SONCO DEVELOPMENT, INC.Download PDFPatent Trials and Appeals BoardMar 31, 20212020005000 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 15/947,419 04/06/2018 JONATHAN EDWARD TROLLEN 29958/09168 7964 27530 7590 03/31/2021 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center 301 South College Street, 23rd Floor Charlotte, NC 28202 EXAMINER HELVEY, PETER N. ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN EDWARD TROLLEN Appeal 2020-005000 Application 15/947,419 Technology Center 3700 Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and MICHAEL L. WOODS, 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 December 31, 2019 Non-Final Action rejecting claims 1–17 and 21–24. See Non-Final Act. 1. Claims 18–20 have been withdrawn. Appeal Br. 21–22 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sonoco Development, Inc. Appeal Br. 1. Appeal 2020-005000 Application 15/947,419 2 CLAIMED SUBJECT MATTER The claims are directed to a flat-bottomed gusseted bag made from a multi-layer sheet. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flat-bottomed bag, comprising: a blank comprising a flexible sheet, the sheet comprising a laminate of a first web and at least a second web, a face of the first web being affixed to an opposing face of the second web by an adhesive layer disposed between the first and second webs, the blank defining: a front panel; a left side panel joined to a left side edge of the front panel; a right side panel joined to a right side edge of the front panel; either a single rear panel joined to one of the left or right side panels, or a pair of partial rear panels respectively joined to each of the left and right side panels; a plurality of bottom panels respectively joined to lower edges of the front, left side, right side, and rear panels; and fold lines respectively formed at each juncture between said panels; the blank forming a bag with each joined pair of panels disposed generally perpendicular to each other, a leftmost edge of the blank being attached to a rightmost edge of the blank along a longitudinal seam therebetween, the bottom panels being attached together to form a bottom wall of the bag; wherein the adhesive layer comprises at least one adhesive region and a plurality of adhesive-free fold line regions, wherein each adhesive-free fold line region: extends along at least part of the length of a fold line, between a bottom panel and the single respective front, left side, right side, or rear panel joined therewith, without covering a juncture between any of the following panels: the front panel, the left side panel, the right side panel, and Appeal 2020-005000 Application 15/947,419 3 the rear panel, and extends at least partially above and below each fold line. REFERENCES Name Reference Date Huffer US 6,517,243 B2 Feb. 11, 2003 Jackson US 7,858,909 B2 Dec. 28, 2010 Bierschenk US 2009/0232424 A1 Sept. 17, 2009 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–5, 10–15, 22–24 103(a) Bierschenk, Jackson 6–9, 16, 17, 21 103(a) Bierschenk, Jackson, Huffer OPINION Claims 1–5, 10–15, and 22–24: Rejected as Unpatentable over Bierschenk and Jackson Independent Claim 1 The Examiner finds that Bierschenk teaches a flat-bottomed bag substantially as claimed, but does not expressly teach the claimed plurality of adhesive-free fold line regions that: (1) extend at least partially along, above, and below a fold line between a bottom panel and the single respective front, left side, right side, or rear panel jointed therewith, and (2) do not cover a juncture between any of the front, left side, right side, and rear panels. Non-Final Act. 2–3 (citing Bierschenk ¶ 56, Figs. 2c, 2d, 4a). The Examiner therefore relies on Jackson for the missing limitation. Id. at 3. The Examiner finds that “Jackson teaches a multi-layer film wherein the adhesive layer is in a partial-coverage pattern that includes continuous adhesive surrounding discrete adhesive-free regions.” Id. (citing Jackson, Figs. 15, 16). Appeal 2020-005000 Application 15/947,419 4 The Examiner explains that “[b]ecause the Jackson adhesive voids are located contiguously across the laminate structure in areas (see Figs. 15, 16), when applied to the laminate structure of Bierschenck, the fold lines of Bierschenk (252, 262 for example) as seen in Fig. 2c would necessarily cross at least some of the adhesive voids.” Id. at 3–4. The Examiner further states that, for the limitation requiring each adhesive-free fold line region to not cover a juncture between any of the front, left side, right side, and rear panels: The combination set forth above details a multitude of adhesive-free regions intermittently covering the entire blank, however for the purposes of claim interpretation, only one of the adhesive-free regions located overlapping each of the fold lines between the bottom panel and the respective front, left side, right side, and rear panels is considered to be the specific ‘adhesive-free fold line regions’ as set forth in the claims. . . . The other adhesive free regions of the combination, i.e. those that are not specifically on the fold line between the bottom and respective front, left side, right side, and rear panels, can be disregarded for the purposes of the claim interpretation. Id. at 4. The Examiner determines that it would have been obvious to one of ordinary skill in the art “to construct the film taught by Bierschenk with the continuous adhesive and adhesive voids between layers as taught by Jackson, in order to reduce the amount of adhesive needed to adhere the layers together.” Id. at 3; see Jackson, 11:8–9 (“It is preferred to have an adhesive pattern [as opposed to complete adhesive coverage] to save cost and weight.”). We have reviewed Appellant’s arguments in opposition to the Examiner’s rejection of claim 1 as unpatentable over Bierschenk and Appeal 2020-005000 Application 15/947,419 5 Jackson, but find them unpersuasive of Examiner error. Appellant first argues that “Jackson does not actually teach an increased flexibility due to a particular adhesive pattern.” Appeal Br. 4. This argument is not persuasive, because the Examiner does not rely on increased flexibility as the reason one of ordinary skill in the art would have combined Jackson and Bierschenk. Instead, the Examiner relies on the reduction in the amount of adhesive needed to adhere the layers together, which, as Jackson teaches, saves both cost and weight. Non-Final Act. 3; Jackson, 11:8–9. Appellant next argues that Jackson does not teach that its adhesive- free areas extend across a fold line between a bottom panel and its respective upper panel in the blank depicted in Figure 3 of Jackson. Appeal Br. 9. According to Appellant, “[t]he Examiner does not identify which panel of Jackson is the bottom, front, left, right, or rear.” Id. at 10. Appellant similarly argues that the Examiner does not show how Jackson’s adhesive pattern “interplays” with the junctures between the front, left side, right side, and rear panels of Jackson. Appeal Br. 10. These arguments are misplaced, as the Examiner’s rejection is not based on applying Jackson’s patterned adhesive to construct the laminate used to make Jackson’s bag, but rather is based on applying it to create the laminate film to make Bierschenk’s bag. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”).2 2 In the Reply Brief, Appellant contends that it is unclear whether the Examiner proposes applying “only the cross-hatched non-continuous adhesive of Jackson (shown in Fig. 16) . . . to the entire Bierschenk laminate Appeal 2020-005000 Application 15/947,419 6 Appellant next challenges the Examiner’s finding that Jackson’s adhesive voids would extend across Bierschenk’s fold lines without covering the junctures between Bierschenk’s front, left side, right side, and rear panels. Appeal Br. 10–11. Appellant asserts that “[w]e have no blank structure illustrated in Bierschenk,” and “[t]here is no evidence to suggest that the combination of Jackson and Bierschenk would accomplish each of these limitations and the Examiner fails to show how such would be accomplished by the combination.” Id. We disagree. As evidence, the Examiner relies on, e.g., Figure 2c of Bierschenk, which depicts fold lines 252 and 262, and the cross-hatched adhesive pattern depicted in Figures 15 and 16 of Jackson. The Examiner contends that applying Jackson’s cross-hatched adhesive pattern to make the laminate film used for Bierschenk’s bag would result in at least one of the adhesive-free areas in Jackson extending across fold lines 252 and 262 without covering a juncture between any of the front, side, and rear faces of Bierschenk’s bag. Non-Final Act. 3–4. These findings rely on the Examiner’s interpretation of “adhesive-free fold line region” as applying to some but not all of Jackson’s adhesive-free regions. Appellant does not expressly dispute this interpretation; nor does Appellant expressly dispute surface,” or whether “the entire adhesive pattern of Jackson (shown in Fig. 15) is applied to the entire Bierschenk laminate surface.” Reply Br. 2. We think it is clear, however, that the Examiner proposes that only the cross- hatched non-continuous adhesive pattern be applied to Bierschenk’s laminate surface. See, e.g., Non-Final Act. 3 (Jackson’s “adhesive voids are located contiguously across the laminate structure in areas . . . when applied to the laminate structure of Bierschenk” (emphasis added)); id. at 4 (“The combination set forth above details a multitude of adhesive-free regions intermittently covering the entire blank” (emphasis added)). Appeal 2020-005000 Application 15/947,419 7 that at least some of Jackson’s adhesive-free regions would satisfy the above limitations. Therefore, Appellant has not persuaded us of Examiner error. For the above reasons, we are not apprised of error in the Examiner’s rejection of claim 1 as unpatentable over Bierschenk and Jackson. Independent Claim 13 Independent claim 13 recites a blank for forming a flat-bottomed bag. Appeal Br. 19–20 (Claims App.). Claim 13 is similar to claim 1, so for those limitation common to both claims—such as the requirement that the adhesive-free fold line regions extend across and at least partially along a fold line between a bottom panel and its respective upper panel—the discussion above regarding claim 1 applies with equal force to claim 13. Claim 13 differs from claim 1 primarily in that instead of prohibiting the plurality of adhesive-free fold line regions from covering a juncture between any of the front, left side, right side, and rear panels, it requires the “at least one adhesive region” to be disposed on at least one of these junctures. Id. For this limitation, the Examiner finds that [t]he interconnected grid of adhesive shown in Figs. 15 and 16 of Jackson, when applied between the Bierschenk layers . . ., necessarily results in at least some portion of the adhesive grid, or adhesive region, crossing the claimed junctions between the front, left side, right side, and rear panels. Non-Final Act. 3–4. Appellant responds that “[t]here is no evidence to suggest that the combination of Jackson and Bierschenk would accomplish [this limitation] and the Examiner fails to show how such would be accomplished by the combination.” Appeal Br. 11. Appeal 2020-005000 Application 15/947,419 8 Again, we disagree. The Examiner relies on the same evidence relied upon in rejecting claim 1: primarily Figure 2c of Bierschenk and Figures 15 and 16 of Jackson. Non-Final Act. 3–4. The Examiner’s reasoning is that in applying the cross-hatched adhesive pattern to construct the laminate used to make Bierschenk’s bag, at least one adhesive line of the cross-hatch pattern would necessarily be disposed on at least one juncture between any of the front, left side, right side, and rear panels. Id. at 4. Appellant does not directly address this reasoning or otherwise show it to be erroneous. Therefore, we are not apprised of error in the Examiner’s rejection of claim 13 as unpatentable over Bierschenk and Jackson. Dependent Claims 2–5, 10–12, 14, 15, and 22–24 Appellant contends that the Examiner’s rejection of dependent claims 2–5, 10–12, 14, and 15 is “conclusory and generic, without reference to any specific disclosure of Bierschenk or Jackson.” Appeal Br. 13. Appellant further contends that “the Examiner fails to address” claims 22, 23, and 24. Id. The Examiner carries the initial burden of establishing a prima facie case of unpatentability “by adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal quotation marks omitted). The ultimate criterion is whether the appellant has had “a fair opportunity to react to the thrust of the rejection.” Id. at 1365. For rejections under 35 U.S.C. § 102 or § 103, an Examiner generally carries this burden by “discussing the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference.” In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Appeal 2020-005000 Application 15/947,419 9 Cir. 2012) (internal citation omitted). Here, the Examiner does not set forth where each of the additional limitations in the dependent claims is found in either Bierschenk or Jackson. Instead, the Examiner makes unsupported assertions that various limitations are taught, without identifying which specific claim is being considered or where in the prior art the limitation is taught. Without identifying the specific excerpt in Bierschenk of Jackson on which the Examiner is relying to teach a specific limitation, Appellant is not able to explain why that excerpt falls short of teaching the limitation in question. For that reason, we do not sustain the Examiner’s rejection of claims 2–5, 10–12, 14, 15, and 22–24 as unpatentable over Bierschenk and Jackson. Claims 6–9, 16, 17, and 21: Rejected as Unpatentable over Bierschenk, Jackson, and Huffer Claims 6–9, 16, 17, and 21 ultimately depend from either claim 1 or claim 13, and additionally recite limitations directed to a closure feature. Appeal Br. 18, 21–23. The Examiner relies on Huffer to teach the additional limitations. Non-Final Act. 5–6. Appellant does not separately argue the patentability of these claims, but instead relies on arguments made, and found unpersuasive, in support of the patentability of the base claims. See Appeal Br. 12 (“Huffer fails to remedy the deficiencies set forth above with regard to Bierschenk and Jackson”). Accordingly, for the reasons discussed above, we sustain the Examiner’s rejection of claims 6–9, 16, 17, and 21 as unpatentable over Bierschenk, Jackson, and Huffer. CONCLUSION The Examiner’s rejections are affirmed in part. Appeal 2020-005000 Application 15/947,419 10 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 10–15, 22–24 103(a) Bierschenk, Jackson 1, 13 2–5, 10–12, 14, 15, 22– 24 6–9, 16, 17, 21 103(a) Bierschenk, Jackson, Huffer 6–9, 16, 17, 21 Overall Outcome 1, 6–9, 13, 16, 17, 21 2–5, 10–12, 14, 15, 22– 24 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 IN PART Copy with citationCopy as parenthetical citation