Ex Parte Zoeckler

Board of Patent Appeals and Interferences

Nov 27, 2007

09818023 (B.P.A.I. Nov. 27, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. ZOECKLER
____________

Appeal 2007-0008
Application 09/818,023
Technology Center 3700
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Decided: November 27, 2007
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant filed a Request for Rehearing (hereinafter “Request”) on
July 2, 2007 pursuant to 37 C.F.R. § 41.50(b)(2) requesting reconsideration
of our Decision mailed May 30, 2007, wherein we reversed the decision of
the Examiner and entered new grounds of rejection of claims 1-15 under
35 U.S.C. § 103(a). Specifically, in our Decision, we rejected claims 1-4 as
unpatentable over Campbell (US 1,600,396, issued September 21, 1926) in
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Application 09/818,023

view of Appellant’s admission (Spec. 36:24-26) and Seufert ‘916 (US
4,733,916, issued March 29, 1988); claims 5-7 and 11 as unpatentable over
Campbell in view of Appellant’s admission (Spec. 36:24-26), Seufert ‘916,
and Seufert ‘206 (US 4,064,206, issued December 20, 1977); and claims 8-
10 and 12-15 as unpatentable over Campbell in view of Appellant’s
admission (Spec. 36:24-26), Seufert ‘916, Seufert ‘206, and Haddock (US
3,735,674, issued May 29, 1973).

Claims 1-4
Appellant’s Request alleges that we erred in rejecting claims 1-4
because we misapprehended or overlooked that the method of Seufert ‘916
for forming a fold line or score line in carton blank material that is wider in
one region and narrower in another region is particularly directed to plastic
carton blank material, not to paperboard carton blank material (Request 4).
Specifically, Appellant points out that in forming a fold line with wide and
narrow portions in the plastic sheet, Seufert ‘916 makes use of hot stamping
or high frequency heating, which melts the plastic1 (Request 3-4). Thus,
according to Appellant, the Seufert disclosures would not have suggested to
one of ordinary skill in the art the use of such processes for the paperboard
used in the Campbell method, which does not melt, and would not have

1 In fact, Seufert ‘206, referenced in Seufert ‘916, teaches that “only a
narrow strip of the inner part of the plastic material is melted,” while the
outer surfaces of the sheet are kept at a temperature below the melting
temperature of the plastic sheet, preferably above the softening temperature
of the plastic, in the high frequency heating technique (Seufert ‘206, col. 2,
ll. 38-68). “[T]he melted plastic moves slightly sideways forming a bulge
[30a; figs. 3 and 4] which gives the fold line its characteristic cross section
and characteristic bending behavior” (Seufert ‘206, col. 2, ll. 65-68).
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enabled one of ordinary skill in the art to form the Campbell fold (score)
lines with wide and narrow portions (Request 4-5). Appellant reasons that,
since the paperboard blank and fabric tape employed by Campbell do not
melt, there would be no reason to use a process that employs heat to form
the Campbell fold (score) lines (Request 5). Appellants further speculate
that if one were to attempt to use the Seufert high frequency process or hot
stamping process to form the fold lines in the Campbell process, the heat
might burn or sear the paperboard or prematurely set the adhesive, contrary
to Campbell’s express teaching that the adhesive should not dry until after
the scoring is completed (Request 5). For the reasons that follow,
Appellant’s arguments do not persuade us that we erred in entering a new
ground of rejection of claims 1-4 as unpatentable over Campbell in view of
Appellant’s admission and Seufert ‘916.
First, Appellant’s arguments misapprehend our reliance on Seufert
‘916. As we made clear on page 10 of our Decision, based on the content of
Appellant’s admission (Spec. 36:24-26), a person of ordinary skill in the art
would have appreciated that the score (fold) lines 9 extending across the
lines of reinforcement of Campbell’s carton blank should be formed so as to
be wider in the reinforced area (the thicker material) and narrower in areas
that are not reinforced (the thinner material). Consequently, the content of
this admission alone is sufficient to have prompted one of ordinary skill in
the art to form the score (fold) lines 9 extending across the lines of
reinforcement of Campbell’s carton blank so as to be wider in the reinforced
area than in areas that are not reinforced, thereby rendering such
modification of Campbell obvious, so long as it would not have been beyond
the technical grasp of a person of ordinary skill in the art to do so. See KSR
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Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007)(“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”) Seufert ‘916 was cited merely as evidence that the task of
forming a score or fold line in carton blank material was not daunting to
those of ordinary skill in the art at the time of Appellant’s invention
(Decision 10). We did not specifically propose in our Decision that high
frequency heating or hot stamping be applied to the paperboard product of
Campbell. It is of course well established that all of the features of the
secondary reference need not be bodily incorporated into the primary
reference (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)) and that the
artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgement
(Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)).
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR, 127 S.Ct. at 1742.
Moreover, Appellant presents no evidence that the use of high
frequency heating or hot stamping would have been detrimental to the
Campbell process utilizing paperboard blanks. Specifically, Appellant
proffers no evidence to support the speculation that the heat might burn or
sear the paperboard or prematurely set the adhesive. Arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Appellant had the option to reopen prosecution and submit
new evidence in response to our new ground of rejection pursuant to 37
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C.F.R. § 41.50(b)(1) but elected not to do so, choosing instead to file a
request for rehearing pursuant to 37 C.F.R. § 41.50(b)(2).
Further, while it may be true that the paperboard used in Campbell’s
process does not melt, Appellant’s conclusion that there would be no reason
to use a process that employs heat to form the Campbell fold (score) lines
does not necessarily follow. First, Appellant’s statement that Campbell’s
tapes would not melt is unsupported by Campbell, which provides for
reinforcing tapes “of any material” (Campbell 2:102-104) and does not
exclude tapes comprising plastic or other meltable material. Moreover, even
if the paperboard and tapes do not melt, any heat-induced softening of the
paperboard to make it more pliable for conforming to the score 12 would
appear to be beneficial to the process. After all, Campbell teaches that
“under the pressure of the scoring dies the paper and tape must give and shift
with reference to each other” (Campbell 2:57-59).
As for Appellant’s contention that the Seufert disclosures would not
have enabled one of ordinary skill in the art to form the Campbell fold
(score) lines with wide and narrow portions, Seufert ‘916 evidences that a
person of ordinary skill in the art of producing carton blanks would have
known how to configure the scoring die and other necessary tooling to form
a score (fold) line having wide and narrow portions. That Seufert ‘916 does
not explicitly describe the shape of such tooling is some indication at least
that Seufert ‘916 would have expected one of ordinary skill in the art to
understand how to configure such tooling. Common sense would dictate the
die and corresponding tooling structure would be configured to match the
desired shape of the score (fold) line, regardless of the particular material
being scored to form a fold line. Therefore, we do not agree with Appellant
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that the applied prior art teachings would have been insufficient to enable
one of ordinary skill in the art to form the Campbell fold (score) lines with
wide and narrow portions.
Claims 5-7 and 11
In addition to the arguments discussed above, Appellant additionally
points out that there is no disclosure in Seufert ‘916 that the thinned-down
areas and the bend lines may be formed by different parts of the same tool,
for example, a multi-point rule, and Seufert ‘206 does not supply this
deficiency (Request 7). Appellant is correct that neither Seufert ‘916 nor
Seufert ‘206 expressly discloses the shape of the tooling used to
simultaneously form the wider thinned-down areas and narrower bend lines.
We also note, however, that while there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness, “the 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.” KSR, 127 S.Ct. at 1741. Moreover, when presented with a
finite number of options, such as a single, multi-point rule or multiple
single-point rules, a person of ordinary skill has good reason to pursue either
and “[i]f this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.” Id. at 1742. As
mentioned above, common sense would dictate that a scoring rule should
have a shape corresponding to the shape of the desired score line. In the
case of Campbell’s score lines 9 traversing the reinforced regions, that shape
has a thinner section outside the reinforced region and a wider section within
the reinforced region. Accordingly, a person of ordinary skill in the art,
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exercising ordinary common sense and creativity, would immediately
envisage a scoring rule having a thinner section and a wider section for
forming such a score line. Therefore, as pointed out on page 11 of our
Decision,
[t]o utilize a multi-point rule having a narrower
section to form the narrower section of the bend
line and a wider section to form the wider section
of the bend line would require merely a predictable
variation of the simple single point rule-shaped
tool 20 taught by Seufert ‘206 well within the skill
of the art and thus would have been obvious.
In light of the above, Appellant’s arguments do not demonstrate
reversible error in our rejection of claims 5-7 and 11 as unpatentable over
Campbell in view of Appellant’s admission, Seufert ‘916, and Seufert ‘206.
Claims 8-10 and 12-15
Appellant argues that it would not have been obvious to use a counter
plate having a groove aligned with the scoring rule in light of the disclosure
by Seufert ‘206 that it is important that the counter tool provide a
substantially flat surface for the plastic sheets when they are cooling below
the softening temperature (Request 8). As Appellant’s Request is eager to
point out, Seufert ‘206 is particularly concerned with forming score lines in
plastic sheet material, while Campbell is directed to paperboard carton
blanks. The disclosure in Seufert ‘206 (col. 4, ll. 42-50) alluded to in the
Request is directed to plastic sheets that have been heated to a temperature
above their softening temperature and gives no indication that this would be
a concern in scoring paperboard blanks. Haddock, on the other hand, is
directed specifically to paperboard blanks (col. 1, ll. 7-9) and, as pointed out
in our Decision at page 12, teaches using counter plates having slots or
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channels in cooperation with a rule for forming creases (fold lines) in carton
blank material. It is not apparent, and Appellant has not cogently explained,
why a person of ordinary skill in the art would have been led to follow the
teachings of Seufert ‘206 in this regard over the teachings of Haddock,
which are directed specifically to paperboard, the material at issue in
Campbell. Accordingly, Appellant’s argument does not demonstrate error in
our rejection of claims 8-10 and 12-15 as unpatentable over Campbell in
view of Appellant’s admission, Seufert ‘916, Seufert ‘206, and Haddock.

CONCLUSION
For the reasons discussed above, Appellant’s Request does not
demonstrate error in the new grounds of rejection entered in our Decision.
Accordingly, Appellant’s Request has been granted to the extent of our
reconsidering our Decision but denied with respect to making any
modification thereto. This decision is now final for purposes of judicial
review.
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) (2007).
DENIED

vsh

WOMBLE CARLYLE SANDRIDGE & RICE, PLLC
P.O. BOX 7037
ATLANTA, GA 30357-0037

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