Graphic Packaging International, Inc.

Patent Trials and Appeals BoardAug 4, 2020

2020000729 (P.T.A.B. Aug. 4, 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. 14/173,102 02/05/2014 Joseph C. Walsh R029 1970.2US.D1 4103 26158 7590 08/04/2020 WOMBLE BOND DICKINSON (US) 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 08/04/2020 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): BostonDocket@wbd-us.com IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH C. WALSH and ROBERT L. CONATSER Appeal 2020-000729 Application 14/173,102 Technology Center 3600 Before JOHN C. KERINS, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. HILL, 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 33–46 and 48–52. Non-Final Act. 1. 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. Appellant identifies the real party in interest as Graphic Packaging International, LLC. Appeal Br. 1. Appeal 2020-000729 Application 14/173,102 2 BACKGROUND Claims 33 and 49 are independent. Claim 33, reproduced below, illustrates the claimed invention, with certain limitations italicized: 33. A carton comprising: an outer layer comprising a first panel foldably connected to a second panel along a first score line, a third panel foldably connected to the second panel along a second score line, a plurality of top flap panels, and a plurality of bottom flap panels, at least the first panel, the second panel, and the third panel extending at least partially around an interior of the carton; an inner layer of material disposed in the interior of the carton; the inner layer of material being adhered to at least a portion of each of the first panel, the second panel, and the third panel and to at least two adhered portions of each of the first score line and the second score line; the inner layer of material being unadhered to a first area of the outer layer and a second area of the outer layer, the first area of the outer layer comprising a first non-adhered portion of the first score line and portions of the first panel and the second panel extending along the first non-adhered portion, and the second area of the outer layer comprising a second non-adhered portion of the second score line and portions of the second panel and the third panel extending along the second non- adhered portion, wherein the first area of the outer layer has a first edge extending on the second panel, the second area of the outer layer has a second edge extending on the second panel, the first area of the outer layer and the first edge are spaced apart from the second score line, and the second area of the outer layer and the second edge are spaced apart from each of the first score line, the first area, and the first edge; the inner layer of material is adhered to at least a portion of the second panel extending from the first edge of the first area of the outer layer adjacent the first score Appeal 2020-000729 Application 14/173,102 3 line to the second edge of the second area of the outer layer adjacent the second score line. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Zinn US 2,558,918 July 3, 1951 Nerenberg US 4,197,963 April 15, 1980 Walsh US 5,794,812 August 18, 1998 REJECTIONS I. Claims 33–46 and 48–52 stand rejected under 35 U.S.C. § 103 as unpatentable over Zinn and Walsh. Non-Final Act. 2. II. Claims 33–46 and 48–52 stand rejected under 35 U.S.C. § 103 as unpatentable over Nerenberg and Zinn. Non-Final Act. 4. OPINION Zinn and Walsh The Examiner finds that Zinn discloses the claim limitations, including the inner layer 11 being adhered to portions of panels 18, 19, 20 of the outer layer, and being unadhered to portions of the outer layer around crease lines 14, 15 and their surrounding score lines 72. Non-Final Act. 2–3. The Examiner finds that Zinn does not disclose the inner layer adhered at two locations at the crease lines 14, 15 and their surrounding score lines 72. Id. at 3. The Examiner finds, however, that Walsh discloses “alternative continuous glue patterns (figs. 26–29) between layers of carton blank materials including providing adhered 368 and non-adhered portions 370 (figs. 28–29) which do not correspond with” score lines 12, 320, 322 of outer layer panels. Id. at 4. The Examiner concludes that it would have been obvious “to provide adhered portions as claimed at each of the first and Appeal 2020-000729 Application 14/173,102 4 second score lines as taught by Walsh in the invention to Zinn to provide secure layering at and adjacent to the top and bottom panels.” Id. The Examiner further contends that: Adhering and not adhering layers along score lines is commonplace in the art as shown at length in the cited prior art. Claims directed towards specific relative adhered and unadhered areas are not considered novel for the purpose of preventing undesired relative movement of layers when folded along score lines, as one of ordinary skill in the art would be concerned with proper folding of a layered carton blank. Furthermore, one of ordinary skill in the art would be aware that increasing a relative adhered surface area to a non-adhered surface area between layers would ordinarily provide an expected result of restricting movements between layers and added structural reinforcement. Non-Final Act. 6; see Ans. 11–12. Appellant argues, first, that the Examiner’s rejection contains error in its conclusion of obviousness, because Zinn teaches away from adhering inner and outer layers at the score lines. Appeal Br. 16, 17 (citing Zinn 3:71 – 4:11 (“the regions adjacent to each center score line 71 between the adjacent score lines 72–72 are left free of adhesive in order that no rupturing of the liner or of the adhesive between the liner and the blank 10 will occur when said blank is bent along the crease lines 14, 15 and 16.”)). According to Appellant, Zinn’s disclosure that adhesive should not be applied at score lines to prevent rupturing during bending teaches away from adhering at select portions of the score line. Id. at 17. Appellant explains that to prevent rupture, Zinn’s “liner 11 is not adhered to the blank 10 anywhere along the crease lines 71 of the liner 11 or the crease lines 14, 15, 16 of the blank 10.” Id. at 18 (citing Zinn 2:1–3, 3:71–4:8). Appeal 2020-000729 Application 14/173,102 5 The Federal Circuit has held that “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)); Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008); In re Haruna, 249 F.3d 1327 (Fed. Cir. 2001). We agree with Appellant that Zinn teaches away from adhering inner and outer layers at the score lines in its statement that the regions adjacent to each center score line 71 between the adjacent score lines 72–72 are left free of adhesive in order that no rupturing of the liner or of the adhesive between the liner and the blank 10 will occur when said blank is bent along the crease lines 14, 15 and 16. The portions of the liner 11 between the panels 77, 78, 79 and 80 therefore provide hinge portions to permit proper bending of said liner. Zinn 4:2–11. One skilled in the art, reading Zinn in its entirety, and specifically the above-quoted language, would be discouraged from applying adhesive over any portion of blank score lines. A skilled artisan would understand Zinn to be teaching that adhesive extending across score lines will lead to rupture and improper bending at the score lines. Zinn’s statements regarding the importance of keeping adhesive out of the score lines informs us that a skilled artisan would not be motivated to add any adhesive from Walsh across Zinn’s score lines. For this reason, Zinn teaches away from the Examiner’s proposed modification, and the Examiner’s reason for modifying Zinn with Walsh therefore lacks a rational basis. Regarding the Examiner’s contention that “[a]dhering and not adhering layers along score lines is commonplace in the art,” and a skilled Appeal 2020-000729 Application 14/173,102 6 artisan “would be concerned with proper folding of a layered carton blank” and “would be aware that increasing a relative adhered surface area to a non- adhered surface area between layers would ordinarily provide an expected result of restricting movements between layers and added structural reinforcement” (Non-Final Act. 6), Appellant argues that these contentions are conclusory and are not supported by any evidence. Appeal Br. 22; Reply br. 6–7. Although a skilled artisan may understand that more adhesion would be expected to restrict relative layer movement, and could make an informed decision on adhesive application, this contention does not negate Zinn’s teaching away from adhesion across score lines. Nerenberg and Zinn The Examiner finds that Nerenberg discloses the claim limitations, including the inner layer 17 being adhered to at least a portion 14 of panels 2, 3 of the outer layer, “and to at least two adhered portions of each of the first score line and the second score line as stripes of adhesive 14 (col. 3, lines 9+; fig. 1).” Non-Final Act. 4. The Examiner finds that Nerenberg also discloses “the inner layer of material being unadhered along the length of respective score lines between adhered areas 14.” Id. The Examiner then finds that Nerenberg’s adhesive pattern 14 does not “provide adhered portions as claimed [i.e.,] from an edge of the first area adjacent the first score line to an edge of the second area adjacent the second area.” Id. The Examiner finds, however, that Zinn secures “panel portions 18–20 of outer layer 10 and inner liner 11 . . . by providing an area between lines 72 on either side . . . of each crease line without adhesive to prevent undesired material deformation due to folding along crease lines.” Id. at 4–5 (citing Zinn Figs. 1–4; 3:65+). The Examiner concludes that it would have been Appeal 2020-000729 Application 14/173,102 7 obvious “to provide adhesive along the majority of the panels as taught by Zinn in the invention to Nerenberg . . . to secure the liner to the outer layer in sections where desired to restrict relative movement of layers and provide additional structural support.” Id. at 5. Appellant argues that Nerenberg only discloses “spots or stripes” of adhesive at Xs 14 applied to inner walls of its outer layer, rather than on any of Nerenberg’s score/bend lines. Appeal Br. 20. Appellant argues that Zinn does not cure the deficiencies of Nerenberg, because Zinn teaches away from putting adhesive on score lines. Id. Thus, Appellant argues, the combination of Nerenberg and Zinn does not disclose an inner layer adhered to an outer layer across at least two adhered portions of first and second score lines, while remaining unadhered to an outer layer at the remaining areas of first and second score lines. Id. at 21. The Examiner contends that Nerenberg discloses connecting the Xs 14, including the Xs 14 “on either side of a score line to form stripes of adhesive over score lines.” Non-Final Act. 7. Appellant disagrees, arguing that “‘[c]onnecting the dots’ is not explicitly discussed in Nerenberg,” and “Nerenberg simply refers to the Xs . . . 14 as spots or stripes.” Appeal Br. 25. The Examiner responds that Appellant is “speculating” that the elements 14 in Nerenberg could be “limited to unconnected individual stripes at each marking X in figure 1,” and such speculation is not “commensurate with the scope and scale of the invention described by Nerenberg.” Ans. 10. The Examiner notes that Nerenberg recites an adhesive stripe 15 applied to its glue flap 5 that “is clearly depicted in Figure 1 as X markings arranged vertically.” Id. Thus, the Examiner argues, Appeal 2020-000729 Application 14/173,102 8 Nerenberg recites a stripe 15 as a singular stripe that is then represented “in the exact manner as adhesive 14 in the same figure.” Id. The Examiner appears to consider this description of a “stripe” represented by Xs 15 to establish that Nerenberg contemplates adhesive stripes connecting all of the Xs 14 in a given horizontal row, which would then lie across the score lines between panels 1 through 4. The Examiner contends that “the application of glue as singular stripes at locations 14 [is] an appropriate, reasonable interpretation of the teachings of Nerenberg in that one of ordinary skill would recognize that connecting the dots marked X at 14 would produce a stripe including over score lines between panels 1–4.” Id. According to the Examiner, even if we do not agree that Nerenberg discloses adhesive stripes spanning horizontally across rows of Xs 14, such that they cross score lines, “connecting adjacent glue areas/dots at 14 in . . . Nerenberg to provide a stripe of glue in an affected area . . . is considered well within the skill level of one of ordinary skill in the art.” Id. at 10, 11. Appellant replies that that Nerenberg simply “is not clear with respect to whether the Xs shown in the figures represent unconnected spots or stripes of adhesive” or if instead, “the Xs are meant to be connected to form stripes.” Reply Br. 6. According to Appellant, even if Nerenberg’s Xs 14 are meant to be connected, “it is not clear from the disclosure of Nerenberg which Xs would be connected (e.g., whether Xs would be connected horizontally or vertically).” Id. In addition, we note that it is unclear whether Nerenberg would expect all vertically or horizontally aligned Xs 14 to form a single stripe, or if the stripe would instead span a subset of Xs 14, such as two adjacent Xs, in which case the stripes may not cross Nerenberg’s score lines. Further, as explained above, Zinn teaches away Appeal 2020-000729 Application 14/173,102 9 from adhering a liner to score lines, which would lead a skilled artisan away from connecting the Xs of Nerenberg across a score line. Id. Appellant has the better argument regarding the disclosure of Nerenberg. There is insufficient disclosure in Nerenberg that the term “stripe” is intended to convey connection of all horizontally aligned Xs 14 such that adhesive runs across score lines. Further, the Examiner provided no evidence or persuasive argument that such connection would be understood by a skilled artisan. Indeed, it seems to us that the Examiner is speculating regarding where Nerenberg’s “stripes” would lie. Patentability determinations “should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006). We decline to consider such speculation as evidence adequate to establish prima facie obviousness. For this reason, we do not sustain the Rejection based on Nerenberg and Zinn. Appeal 2020-000729 Application 14/173,102 10 CONCLUSION The Examiner’s rejections are not sustained as to claims 33–46 and 48–52. More specifically: DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 33–46, 48–52 103 Zinn and Walsh 33–46, 48–52 33–46, 48–52 103 Nerenberg and Zinn 33–46, 48–52 Overall Outcome 33–46, 48–52 REVERSED