sidewall in the Examiner's interpretation of Wnek when the inner peripheral portion of the flange purportedly is a portion of the sidewall in Wnek according to the Examiner's construction." See Appeal Br. 13 (underlining added); see also Non-Final Act. 4 (The Examiner's annotated version of Figure 6 (i.e., Figure 6x) of Wnek). Here, Appellants correctly point out that "[i]f a portion of the flange extends from a perimeter of the sidewall as recited in claim 1, then the portion of the flange cannot also be a portion of that sidewall" and that "[ r ]egardless of whether the perimeter of the sidewall is an 'uppermost' boundary or not [see Ans. 13], it is a boundary of the sidewall." Reply Br. 6 ( emphasis added). 5 5 Appellants' proposed definition of the term "perimeter" (i.e., a "boundary of 5 Appeal2017-008518 Application 13/851,452 For these reasons, we do not sustain the Examiner's rejection of independent claim 1, as well as dependent claims 2-9, 11-15, 19, and 20, as anticipated by Wnek. DECISION We REVERSE the decision of the Examiner to reject claims 1-9, 11- 15, 19, and 20 as anticipated by Wnek. REVERSED a closed plane figure") is consistent with Appellants' use of the term in the Specification. See Reply Br. 5 (citing www.merriam-webster.com/dictionary /perimeter); see also Spec. ,r 233; Figs. 1-3; Appeal Br. 16, Claims App. 6 Copy with citationCopy as parenthetical citation