Graphic Packaging International, LLC

Patent Trials and Appeals Board

Jan 26, 2022

2021003791 (P.T.A.B. Jan. 26, 2022)

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. 16/389,293 04/19/2019 John Murdick Holley Jr. R029 16740US.D3C1 1006 26158 7590 01/26/2022 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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 JOHN MURDICK HOLLEY, JR. ____________ Appeal 2021-003791 Application 16/389,293 Technology Center 3700 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and MICHAEL C. ASTORINO, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7, 10, 16-22, and 25. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Graphic Packaging International, LLC. (Appeal Br. 1). Appeal 2021-003791 Application 16/389,293 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to cartons having an article protection feature and/or article protection flap that protects the containers or articles from breakage (Spec., para. 3). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A carton for containing at least one article, the carton comprising: at least one panel at least partially forming an interior of the carton; and at least one article protection flap for protecting the at least one article, the at least one article protection flap comprising a central portion, a first outer portion foldably connected to the central portion, and a second outer portion foldably connected to the central portion, the at least one article protection flap being foldably connected to the at least one panel and moveable between a first position that is substantially parallel to the at least one panel and a second position wherein the at least one article protection flap is folded relative to the at least one panel and the first outer portion and the second outer portion are folded with respect to the central portion, the central portion being foldably connected to the at least one panel; wherein the at least one article protection flap comprises features for preventing folding of the at least one article protection flap from the second position to the first position, the at least one article protection flap comprises a first cut and a second cut, the first cut extending along the first outer portion of the at least one article protection flap, the second cut extending along the second outer portion of the at least one article protection flap, the first cut at least partially defines a first tab extending outwardly from the central portion of the at least one article protection flap when the at least one article protection flap is in the second position, the second cut at least partially defines a second tab extending outwardly from the central portion of the at least one article protection flap when the at least one article protection flap is in the second position, the first tab is separable from the first outer portion along the Appeal 2021-003791 Application 16/389,293 3 first cut when the at least one article protection flap is in the first position, and the second tab is separable from the second outer portion along the second cut when the at least one article protection flap is in the first position. THE REJECTIONS The following rejections are before us for review: 1. Claims 1-7, 10, 16-22, and 25 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Roosa (US 5,765,685 issued June 16, 1998). 2. Claims 1-5, 7, 10, 16-20, 22, and 25 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Sutherland (US 5,484,059 issued January 16, 1996). 3. Claims 6 and 21 are rejected under 35 U.S.C. § 103 as unpatentable over Sutherland. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejections under Roosa The Appellant argues that the rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Roosa is improper because the reference fails to disclose “the central panel being foldably connected to the panel” (App. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-003791 Application 16/389,293 4 Br. 17). The Appellant also argues that Roosa does not disclose “first and second tabs that are separable from respective first and second outer portions along first and second cuts” as recited in claim 1 (App. Br. 19 Reply Br. 2-4, 6, 7). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 3, 5, Ans. 3-7). We agree with the Appellant. Claim 1 requires “the central portion being foldably connected to the at least one panel.” The rejection cites to Roosa as disclosing a central portion adjacent member 79, a panel 26, a first outer portion (adjacent 77), a second outer portion (adjacent either 76), a first tab and second tab (adjacent 80 and the other 76) (Final Act. 3, Ans. 3). However, in Roosa at Fig. 5 the central portion member 79 is foldably attached to member 77, and not to the panel 26. Claim 1 also requires “the first tab is separable from the first outer portion along the first cut . . . and the second tab is separable from the second outer portion along the second cut.” However in Roosa the second tab 76 is not separable along a cut from the respective second outer portion. Accordingly, the rejection of claim 1 and its dependent claims is not sustained. Claim 16 contains similar limitations and the rejection of this claim and its dependent claims is not sustained for the same reasons given above. Rejections under Sutherland The Appellant argues that the rejection of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Sutherland is improper because reference fails to disclose “two tabs that extend from a central portion of an article Appeal 2021-003791 Application 16/389,293 5 protection flap and that are separable from respective outer portions of the article protection flap” (Appeal Br. 15, Reply Br. 4-6). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 4, Ans. 7-11). We agree with the Appellant. Claim 1 requires “the first tab is separable from the first outer portion along the first cut . . . and the second tab is separable from the second outer portion along the second cut.” The rejection of record cites to Sutherland as disclosing a first tab and second tab (adjacent to member 61) and first and second outer portions (adjacent either 56 and other 56) (Final Act. 4, Ans. 8). In Sutherland at Fig. 3 for example the tabs (adjacent 61) are not separable from the first and second outer portions (adjacent 56) by a cut and thus the argued claim limitation has been not been shown in the prior art. Accordingly, the rejection of claim 1 and its dependent claims under 35 U.S.C. § 102(a)(1) as anticipated by Sutherland is not sustained. Claim 16 contains similar limitations to claim 1 and the rejection of this claim and its dependent claims under 35 U.S.C. § 102(a)(1) as anticipated by Sutherland is not sustained for these same reasons. The rejection of claims 6 and 21 under 35 U.S.C. § 103 as unpatentable over Sutherland fails to cure the deficiencies discussed above and the rejection of these claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-7, 10, 16-22, and 25 under 35 U.S.C. § 102(a)(1) as anticipated by Roosa. Appeal 2021-003791 Application 16/389,293 6 We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-5, 7, 10, 16-20, 22, and 25 under 35 U.S.C. § 102(a)(1) as anticipated by Sutherland. We conclude that Appellant has shown that the Examiner erred in rejecting claims 6 and 21 under 35 U.S.C. § 103 as unpatentable over Sutherland. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 10, 16-22, 25 102(a)(1) Roosa 1-7, 10, 16-22, 25 1-5, 7, 10, 16-20, 22, 25 102(a)(1) Sutherland 1-5, 7, 10, 16-20, 22, 25 6, 21 103 Sutherland 6, 21 Overall Outcome 1-7, 10, 16-22, 25 REVERSED