Ex Parte Zoeckler

Patent Trial and Appeal Board

Jun 13, 2017

13627207 (P.T.A.B. Jun. 13, 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.
13/627,207 09/26/2012 Michael D. Zoeckler R029 1057.4US.C1 5148
26158 7590 06/15/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL D. ZOECKLER
Appeal 2015-005412
Application 13/627,207
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael D. Zoeckler (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—16, 34, and 35.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as Graphic Packaging
International, Inc. Appeal Br. 1.
2 Claims 17—33, which are the only other pending claims, have been
withdrawn from consideration. Advisory Act. 2 (dated Feb. 3, 2015)
Appeal 2015-005412
Application 13/627,207
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of making a paperboard blank with selectively
reinforced panels; the blank being foldable into a carton having
an inside and an outside, said method comprising the steps of:
advancing a web along a path; the web consisting
essentially of a single layer of noncorrugated paperboard and
having a web width; the web being separable into blanks,
the blanks including panels connected along fold lines; each of
the panels having a panel width less than the web width; the
panels including a first panel connected along a first fold line to
a second panel, the first fold line being transverse of the web;
progressively applying and adhering a ribbon of
reinforcing material to the advancing web; the ribbon having a
ribbon width that is less than the panel width; the ribbon
being positioned to overlie and adhere to substantially all of the
first panel and the second panel, thereby forming a reinforced
region; the ribbon consisting essentially of a single layer
of noncorrugated paperboard;
the ribbon being positioned on the side of the web that
corresponds to the inside of the carton that is foldable from the
blank; and
cutting the web and ribbon to form the blank.
REJECTIONS
I. Claims 1, 3—7, 12, 15, and 34 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Ford (US 4,177,936, iss. Dec. 11, 1979).
II. Claims 1, 3—7, 12, 15, and 34 stand rejected, in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over Ford.
III. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ford.
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IV. Claims 8—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ford and Smith (US 1,762,703, iss. June 10,
1930).
V. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ford and Chavannes (US 4,232,074, iss. Nov. 4, 1980).
VI. Claims 2 and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ford, Appellant’s Admitted Prior Art, and
Seufert (US 4,733,916, iss. Mar. 29, 1988).
DISCUSSION
Anticipation
The first issue raised in this appeal is whether the Examiner erred in
finding that Ford “discloses using [material] other than corrugated material”
in making the paperboard blank. Final Act. 2; Ans. 3^4; Appeal Br. 5—7.
We agree with Appellant that the passage of Ford relied on by the Examiner
discloses only corrugated materials. See Ford, col. 3,11. 32-40.
Specifically, Ford discloses that, in addition to corrugated paperboard, other
corrugated materials, such as corrugated fiberboard or corrugated cardboard,
may be used. Id. Thus, we do not sustain the rejection of claims 1, 3—7, 12,
15, and 34 under 35 U.S.C. § 102(b) as anticipated by Ford.
Obviousness
The appeal of the obviousness rejections turns on whether it would
have been obvious to use noncorrugated paperboard, instead of corrugated
paperboard, in Ford’s method. Final Act. 3; Ans. 4—5; Appeal Br. 9—14;
Reply Br. 4—6.
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Application 13/627,207
The Examiner finds that “[njoncorrugated paperboard is well known
in the art” and determines it would have been obvious to modify Ford’s
method “to use essentially a single layer of noncorrugated paperboard.”
Final Act. 3. The Examiner also finds that Ford’s process steps “would not
be materially inhibited by the selection of [a noncorrugated paperboard].”
Id. at 10; Ans. 5. According to the Examiner, one of ordinary skill could
easily select a noncorrugated paperboard for the blanks “to achieve an
expected result[,] i[.]e.[,] reinforced carton blanks with known material
properties to be useful in packaging,” and “may easily recognize that blanks
of a lesser thickness might be preferred for decreasing transportation costs of
the finished blanks to packaging facilities, i[.]e.[,] higher quantities per
volume capacity.” Ans. 5.
Appellant submits that the Declaration of James C. Fogle (Ex. A,
hereinafter “Fogle Declaration” or “Fogle Deck”) “provides] reasons as to
why such modification would not have been obvious,” thereby “shifting the
burden back to the Examiner to provide evidence to support a prima facie
case of obviousness.” Appeal Br. 9; Reply Br. 4. In particular, Appellant
urges that paragraphs 8—11 of the Fogle Declaration show that it would not
have been obvious to substitute noncorrugated paperboard for corrugated
paperboard in Ford’s cartons “because the resulting cartons would not be
expected to work satisfactorily for their intended function.” Appeal Br. 11.
Paragraph 8 of the Fogle Declaration states that a carton designer
takes into account several factors, including cost, special features for the
particular application, and the size, nature and weight of the product to be
contained; the designer then selects the parameters for the carton, “including
the strength, weight, rigidity, cost, water resistance, etc. of the material from
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Application 13/627,207
which the carton is to be made.” Paragraph 9 of the Fogle Declaration
explains that the carton depicted in Figure 2 of Ford is made up of tandem
layers pairing corrugated material with a liner on one face, with the top and
bottom made up of two single-face corrugated layers 14 and 15 with a liner
16 on fluting 15b of layer 15, and with carton walls 13 including an
additional third single-face corrugated layer 17 between liner 16 and fluting
15b. See also Ford, Fig. 4. Paragraph 10 of the Fogle Declaration states that
an experienced carton designer “would know that noncorrugated paperboard
is not as strong or as rigid as corrugated board, and therefore would not
expect” a carton made according to Ford’s method using noncorrugated
paperboard instead of corrugated paperboard to “provide the equivalent
resistance to compressive force and protection from lateral shocks and jars
that [Ford’s] carton was designed to provide.” See Ford, col. 2,11. 40-46
(listing, as objects of Ford’s invention, better resistance to “compressive
force to avoid bulging when packaged heavy articles are stacked one upon
the other” and better protection of “the packaged goods from lateral shocks
and jars during handling”). Paragraph 11 of the Fogle Declaration states
that, based on his “extensive experience in the field of carton design,”
Declarant does “not consider that one can take a carton specifically designed
to be made out of [corrugated paperboard, such as those described in Ford],
make such carton out of noncorrugated paperboard, and expect such carton
to work satisfactorily for its intended function.”
In light of the Fogle Declaration, Appellant contends that “substitution
of noncorrugated paperboard for Ford’s corrugated paperboard would not
produce the ‘predictable result’ referred to in [KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007)], and such non-predictability precludes the Examiner’s
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Application 13/627,207
conclusion that such modification of Ford would have been obvious.”
Appeal Br. 12 (italics omitted). Appellant reminds us that “the question
under § 103 is not whether one of ordinary skill ‘could easily select’
noncorrugated paperboard for the Ford cartons, but whether it would have
been obvious” to do so. Id. at 13 (italics omitted). Appellant also contends
that “[t]he Examiner’s suggestion that thinner blanks might be preferred to
decrease transportation costs ignores the fact that making Ford’s blanks of
thinner (noncorrugated?) material would be expected to be contrary to
Ford’s objects.” Id. (italics omitted) (citing Fogle Deck, para. 10).
For the reasons that follow, after considering all of the evidence
before us, including the Fogle Declaration and the teachings of Ford, as well
as the positions of the Examiner and Appellant, we conclude that the
evidence of obviousness outweighs the evidence of nonobviousness and,
thus, the Examiner did not err in concluding that it would have been obvious
to modify Ford’s method by using noncorrugated paperboard.
Ford’s invention is directed to a method of making a container
“characterized by a main body which is strengthened as compared to at least
the container top or bottom by additional material layers.” Ford, col. 1,
11. 8—14. Ford provides these additional material layers to the main body to
achieve the objects of providing a “container of variable layer construction
which better resists compressive force to avoid bulging when packaged
heavy articles are stacked one upon the other” and providing a “container
which is characterized by a strengthened main body to better protect the
packaged goods from lateral shocks and jars during handling.” Id., col. 2,
11. 39-46.
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Ford discloses using corrugated packaging materials, such as
corrugated paperboard, fiberboard, or cardboard, to make the carton. Id.,
col. 3,11. 32^40; col. 4,1. 34—col. 5,1. 45. Ford does not specifically
disclose using noncorrugated materials, but also does not expressly
discourage or criticize use of noncorrugated materials. Prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
The Fogle Declaration states that “[depending on the particular
application, the cartons may be made of various different materials,
including corrugated and noncorrugated paperboard.” Fogle Decl., para. 3.
This statement provides evidentiary support for the Examiner’s finding that
“[pjackaging bulk materials in noncorrugated packaging material is
notorious in the art.” Ans. 6.
The Fogle Declaration states that carton designers select parameters,
such as strength, weight, rigidity, and cost of the carton, taking into account
the particular use for which the carton is intended, including the nature and
weight of the product the carton is to contain. Fogle Decl., para. 8. The
Fogle Declaration also states that an experienced carton designer would
know that noncorrugated paperboard is not as strong or rigid as corrugated
paperboard. Fogle Deck, para. 10. This suggests that persons skilled in the
art would have understood, and been able to predict, the effects on strength
and rigidity that would result from replacing corrugated paperboard in
Ford’s method with noncorrugated paperboard.
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Fogle’s statement regarding the strength and rigidity of noncorrugated
paperboard relative to corrugated paperboard strikes us as an overly broad
generalization, as many other parameters (i.e., weight, density, sheet
thickness, paperboard constituents, and processing) seemingly would have
predictable effects on the strength and rigidity of any particular paperboard.
Nevertheless, even accepting the general proposition that noncorrugated
paperboard is less strong and rigid than corrugated paperboard, this would
not necessarily discourage a person having ordinary skill in the art from
using noncorrugated paperboard in cartons, depending on the particular
application in which such cartons are to be used, including contemplated
stack height during transportation and storage, and characteristics, such as
weight, of products to be contained. See Fogle Deck, para. 3 (averring that it
was known to make cartons of various different materials, including
corrugated and noncorrugated paperboard, depending on the particular
application).
Regardless of the relative strength and rigidity of noncorrugated
paperboard versus corrugated paperboard, Ford’s method would achieve the
stated objects (improved resistance against compressive forces to avoid
bulging when articles are stacked, and improved protection of packaged
goods from lateral shocks and jars during handling) by providing additional
material layers between or onto the base material layers as reinforcement
layers in the main body of the container, even if those base layers and
reinforcement layers are noncorrugated layers. In other words, Ford’s
method would yield these improvements over containers having a main body
without such reinforcement layers. Moreover, Appellant’s Specification
substantiates that noncorrugated paperboard can be used to add strength and
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rigidity to carton blanks. See Spec., para. 10 (describing use in the prior art
of noncorrugated paperboard as an alternative to micro-flute, to add strength
and rigidity to carton blanks). Thus, while perhaps not suitable for use in all
applications, for the heaviest of product, subject to the most aggressive
handling conditions, a person having ordinary skill in the art would have had
a reasonable expectation of success in making carton blanks according to
Ford’s method using noncorrugated paperboard layers for some applications,
taking into account the factors mentioned in paragraph 8 of the Fogle
Declaration, as well as contemplated stack heights and transportation means
and conditions.
Moreover, the selection of any of the various different known carton
materials, including corrugated and noncorrugated paperboard, depending on
the particular application, as described in paragraph 3 of the Fogle
Declaration, amounts to an obvious design consideration within the skill of
the art. See In re Leshin, 277 F.2d 197, 199 (CCPA 1960). Appellant’s
attempt to distinguish the selection between noncorrugated paperboard and
corrugated paperboard from selection of materials, as addressed in Leshin, is
unavailing. See Appeal Br. 13. Notably, the Fogle Declaration characterizes
corrugated and noncorrugated paperboard as “materials.” Fogle Deck,
para. 3. We consider the principle set forth in Leshin—that the selection of a
known material based upon its suitability for the intended use is a design
consideration within the skill of the art—to be applicable in this case,
whether directly or by close analogy.
The fact that noncorrugated paperboard might yield carton blanks that
are not as strong or rigid as blanks made from corrugated paperboard does
not mean that use of noncorrugated paperboard would not have been
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obvious. A prior art reference is said to teach away from an applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, “a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.” Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Again,
depending upon the particular application for the carton to be made from the
blank, the strength and rigidity afforded by noncorrugated paperboard might
be adequate, and other advantages of noncorrugated paperboard might
outweigh the disadvantages thereof.
For the above reasons, Appellant fails to apprise us of error in the
Examiner’s conclusion that the subject matter of claims 1—16, 34, and 35
would have been obvious. Accordingly, we sustain the rejections of these
claims under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision rejecting claims 1, 3—7, 12, 15, and 34 under
35 U.S.C. § 102(b) is REVERSED.
The Examiner’s decision rejecting claims 1—16, 34, and 35 under
35 U.S.C. § 103(a) is AFFIRMED.
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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
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