Ranpak Corp.

Patent Trials and Appeals BoardDec 10, 2021

2021002587 (P.T.A.B. Dec. 10, 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. 15/604,982 05/25/2017 Robert C. Cheich RANPP0402USE 2683 23908 7590 12/10/2021 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER JALLOW, EYAMINDAE CHOSSAN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/10/2021 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT C. CHEICH, DAVID V. MURPHY, STEVEN M. TONEFF, MAURICE JOZEF PAULUS ANTHONIUS SAVELBERG, RAYMOND PAULUS HUBERTUS NOLLÉ, and PEDRO ERIK WILLEM WINKENS ____________ Appeal 2021-002587 Application 15/604,982 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JILL D. HILL, and CARL M. DeFRANCO, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Feb. 6, 2020, hereinafter “Final 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Ranpak Corp. is identified as the real party in interest in Appellant’s Appeal Brief (filed Sept. 8, 2020, hereinafter “Appeal Br.”). Appeal Br. 2. Appeal 2021-002587 Application 15/604,982 2 Act.”) rejecting claims 23–32.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is directed to “a wrappable dunnage product” including “multiple plies of sheet stock material connected together.” Spec. 2, l. 26, Spec. 3, ll. 27–28. Claim 23, the sole independent claim, is representative of the claimed invention and reads as follows: 23. A dunnage product comprising: a first sheet that is longitudinally crumpled with substantially parallel laterally-extending folds spaced at an irregular pitch; a second sheet that is connected face-to-face to the first sheet to hold the first sheet in its crumpled state; wherein the resulting dunnage product has a width dimension parallel to the folds, a length dimension transverse the folds, and a thickness dimension transverse the width dimension and the length dimension, and the width dimension is greater than the thickness dimension, and the first sheet and the second sheet have substantially coextensive length and width dimensions; wherein the first sheet is connected to the second sheet at regular intervals such that the length of the first sheet between connection points is irregular due to the irregular pitch of the folds in the first sheet. Appeal Br. 12 (Claims App.) 2 Claims 1–22 are canceled. Appeal Br. 12 (Claims App.). Appeal 2021-002587 Application 15/604,982 3 REJECTIONS I. The Examiner rejects claims 23, 24, and 30 under 35 U.S.C. § 102(b) as being anticipated by Vesamaa.3 II. The Examiner rejects claims 25–29 under 35 U.S.C. § 103(a) as being unpatentable over Vesamaa and Fisher.4 III. The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as being unpatentable over Vesamaa and Parker.5 IV. The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as being unpatentable over Vesamaa and Cheich.6 ANALYSIS Rejection I The Examiner finds that Vesamaa discloses all the limitations of independent claim 23 including “a first sheet (2) that is longitudinally crumpled with substantially parallel laterally-extending folds spaced at an irregular pitch.” Final Act. 2 (citing Vesamaa, Figs. 1, 3) (emphasis omitted). Appellant argues “that what Vesamaa discloses is a sheet that is longitudinally folded with substantially parallel laterally-extending folds with a regular spacing, or pitch, and therefore cannot anticipate claim 23.” Appeal Br. 9 (emphasis omitted). 3 Vesamaa, US 5,558,923, issued Sept. 24, 1996. 4 Fisher et al., US 2003/0139772 Al, published July 24, 2003. We consider the Examiner’s reference to “Simmons” to be a typographical error. 5 Parker, US 5,712,020, issued Jan. 27, 1998. 6 Cheich et al., US 2008/0153685 Al, published June 26, 2008. Appeal 2021-002587 Application 15/604,982 4 The Examiner responds that Vesamaa’s “Figs. 1 and 3 explicitly depict an irregular pitch in web 2.” Examiner’s Answer (dated Jan. 4, 2021, hereinafter “Ans.”) 3. We reproduce below the Examiner’s annotated Figure 3 of Vesamaa: The Examiner’s annotated Figure 3 of Vesamaa illustrates “same length arrows [that] only fit into the first crest, not the second.” Id. (emphasis omitted). In addition, the Examiner “asserts that Fig. 3 of Vesamaa depicts the addition of a pleat (12), which alters the pitch of the second peak.” Advisory Action (dated Apr. 6, 2020, hereinafter “Advisory Act.”) 2. The Examiner further finds that “[a]fter formation of the allegedly regular creases in the Vesamaa reference, the material properties of the kraft paper . . . would not retain uniformity throughout,” that is, would “allow the shape of the dunnage to be altered.” Ans. 3, 4 (citing Vesamaa, col. 3, ll. 22–24, Figs. 1, 3). As correctly pointed out by Appellant, Vesamaa’s Figures 1 and 3 are schematic, and, as such, are not drawn to scale. See Reply Brief (filed Mar. 4, 2021, hereinafter “Reply Br.”) 1; see also Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d 951,956 (Fed. Cir. 2000) (patent drawings not designated as being drawn to scale cannot be relied upon to define precise Appeal 2021-002587 Application 15/604,982 5 proportions of elements if the specification is completely silent on the issue). Accordingly, while we do not necessarily agree with Appellant that Vesamaa discloses a sheet that is longitudinally folded with substantially parallel laterally-extending folds with a regular spacing, nonetheless, the Examiner’s determination that the folds of Vesamaa’s sheet 2 illustrated in Figure 3 are spaced at an “irregular pitch” requires speculation on the Examiner’s part. 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 further agree with Appellant that even though Vesamaa discloses pleats 12, nonetheless, such “pleats are still formed by the embossing process, forming the same pleats and folds in a regularly-spaced manner.” Appeal Br. 10 (citing Vesamaa, Fig. 9). Furthermore, we appreciate that Vesamaa discloses the use of “kraft paper.” See Vesamaa, col. 3, l. 23. However, Appellant is correct that Vesamaa “says nothing about whether the kraft paper holds the regular creases.” Reply Br. 2. Moreover, we agree with Appellant that Vesamaa specifically discloses shaping rolls 16, 17 as forming pleats 4 in web 2 “by permanent deformation” such that web 2 will “retain its embossed configuration.” Id (citing Vesamaa, col. 8, ll. 35–40) (emphasis omitted). Hence, the Examiner’s position that “the material properties of the kraft paper allow the shape of the dunnage to be altered” likewise requires speculation on the Examiner’s part. See Ans. 4. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 102(b) of claims 23, 24, and 30 as anticipated by Vesamaa. Appeal 2021-002587 Application 15/604,982 6 Rejections II–IV The Examiner does not contend that either Fisher, Parker, or Cheich cure the deficiency of Vesamaa discussed supra. See Final Act. 3–7. Therefore, for the same reasons discussed above, we also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 25–29 as unpatentable over Vesamaa and Fisher; of claim 31 as unpatentable over Vesamaa and Parker; and of claim 32 as unpatentable over Vesamaa and Cheich. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23, 24, 30 102(b) Vesamaa 23, 24, 30 25–29 103(a) Vesamaa, Fisher 25–29 31 103(a) Vesamaa, Parker 31 32 103(a) Vesamaa, Cheich 32 Overall outcome 23–32 REVERSED