Ex Parte Blanchette et al

Patent Trial and Appeal Board

Aug 31, 2017

13677792 (P.T.A.B. Aug. 31, 2017)

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.
13/677,792 11/15/2012 Francois Blanchette 077410.1265 2783
28763 7590 09/05/2017
RAKFR ROTTST T P
EXAMINER
30 ROCKEFELLER PLAZA ACKUN, JACOB K
44th Floor
NEW YORK, NY 10112-4498 ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
DLN YDocket @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOIS BLANCHETTE,
FRANCOIS ST-LOUIS, and GERMAIN ARCHAMBAULT
Appeal 2015-007967
Application 13/677,792
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frangois Blanchette et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 2—15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies Pactive Canada Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-007967
Application 13/677,792
THE CLAIMED SUBJECT MATTER
Claim 14, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
14. A package configuration for stacking a plurality of
containers, the package configuration having a plurality of
panels, each panel comprising:
a main surface;
a peripheral wall foldably joined to the main surface and
defining a perimeter and comers of the panel;
a plurality of comer members each disposed proximate
one of the comers and extending substantially perpendicular to
the main surface, each comer member formed from a removable
portion of the panel; and
at least one side support member spaced along the
perimeter from at least one of the plurality of comer members,
the at least one side support member foldably joined to the main
surface.
REJECTIONS
I. Claims 5—7 and 13 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 2—15 stand rejected under 35 U.S.C. § 102(b) or (e) as
anticipated by Jensen (US 6,488,200 Bl, issued Dec. 3, 2002) or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Jensen
in view of Keel (US 2007/0017843 Al, published Jan. 25, 2007).2
2 Although not included in the statement of the rejection, the obviousness
rationale of the Examiner’s alternative rejection appears to rely on the
teachings of Keel. Final Act. 4, 5.
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DISCUSSION
Rejection I—Indefiniteness
The basis of the Examiner’s rejection is that dependent claims 5—7
and 13 “recite further structural limitations on the plurality of containers
when these containers do not appear to be claimed.” Final Act. 2.
According to the Examiner, this calls into question whether claims 5—7 and
13 are drawn to the sub-combination of the package configuration only, or to
the combination of the package configuration and the containers. Id. (noting
the intended use language “for stacking a plurality of containers” in the
preamble of claim 14, from which claims 5—7 and 13 depend). The
Examiner adds that it is “incumbent upon [Appellants] to state whether the
containers are claimed in claims 5—7 and 13 or whether the containers are
not claimed therein, and to point out why the claims should be interpreted
one way or the other.” Ans. 4.
Appellants submit, “[a]s evident from the language of independent
claim 14, from which claims 5-7 and 13 depend (directly or indirectly), the
‘plurality of containers’ recited in claims 5-7 and 13 are not claimed.”
Reply Br. 2. According to Appellants, each of claims 5—7 and 13 “recites
further features of the plurality of containers for which the package
configuration is configured for stacking,” and, “[t]hus, when properly read in
view of independent claims 14 from which each of these claims depends,
claims 5-7 and 13 are clear and definite.” Id.
Claims, when read in light of the specification, must “reasonably
apprise those skilled in the art both of the utilization and scope of the
invention” using language “as precise as the subject matter permits.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In determining whether a
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claim is definite under 35 U.S.C. § 112, second paragraph, “[t]he [United
States Patent and Trademark Office], in examining an application, is obliged
to test the claims for reasonable precision according to [this principle].” Id.
With respect to claims 5, 6, and 13, we agree with Appellants that it is
clear that the plurality of containers are not positively recited — namely,
these claims are drawn to the package configuration only. The additional
limitations recited in dependent claims 5, 6, and 13 merely further define the
intended use of the claimed package configuration. “It is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). As such, the additional recitations in claims 5, 6, and 13 do not
further limit the scope of independent claim 14. In other words, claims 5, 6,
13, and 14 cover the same subject matter. Nevertheless, the additional
recitations of claims 5, 6, and 13 do not render the scope of these claims
unclear.3
We also agree with Appellants that the further recitations of claim 7,
directed to the stacks of containers, do not render the scope of claim 7
unclear. However, Appellants’ stated position as to the scope of claim 7 is
incorrect. Claim 7 recites that “the stacks are positioned such that a hinge of
each container of the stack is normal to a plane of the main surface of the
panel.” Appeal Br. 22 (Claims App.) (emphasis added). In order to satisfy
these limitations of the claim, the stacks must be present and positively
positioned with the hinge of each container being normal to the plane of the
3 The reference to “the base portion” in claim 13 lacks clear antecedent
basis. Although “the base portion” language is contained within the
intended use recitation of the claim, and thus, does not appear to affect the
scope of claim 13, this is an informality deserving of correction.
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main surface of the panel of the package configuration. In other words,
claim 7 is directed to the combination of the package configuration and the
plurality (i.e., at least two stacks) of containers, and not merely to the
package configuration.
For the above reasons, the Examiner has not established that claims 5—
7 and 13 are indefinite. Accordingly, we do not sustain the rejection of these
claims under 35 U.S.C. § 112, second paragraph.
Rejection II—Anticipation/Obviousness
Claims 2—7 and 10—15
Claim 14 requires, in pertinent part, “a peripheral wall foldably joined
to the main surface [of the panel] and defining a perimeter and comers of the
panel” and “a plurality of comer members each disposed proximate one of
the comers and extending substantially perpendicular to the main surface,
each comer member formed from a removable portion of the panel.” Appeal
Br. 23 (Claims App.).
The Examiner reads the claimed “comer members” on Jensen’s
sleeves 165. Final Act. 4. According to the Examiner, each of Jensen’s
sleeves 165 “is formed from a removable portion of the panel as required in
claim 14” because each sleeve 165 “is at least inherently capable of being
removed from the panel (such as by cutting the paperboard [sleeve 165]
off).” Id.
Appellants contend that Jensen’s sleeves 165 are not “‘a plurality of
comer members each disposed proximate one of the comers and extending
substantially perpendicular to the main surface, each comer member formed
from a removable portion of the panel’ as recited in claim 14” because
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sleeves 165 “are formed integrally with tray walls 155.” Appeal Br. 11.
This argument does not apprise us of error because claim 14 does not require
that the comer members be non-integral with the walls. As illustrated in
Figures 6a and 6b of Jensen, the edge of each tray-wall 155 opposite sleeve
165 and the edge formed by the fold line 170 between the adjacent sleeve
165 and the adjacent tray-wall 155 define comers of the panel. When folded
as shown in Figure 6b and disposed between the double walls of tray-wall
155, each of Jensen’s sleeves 165 is disposed proximate one of these
comers.
Appellants submit that Jensen’s “sleeves 165 are folded to meet
adjacent tray walls 155 to form the perimeter and comers of the tray 115”
and are an “integral component of the perimeter tray walls 155 of Jensen,
which define the perimeter and comers of the tray 115.” Reply Br. 3 (citing
Jensen 6:26—50; Figs. 6, 6a, 6b). Appellants contend that Jensen’s “sleeves
165 cannot both define the comers of tray 115 and be disposed proximate
the comers of tray 115.” Id. Consequently, Appellants argue that Jensen’s
“sleeves 165 cannot disclose or suggest ‘a plurality of comer members each
disposed proximate one of the corners’ as recited in independent claim 14.”
Id. at 3^4. Once again, this argument is not persuasive. As noted above, the
corners of Jensen’s panel are defined by an edge of one tray-wall 155 and
the fold line 170 forming the edge of an adjacent tray-wall 155 (between
tray-wall 155 and sleeve 165). While each sleeve 165 is integrally formed
with one of the tray-walls and helps secure adjacent tray-walls together,
claim 14 does not restrict the claimed comer members from either being
integrally formed with one of the walls or facilitating securement of the
walls to one another.
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Appellants also take issue with the Examiner’s finding that Jensen’s
sleeves 165 are formed from a removable portion of the panel as called for
in claim 14 because “they are not and cannot be removed without cutting or
destroying sleeves 165,” such that they “are no longer capable of being
folded to join the tray wall 155 to which the sleeve 165 is integrally formed
with an adjacent tray wall 155 to form the perimeter and comers of the tray
115, as shown and described by Jensen.” Reply Br. 5. Appellants contend
that constming the term “removable” as encompassing a connection that is
detachable only by destmctive means would effectively render the term
superfluous and, thus, would be improper. Appeal Br. 12. Appellants also
assert that “[t]he Examiner does not address how sleeves 165 can be both
integrally formed with tray wall 155 and ‘formed from a removable portion’
thereof.’” Reply Br. 5.
When claim terminology is constmed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
In constming the phrase “formed from a removable portion of the
panel,” the Examiner looks to Appellants’ Specification and finds that the
Specification teaches that rectangles 42 (the portions of Appellants’ panel
that form the comer members) may be defined either by pre-perforated lines
or by “visual indications guiding an operator in cutting these shapes out of
the panel.” Ans. 7—8; see Spec. 122. According to Appellants’
Specification, rectangles 42 may be removed by being “tom off from the
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panel” (in the case of the pre-perforated lines) or by being cut out of the
panel (in the case of the visual indications). Spec. 122. As described in
Appellants’ Specification, “comer members 32 are made of the same
material as the panels 30, as they may be cut out from these panels 30.” Id.
119. Prior to being tom or cut from the panel, Appellants’ comer members,
like Jensen’s sleeves 165, are integrally formed with the panel.
When read in light of Appellants’ Specification, the Examiner’s
constmction of “formed from a removable portion of the panel” in claim 14
as encompassing a portion of material integrally formed with the panel and
capable of being cut off from the panel is reasonable. Further, as Jensen’s
sleeves 165 are capable of being cut off from tray-walls 155 of Jensen’s
panel (crate-tray 115), the Examiner correctly finds that sleeves 165 satisfy
this limitation. We appreciate Appellants’ point that, if cut off from tray-
walls 155, sleeves 165 would no longer be capable of functioning to secure
adjacent tray-walls 155 to one another as disclosed by Jensen. See Jensen
6:55—59, Figs. 6, 6a, 6b. However, claim 14 does not require that the comer
members be removed from the panel, only that they be formed from a
removable portion of the panel—that is, a portion of the panel that is capable
of being removed from the panel. Thus, Appellants’ argument is not
persuasive.
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For the above reasons, Appellants do not apprise us of error in the
Examiner’s finding that Jensen anticipates the subject matter of claim 14.
Accordingly, we sustain the rejection of claim 14 as anticipated by Jensen.4
With respect to claims 2—7, 10-13, and 15, Appellants merely
reiterate further limitations of these claims, and baldly assert that these
features are “not disclosed or suggested by the cited art as claimed.” Appeal
Br. 18—20. These conclusory statements do not constitute separate
arguments for patentability of the dependent claims pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv). See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)( 1 )(vii) (the predecessor to § 41.37(c)(l)(iv)) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). Appellants have waived any argument for separate
patentability of these dependent claims. See id. Accordingly, we also
sustain the rejection of claim 2—7, 10—13, and 15 as anticipated by Jensen.5
4 Having determined that the rejection is sustainable on the basis of
anticipation by Jensen, we need not consider the Examiner’s alternative
basis (obviousness) for the rejection. It is well settled that “anticipation is
the epitome of obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed.
Cir. 2002) (quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548
(Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
5 Having determined that the rejection is sustainable on the basis of
anticipation by Jensen, we need not consider the Examiner’s alternative
basis (obviousness) for the rejection. See footnote 4.
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Claim 8
Claim 8 depends from claim 14, and further recites that “the comer
members each extend from the panel to a corresponding comer of an
adjacent panel of the package configuration.” Appeal Br. 22 (Claims App.).
The Examiner’s rejection does not address this limitation. See Final Act. 4—
5.
Appellants argue that Jensen’s “sleeves 165 are folded to join tray
walls about the perimeter of a single tray,” and, “[a]s such, Jensen does not
disclose that sleeves 165 ‘extend from the panel to a corresponding comer of
an adjacent panel of the package configuration’ as recited in claim 8.”
Appeal Br. 13. The Examiner does not respond to this argument in the
Answer. See Ans. 4—12.
As illustrated in Figures 6a and 6b of Jensen, when sleeves 165 are
folded to join adjacent tray-walls 155, such that each sleeve 165 is disposed
proximate one of the comers defined by a fold line 170 and an edge of the
adjacent tray-wall 155, each sleeve is disposed between double walls of a
tray-wall 155 so as to be enclosed. Thus, while each sleeve 165 may extend
toward a corresponding comer of an adjacent panel in a package
configuration, as depicted in Figures 3 and 3a of Jensen, we do not discern,
and the Examiner does not explain, how these sleeves extend to a
corresponding comer of an adjacent panel, as required in claim 8. Further,
the Examiner does not explain why it might have been obvious to modify
Jensen’s stmcture to satisfy the limitation of claim 8. Accordingly, we do
not sustain the rejection of claim 8 as anticipated by Jensen or as obvious
over Jensen in view of Keel.
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Claim 9
Claim 9 depends from claim 14, and further recites that “the comer
members are formed from pre-perforated cutouts from the main surface of
the panel.” Appeal Br. 22 (Claims App.). The Examiner finds that it is
conventional to die cut portions of a blank to be used as part of the stmcture
formed by the blank and that “the use of perforations to form cut-out
portions is also notorious in the relevant art.” Final Act. 5 (citing Keel | 82).
The Examiner also determines that it would “have been obvious to provide
the apparatus of Jensen with all of the elements of the claims as a matter of
obvious choice of design, in order to provide a stronger apparatus (for
example, for stacking purposes) or in order to provide a more economical
apparatus.” Id. The Examiner adds that, merely by way of example, it
would “have been obvious to provide various comer members known in the
art,” such as elements 114, 118, and 120 illustrated in Figure 1 of Keel. Id.
Even assuming the features of Jensen’s crate 115 were formed by die­
cutting pre-perforated cutouts in a larger blank, it is not apparent, nor does
the Examiner cogently explain, either how Jensen’s sleeves 165 could be
formed from pre-perforated cutouts from the main surface (i.e., tray-deck
150) of the panel (crate 115) or why it would have been obvious to modify
Jensen to do so. Moreover, the Examiner’s vague statement about providing
various comer members known in the art, such as those illustrated in Keel, is
insufficient to explain how Jensen would be modified to satisfy the
aforementioned limitation of claim 9. Thus, Appellants’ argument that the
rejection of claim 9 should be reversed is persuasive. See Appeal Br. 14.
Accordingly, we do not sustain the rejection of claim 9 as anticipated by
Jensen or as obvious over Jensen in view of Keel.
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DECISION
The Examiner’s decision rejecting claims 5—7 and 13 under 35 U.S.C.
§ 112, second paragraph, is REVERSED.
The Examiner’s decision rejecting claims 2—15 under 35 U.S.C.
§ 102(b) or (e) as anticipated by Jensen or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Jensen in view of Keel, is AFFIRMED
as to claims 2—7 and 10-15 and REVERSED as to claims 8 and 9.
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)(l)(iv).
AFFIRMED-IN-PART
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