ORBIS Corporation

Patent Trials and Appeals BoardJul 17, 2020

2019006902 (P.T.A.B. Jul. 17, 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. 14/580,810 12/23/2014 William F. McMahon 72329-897520 7560 149633 7590 07/17/2020 GREENSFELDER HEMKER & GALE PC 200 W. Madison Street Suite 3300 Chicago, IL 60606 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 07/17/2020 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): ipdocket@greensfelder.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM F. MCMAHON and DONALD J. BALAZS Appeal 2019-006902 Application 14/580,810 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 21–28, 30–39, 81, and 82. 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. The Appellant identifies the real party in interest as Menasha Corporation. Appeal Br. 1. Appeal 2019-006902 Application 14/580,810 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 21 and 34 are the independent claims on appeal. Claim 21, reproduced below, is illustrative of the claimed subject matter. 21. A process for forming a re-useable plastic corrugated box comprising the steps of: providing a sheet of plastic corrugated material having a top edge and a bottom edge, the sheet having a first outer layer, a second outer layer spaced from the first outer layer and a plurality of parallel flutes between the first outer layer and the second outer layer extending from the top edge to the bottom edge, the sheet having a first side wall and a flap extending from an end of the first side wall; causing relative movement between the sheet of plastic corrugated material and a first rotary ultrasonic device having a generally cylindrical component with a projection extending radially outward from along a circumference of an outer surface of the cylindrical component; and, ultrasonically forming a first score line with the first rotary ultrasonic device across an entire span between the flap and the firs[t] side wall in the sheet of plastic corrugated material across the plurality of flutes by reshaping a portion of the first outer layer, second outer layer and parallel flutes forming the first score line using an ultrasonic device. Rejections Claims 21–28, 30, 32–39, 81, and 82 are rejected under 35 U.S.C. § 103 as being unpatentable over Dowd (US 6,102,279, iss. Aug. 15, 2000) in view of Blanchard (US 2003/0235660 A1, pub. Dec. 25, 2003). Claim 31 is rejected under 35 U.S.C. § 103 as being unpatentable over Dowd, Blanchard, and Bett (US 5,733,411, iss. Mar. 31, 1998). Appeal 2019-006902 Application 14/580,810 3 ANALYSIS The Appellant argues that “[a]ll of the claims require ultrasonically forming a first score line with a first rotary ultrasonic device across a plurality of flutes by reshaping a portion of the first outer layer, second outer layer and parallel flutes or ribs.” Appeal Br. 15. Indeed, independent claim 21 recites: ultrasonically forming a first score line with the first rotary ultrasonic device across an entire span between the flap and the firs[t] side wall in the sheet of plastic corrugated material across the plurality of flutes by reshaping a portion of the first outer layer, second outer layer and parallel flutes forming the first score line using an ultrasonic device. Id. at 17, Claims App. And, independent claim 34 recites a similar step: ultrasonically forming a plurality of score lines in the sheet across an entire width of each side panel with the first set of ultrasonic rotary devices across the plurality of ribs in a second direction substantially perpendicular to the first direction by reshaping a portion of the first outer layer, second outer layer, and ribs forming each score line and defining a plurality of bottom flaps extending from a bottom portion of the side panels. Id. at 20–21, Claims App. The remaining claims on appeal depend from one of these claims. The Examiner finds that Dowd teaches a process for forming a re- usable plastic corrugated box that includes a sheet of plastic corrugated material having a first outer layer, a second outer layer, and parallel flutes between the first outer layer and the second outer layer, but does not teach ultrasonically forming score lines in the sheet as required by independent claims 21 and 34. See Final Act. 2–3. The Examiner turns to Blanchard to remedy the deficiency in Dowd’s teachings with respect to these claims. Id. Appeal 2019-006902 Application 14/580,810 4 at 3. The Examiner relies on Blanchard’s teaching of a rotary ultrasonic device to form score lines on a web (i.e., a film). Id. The Examiner finds that Blanchard’s “rotary ultrasonic device ha[s] a generally cylindrical component with a projection extending radially outward from along a circumference of an outer surface of the cylindrical component.” Id. (citing Blanchard, Fig. 10). The Examiner modifies Dowd’s process with Blanchard’s teaching. Id. at 3–4. A major point raised by the Appellant concerns the differences in structure between Dowd’s sheet of plastic corrugated material, which includes a plurality of flutes/ribs, and Blanchard’s film, which lacks flutes/ribs. Appeal Br. 13–14. More specifically, the Appellant points out: The ribs of Dowd form empty spaces within the blank that extend along their entire length. The multilayer film of Blanchard has layers glued together in face-to-face relationship with no empty areas between the layers. The blank of Dowd is rigid and containers made therefrom stand upright when empty. The blank and container of Blanchard are flexible and lay flat in an empty condition. Id. at 14. The Appellant argues that because of these differences in the structures of Dowd’s blank and Blanchard’s film, “it is unclear whether the specified ultrasound sealing technique of Blanchard would work on an entirely different structure of the Dowd blank.” Id.; Reply Br. 2, 3. The Appellant asserts that “[i]f Dowd employed the ultrasound scoring techniques of Blanchard, the Dowd container would have a pair of parallel score lines that only extend through the inner layer and not touch the flutes and the outer layer.” Appeal Br. 15; see id. at 12. Appeal 2019-006902 Application 14/580,810 5 The Examiner lacks an adequate response to the Appellant’s argument. In this case, the Examiner fails to explain on the record –– using evidence or technical reasoning –– why Blanchard’s teaching of applying ultrasonic vibrating movement to a film, when applied to Dowd’s sheet of plastic corrugated material, would reshape the sheet’s flutes and outer layer. Rather, the Examiner appears to assume that the result of the modification would have been that of the claimed invention. See Ans. 5. Stated otherwise, because Blanchard’s ultrasonic sealing technique is not applied to a sheet of plastic corrugated material, which includes a plurality of flutes/ribs between upper and lower layers, the result of the combination is not demonstrated soundly by the prior art. Accordingly, additional evidence and/or technical reasoning is needed to be explained on the record to remedy this deficiency. In this case, the Examiner does not provide the additional evidence and/or technical reasoning required. Thus, we do not sustain the Examiner’s rejection of claims 21–28, 30, 32–39, 81, and 82. The Examiner fails to rely on Bett in any manner which would remedy the deficiency in the Examiner’s rejection as discussed above. Therefore, we likewise do not sustain the Examiner’s rejection of claim 31. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 21–28, 30, 32–39, 81, 82 103 Dowd, Blanchard 21–28, 30, 32–39, 81, 82 31 103 Dowd, Blanchard, Bett 31 Appeal 2019-006902 Application 14/580,810 6 Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed Overall Outcome 21–28, 30–39, 81, 82 REVERSED