Ex Parte Wnek et al

Patent Trial and Appeal Board

May 18, 2018

13851452 (P.T.A.B. May. 18, 2018)

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