Graphic Packaging International, LLC

Patent Trials and Appeals Board

Jan 31, 2022

2021000614 (P.T.A.B. Jan. 31, 2022)

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. 16/401,745 05/02/2019 Harmen Boersma R029 17860US.C1 4424 26158 7590 01/31/2022 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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 HARMEN BOERSMA, RENE KNIJPSTRA, and JOUKE HILARIDES Appeal 2021-000614 Application 16/401,745 Technology Center 3700 Before BRANDON J. WARNER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, 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 1-30.2 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 Graphic Packaging International, LLC as the real party in interest. Appeal Br. 1. 2 Claims 31-35 are withdrawn. Appeal 2021-000614 Application 16/401,745 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to cartons, such as cartons for holding beverage containers, having an insert. See Spec. ¶ 3. Claims 1 and 20 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A carton for holding an article, the carton comprising: a plurality of panels that extends at least partially around an interior of the carton, the plurality of panels comprising a first panel, a second panel, and a third panel disposed opposite to the first panel; and an insert comprising a central panel, an inner side panel foldably connected to the central panel, and an inner flap foldably connected to the inner side panel, the central panel, the inner side panel, and the inner flap extending at least partially around an interior of the insert for receiving an article through an open end of the carton, wherein the first panel at least partially overlaps the central panel, the inner side panel is spaced apart from the second panel, the inner flap is in face-to-face contact with the third panel, and at least a portion of the inner flap extends from the inner side panel to the second panel. Appeal Br. 48 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date McDonough US 2,620,116 Dec. 2, 1952 Smith US 5,335,846 Aug. 9, 1994 REJECTION Claims 1-30 are rejected under 35 U.S.C. § 103 as unpatentable over Smith and McDonough. Appeal 2021-000614 Application 16/401,745 3 OPINION Claim 1 recites a carton comprising first, second, and third panels disposed around an interior of the carton. Appeal Br. 48 (Claims App.). Claim 1 further recites an “insert” that includes a central panel, an inner side panel foldably connected to the central panel, and an inner flap foldably connected to the inner side panel. Id. Claim 1 specifies that the inner flap is in face-to-face contact with the third panel and at least a portion of the inner flap extends from the inner side panel to the second panel. Id. The Examiner finds that Smith discloses many of the elements recited in claim 1, including an inner flap (i) in face-to-face contact with a third panel and (ii) foldably connected to an inner side panel.3 Final Act. 2-4. Appellant argues that the Examiner’s findings regarding limitations (i) and (ii) above are in error. Appeal Br. 40-41. Specifically, Appellant contends that legs 148 of Smith, which the Examiner finds correspond to the recited inner flap (Final Act. 3), make only edge-contact with the top of the carton. Appeal Br. 40-41. Appellant contends that contact only along an edge does not qualify as the recited “face-to-face” contact in light of Appellant’s Specification. Id. Appellant also argues that legs 148 of Smith are not “foldably connected” to sidewall 144 (the panel from which they originate). Id. at 41. Rather, Appellant contends legs 148 simply extend from side wall 144 without any interruption. Id. 3 The Examiner finds Smith does not disclose that at least a portion of the inner flap extends from the inner side panel to a second side panel. Final Act. 2. The Examiner relies on a modification based on the teachings of McDonough to remedy this deficiency. Id. (citing McDonough, Fig. 4). Appeal 2021-000614 Application 16/401,745 4 In response, the Examiner states, “the folded tab portion that extends vertically, such as in fig 2 of Smith, includes five different faces, such as the horizontal top edge, one vertical side edge, another vertical side edge, the inside surface of which is also an edge, and the outside surface of which is also an edge.” Ans. 4. The Examiner further states, “[t]he uppermost face of the inner flap contacts the third panel and therefore discloses that the inner flap is in face-to-face contact with the third panel.” Id. at 4-5. Regarding the requirement in claim 1 that the inner flap be foldably connected, the Examiner states, “Applicant’s limitation to ‘foldably connected’ is interpreted as flap that is capable of being folded and connected to the inner side panel.” Ans. 5-6. According to the Examiner, Smith’s panels are made of cardboard, and, therefore, are capable of being folding, thus meeting this requirement in claim 1. Id. at 6. In reply, Appellant reiterates that the Examiner’s findings regarding limitations (i) and (ii) are in error and are based upon an unreasonably broad claim interpretation. Reply Br. 3-5. Appellant’s Specification uses the term “face-to-face contact” only to indicate that the major (largest) section of a panel is in contact with another such surface. See Spec. ¶ 30 (“As shown in Fig. 4, the insert 12 can be inserted into the sleeve 150 so that the end flaps 127, 131 are in face-to-face contact with the front panel 21 and the central panel 107 is in face-to-face contact with the back panel 15”), Fig. 4. Further, to accept the Examiner’s interpretation that even edge-contact qualifies as “face-to-face” contact would essentially nullify the term “face-to-face” in claim 1 because a panel has only faces and edges, i.e., under the Examiner’s interpretation, any contact between panels would appear to amount to face-to-face contact. Accordingly, we agree with Appellant that the Examiner erred in finding Appeal 2021-000614 Application 16/401,745 5 that edge-contact such as is disclosed for Smith’s legs 148 and the top of the carton satisfies the requirement in claim 1 for “face-to-face contact” between the recited inner flap and third panel. We also agree with Appellant that the Examiner’s interpretation of “foldably connected” is, in light of the Specification, unreasonably broad. As used in the Specification, this term requires some form of dedicated structure (such as a fold line) to define where folding occurs. See Spec. ¶¶ 24-26. As shown in Figure 2 of Smith, legs 148 (unlabeled in this Figure) do not include any such structure, and the fact that they may be made from cardboard does not remedy this deficiency. In other words, somewhat similar to the unreasonably broad interpretation discussed above, the Examiner’s interpretation here essentially reads out any meaningful weight to the claim term “foldably,” as seemingly any cardboard flap and panel connection, regardless of structure, could be “folded” under the Examiner’s interpretation. For the above-noted reasons, we do not sustain the Examiner’s rejection of independent claim 1 and associated dependent claims 2-19. Independent claim 20 recites substantially similar limitations to those discussed above, and, accordingly, we likewise do not sustain the Examiner’s rejection of this claim and associated dependent claims 21-30. Appeal Br. 50-51 (Claims App.). CONCLUSION The Examiner’s decision to reject claims 1-30 is reversed. Appeal 2021-000614 Application 16/401,745 6 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1-30 103 Smith, McDonough 1-30 REVERSED