Ex Parte Young

Patent Trial and Appeal Board

Feb 27, 2019

14377115 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/377,115 08/06/2014 Richard Young
23413 7590 03/01/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
BM30038US 1099
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD YOUNG 1
Appeal2018-004833
Application 14/377,115
Technology Center 3700
Before DANIELS. SONG, JAMES P. CALVE, and WILLIAM A. CAPP,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1, 3-15, and 20. Appeal Br. 2. Claims 2 and 16-19
are withdrawn. Id. at 19, 21-23 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 British American Tobacco (Investments) Limited is identified as the real
party in interest (Appeal Br. 2) and also is the applicant pursuant to
37 C.F.R. § 1.46.
Appeal2018-004833
Application 14/3 77,115
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A pack for smoking articles, the pack comprising:
a plurality of panels of card and a plurality of pack edges, each
pack edge comprising a fold where adjacent panels meet,
wherein at least one of the pack edges comprises a plurality of
discrete incisions disposed along at least a portion of a length of the
pack edge and entirely through a thickness of the card,
the discrete incisions extending non-parallel with respect to a
direction of the at least one pack edge,
the incisions configured such that the at least one pack edge
comprises a plurality of projections along the at least one pack edge so
that said edge has an uneven texture along at least part of the length of
said edge,
the pack does not comprise any score lines extending
longitudinally along the at least one pack edge.
Appeal Br. 19 (Claims App.).
REJECTIONS
Claims 1, 3-15, and 20 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Claims 1, 3-15, and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 3-15, and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ringler (US 2,874,524, iss. Feb. 24, 1959) and Durney
(US 2006/0207212 Al, pub. Sept. 21, 2006).
Claims 1, 7, 8, 11, 12, and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ringler and Schaffer (US 3,843,113, iss. Oct. 22, 1974).
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Appeal2018-004833
Application 14/3 77,115
ANALYSIS
Claims 1, 3-15, and 20 For Lack of Written Description
The Examiner finds that the Specification lacks a written description
of "the pack does not comprise any score lines extending longitudinally
along the at least one pack edge ... wherein the card is weakened at the at
least one pack edge to define a crease axis for the fold exclusively by the
plurality of incisions" in claims 1 and 20. Final Act. 4. The Examiner finds
that the Specification describes making score lines along pack edges and
folding blanks 20, 21 along crease axes 24 to form pack 1. Ans. 9-11. The
Examiner also finds that the Specification describes curved incisions 22 as
regions of weakening that reduce the force required to fold each blank 20
along the intended crease axis 24, and this "may negate the requirement for
additional separate lines of weakening, such as creases or score lines, to be
formed extending longitudinally along each of the crease axes 24 in the
blank 20, 21." Ans. 9 (quoting Spec. 5:26-32) (emphasis added). The
Examiner reasons that this use of "may" does not positively recite or support
the negative claim limitation that "the pack does not comprise any score
lines extending longitudinally along the at least one pack edge." Id. at 9-10.
Appellant argues that elements 24 are intended crease axes and do not
refer to score lines or any structural weakening of the blank. Instead, they
merely indicate the line along which the blank is intended to be folded to
form the pack and are not the same as longitudinally extending score lines.
Appeal Br. 7; Reply Br. 5. Appellant argues that the Specification makes
clear that the use of incisions "may negate the requirement for additional
separate lines of weakening, such as creases or score lines." Reply Br. 5
(citing Spec. 5:26-33). We agree.
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Appeal2018-004833
Application 14/3 77,115
The Specification describes conventional smoking article packs as
requiring a crease to be formed along the intended fold axis prior to folding,
and the present invention seeks to provide a pack with an alternative edge
configuration. Spec. 1:9--13. The Specification summarizes the invention as
a pack edge( s) comprising a plurality of incisions extending through the
pack material so that "at least one pack edge may be defined exclusively by
the plurality of incisions." Id. at 1: 15-22. The Specification also discloses:
The pack material may be weakened at a fold, or at least one of
the folds, at the least one pack edge between the respective
adjacent panels, and the plurality of incisions may exclusively
comprise the weakening along the fold or at least one of the
plurality of folds.
Id. at 1:31-2:2; see also id. at 3:28-29 ("The weakening along the intended
crease axis may exclusively comprise the plurality of incisions.").
The Examiner is correct that the Specification discloses that score
lines or creases may be used along pack edges together with incisions to
facilitate bending and folding. However, the Specification also discloses
that the incisions may be used as the exclusive means to weaken fold lines,
i.e., without any score lines formed along the pack edges, as claimed. See
Spec. 1:2, 1:31-2:2, 3:28-29. Thus, we do not sustain this rejection.
Claims 1, 3-15, and 20 As Being Indefinite
The Examiner determines the same limitations in claims 1 and 20 to
be indefinite because the Specification requires score lines or creases along
crease axis 24. Final Act. 5. The Examiner relies on the same findings as in
the previous rejection. Id. at 5---6; see Ans. 9--11. Appellant cite disclosures
in the Specification that creases are formed exclusively by incisions to make
blank manufacture quicker, simpler, and more efficient. Appeal Br. 8-9.
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Appeal2018-004833
Application 14/3 77,115
The meaning of the disputed limitations would be clear to a person of
ordinary skill in the art when interpreted in light of the Specification, which
describes incisions as an exclusive way to weaken a fold line of a pack blank
without the need for additional, separate lines of weakening (i.e., score lines
or creases) to be formed along crease axes 24 in blanks 20, 21. Spec. 1 :22,
1 :31-2:2, 3:28-29, 5:30-6:3. Thus, we do not sustain this rejection.
Claims 1, 3-15, and 20
As Unpatentable Over Ringler and Durney
Appellant argues claims 1, 3-15, and 20 as a group. Appeal Br. 9-15.
We select claim 1 as representative, with claims 3-15 and 20 standing or
falling with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Ringler teaches a pack as recited in claim 1,
except the claimed incisions, and Durney teaches this feature. Final Act. 6.
The Examiner finds that Durney discloses incisions 243 alternating along
crease axis 245 without scores. Ans. 11-12. The Examiner determines that
it would have been obvious to modify Ringler to include slits or grooves
along the edge/fold/crease, as taught by Durney, to provide high strength,
fatigue resistance, precision folding, desired bending force, and enhanced
time and cost savings. Final Act. 6; Ans. 13.
Appellant argues that removing score lines from Ringler would render
Ringler unsatisfactory for its intended purpose because scored fold lines are
an essential element of Ringler. Appeal Br. 9-10. Appellant argues that
there is no support in the cited references to omit score lines from Ringler to
save production costs and thus the Examiner has engaged in impermissible
hindsight. Id. at 11-12. Appellant also argues that Durney is non-analogous
art to Ringler and the claimed invention. Id. at 12-14.
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Appeal2018-004833
Application 14/3 77,115
We understand "incision" in claim 1 to mean a cut that passes all the
way through a card blank, and "score" to mean a cut or groove that does not
pass through a blank. An ordinary meaning of "score" includes "a line (such
as a scratch or incision) made with or as if with a sharp instrument" or "to
mark with lines, grooves, scratches, or notches." See Definition of score by
Merriam-Webster at http://www.merriam-webster.com/dictionary/score
(viewed Feb. 14, 2019). This definition does not resolve whether a "score"
passes completely through an item. The claims provide no guidance. The
Specification discloses that score lines are one way to form a folding line in
a blank besides creases and incisions, which are formed through a blank.
Spec. 5:13-32. No other description is provided of score lines. We interpret
claim 1 as limited to embodiments in which incisions are formed completely
through a pack card along a pack edge and no scoring is formed therein.
We are not persuaded that Ringler would be rendered unsatisfactory
for its intended purpose if scoring was replaced with Durney' s incisions.
The Examiner proposes to substitute Durney's incisions for Ringler's score
lines along the edges, folds, and creases ofRingler's blank to provide high
strength, fatigue resistance, precision folding, enhanced time and cost
savings. Final Act. 6; Ans. 13. This modification of Ringler is supported by
a rational underpinning based on Durney's teachings of these benefits of
using incisions to create fold lines in sheet materials. Durney ,r,r 4, 6, 33, 34,
3 7, 44--46. Durney discloses that slits reduces the number of parts used to
make a strong, rigid, dimensionally-accurate structure and results in lower
cost and higher fabrication yields. Id. ,r,r 44--46. Slits are an improvement
over grooves (scoring) that do not penetrate through a sheet blank, and slits
are used to facilitate bending of paperboard sheets. See id. ,r,r 8-11, 22.
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Appeal2018-004833
Application 14/3 77,115
Like Durney, Ringler seeks to folds blanks into a structure that is
sturdy, resistant to deformation, and inexpensive to make. Ringler, 1 :44--59.
Durney's use of incisions to provide more precise folding and stable, higher
strength structures at lower cost satisfies Ringler's needs. Durney ,r,r 4, 6,
33, 34, 37, 44--46; Ringler, 1 :54--59; see KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,417 (2007) (using a known technique to improve similar devices
in the same way is obvious unless application is beyond the skill in the art).
Durney further teaches that "[b ]ending of paperboard sheets also has
been facilitated by slitting." Id. ,r 22. Incisions allow sheet material to be
folded with precision without using complex machinery and using only hand
tools and reduced force. Id. ,r,r 36, 159. As a result, using incisions along
fold lines allows low-force sheet bending equipment, such as corrugated
cardboard bending machines, to be used for folding. Id. ,r 159; Ans. 14--15.
Durney' s teachings that incisions facilitate the folding of metal sheets
does not negate Durney's other teachings that incisions facilitate folding of
paper sheet blanks like those in Ringler. Durney ,r 22. Durney also teaches
that slitting allows metal sheets to be folded like paper blanks on low force
bending corrugated cardboard bending machines. See Durney ,r 159. These
teachings and the other teachings discussed above provide adequate reason
to replace Ringler's score lines with incisions to improve folding precision
and strength, and reduce bending force, cost, and manufacturing time as
Durney teaches. Id. ,r,r 4, 6, 33, 34, 37, 44--46; see also In re Cree, Inc., 818
F.3d 694, 702 n.3 (Fed. Cir. 2016) (holding that the appellant's hindsight
argument repackaged the argument that there was no motivation to combine
references and this argument was addressed by showing that a proper
motivation to combine the references in fact existed).
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Appeal2018-004833
Application 14/3 77,115
We also agree with the Examiner that the teachings of Durney are
reasonably pertinent to the problems addressed by Appellant, i.e., facilitating
folding of paper blanks into packages. Spec. 1:9--2:8, 5:26-30; Ans. 14
(Durney is pertinent to fold lines irrespective of the materials used). Durney
teaches that slitting improves the precision of bending sheet material,
including paper sheets, along fold lines into stable, durable structures with
less bending force and lower manufacturing time and cost, as discussed
above. See Durney ,r,r 4, 6, 22, 33, 34, 37, 44--46, 159; Ans. 14--15. Thus,
we sustain the rejection of claims 1, 3-15, and 20 as unpatentable over
Ringler and Durney.
Claims 1, 7, 8, 11, 12, and 20
As Unpatentable Over Ringler and Schaffer
The Examiner relies on Ringler to teach all of the features recited in
claim 1, except for incisions, which the Examiner relies on Schaffer to teach.
Final Act. 9. The Examiner determines it would have been obvious to use
incisions in Ringler as suggested by Schaffer to prevent wrinkles and gussets
duct. Id.
Appellant argues that the Examiner's stated motivation does not apply
to Ringler because Ringler does not include multiple intersecting fold lines
that result in gusseting/wrinkling, as in Schaffer. Appeal Br. 16. Appellant
argues that, as a result, there would be no benefit to modifying Ringler to
include Schaffer's slits. Id. at 15; Reply Br. 10. Appellant also argues that
including Schaffer' s slits 22 on Ringler would not result in a pack having an
edge comprising "a plurality of projections along the at least one pack edge
so that said edge has an uneven texture along at least part of the length of
said edge" as recited in claim 1. Appeal Br. 15; Reply Br. 10.
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Appeal2018-004833
Application 14/3 77,115
The Examiner's reason for modifying Ringler with the teachings of
Schaffer "to prevent extremely undesirable wrinkles or gussets in the folded
product" is not supported by rational underpinning. See Final Act. 9 ( citing
Schaffer, 1 :4--2:34). Schaffer uses slits 22 to prevent gusseting and wrinkles
along intersecting fold lines 46, 24 of a multi-page signature product, i.e., a
product formed by folding multiple sheets together. Schaffer, 1: 10-16. The
slits allow movement to occur between sheets and entrapped air to escape.
Id. at 4:63---67. The Examiner has not explained why a skilled artisan would
have used Schaffer's slits to prevent gusseting in Ringler when Ringler folds
only a single blank. Final Act. 9; Appeal Br. 16; Ans. 17. Nor has the
Examiner explained how adding Schaffer's slits to Ringler would produce
edges with plural projections and an uneven texture when Schaffer's slitted
signature product has a continuous, smooth edge. Schaffer, 4:36-50, Figs.
5-8; see Appeal Br. 16; Reply Br. 10. Thus, we do not sustain the rejection
of claims 1, 7, 8, 11, 12, and 20 as unpatentable over Ringler and Schaffer.
DECISION
We reverse the rejections of claims 1, 3-15, and 20 for lack of written
description and indefiniteness.
We affirm the rejection of claims 1, 3-15, and 20 as unpatentable over
Ringler and Durney.
We reverse the rejection of claims 1, 7, 8, 11, 12, and 20 as
unpatentable over Ringler and Schaffer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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