Rory I. Wilson et al.

Patent Trials and Appeals Board

Sep 13, 2019

13759433 - (D) (P.T.A.B. Sep. 13, 2019)

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.
13/759,433 02/05/2013 Rory I. Wilson 9205-101520-01 6958
24197 7590 09/13/2019
KLARQUIST SPARKMAN, LLP
121 SW SALMON STREET
SUITE 1600
PORTLAND, OR 97204
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
docketing@klarquist.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RORY I. WILSON and MARCUS HUMPHREY
____________________

Appeal 2019-000806
Application 13/759,433
Technology Center 3700
____________________

Before DANIEL S. SONG, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Office Action (“Final Act.”) rejecting claims 1–4, 7, 9–15, 18–20, and
22–27 in the present application. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a). In addition to its briefs, the Appellant relies on a Third
Declaration of Keith A. Jackson filed December 12, 2017 (“Jackson 3rd
Decl.”).
We REVERSE.

1 The Appellant is Packaging Corporation of America, which is identified as
the real party in interest. Appeal Brief (“App. Br.”) 2.
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The claimed invention is directed to a chambered container. Title.
Representative independent claim 1 reads as follows:
1. A container formed from a blank having a plurality of
panels, the container comprising:
a bottom;
a top opposing the bottom;
a plurality of sides extending from the bottom to the top,
the bottom, the top and the plurality of sides defining an
enclosure;
a partition panel extending from a first one of the plurality
of sides to a second one of the plurality of sides thereby dividing
the enclosure into a first chamber and a second chamber, the
second one of the plurality of sides opposing the first one of the
plurality of sides, the first chamber having a plurality of side
walls, at least two of the plurality of side walls each having a
thickness of a single panel, at least a portion of the partition panel
extending from the bottom to the top;
a first pass-through opening in the partition panel
configured to permit flow of contents from the second chamber
into the first chamber, the first pass-through opening being
defined by at least the partition panel, the bottom and at least one
of the sides of the container, the first and the second chambers
being in constant communication with each other via the first
pass-through opening; and
a pour spout configured to permit egress of the contents
from the first chamber out of the enclosure.
App. Br., Claims App’x A1.

REJECTIONS
1. The Examiner rejects claims 1–4, 7, 9–15, 18, 20, and 22–27
under 35 U.S.C. § 103(a) as unpatentable over Hennessey (US 3,235,163,
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Application 13/759,433
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iss. Feb. 15, 1966) in view of Turpin (US 2,980,540, iss. Apr. 18, 1961) and
Fassard (FR2667574, pub. Apr. 10, 1992).
2. The Examiner rejects claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Hennessey in view of Turpin and Gordon-Ross (US
3,758,021, iss. Sept. 11, 1973).

ANALYSIS
Rejection 1
The Examiner rejects claims 1–4, 7, 9–15, 18, 20, and 22–27 as
unpatentable over Hennessey in view of Turpin and Fassard. As to the
independent claims 1 and 4, the Examiner finds that Hennessey discloses a
container substantially as claimed, but fails to disclose “at least a portion of
the partition panel extending from the bottom to the top,” the recited location
of the pass-through opening, and a pour spout. Final Act. 3. The Examiner
relies on Turpin for disclosing container having a partition panel that extends
from the bottom to the top, the partition panel having opening 18, and the
container further including a pour spout. Final Act. 3.
Based on these findings, the Examiner concludes that
It would have been obvious to one of ordinary skill in the
art to substitute a partition panel as, for example, taught by the
Turpin reference for the partition panel of the Hennessey
device, for the predictable result of providing a package that is
inexpensive since it is easier to manufacture and assemble.
Final Act. 4.
The Examiner also relies on Fassard for disclosing a container
“having a pass-through opening as claimed” (Final Act. 4), and concludes
that it would have been obvious to one of ordinary skill to “rearrange[] the
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location of the opening” as in Fassard “since the opening performs the same
function whether located as shown in fig. 3 of Turpin or at other locations on
the partition panel 16.” Final Act. 4. The Examiner sets forth the same
reasoning in rejecting independent claim 14. Final Act. 6–8.

Claims 1–3, 7, 9–13, and 24–26
As to independent claim 1, the Appellant argues that a person of
ordinary skill in the art would not have extended the panel of Hennessey to
the bottom because this will cause the lower horizontal strap to be
discontinuous. App. Br. 11–12, citing Jackson 3rd Decl. ¶ 13. The
Appellant also argues that the water-soluble panel 19 does not extend to the
top, to the bottom, or across the container. App. Br. 13, citing Jackson 3rd
Decl. ¶ 18. These arguments are unpersuasive because they fail to address
the rejection, which relies on substituting the partition of Hennessey with the
divider wall 16 of Turpin, without the overlying panel 19. Final Act. 4; Ans.
4 (“it is noted that the water-soluble panel 19 of Turpin is not part of the
modified device of Hennessey.”); see also Ans. 2.
The Appellant also argues that a person of ordinary skill would not
substitute the openings 18 of Turpin for Fassard’s opening 8 because “the
location and size of the two large openings 18 in Turpin have a specific
purpose,” would increase material cost, and would require watertight sealing
on two perpendicular surfaces. App. Br. 16, citing Jackson 3rd Decl. ¶ 26.
However, these arguments are unpersuasive because they again fail to
address the rejection, which is to relocate the opening so as to be positioned
at the bottom of the partition, not to substitute the opening of Turpin. Final
Act. 4.
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Nonetheless, we agree with the Appellant that the Examiner “is
relying on impermissible hindsight on cobbling references together in an
attempt to read on claim 1 of the patent application.” Reply Br. 4. As
explained by the Supreme Court “[obviousness] analysis should be made
explicit.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”)). As also explained by the
Court, “a patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art,” and “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” Id. The Court also
warned that the “factfinder should be aware . . . of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” Id. at 421.
As the Appellant argues, the rejection does not adequately establish
why a person of ordinary skill in the art would have sought to “separate the
attached structure of the divider wall 16 and the water-soluble panel 19 of
Turpin in the manner used in the Final Office Action.” App. Br. 9, citing
Jackson 3rd Decl. ¶¶ 6–7. Although the Examiner explains that “the
partition panel of Turpin does achieve the objective of being used as a
reinforcing structure” (Ans. 3), the Appellant is correct that “[t]he Examiner
has provided no reason on why one skilled in the art would look to a
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reference and divide out layers of the [partition] wall to be combined with
other references. This is impermissible hindsight.” Reply Br. 2.
In addition, we agree with the Appellant that the Examiner has not
sufficiently supported the assertion that “using the divider wall 16 and/or
water-soluble panel 19 of Turpin in Hennessey as a partition panel would be
less expensive to manufacture or less expensive to assemble.” App. Br. 14,
Jackson 3rd Decl. ¶ 22. As the Appellant notes, the divider wall 16 of
Turpin extends the length of the box between upper and lower flap structures
12 and uses more material than the panel 44 of Hennessey, which extends
just half the height of the box to prevent bulging of the lower half of the box.
App. Br. 10–11 (citing Hennessey, 2:6–24), 12–13 (citing Turpin, 2:9–12),
14–15 (citing Hennessey, Fig. 1 and Turpin, Fig. 3). Moreover, the package
of Turpin appears to be assembled in a manner similar to the carton of
Hennessey, wherein the partition is part of the blank that is folded over into
the interior of the package. See Turpin, Fig. 3 (lower right hand corner
indicating single blank construction). Thus, there is inadequate support for
the Examiner’s assertion that such substitution would be less expensive,
easier to manufacture, and easier to assemble.
Finally, although the Examiner relies on Fassard to suggest moving
the opening 18 of Turpin’s divider wall 16 to the bottom of the package as
required by claim 1, we observe that Hennessey already provides a gap
between its partition panel 44 and its bottom wall, which is the size of the
lower horizontal strap 40. See Hennessey, Figs. 1, 3.
Therefore, for the reasons noted above, we find the articulated
rejection of independent claim 1 to be inadequately supported by rational
underpinnings, and instead, appears to be based on impermissible hindsight.
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Hence, we reverse the rejection of claim 1. Claims 2, 3, 7, 9–13, and 24–26
ultimately depend from claim 1. Thus, we reverse the rejection of these
claims as well. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(“Dependent claims are nonobvious under section 103 if the independent
claims from which they depend are nonobvious.”).

Claims 4, 14, 15, 18, 20, 22, 23, and 27
Independent claims 4 and 14 recite substantively the same limitations
addressed above with respect to claim 1. App. Br., Claims App’x A2–A4.
Therefore, we reverse the rejection as to claims 4 and 14 for the same
reasons discussed above. Claims 15, 18, 20, 22, 23, and 27 ultimately
depend from claim 14. Thus, we reverse the rejection of these claims as
well. See In re Fine, 837 F.2d at 1076.

Rejection 2
The Examiner rejects claim 19 as unpatentable over Hennessey in
view of Turpin and Gordon-Ross. Claim 19 depends from independent
claim 14. The Examiner’s application of Gordon-Ross does not address the
deficiency in the combination of Hennessey and Turpin discussed above
relative to Rejection 1. Final Act. 10. Accordingly, we reverse this rejection
as well. See In re Fine, 837 F.2d 1076.

CONCLUSION
The rejections are REVERSED.

REVERSED