INTERNATIONAL PAPER COMPANY

Patent Trials and Appeals BoardDec 21, 2021

2021003583 (P.T.A.B. Dec. 21, 2021)

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. 16/155,935 10/10/2018 James William Sloan II IPK-121157-US 5989 1726 7590 12/21/2021 INTERNATIONAL PAPER COMPANY 6400 Poplar Avenue, Tower IV - 9th Floor Legal Department: Intellectual Property Memphis, TN 38197 EXAMINER SCHMIDT, PHILLIP D ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 12/21/2021 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): cynthia.bowling@ipaper.com patents@ipaper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES WILLIAM SLOAN Appeal 2021-003583 Application 16/155,935 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and MICHELLE R. OSINSKI, Administrative Patent Judges. GREENHUT, 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 1–19. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as International Paper Company. Appeal Br. 3. Appeal 2021-003583 Application 16/155,935 2 CLAIMED SUBJECT MATTER The claims are directed to a leak resistant feature for a bliss box. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A leak resistant bliss-type container comprising: a first blank defining a bottom wall, opposed first side walls hingedly connected to longitudinal edges of the bottom wall and extending upwardly from the bottom wall, a vertical side flange hingedly connected to each of a pair of opposing lateral edges of the first side walls, and opposing bottom flanges hingedly connected to lateral edges of the bottom wall and extending upwardly in overlapping relation to the vertical side flanges; second and third identical end blanks, each end blank defining at least an end wall secured in overlapping relation to the vertical side flanges; and a corner piece defined by a web of material, each corner piece extending between a longitudinal edge of one of the vertical side flanges and a longitudinal edge of the bottom flange to define a leak resistant corner. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Wood US 4,832,257 May 23, 1989 Cameron US 9,061,791 B2 June 23, 2015 Hamblin US 2007/0080200 A1 Apr. 12, 2007 Dean US 2015/0041481 A1 Feb. 12, 2015 REJECTIONS Claims 1–4, 6–8, and 10–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Dean and Hamblin. Final Act. 2. Claims 5, 6, and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Dean, Hamblin, Cameron, and Wood. Final Act. 7. Appeal 2021-003583 Application 16/155,935 3 OPINION Appellant argues independent claims 1, 13, and 16 based on the same issues and the remaining claims based on dependency. Appeal Br. 7–15. There appears to be general agreement between the Examiner and Appellant as to what Dean and Hamblin disclose. Appeal Br. 7–9; Final Act. 2. Dean discloses the basic blank and container albeit without the overlapping bottom flanges and corner piece. The Examiner relies on Hamblin for teaching that it was known to overlap flanges (e.g., 9b, 9c) and provide gusset panels 21 or “corner piece[s]” for leak protection. Final Act. 2. According to the Examiner, providing gusset panels 21 between glue flaps 220, 230 and respective side panel flaps 240, 260, 310, 330 would yield “opposing bottom flanges . . . in overlapping relation to the vertical side flanges” in Dean. Final Act. 8. Appellant argues there is no motivation to modify Dean to include the leak resistant corners of Hamblin to thereby yield the claimed subject matter. Appeal Br. 11. Appellant bases this conclusion on the fact that Hamblin’s box is intended to be used for baking (a potentially flowable liquid such as cake batter (Hamblin para. 1)) whereas Dean’s box is intended to contain bottles, which Dean does not indicate are subject to any leakage. Appeal Br. 11; Reply Br 3. Appellant also contends there is no need to overlap the flaps in Dean and doing so runs counter to Dean’s stated objective of using less material. Appeal Br. 12. The Examiner has the better position here. Although Dean specifically mentions “plastic bottles and the like” (para. 3), Dean expressly acknowledges cartons of the type disclosed therein are used to “pack, ship, store, and/or display many different types of products.” Ans. 4 (citing Dean para. 2 (emphasis added)). Dean need not expressly recognize the potential Appeal 2021-003583 Application 16/155,935 4 improvements the Examiner proposes would have been obvious to support that conclusion. A reason to modify a prior art reference may be found explicitly or implicitly in “any need or problem known in the field of endeavor at the time of invention and addressed by the patent.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007); Ans. 4. There is a benefit of improved leak resistance clearly recognized in the art for using Hamblin’s gusset panels 21 to extend glue flaps 220, 230 to the corners in overlapping relationship with respective side panel flaps 240, 260, 310, 330. The fact that Dean’s flaps have end panels to adhere to (Appeal Br. 12) does not change the fact that the proposed gusset panels would help seal the joints formed between floor panel 170 and side panel flaps 240, 260, 310, 330 at the bottom corners of Dean’s completed box. As the Examiner correctly points out, such a modification “would not result in a significant increase of material use” and further, because “this feature [would be] formed in a cut out area [between Dean’s glue flaps and side panels] it would [beneficially] result in less material waste.” Ans. 4. It is not clear why Appellant believes that the Examiner’s proposed modification would require the extension of Dean’s glue flap 230 up the entire distance of Dean’s end panel and having it then fold back over the outer surfaces similarly to how Hamblin’s base flap 9b folds back over flaps 9c. Reply Br. 5. It is recognized that Hamblin is constructed in this way to achieve its overlap but the Examiner is not proposing to incorporate this particular structural arrangement from Hamblin to arrive at the claimed subject matter. “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Appellant does not explain why Appellant’s proposed Appeal 2021-003583 Application 16/155,935 5 modification to significantly extend Dean’s glue flaps would be necessitated by the Examiner’s proposed modification to include Hamblin’s gusset panels thereon. The issues of conserving material and recycling it (Appeal Br. 11; Reply Br. 4) are predominantly economic in nature. There are unquestionably tradeoffs associated with each course of action. However, any additional expense of time, material, and/or money associated with providing gusset panels would not discourage one of ordinary skill in the art from seeking the leak inhibiting characteristics predictably expected therefrom. “That a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility. Only the latter fact would be relevant.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). CONCLUSION The Examiner’s rejections are AFFIRMED. Appeal 2021-003583 Application 16/155,935 6 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–8, 10–19 103 Dean, Hamblin 1–4, 6–8, 10–19 5, 6, 9 103 Dean, Hamblin, Cameron, Wood 5, 6, 9 Overall Outcome 1–19 RESPONSE 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)(1)(iv). AFFIRMED