WestRock Linkx Systems Limited

Patent Trials and Appeals Board

Aug 25, 2020

14406158 - (D) (P.T.A.B. Aug. 25, 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.
14/406,158 12/05/2014 Daniel Benterman 70860-USPCT 2873
66061 7590 08/25/2020
WESTROCK COMPANY
ATTN: IP LAW GROUP - PATENTS
501 South 5th Street, 3rd Floor
Richmond, VA 23219-0501
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
docketadministrator@westrock.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL BENTERMAN and DAVID HAYWARD
Appeal 2020-002758
Application 14/406,158
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.
SONG, 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 1–16, 18, and 25–27. We have
jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was conducted
with the Appellant’s representative on August 19, 2020, a transcript of
which will be entered into the electronic record in due course.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies the real party in interest as Westrock
Linkx Systems Limited. Appeal Br. 2.
Appeal 2020-002758
Application 14/406,158
2
CLAIMED SUBJECT MATTER
The claims are directed to a container sizing method and system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A carton sizing system for sizing open top cartons having
different widths and lengths, the system comprising:
a frame;
a controller;
one or more cutters movably mounted to the frame and
operatively connected to the controller, the one or more cutters
being movable in a first horizontal direction, a second horizontal
direction perpendicular to the first horizontal direction, and a
vertical direction perpendicular to the first and second horizontal
directions such that the same cutter(s) can be repositioned to
accommodate different carton widths and lengths;
one or more markers movably mounted to the frame, each
marker being mounted to a robotic arm and comprising a pair of
marker elements for compressing and marking a carton wall
therebetween to score or crease the carton wall, the robotic
arm(s) being operatively connected to the controller and
configured to move, in use, the marker element pair mounted
thereto in the first horizontal direction, the second horizontal
direction, and the vertical direction such that the same marker
element pair can be repositioned to accommodate different
carton widths and lengths; and
a measurement system operatively connected to the
controller and configured to determine, in use, a width and a
length of an open top carton and to determine a height of one or
more objects contained within the open top carton;
wherein the controller is configured to:
move the one or more cutters and the one or more marker
element pairs in the first horizontal direction based on the
determined width of the open top carton;
move the one or more cutters and the one or more marker
element pairs in the second horizontal direction based on the
determined length of the open top carton;
Appeal 2020-002758
Application 14/406,158
3
cause the one or more cutters to cut vertical edges of the
open top carton based on the [determined height of the one or
more objects contained within the open top carton;][2]
cause the robotic arm(s) to move the one or more marker
element pairs in the vertical direction based on the determined
height of the one or more objects contained within the open top
carton; and
cause the one or more marker element pairs to score or
crease vertical walls of the open top carton between the vertical
edges to at least partially define foldable flaps or panels.
Appeal Br. 16–17, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Focke US 4,562,686 Jan. 07, 1986
Doke US 7,720,567 B2 May 18, 2010
Boigues US 7,823,367 B2 Nov. 02, 2010
OPINION
The Examiner rejects claims 1–16, 18, and 25–27 as unpatentable
over Boigues in view of Focke and Doke. Non-Final Act. 6. The Examiner
finds that Boigues discloses the invention substantially as claimed, but
concedes that Boigues’s markers are not mounted as pairs. Non-Final Act.
6. The Examiner finds that Focke discloses a scoring device with a pair of
marker elements, and concludes that it would have been obvious to one of
ordinary skill in the art to have “replace[d] the markers as taught in the
carton sizing system of BOIGUES with the marker element pairs of FOCKE

2 The bracketed text of claim 1 is omitted in the Claims Appendix of the
Appeal Brief. This omission appears to be an inadvertent typographical
error. The text inserted within the brackets is from the Listing of Claims in
the Request for Reconsideration of record, which was filed April 26, 2018.
See also Appeal Br. 11.
Appeal 2020-002758
Application 14/406,158
4
since the marker element pairs are a known alternative in the art to
implement scores into carton walls.” Non-Final Act. 6–7, citing Focke,
Figs. 2–4.
The Examiner also finds that although Boigues takes into account the
height of the objects to adjust the height of the cartons, it fails to disclose a
controller that moves the cutters and markers in the first and second
horizontal directions as claimed to allow them to be repositioned to
accommodate cartons of various sizes. Non-Final Act. 7, citing Boigues,
col. 2, ll. 48–56. The Examiner finds that Doke discloses a controller that
controls a robotic arm in three axes based on the carton size, the robotic arm
having a cutting head for cutting cartons based on its dimensions. Non-Final
Act. 7–8, citing Doke, col. 3, ll. 58–62; col. 10, ll. 24–37, 58–60).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have further modified the system of Boigues by
attaching the cutters to a programmable robotic arm as taught by Doke, so
that the cutters “are capable of translating in at least three axes,” noting that
the use of robotic arms “is known in the art for being an efficient and
expedient manner in which to adopt for manufacturing processes.” Non-
Final Act. 8, citing Doke, col. 3, ll. 50–52. The Examiner also concludes
that it would have been obvious to have mounted the marker element pair on
robotic arms as well so that the markers are capable of translating in at least
three axes to “define foldable flaps since it has been held that mere
duplication of the essential working parts of a device involves only routine
skill in the art.” Non-Final Act. 8, citing Doke, col. 10, ll. 58–60.
According to the Examiner, the resulting carton sizing system of Boigues
would be “capable of being used on cartons having different lengths and
widths.” Non-Final Act. 8.
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Application 14/406,158
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The Appellant disagrees and argues that one of ordinary skill in the art
“would not [have] combine[d] the disclosures in the way described by the
Examiner” (Appeal Br. 11), and that “impermissible hindsight is the driving
force behind the numerous proposed modifications” (Reply Br. 13). The
Appellant also argues that Boigues is “concerned with modifying only a
height of a box,” and that it “relies on boxes of fixed footprints in order to
utilize bags of a fixed size, and the rigid plate of a fixed size.” Appeal Br.
12, 13. According to the Appellant, using the system of Boigues for boxes
of various footprints “would render the bag and rigid plate, key aspects of
the functionality of the system, unsatisfactory for their intended purpose, and
impair the overall system” by requiring shutdown of the system for
changeover (Reply Br. 12), and would require significant modification
which is not “proposed or disclosed by the cited references” (Appeal Br. 13).
We generally agree with the Appellant. Initially, it is not entirely
clear on what basis in the applied art that the Examiner determines that a
person of ordinary skill in the art would have been motivated to modify
Boigues to be “capable of being used on cartons having different lengths and
widths.” Non-Final Act. 8. Indeed, the motivation appears to be based on
improper hindsight use of the Appellant’s disclosure. According to the
Examiner, Boigues refers to FR 2710580, which is allegedly “related prior
art that is drawn to the modification of cartons of different dimensions,”
such that FR 2710580 “discloses the knowledge of one of ordinary skill in
the art to process cartons having a change in dimensions” (Ans. 6), and
suggests Boigues can be used to process cartons of different sizes (Ans. 5–6,
citing Boigues, col. 1, ll. 19–24; FR 2710580, Figs. 11, 12).
However, as the Appellant correctly argues, “Boigues cites FR
270580 as background for cutting a cardboard box before filling it.” Appeal
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Application 14/406,158
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Br. 14, citing Boigues, col. 1, ll. 19–24); see also Reply Br. 13. As the
Appellant points out, the Examiner “provides no further explanation” as to
why, or how, Figures 11 and 12 of FR 2710580 suggests using cartons of
different sizes in the system of Boigues. Reply Br. 13. Indeed, the
Examiner does not even apply FR 2710580 in the rejection of these claims,
much less provide sufficient factual evidence to allow evaluation as to what
FR 2710580 teaches to one of ordinary skill or what the knowledge of such a
person is.
The Examiner also explains that Doke’s robotic arm is a “known
alternative means for automated processing of cartons” that is “an effective
and efficient means to control the tool modifying the carton” (Ans. 4), and
that different sized cartons can be processed by using different sized void
filling bag supply rolls and the largest sized plate. Ans. 5–6. Thus, the
Examiner maintains that “sufficient motivation is provided in both the prior
art and the general knowledge of one of ordinary skill in the art.” Ans. 6.
However, it is not apparent how the application of a robotic arm
would be beneficial in Boigues, especially considering that the marker of
Focke relied upon by the Examiner (much like Boigues) does not even
require movement in first and second horizontal directions. See also Appeal
Br. 13. Moreover, although the Examiner relies on effectiveness and
efficiency for modifying the system of Boigues to incorporate a robotic arm,
this reasoning is undermined by the Appellant’s rebuttal that use of a robotic
arm would likely take “more time to navigate the perimeter of a box than the
time it would take the cutters of Boigues to make their single and
simultaneous cuts” simply based on vertically moving the cutters and
markers. Appeal Br. 14.
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Application 14/406,158
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Thus, we generally agree with the Appellant the reason articulated by
the Examiner for combining the teachings is not “a valid reason” (Appeal
Br. 14), and that the rejection appears to be based on impermissible
hindsight (Reply Br. 13). Although the Examiner appears to have
established that the various recited elements claimed are known in the art,
“[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. . . . it can be important to identify a reason that would have
prompted a person of ordinary skill . . . to combine the elements in the way
the claimed new invention does.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398,
418 (2007).
Therefore, for the above discussed reasons, we reverse the Examiner’s
rejection of claim 1 and claims 2–16 that ultimately depend from claim 1.
The Examiner’s rejection of claims 18 and 25–27 involve substantially the
same issues as discussed above relative to claim 1. Accordingly, the
rejection as to these claims is reversed as well for substantially the same
reasons discussed.
CONCLUSION

The Examiner’s rejection is reversed.

Appeal 2020-002758
Application 14/406,158
8
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16, 18,
25–27
103 Boigues, Focke,
Doke
1–16, 18,
25–27

REVERSED