Ex Parte Love

Patent Trial and Appeal Board

Nov 28, 2016

13659769 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/659,769 10/24/2012
97462 7590 11/28/2016
Mark A, Litman & Associates, P,A,
7001 Cahill Road, Ste. ISA
Edina, MN 55439
FIRST NAMED INVENTOR
DAVID MICHAEL LOVE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
051.00lUSl 1958
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
MAILDATE DELIVERY MODE
11/28/2016 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 DAVID MICHAEL LOVE
Appeal2014-006767
Application 13/659,769
Technology Center 3600
Before MICHELLE R. OSINSKI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
David Michael Love (Appellant) 1 appeals under 35 U.S.C. § 134 from
the Examiner's Final decision rejecting claims 13-19, which are all of the
pending claims. 2 An oral hearing was held on November 14, 2016. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is Intraloque, LLC.
Appeal Br. 3.
2 Claims 1-12 are cancelled. Appeal Br. 5.
Appeal2014-006767
Application 13/659,769
THE CLAIMED SUBJECT MATTER
Claims 13 and 19 are independent. Claim 13, reproduced below, is
illustrative of the claimed subject matter on appeal.
13. A shipping pallet, comprising:
two or more runners,
an upper deck secured to and supported by the two or more
runners~ the upper deck comprising two or more pre-stressed
structural rnernbers, each of the pre-stressed structura1 members
compnsmg;
a core consisting essentially of a recyclable
ce11ulose-based material. the core defining at least a first , ~
core surfacei a second core surface, a core lower surface,
a core upper surface, a core first end, and a core second
end, and the core comprising a plurality of laminated
fiberboard sheets, the fiberboard sheets having at least one
1inerboard and at least one fluted medium with the
fiberboard sheets disposed such that linerboards lie in a
substantially parallel orientation \vith each fiberboard
sheet secured in paraHel to the flutes in the fluted medium
defining flute axes, at least some of the flute axes being
the core upper surface,
a wrapper distinct from the core, consisting
essentially of a sing1e sheet of ce11ulose-based paper
having a flexibility to wrap around the core, the wrapper
wrapped around the core over each of the first core
surface, the second core surface, the core lower surface,
and the core upper surfa.ce,
an adhesive positioned between the wrapper and at
least one of the core lower surface and the core upper
surface, the adhesive substantially positioned between at
least the core first end and the core second end, the
adhesive in contact with the wrapper to secure the wrapper
in tension to the core between at least the core first end and
the core second endi and
the tension in the wrapper comprising a longitudinal
tension, the 1ongitudina1 tension is oriented afong the
2
Appeal2014-006767
Application 13/659,769
longitudinal direction of the pre-stressed structural
member whereby the longitudinal tension in the
wrapper transmits forces to the core by the adhesive to
induce compressive stress in the core in the longitudinal
direction and the tension in the wrapper in combination
with the compressive stress in the core pre-stresses the pre-
stressed structural member. and. wherebv the use of a
' ; J
cellulose-based material for the core and a ce11ulose-based
paper for the vvTapper permits the pre-stressed structural
member to be recycled as a cellulose-based material
EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Wold
Macfarland
Ong
us 5,435,954
us 5,584,951
us 5,797,832
THE REJECTION3
July 25, 1995
Dec. 17, 1996
Aug.25, 1998
Claims 13-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Macfarland, Wold, and Ong. Final Act. 5-13.
OPINION
The Examiner finds that MacFarland teaches many of the limitations
of independent claim 13, including "a wrapper (surround 64) distinct from
the core, consisting essentially of a single sheet of cellulose based paper
3 The rejections of claims 13-19 under (i) 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement (Final Act. 2--4) and (ii) 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or the applicant, regards as the invention (id. at
4--5), have been withdrawn and are not before us on appeal. Ans. 2.
3
Appeal2014-006767
Application 13/659,769
having a flexibility to wrap around the core" and "an adhesive (adhesive 88)
positioned between the wrapper and at least one of the core lower surface
and the core upper surface, the adhesive substantially positioned between at
least the core first end and the core second end." Final Act. 5-6 (citing
Macfarland, 6:35--45). The Examiner acknowledges that:
Macfarland fails to teach that the structural members are
pre-stressed ... [with] the wrapper in tension, and the tension in
the wrapper comprising a longitudinal tension, the longitudinal
tension is oriented . . . in the core upper surface along the
longitudinal direction of the pre-stressed structural member,
whereby the longitudinal tension in the wrapper transmits forces
to the core by the adhesive to induce compressive stress in the
core in the longitudinal direction and the tension in the wrapper
in combination with the compressive stresses in the core pre-
stresses the pre-stressed structural member.
Id. at 7.
The Examiner turns to Wold for teaching a pre-stressed pallet. Id. at
7-8. The Examiner finds that Wold's pallet is "slightly crowned in the
longitudinal direction when unloaded" and "put[ s] an upper layer of a pallet
in tension and a bottom layer of a pallet in compression." Id. The Examiner
states that the pre-stressed pallet allows "for better transferring of stress on
the tension side, avoiding localized stress, and increasing load capacity" and
"reduce[s] pallet deflection when the pallet is loaded." Id. (citing Wold, Fig.
2, 21:57-23:55). The Examiner concludes that:
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to pre-stress
MacFarland's structural members with the motivation of forming
a crown in the structural members, thereby preventing permanent
deformation when the pallet is loaded by reducing deflection
when the pallet is loaded; with the motivation of better
transferring of stress on the tension side; with the motivation of
4
Appeal2014-006767
Application 13/659,769
avoiding localized stress; and with the motivation of increasing
load capacity.
Final Act. 8.
Wold's pre-stressed pallet is created by specific molding and cooling
processes applied to a composite, in which "[a]s the composite cools, it
contracts, which ... sets the plastic memory to the fixed shape and size
desired" and "[t]his contraction feature enhances product performances in
that, as plastic cools, it is drawn up in and around the wood fibers, which
serves to pretension them." Wold, 12:33-39. The Examiner turns to Ong
for "teach[ing] a way to secure MacFarland's wrapper around MacFarland's
core in tension so as to achieve the crowning taught by Wold." Final Act. 8.
The Examiner finds that Ong teaches "creating structural members of
a pallet using cellulose-based materials wound in tension and secured with
an adhesive." Id. (citing Ong, 1:27---64). The Examiner concludes that "one
would use Ong's ways and means to secure MacFarland's wrapper in
tension along the longitudinal direction of the lower and upper core surfaces
using MacFarland's adhesive 88" and that "[b ]y securing the wrapper in this
manner, the core would be compressed by the tension in the wrapper." Id.
Appellants argue that the Examiner has not adequately established
that Ong's methodology would be sufficient to cause tension in a wrapped
article. Appeal Br. 18-19. More particularly, Appellants argue that
"[a ]pplication of tension against wrapping material to [help] the wrapping
material conform to a surface (e.g., without wrinkles) is not evidence of
applying sufficient force to cause tension within the wrapped article." Id.
Appellants argue that Ong only teaches "using tension during the winding
process so that the wound layers are tightly wound by the winding reel." Id.
at 18 (citing Ong, 4:43--4 7); see also id. at 21 ("[A ]lthough the Office has
5
Appeal2014-006767
Application 13/659,769
identified that [Ong's] Strip S was in tension during winding, the Office has
not identified any evidence by way of teaching or suggestion that Ong's
Strip S is secured to itself in tension."); see also Reply Br. 8 ("If there were
in Ong any ' ... longitudinal tension in the wrapper [that] transmits forces to
the core by the adhesive to induce compressive stress in the core ... [,]'
sides surrounding open spaces such as (by way of non-limiting examples[]
P15, P16, Pl I, P12, etc.) would collapse or at least change shape to relieve
any potential tension as the mandrel were removed.").
Even assuming arguendo that Ong's methodology may be capable of
forming MacFarland's pallet in a crowned configuration, the Examiner has
not articulated reasoning with a rational underpinning to explain why one of
ordinary skill in the art would have been led to use Ong's methodology
specifically to form MacFarland's pallet in a crowned configuration. As
explained by Appellants, Ong is concerned with creating a structurally sound
pallet out of tensioned corrugated paper, but provides no indication that it
may be desirable to wrap the tensioned corrugated paper around a separate
core so as to impart tension to the core. Appeal Br. 22 ("Ong teaches a
method for forming a core, not wrapping a core."); id. at 23 ("The evidence
of Ong of a single continuous sheet rolled over itself to form a laminated
core, is not evidence for providing a single sheet of cellulose-based paper
wrapped over a plurality of laminated fiberboard sheets. These are two
different objectives, two different purposes, and Ong does not provide
evidence of a single distinct sheet being used to provide compressive pre-
stress forces to a laminated panel.").
Obviousness requires something more than the mere capability of
combination. In particular, obviousness requires a reason why one of
6
Appeal2014-006767
Application 13/659,769
ordinary skill in the art would have combined known elements in the fashion
claimed. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007). The
Examiner has failed to explain, absent hindsight (see Reply Br. 13-14, 16,
1 7), why one of ordinary skill in the art would be led to pre-stress
Macfarland's pallet structural member specifically by securing the wrapper
in tension to the core (thereby inducing compressive stress in the core).
In the Answer, the Examiner alternatively suggests that Macfarland
itself "provides a ... reason to secure surround 64 in tension - providing a
smooth bottom surface by making edges 118 and 120 essentially meet."
Ans. 5. The Examiner maintains that"[ w ]hile not stated expressly in the
reference, a person of ordinary skill would have immediately recognized that
when adhering the surround 64 to surface 110 the surround 64 would be held
under tension to avoid wrinkles." Id. at 4. The Examiner concludes that
"common sense and Macfarland's desire to have a smooth surround 64
makes it obvious to apply Macfarland's surround 64 in tension about [its]
core. By pulling on surround 64 to make edges 118 and 120 meet, the
claimed tensions normal to the core upper, lower, first, and second surfaces
are created." Id. at 9.
Appellants argue that "[t]o avoid overlapping edges, Macfarland
expressly teaches selecting the width of the surround 'before wrapping' such
that the edges meet after they are wrapped around a 'precisely dimensioned'
laminated composite." Reply Br. 15 (citing Macfarland, 6:66-7:5).
Appellants maintain, therefore, that "Macfarland provides no evidence,
method or motivation for the tensioning of a wrapper" and that "the only
rationale for the Office's proposed motivation for tensioning and associated
inferences of tensioning and prestressing ... is the impermissible use of
7
Appeal2014-006767
Application 13/659,769
hindsight." Id. We agree with Appellants that the Examiner's rationale
based on MacFarland itself leading one of ordinary skill in the art to tension
a wrapper around MacFarland's core lacks rational evidentiary
underpinnings, considering that MacFarland relies on folding of a precisely
dimensioned wrapper to achieve its non-overlapping edge. Again, absent
hindsight (see Reply Br. 15), the Examiner has failed to explain why one of
ordinary skill in the art would have been led to pre-stress MacFarland's
pallet structural member specifically by securing the wrapper in tension to
the core (thereby inducing compressive stress in the core).
For the foregoing reasons, we do not sustain the rejection of
independent claim 13, and its dependent claims 14--19, as unpatentable over
MacFarland, Wold, and Ong.
DECISION
The Examiner's decision to reject claims 13-19 is reversed.
REVERSED
8