Giuseppe Capoia et al.

Patent Trials and Appeals BoardMar 30, 2020

13577408 - (D) (P.T.A.B. Mar. 30, 2020)

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. 13/577,408 08/06/2012 Giuseppe Capoia 10166.00101 6845 39232 7590 03/30/2020 Themis Law 7825 Fay Ave Ste 200 La Jolla, CA 92037 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): contact@themisipc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GIUSEPPE CAPOIA and CARLO CAPOIA Appeal 2019-000824 Application 13/577,408 Technology Center 3700 Before KEVIN F. TURNER, DANIEL S. SONG, and EDWARD A. BROWN, Administrative Patent Judges. SONG, 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 21–42, which constitute all the claims pending in this application. Claims 1–20 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Panotec SRL. Appeal Br. 1. Appeal 2019-000824 Application 13/577,408 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus and method for making boxes with reinforced corners. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. An apparatus for making boxes with reinforced corners, comprising: an input for receiving a sheet of material with predetermined fold lines defining panels, wherein junctions of the fold lines define corners of the panels, and wherein the corners of the panels define corners of a box; a loader for loading reinforcement elements, each reinforcement element having a length and a width defining rectangular top and bottom surfaces, and wherein each reinforcement element has a uniform thickness less than the length or the width; a gripper movable between a first gripping position in which the gripper picks up the reinforcement elements presented by the loader, and a second position, in which the gripper attaches the reinforcement elements to the sheet in a predetermined positioning pattern, wherein the predetermined positioning pattern includes the placement a plurality of physically separate reinforcement elements at each junction of two fold lines, with a portion of each reinforcement element being disposed immediately adjacent to or in contact with both of the two fold lines, such that when the sheet of material is folded into the box, portions of the reinforcement elements at each junction are disposed immediately adjacent to, overlapping with, or in contact with one another to form a reinforced inside corner. REFERENCES The prior art relied upon by the Examiner is: Appeal 2019-000824 Application 13/577,408 3 Name Reference Date Hensley et al. (“Hensley”) 6,354,984 B1 Mar. 12, 2002 Davlin et al. (“Davlin”) 7,882,954 B2 Feb. 8, 2011 Ghelfi EP 2,000,294 A2 Dec. 10, 2008 REJECTIONS2 1. Claims 21–27, 35, 36, and 38–41 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Ghelfi3 in view of Davlin. Final Act. 3. 2. Claims 28–34, 37, and 42 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Ghelfi in view of Davlin and Hensley. Final Act. 5. OPINION Rejection 1: Obviousness over Ghelfi and Davlin The Examiner rejects claims 21–27, 35, 36, and 38–41 as being unpatentable over Ghelfi in view of Davlin. Final Act. 3. The Examiner finds that Ghelfi discloses the claimed invention as substantially claimed, including angular elements 5 corresponding to the recited “plurality of reinforcement elements at each junction of two fold lines,” but finds that Ghelfi does not disclose “physically separate reinforcement elements” at each junction. Final Act. 3–4. The Examiner relies on Davlin for disclosing a “similar apparatus and method with the use of plurality of physically 2 The rejection of claims 21–42 under 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, has been withdrawn by the Examiner. Ans. 3. 3 In the Final Action and the Answer, the Examiner refers to this reference as “Giorgio,” which is the middle name of the name “Domenico Giorgio Ghelfi.” We refer to this reference as “Ghelfi.” Appeal 2019-000824 Application 13/577,408 4 separate reinforcement elements at each junction of two fold lines (Figs. 1 & 10; via 30).” Final Act. 4. Based on the above findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to have modified Ghelfi’s apparatus and method “by having a plurality of reinforcement elements to be physically separate reinforcement elements at each junction of two fold lines, as suggested by Davlin, in order to come up with enhanced and improved protection of an articles during shipment and storage (column 1, lines 60-67).” Final Act. 4. In that regard, the Examiner explains that “[s]ubstituting [Ghelfi]’s long reinforced member 5 by smaller members 30 of [Dalvin], would simplify[] the positioning of the reinforcement elements to be positioned easily at any area of the cardboard” as taught in Dalvin. Ans. 5, citing Dalvin, col. 1, ll. 63–65. According to the Examiner, such substitution using smaller parts allows for easier positioning around the corners. Ans. 6. Claims 21–36 Claim 21 is independent and claims 22–36 ultimately depend therefrom. The Appellant argues, inter alia, that “Davlin discloses that cushioning members 30 are ‘sealed gas-filled (e.g.[,] air-filled or nitrogen- filled) bags made of a pliable polymeric material,’” and thus, use of such gas-filled bags as angular elements [would] cause the box of Ghelfi to be “flimsy and unsuitable for protecting an object from damage.” Reply Br. 3, citing Davlin, col. 4, ll. 8–9. In addition, the Appellant also argues that “the Examiner has not explained why using cushioning members 30 would simplify positioning in comparison to angular elements 5 considering that Ghelfi discloses that angular elements 5 are disposed automatically by a Appeal 2019-000824 Application 13/577,408 5 gripping device 19,” the angular element being a single component. Reply Br. 4; see also Reply Br. 5–6. We agree with the Appellant for the reasons argued. As set forth above, the Examiner suggests substituting Davlin’s cushioning members 30, which are gas-filled pliable bags, for the rigid angular elements 5 of Ghelfi. Ghelfi discloses that the side walls of the box are attached to the angular elements 5, which are described as “serv[ing] the function of providing stability to the box” and being “made of a material which displays a certain strength to compression, with a force orthogonally applied to its thickness, which is higher than the resistance defined by the material by which the box body 1a is formed.” Ghelfi ¶¶ 6, 11–12. It is not evident why a person of ordinary skill in the art would have made the substitution in view of such disparate characteristics of the substituted elements. Although the Examiner states that Dalvin’s cushioning members 30 would “add some type of [re]enforcement to the cardboard and/or formed box,” it does not appear likely that Davlin’s gas-filled pliable bags can function as reinforcement members in the box of Ghelfi. Ans. 6. In addition, although the Examiner reasons that such substitution “would simplify[] the positioning of the reinforcement elements to be positioned easily at any area of the cardboard” (Ans. 5; see also Ans. 6), we agree with the Appellant that “the Examiner has not explained why using cushioning members 30 would simplify positioning in comparison to angular elements 5, considering that Ghelfi discloses that angular elements 5 are disposed automatically by a gripping device 19,” and considering that the angular element of Ghelfi is a single component instead of plurality of Appeal 2019-000824 Application 13/577,408 6 components, which would result if the suggested substitution is made. Reply Br. 4, citing Ghelfi ¶¶ 19–20; Figs. 9–10. In summary, we agree with the Appellant that “the Examiner has not explained why a person of skill in the art . . . would find it desirable to replace a rigid corner reinforcement with a gas-filled bag” (Reply Br. 6) and further agree that the rejection appears to be based on impermissible hindsight. Reply Br. 7. Because the Examiner has not set forth adequate reasoning with rational underpinnings sufficient to support the obviousness rejection set forth, we reverse this rejection of independent claim 21, and claims 22–36 that ultimately depend therefrom. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The remaining arguments regarding the size and positioning of the members 30 of Davlin, teaching away, change in the principle of operation, the resultant method of operation, and the limitations of claim 22, are all moot. Appeal Br. 7–8; Reply Br. 3–5. Claims 39–41 The Appellant relies on the same arguments discussed above relative to claim 21 in support of patentability of these claims, correctly noting that independent claim 39 from which claims 40 and 41 depend, recites substantially the same limitations as claim 21. Appeal Br. 8. Therefore, we reverse this rejection as to these claims as well. Rejection 2: Obviousness over Ghelfi, Davlin, and Hensley The Examiner rejects claims 28–34, 37, and 42 as unpatentable over Ghelfi in view of Davlin and Hensley. Final Act. 5. This rejection is premised on the combination of Ghelfi and Davlin discussed above relative to Rejection 1, and the Examiner’s reliance on Hensley for disclosing Appeal 2019-000824 Application 13/577,408 7 printed markers and optical sensors to identify position, does not remedy the deficiency of the reasoning also discussed above relative to Rejection 1. Final Act. 5. Therefore, we also reverse Rejection 2. The dispute between the Appellant and the Examiner regarding whether Hensley is analogous art is moot. Appeal Br. 8; Ans. 6–7. CONCLUSIONS The Examiner’s rejections are REVERSED. More specifically, 1. The rejection of claims 21–27, 35, 36, and 38–41 under 35 U.S.C. § 103(a) as unpatentable over Ghelfi in view of Davlin is reversed. 2. The rejection of claims 28–34, 37, and 42 under 35 U.S.C. § 103(a) as unpatentable over Ghelfi in view of Davlin and Hensley is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 21–27, 35, 36, 38–41 103(a) Ghelfi, Davlin 21–27, 35, 36, 38–41 28–34, 37, 42 103(a) Ghelfi, Davlin, Hensley 28–34, 37, 42 Overall Outcome 21–42 REVERSED