Graphic Packaging International, Inc.

Patent Trials and Appeals Board

Nov 17, 2020

2020002794 (P.T.A.B. Nov. 17, 2020)

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.
15/142,025 04/29/2016 Ross Droege R029 18500US.1 7832
26158 7590 11/17/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
PAGAN, JAVIER A
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/17/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS DROEGE, ROBERT AYERST, ELIAS SPARTIS,
MATTHEW R. KEARNS, and AARON LEE BATES
Appeal 2020-002794
Application 15/142,025
Technology Center 3700
Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
BRANDON J. WARNER, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s May 9, 2019 Final Action rejecting claims 1–38. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Graphic Packaging
International, LLC. Appeal Br. 1.
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Application 15/142,025

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CLAIMED SUBJECT MATTER
The claims are directed to a carton with tray and top access feature.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A package for holding a plurality of containers, comprising:
a carton comprising a plurality of panels that extends at
least partially around an interior of the carton, the plurality of
panels comprising a top panel, a bottom panel, a first side panel,
and a second side panel; and
a tray for insertion into the interior of the carton, the tray
comprises a tray bottom panel for supporting the plurality of
containers, a first tray side panel foldably connected to the
bottom tray panel, a second tray side panel foldably connected to
the tray bottom panel, and liquid-tight features for at least
partially preventing leakage from the package,
the carton comprises at least one access feature in the top
panel of the carton for providing access to the interior of the
carton.
Appeal Br. 47 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Becker US 5,820,268 Oct. 13, 1998
Rusnock US 2004/0040334 A1 Mar. 4, 2004
Holley, Jr. US 2008/0006681 A1 Jan. 10, 2008
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–28, 31–38 103 Holley, Jr, Becker
29, 30 103 Holley, Jr, Becker,
Rusnock

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OPINION
Claims 1–28 and 31–38: Rejected as
Unpatentable over Holley, Jr. and Becker
Appellant argues claims 1–28 as a first group, claims 31, 32, and 34–
37 as a second group, and claims 33 and 38 as a third group. Appeal Br. 35–
44. We select claim 1 as representative of the first group, claim 32 as
representative of the second group, and claim 33 as representative of the
third group, and decide the appeal of this rejection on the basis of these three
claims alone. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
Regarding claim 1, the Examiner finds that Holley, Jr. teaches the
claimed carton with the claimed access feature, but “is silent as to the
inclusion of a tray for insertion into the interior of the carton.” Final Act. 3–
4 (citing Holley, Jr., Figs. 1–4). The Examiner therefore turns to Becker for
this teaching. Id. at 4–5 (citing Becker, 4:20–25, Figs. 1, 8–13). The
Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of the invention “to modify the container of
Holley, Jr. with the liquid-proof interior liner as taught by Becker in order to
prevent any liquid from leaking out of the package if an enclosed container
is damaged during transportation.” Id. at 5.
We have considered Appellant’s arguments in support of the
patentability of claim 1, but find them unpersuasive of Examiner error.
Accordingly, we sustain the Examiner’s rejection of claim 1 for essentially
those reasons expressed in the Final Action and Answer, and we add the
following primarily for emphasis.
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Appellant first argues that the Examiner’s proposed modification of
Holley, Jr. to include Becker’s tray would change the principle of operation
of Holley, Jr. Appeal Br. 36. Appellant asserts that “Holley Jr. is directed
to providing opening features for a carton that allows for different
orientations while opening the loaded carton, and selectively facilitates
dispensing or bulk unloading of cartons.” Id. at 37 (citing Holley, Jr. ¶ 7).
Appellant notes that “Holley Jr. describes the carton 200 having a top panel
106 with a dispenser D divisible into four sections including flaps 118, 120,
122, 124, which are manipulable to provide access to bottles B in the interior
of the carton 200.” Id. (citing Holley, Jr. ¶¶ 39–42). According to
Appellant, “the proposed modification of the carton 200 of Holley, Jr. to
include the closed container 10 of Becker et al. therein would change the
principle of operation of the carton 200 of Holley, Jr. by presenting a closed
and sealed top 24 that further restricts access to bottles B in the carton 200
once the dispenser D is opened, contrary to the express purpose of the
dispenser D in providing ready access to the bottles B.” Id. at 38.
The Examiner disagrees that the proposed modification would change
Holley, Jr.’s principle of operation. The Examiner asserts that “[a]lthough
the inner container would add an extra step in order to access the containers,
the principal operation of Holly would not be changed and an added benefit
of leakage prevention would occur as described in Becker.” Ans. 4 (citing
Becker, 4:22–26). Appellant replies that “it would not have been desirable
to trade the versatility/configurability of the dispensing flap arrangements of
the carton [of] Holley, Jr. for the alleged benefits of leakage protection
ascribed by the Examiner to the closed inner container 10 of Becker.” Reply
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Br. 4; see id. (“the alleged advantages in leak protection pointed to by the
Examiner would be secondary to the primary benefits of Holley, Jr.”).
A change in the method or principle of operation of the primary
reference can render a modification nonobvious. See In re Ratti, 270 F.2d
810, 811–813 (CCPA 1959) (“This suggested combination of references
would require a substantial reconstruction and redesign of the elements
shown in [the primary reference] as well as change the basic principles
under which the [primary reference] construction was designed to operate.”).
Here, however, we are not persuaded that inserting Becker’s container into
Holley, Jr.’s carton would have changed the carton’s principle of operation.
Merely requiring the entire top of Holley, Jr.’s carton to be opened does not
change the carton’s principle of operation, because Holley, Jr. expressly
teaches that the top can be completely opened. Holley, Jr. ¶ 40, Figs. 2–4.
Having “a closed and sealed top 24 that further restricts access to bottles B”
in the carton is simply a tradeoff for increased leak protection, as the
Examiner notes. Ans. 3–4 (citing Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). Appellant’s assertion that one of
ordinary skill in the art would not find that tradeoff “desirable,” Reply Br. 4,
is unsupported attorney argument, which is afforded little weight. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant next argues that the Examiner failed to explain how the
proposed modification would be accomplished. Appeal Br. 38–39. In
particular, Appellant asserts that
it is unclear as to how the sealing strip 26 and overlapping flaps
25a, 25b, 27a, 27b of the inner container 10 [of Becker] that
would be needed to open the top 24 of the inner container 10
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could be accessed through only a selected one of the flaps 118,
122, of the dispenser D of the carton 200 of Holley, Jr.

Id. at 39; see also Reply Br. 6. The Examiner correctly responds that
Holley, Jr. teaches that “all access flaps (118,120, 122, 124) can be opened
in order to remove the plurality of containers.” Ans. 4 (citing Holley, Jr.
¶ 41, Fig. 4). Thus, this argument is not persuasive of Examiner error.
Claim 32
Claim 32 depends from claim 31. Appeal Br. 51 (Claims App.).2
Claim 31 depends from claim 1 and adds “wherein the carton is comprised
of a first material and the tray is comprised of a second material, the first
material is the same as the second material.” Id. at 50. Claim 32 further
specifies that “the first material and the second material are paperboard.” Id.
at 51. The Examiner finds that Holley, Jr. teaches making its carton out of
paperboard, but acknowledges that Becker does not. Ans. 7 (citing Holley,
Jr. ¶ 24). The Examiner determines, however, that it would have been
obvious to one of ordinary skill in the art to make Holley, Jr.’s carton and
Becker’s insert from the same material “in order to cheaply and easily
manufacture the container.” Id. The Examiner also determines that
“select[ion of] a known material on the basis of its suitability for the
intended use [is] a matter of obvious design choice.” Id. (citing In re Leshin,
277 F.2d 197 (CCPA 1960)).

2 The Appeal Brief Claims Appendix states that claim 32 depends from
claim 21. We understand this to be a typographical error, because the
additional terms found in claim 32 find their antecedent bases in claim 31
rather than claim 21.
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Appellant responds that: (1) legal precedent cannot be treated as per
se rules of obviousness; (2) the Examiner has not established that paperboard
could be substituted for the material used in Becker with any reasonable
degree of success; and (3) the Examiner has not established that it would be
desirable to do so. Appeal Br. 42–43; Reply Br. 7–8. As to the first
argument, we note that the Examiner is not relying solely on Leshin as a per
se rule to support the obviousness determination. The Examiner also relies
on the finding that one of ordinary skill in the art would have made Becker’s
tray using the same material taught by Holley, Jr.—paperboard—“to cheaply
and easily manufacture the container.” Ans. 7. Appellant does not dispute
this finding.
Regarding the second argument, we observe that Holley, Jr.’s carton
is made of paperboard (Holley, Jr. ¶ 24), paperboard is a foldable sheet
material (id.), and Becker’s container is also preferably made of a foldable
sheet material (Becker, 2:60–67, 3:13–34). Thus, the record adequately
establishes that one of ordinary skill in the art would have been reasonably
likely to succeed in using paperboard to make Becker’s container. See In re
O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (obviousness determination
“does not require absolute predictability of success”).
Regarding the third argument, contrary to Appellant’s assertion, the
Examiner has provided a reason why one of ordinary skill in the art would
have wanted to make Becker’s container out of paperboard: “to cheaply and
easily manufacture the container.” Ans. 7.
Claim 33
Claim 33 depends from claim 1 and additionally recites “wherein the
tray has an open top configuration.” Appeal Br. 51 (Claims App.). The
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Examiner finds that Figure 1 of Becker depicts Becker’s tray 10 with an
open top. Ans. 7. According to the Examiner:
Although the tray may be temporarily closed during transit, the
tray is in an open top configuration prior to placing the
containers in the tray, during the process of placing the
containers in the tray and when removing the containers from
the tray. This would make the tray have an open configuration,
as required by the claims. Furthermore, as stated in the
rejection, the appellant never fully defines “open top
configuration” so the broadest reasonable interpretation of
“open top configuration” is used to apply the prior art of record.
Ans. 7–8. Appellant responds that:
[O]ne of ordinary skill in the art would not recognize an open
top configuration in the inner container 10 of Becker et al. in
view of the disclosure that the inner container 10 is configured
to have a closed top 24 that is further sealed with a self-sealing
strip 26. That the closed top 24 of the inner container 10 of
Becker et al. can subsequently be opened does not itself provide
the inner container 10 of Becker et al. with an open top
configuration consistent with Appellant’s specification.
Reply Br. 9.
Appellant has not persuaded us of Examiner error. First, Appellant
does not dispute the Examiner’s contention that Figure 1 of Becker depicts
Becker’s tray is in an open top configuration before placing containers in the
tray, during the process of placing containers in the tray, and when removing
the containers from the tray. Second, Appellant does not explain why “open
top configuration” should be construed to exclude these situations.
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Conclusion as to the First Rejection
Because Appellant has not persuaded us that the Examiner erred in
rejecting claims 1, 32, and 33 as unpatentable over Holley, Jr. and Becker,
we sustain the Examiner’s rejection of claims 1–28 and 31–38 on this basis.
Claims 29 and 30: Rejected as
Unpatentable over Holley, Jr., Becker, and Rusnock
Appellant relies on dependency from claim 21 for patentability of
claims 29 and 30, and thus these dependent claims fall with claim 21.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–28, 31–38 103 Holley, Jr, Becker 1–28, 31–38
29, 30 103 Holley, Jr, Becker,
Rusnock
29, 30
Overall
Outcome
1–38
TIME PERIOD FOR RESPONSE
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