13031428 (P.T.A.B. Sep. 30, 2014)

Ex Parte Zelinski

Patent Trial and Appeal BoardSep 30, 2014

13031428 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/031,428 02/21/2011 Thomas W. Zelinski 12658 D1C1 4914 31743 7590 09/30/2014 Georgia-Pacific LLC 133 Peachtree Street NE - GA030-42 ATLANTA, GA 30303 EXAMINER DESAI, HEMANT ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 09/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS W. ZELINSKI ____________ Appeal 2012-009530 Application 13/031,4281 Technology Center 3700 ____________ Before LYNNE H. BROWNE, JILL D. HILL and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas W. Zelinski (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1−8, the only claims pending in the application on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER An understanding of the invention can be derived from a reading of independent claim 1, which is reproduced below. 1 The real party in interest is Dixie Consumer Products, LLC. Appeal Br. 3. Appeal 2012-009530 Application 13/031,428 2 1. A method for making a pressed paperboard container, comprising: advancing a first paperboard blank along an inclined feed path into a pressware die set using a first gas stream, wherein the first gas stream is directed downward toward the feed path from a first location relative to the feed path, and pressing the first paperboard blank in the pressware die set to provide a first paperboard container. Clms. App’x, Appeal Br. 9. REJECTIONS ON APPEAL The following Examiner’s rejections are before us for review. 1. Claims 1−8 are rejected under 35 U.S.C. § 103 (a) as unpatentable over Alexander (US 4,778,439, iss. Oct. 18, 1988) and Beckers (US 3,387,543, iss. June 11, 1968). 2. Claims 1−8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 7−8, 10, and 11 of U.S. Patent No. 7,914,432. ANALYSIS Appellant argues claims 1−8 as a group. Appeal Br. 6−7, Reply Br. 6−9. We select claim 1 as the representative claim for this group such that the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c) (1) (vii) (2011). We have considered Appellant’s arguments and do not find them persuasive of error in the Examiner’s rejection of claim 1 as being obvious over Alexander and Beckers. While acknowledging that Alexander “discloses a gravity feed system to advance its blanks” and that “Beckers uses a compressed air to eject formed containers from a pressware die set,” Appeal 2012-009530 Application 13/031,428 3 Appellant first argues that even if you combine the teachings of Alexander and Beckers you won’t end up with “advancing a paperboard blank along an inclined feed path into a pressware die set using a gas stream.” Appeal Br. 6. However, Appellant’s arguments are not responsive to the rejection as articulated by the Examiner, which is to advance paperboard blanks by replacing Alexander’s gravity feed system—employing an inclined feed path—with Beckers’ air knives system. Ans. 7. As the Examiner points out, “the sole difference between Alexander and the subject matter of claims 1-8 is that Alexander does not disclose the propulsion of blanks with gas stream.” Id. at 13. Such a substitution would not replace Alexander’s inclined feed path or modify Alexander’s feed system to be an ejection system. We agree with the Examiner that “where “[an application] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” Ans. 15, citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Appellant argues that “there is no predictability and no expectation of success for arriving at the claimed invention in view of Alexander and Beckers” (Appeal Br. 7, see also Reply Br. 9), and that “Beckers’ compressed air is limited to ejecting formed containers. Formed containers provide no predictability and no expectation of success for flat paperboard blanks” (Appeal Br. 7). However, Appellant does not provide any evidence showing that Becker’s compressed air is limited to ejecting formed containers or any other evidence that the results of the proposed combination would yield unpredictable results. Attorney’s arguments in a brief cannot Appeal 2012-009530 Application 13/031,428 4 take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (Fed. Cir. 2004). Thus, Appellant does not apprise us of error. Further, Appellant contends that “Beckers’ compressed air is used strictly for ejecting its formed containers from its pressware die” (Appeal Br. 6) and that “[n]owhere does Beckers teach, show, or suggest…using a gas stream to propel paperboard containers” (Reply Br. 6). Appellant is attacking Beckers in isolation rather than as combined with the teachings of Alexander. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, to the extent that Appellant is arguing that there is no teaching or suggestion to combine the references, this argument is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. The Examiner relies on Beckers only for teaching “propelling objects with [a] gas stream.” Ans. 13. Furthermore, we note that Appellant misreads Beckers, which also teaches using a gas stream to propel containers, disclosing that “[i]n each channel 21, there is arranged a compressed air nozzle 26 which serves to aid the movement of the containers 3 through the channel.” See Beckers, col. 2, l. 7−col. 3, l. 2. Appeal 2012-009530 Application 13/031,428 5 Appellant also argues that Beckers makes no mention “as to how its feed rollers for advancing its flat blanks into its pressware die could be replaced or modified with its compressed air system.” Appeal Br. 7; see also Reply Br. 8. Again, Appellant choses to attack Beckers in isolation rather than as combined with the teachings of Alexander. As discussed supra, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. Merck, 800 F.2d at 1097. Moreover, the rejection as articulated by the Examiner does not contemplate replacing Beckers’ feed rollers with its compressed air system. Accordingly, this argument is inapposite. Appellant asserts that the combination of Alexander and Beckers does not recognize the problem to be solved, arguing that “Applicants discovered that advancing paperboard blanks via a gas stream can increase the speed and reliability of a pressing operation. See, e.g., Applicant's specification at paragraph [0011].” Reply Br. 7, see also id. at 8. Appellant also asserts that a “gas stream removes static electricity and clears air turbulence.” Id. at 8. As discussed supra, attorney’s arguments in a brief cannot take the place of evidence. Pearson, 494 F.2d at 1405. Again, Appellant does not apprise us of error. Appellant also contends that “[n]owhere does Beckers teach, show, or suggest an inclined feed path, and Beckers certainly does not disclose how to use an inclined feed path, as required in every claim.” Reply Br. 6. While Beckers does not disclose the term “inclined feed path” this doesn’t affect our decision. As we pointed out previously, the Examiner relies on Alexander for disclosing an inclined feed path and Beckers only for teaching Appeal 2012-009530 Application 13/031,428 6 propelling objects with a gas stream. Again, such arguments are foreclosed by KSR at 415. Appellant also asserts that Beckers is “particularly concerned with containers made of aluminum foil,” contending that “[n]owhere does Beckers teach, show, or suggest paperboard containers.” Reply Br. 6. While we agree that Beckers does not disclose paperboard containers, this is not indicative of error in the rejection. As discuss supra, such arguments are foreclosed by KSR at 415. Appellant also argues that because “Alexander teaches away from additional structures and motivates the use of gravity alone” and because “Beckers discloses feed rollers to advance its blanks,” that “Alexander teaches away or discourages any modification with Beckers.” Reply Br. 8. However Appellant does not identify where Alexander criticizes, discredits, or otherwise discourages the use of feed rollers. Rather, as the Examiner points out, “Alexander discloses to supply the blanks to the dies by using a variety of known means… (column 7, lines 1-2).” Ans. 7. Prior art does not teach away from claimed subject matter 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 view of the above, we sustain the rejection of claims 1–8 as unpatentable over Alexander and Beckers. Appeal 2012-009530 Application 13/031,428 7 Claims 1−8 rejected on the ground of nonstatutory obviousness-type double patenting. Appellant has not presented arguments in opposition to the Examiner’s rejection. Accordingly, the rejection of claims 1–8 on nonstatutory obviousness-type double patenting is summarily affirmed. DECISION We AFFIRM the Examiner’s rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls