Alain Cerf

Patent Trials and Appeals Board

Jan 24, 2022

2021003753 (P.T.A.B. Jan. 24, 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. 15/411,413 01/20/2017 Alain Cerf Can 1123 53404 7590 01/24/2022 SAM SILVERBERG 8515 Baymeadows Way Unit 301 Jacksonville, FL 32256 EXAMINER LEEDS, DANIEL JEREMY ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 01/24/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAIN CERF Appeal 2021-003753 Application 15/411,413 Technology Center 3700 Before PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and MICHELLE R. OSINSKI, Administrative Patent Judges. KAUFFMAN, 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 8-15 and 24. See Final Office Action, dated April 28, 2020 (“Final Act.”), at 1; and Appeal Brief filed November 30, 2020 (“Appeal Br.”), at 1 (acknowledging the status of these claims). Claims 16-23 and 25 are withdrawn. Final Act. 1; Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party as the applicant, Alain Cerf. Appeal Br. 1. Appeal 2021-003753 Application 15/411,413 2 As detailed in this opinion, Appellant apprises us of error in the written description, indefiniteness, and obviousness rejections. Appellant does not apprise us of error in the anticipation rejection. Accordingly, we AFFIRM IN PART. CLAIMED SUBJECT MATTER The claimed invention relates to film wrapping containers to form a sleeve around the containers (e.g., cans or boxes). Spec. 1. Claims 8 and 15 are the independent claims on appeal. Appeal Br. 12, 13. Claim 8, reproduced below with emphasis added, is illustrative of the claimed subject matter: 8. A process for forming a film wrapped sleeve pack of containers comprising, transporting on a conveyor a predetermined number of containers oriented on the conveyor so that the containers can be pushed together to form a pack, pushing the containers together to form a pack, forming perforations in parts of the film that rests on the top of the pack so that a part of the film can be peeled off to create an opening for the removal of a container through the opening while maintaining the integrity of the pack, film wrapping a sleeve around the pack with the perforated film, sealing the pack after being film wrapped, and heat shrinking the film wrapped pack. REJECTIONS 1. The Examiner rejects claim 24 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Final Act. 3. Appeal 2021-003753 Application 15/411,413 3 2. The Examiner rejects claims 8-15 and 24 under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 3-4. 3. The Examiner rejects claim 15 under 35 U.S.C. § 102 as anticipated by Andersen.2 Final Act. 4-5. 4. The Examiner rejects claims 8-14 and 24 under 35 U.S.C. § 103 as unpatentable over Andersen and Pipes.3 Final Act. 5-10. OPINION I. Claim 24, Written Description Claim 24 depends from independent claim 8 and adds, “wherein the containers are oriented so that the top or bottom of a container can be pushed against the top or bottom of an adjacent container.” The Examiner determined that claim 24 lacks an adequate written description because it adds new matter that was not previously disclosed in the application.4 Final Act. 3. Therefore, the question before us is whether the application at hand reasonably conveys that Appellant possessed a process “wherein the containers are oriented so that the top or bottom of a container can be pushed against the top or bottom of an adjacent container.” Claim 24. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (The fundamental factual inquiry for ascertaining compliance with the written description requirement is whether the 2 Andersen, US 2014/0231493 A1, Aug. 21, 2014. Andersen incorporates the entirety of Mate, US 7,467,504, B2, Dec. 23, 2008, by reference. Andersen ¶ 33. 3 Pipes, US 2011/0190107 A1, Aug. 4, 2011. 4 Claim 24 was not part of the original 18 claims. Appeal 2021-003753 Application 15/411,413 4 disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.). The rejection quotes the claim language and concludes the written description requirement has not been met. Final Act. 3. A weakness of the rejection is that it does not analyze or even cite to any portion of the Specification. Appellant argues the Specification conveys sufficient information to permit a person of ordinary skill to recognize Appellant possessed the subject matter of claim 24. Appeal Br. 3-4 (citing Spec. 1-2; Figs. 1-5). The Examiner characterizes Appellant’s argument as limiting the claimed process to sardine cans as the containers. Ans. 4. We agree with Appellant that the Examiner unfairly narrows Appellant’s argument. See Reply Br. 1. Appellant, and indeed the Specification, refer to sardine cans as an example and not as a limitation. See Appeal Br. 3-4; Spec. 1. For the reasons that follow, we agree with Appellant that the Specification conveys sufficient information to permit a person of ordinary skill to recognize Appellant possessed the subject matter of claim 24. As background, the Specification describes that containers are normally found on grocery shelves, stacked on a cardboard tray wrapped with a heat shrink film. Spec. 1. Customers take a container from the stack of containers through an opening in the film. Id. A known drawback of this technique was that containers tend to separate from the stack to rest loosely on the shelf. Id. To alleviate this drawback, the claimed invention provides a film wrapped pack of containers having perforated lines on the top of the Appeal 2021-003753 Application 15/411,413 5 film that create an opening allowing customers to remove a container while maintaining the integrity of the stack of containers. Id. In the detailed description, the Specification describes a process for creating a film wrapped pack of containers. Spec. 2; Figs. 1-4. A processing device collates and pushes together containers 6 to form a pack. Id. Conveyor 5 includes two star wheels for reorienting containers to aid in collation. Id. Once in a pack, several containers 6 are oriented the same and adjacent. Fig. 1 (pack on dead plate 7), Figs. 2, 3 (collated containers 13, pack on dead plate 7). The device pushes that pack into a film sleeve comprised of perforated upper film 8 and lower film 12. Id. The device then conveys the pack through heat tunnel 11. Id. The product is a sleeve film wrapped pack of containers. Id. We reproduce Figure 55 below. 5 Figures may be relied upon for descriptive support under § 112. In re Wolfensperger, 302 F.2d 950 (CCPA 1962) accord Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Appeal 2021-003753 Application 15/411,413 6 Figure 5 depicts sleeve film wrapped pack of containers 6 having a portion of perforated film 8 peeled from the pack creating an opening that exposes containers 6. Id. at 1-2; Fig. 5. In light of these disclosures, the Specification6 describes orienting and transporting containers on a conveyor so that the containers may be pushed together to form a pack. The Specification does not explicitly mention that the containers are oriented so that the top or bottom of a container can be pushed against the top or bottom of an adjacent container. However, Figures 1-3 and 5 depict containers 6 with like orientation and adjacent other containers 6. Although top and bottom are relational terms, a person of ordinary skill in the art would understand that containers 6 can be seen as oriented with the top of one container 6 pushed against the bottom of adjacent container 6. See Appeal Br. 3-4. Consequently, we do not sustain the rejection of claim 24. II. Claims 8-15, 24, Indefiniteness Subject Matter at Issue Independent claim 8 requires that the film wrapped sleeve pack of containers includes perforations in the film on the top of the pack that create an opening that permits removal of a container “while maintaining the integrity of the pack.” 6 Disregarding claim 24 because it is not an original claim. Appeal 2021-003753 Application 15/411,413 7 Rejection and Arguments The Examiner contends that claim 8 is indefinite for two reasons: one, there is no definition of what the claim phrase “maintain the integrity of the pack” would encompass, and two, there does not appear to be any means to accomplish the integrity goal. Final Act. 3-4; Ans. 6. Claims 9-15 and 24 are rejected based on their dependence from independent clam 8. In the interest of compact prosecution, the Examiner interpreted that the integrity of the pack is maintained as required by claim 8 provided that removal of a container does not “obliterate the existence of the remainder of the pack.” Final Act. 3-4. A claim undergoing prosecution is indefinite if the metes and bounds of the claimed subject matter are not clear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014); see also Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (relying on the standard of Packard). Therefore, the question before us is whether the metes and bounds of claim 8 are clear with regard to removing a container while maintaining the integrity of the pack. Analysis As explained below, we agree with Appellant that claim 8, read in light of the Specification, reasonably apprises a person of skill in the art of the scope of the claimed invention. See Appeal Br. 4; Reply Br. 2. We address the Examiner’s two reasons in turn. The Examiner’s first reason is that it is unclear what “maintaining the integrity of the pack” encompasses. A first weakness of this rejection, like the previous rejection, is that the rejection quotes the claim language and Appeal 2021-003753 Application 15/411,413 8 makes a conclusion, but that conclusion is not supported by analysis of, or even citation to, the Specification. Further, as detailed in the analysis of the previous rejection, the Specification describes as background that a known drawback of containers wrapped in heat shrink film and placed on grocery shelves is that when a customer takes a container from the stack, the remaining containers tend to separate from the stack and rest loosely on the shelf. Spec. 1. The claimed invention is intended to alleviate this drawback. Id. By this contrast, a person of ordinary skill would understand that the integrity of the pack (the remaining, non-selected containers) is maintained so long as none of those containers separate from the stack and rest loosely on the shelf. See Reply Br. 2 (contending that maintaining the integrity of the pack as claimed means keeping the remaining containers together). Regarding the Examiner’s second reason, namely that there is no means to accomplish the goal of maintaining the integrity of the pack, we disagree. Claim 8 indicates that perforations are formed in the film on the top of the pack so that the film can be peeled off to create an opening that permits removal of a container through that opening while maintaining the integrity of the pack. That is, the means for maintaining the integrity of the pack as claimed is the opening created by peeling the film on the top of the pack as enabled by the perforations. Therefore, contrary to the Examiner’s position, claim 8 includes a means for maintaining the integrity of the pack when removing a container. Appeal 2021-003753 Application 15/411,413 9 In light of this, the scope of claim 8 is reasonably clear, and we do not sustain the rejection of claims 8-15 and 24 as indefinite. III. Claim 15, Anticipation by Andersen Subject Matter at Issue Independent claim 15 is similar to independent claim 8 except that it omits the transporting and pushing steps. We reproduce claim 15 below. 15. A process for forming a film wrapped sleeve pack of containers comprising, forming perforations in the film for allowing a part of the film to be peeled from the top of the pack to create an opening for the removal of a container through the opening while maintaining the integrity of the pack, film wrapping a sleeve around the pack with the perforated film, sealing the film, and heat shrinking the film. Rejection and Arguments The Examiner determined that claim 15 is anticipated by Andersen. Final Act. 4-5. In relevant part, the Examiner found that Andersen discloses perforations (pathways 18 formed in step 206 of method 200) for allowing part of the film (tear strip 20) to be peeled from the top of the pack to create an opening for removal of a container (container 12) through that opening. Id. (citing Andersen, Figs. 1-12, 14, 15, 187); see also Andersen ¶¶ 31, 54. 7 It appears that hole 24 is mistakenly labeled as item “12” in Figures 1 and 6. See ¶ 35, Figs. 2, 9. Appeal 2021-003753 Application 15/411,413 10 The Examiner places additional emphasis on Figures 6 and 11. Final Act. 5; Ans. 8. We reproduce Figure 6 and Figure 11 of Andersen below. Figure 6 (above left) and Figure 11 (above right) of Andersen are perspective views of embodiments of package assembly 10 having perforations (pathways 18) that form a part of the film that can be peeled off (tear strip 20) to create an opening. Andersen ¶¶ 25, 33, 39, 43. Appellant makes several arguments that this rejection is in error. Appellant argues that the Examiner has not explained how Mates is relied on in the rejection. Appeal Br. 5. The Examiner explains that a prior version of this rejection relied on Mates; however, the salient point is that the version of the rejection that is the subject of this Appeal does not rely on Mates. See Ans. 7; see also Final Act. 4-5 (not relying on Mates). Appellant’s argument does not demonstrate a substantive error by the Examiner. Appellant argues that the opening created by Andersen’s tear strip 20 does not permit removal of a container. Appeal Br. 5. According to Appellant, it would be necessary to enlarge the opening by tearing in order to remove a container. Id. at 5-6. Specifically, with regard to Figures 6 and Appeal 2021-003753 Application 15/411,413 11 11, Appellant contends that almost all the film on the top of the can would need to be removed for the opening to permit removal of a can from the pack. Id. at 6. In the Reply Brief, Appellant changes position to acknowledge that Andersen discloses that tear strip 20 of embodiment 6 permits easy access to containers 12, and concedes that the opening “likely provides access to grip a container.” Reply Br. 3. Despite these concessions, Appellant goes on to assert that it is “questionable” whether a container can be removed from Andersen’s package assembly. Analysis Appellant’s position is contradicted by the reference. Andersen discloses that tear strip 20 has an hour glass configuration to provide “easy access” to containers 12. Andersen ¶ 39; Fig. 6. A person of ordinary skill in the art would understand that “easy access” includes both the ability to grab and to remove a container. Appellant’s interpretation that “easy access” (Andersen ¶ 39) provides the ability to grab but not to remove a container is not persuasive because it is not supported by evidence and is not a reasonable interpretation of the reference. See Ans. 8 (asserting that Appellant’s position is not supported by facts). Consequently, we sustain the rejection of claim 15 as anticipated by Andersen. Appeal 2021-003753 Application 15/411,413 12 4. Claims 8-14, 24 Obviousness over Andersen and Pipes8 Subject Matter at Issue Independent claim 8 includes a “transporting” and a “pushing” limitation. We reproduce these limitations below. transporting on a conveyor a predetermined number of containers oriented on the conveyor so that the containers can be pushed together to form a pack, pushing the containers together to form a pack, Rejection and Arguments Regarding the transporting limitation, the Examiner found that Andersen’s packaging apparatus 100 includes first conveyor 110 capable of transporting as required by claim 8. Final Act. 5-6 (citing Andersen ¶ 54; Figs. 1-2, 14, 15). Regarding the pushing limitation, the Examiner found that Pipes’s pushers 40 are capable of pushing containers together to form a pack as required by claim 8. Id. (citing Pipes ¶ 29; Fig. 3). Analysis For the reasons that follow, each of these interrelated findings is not adequately supported. Regarding the conveying limitation, Andersen’s process of making the package assembly 200 includes the step of providing containers 202. 8 The heading of this rejection lists claims 8-15, but this is inaccurate in that the body of the rejection does not address claim 15 and does address claim 24. Final Act. 5-10. Although Appellant lists the claims subject to this rejection as claims 8-15, Appellant actually addresses claims 8-14 and 24. Consequently, the claims subject to this rejection are claims 8-14 and 24. Appeal 2021-003753 Application 15/411,413 13 Andersen ¶ 54, Fig. 18. In some embodiments, packaging apparatus 100 can be added to an existing assembly line, “for example, where the containers were previously assembled onto a base pad 22 or the like.” Id. at ¶ 54; Fig. 15. Base pad 22 may be included in package assembly 10 as additional support for containers 12 during the packaging assembly and transport. Id. at ¶ 34. We reproduce Figure 15 below. Figure 15 is a perspective view of a packaging apparatus. Andersen ¶ 28. In Figure 15, first conveyor 110 is transporting six containers 12 grouped onto a base pad 22. Id. at ¶¶ 34, 47, 54. Claim 8 requires transporting on a conveyor a predetermined number of containers “oriented on the conveyor so that the containers can be pushed together to form a pack.” We agree with Appellant that the containers the Examiner refers to in Figure 15 of Andersen are already in a pack and Appeal 2021-003753 Application 15/411,413 14 therefore are not oriented so that they can be pushed together to form a pack. See Appeal Br. 10. In the Answer, the Examiner acknowledges the containers referred to in Figure 15 of Andersen are already pushed together to form a pack, but asserts the finding is correct because Andersen discloses that in some embodiments “containers were previously assembled onto a base pad 22 or the like.” Ans. 10-11. The disclosure that the containers were previously assembled does not adequately support the Examiner’s finding. The limitation at issue does not require assembling the containers, rather, it more specifically requires “transporting on a conveyor a predetermined number of containers oriented on the conveyor so that the containers can be pushed together to form a pack.” Claim 8. Regarding the pushing limitation, Pipes discloses that pushers 40 can advance and press against “group of packages 10.” Pipes ¶ 29, Fig. 3. We agree with Appellant that Pipes discloses pushing containers that are already formed in a group and does not disclose pushing containers to form a pack as required by claim 8. Consequently, we do not sustain the rejection of independent claim 8 or its dependent claims 9-14 and 24. CONCLUSION The Examiner’s rejection is affirmed in part. Appeal 2021-003753 Application 15/411,413 15 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24 112(a) Written Description 24 8-15, 24 112(b) Indefiniteness 8-15, 24 15 102 Andersen 15 8-14, 24 103 Andersen, Pipes 8-14, 24 Overall Outcome 15 8-14, 24 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