Scorrboard, LLC

Patent Trials and Appeals BoardMar 10, 2021

2020002886 (P.T.A.B. Mar. 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. 15/088,999 04/01/2016 Giles GREENFIELD 010928-004US1 3001 39564 7590 03/10/2021 FisherBroyles, LLP - MAIN CN 885 Woodstock Rd, Ste. 430-383 Roswell, GA 30075 EXAMINER LONEY, DONALD J ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/10/2021 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): docketing@fisherbroyles.com patent@fisherbroyles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILES GREENFIELD Appeal 2020-002886 Application 15/088,999 Technology Center 1700 Before LINDA M. GAUDETTE, SHELDON M. MCGEE, and JANE E. INGLESE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–11 and 21–25. We have jurisdiction. 35 U.S.C. § 6(b). We affirm. 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 Scorrboard, LLC. Appeal Br. 4. Appeal 2020-002886 Application 15/088,999 2 CLAIMED SUBJECT MATTER The claims are directed to board products formed from paper. The Specification discloses that paper can be produced “from a number of substances including wood pulp that comprise wood fibers” which “tend to be elongated and suitable to be aligned next to one another.” Spec. ¶ 1. “In modern paper machines, the fibers tend to align with each other and align with a direction in which the screen is moving.” Id. This direction is known as the “major direction” or “machine direction” and the produced paper has an associated “MD” value. Id. The paper also has a cross direction, or “CD.” Id. ¶ 2. When making a board product, the paper may be corrugated. Spec. ¶ 2. The Specification discloses that “[t]raditional corrugating machines will corrugate the underlying paper product in the cross-direction (CD) of the paper thereby failing to take advantage of the natural strength bias of the paper in the machine direction,” thus purportedly leaving “the greater natural strength qualities of paper in the machine direction . . . unharnessed.” Id. The corrugation process induces fluting of the paper, but fluting also can result from other processes such as embossing. Spec. ¶ 10. Generally, a “corrugated medium has flutes in the cross direction of the paper,” while an embossed medium exhibits flutes aligned with the machine direction of the paper. Id. This is illustrated in Figures 1 and 2 of the Drawings, reproduced below: Appeal 2020-002886 Application 15/088,999 3 Figure 1, reproduced above, illustrates cross-corrugated medium 120, having flutes 121 perpendicular to the majority of underlying fibers 125 and incongruent with machine direction 122. Spec. ¶ 14. Figure 2, reproduced above, illustrates embossed medium 130 having flutes 131 “formed congruent with a majority of underlying fibers 125 . . . [and] machine direction 122.” Id. ¶ 16. Appeal 2020-002886 Application 15/088,999 4 The claimed board products have flutes in both the machine and cross directions and purport to have superior characteristics compared to board products that are only corrugated. Spec. ¶ 11. A board product as claimed is illustrated in Figure 3A of the Drawings, reproduced below: Figure 3A illustrates board product 100 containing corrugated medium 120 and embossed medium 130 in between facings 110 and 140. Spec. ¶ 17. Claim 1, reproduced below, is illustrative of the claimed subject matter, with a key limitation on appeal italicized for emphasis: 1. A board product, comprising: a first medium formed from a first paper having a machine direction and cross direction, the first medium having one or more non-corrugated flutes aligned with the machine direction of the first paper; and a second medium formed a second paper having a machine direction and a cross direction, the second medium affixed with respect to the first medium and having one or more flutes aligned with the cross direction of the second paper. Appeal 2020-002886 Application 15/088,999 5 REJECTIONS The Examiner maintains the following rejections on appeal: I. Claims 1–11 under 35 U.S.C. § 112(b) as indefinite; II. Claims 1–8, 11, and 21–25 under 35 U.S.C. §§ 102(a)(1) or 102(a)(2) as anticipated by Rosati (US 3,002,876); III. Claims 9 and 10 under 35 U.S.C. § 103 as unpatentable over Rosati in view of either Hoppe (US2014/0166520) or GB074 (GB 2 368 074 A); IV. Claims 1–8, 11, and 21–25 under 35 U.S.C. § 103 as unpatentable over any of Wandel (US 3,542,636), Guins (US 4,657,611) or “GB328” (GB 594,328), combined with Chapman; V. Claims 9 and 10 under 35 U.S.C. § 103 as unpatentable over any of Wandel, Guins or GB328, combined with Chapman and either Hoppe or GB074. OPINION Rejection I The Examiner rejects claims 1–11 as indefinite for reciting “non- corrugated flutes” because “[s]omething that is fluted is corrugated and something that is corrugated is fluted.” Final Act. 2. We reverse this rejection. “[T]he definiteness of the language employed must be analyzed—not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Appeal 2020-002886 Application 15/088,999 6 Here, as explained by the Specification (Spec. ¶ 10) and Appellant (Appeal Br. 12), both corrugation and embossing processes may yield a fluted medium. Spec. ¶ 10; Figs. 1–4. Based on this disclosure, the skilled artisan would be reasonably apprised of the scope of claims 1–11. Rejection II The Examiner finds that Rosati anticipates claims 1–8, 11, and 21–25. Final Act. 3–4. Appellant asserts that Rosati does not anticipate independent claims 1 and 21 because Rosati discloses a corrugating process, even though Rosati discloses that its “resulting board product exhibits flutes that are in perpendicular directions.” Appeal Br. 17–19. We are not persuaded by this argument. The Examiner finds that the terms “non-corrugated” (claim 1) and “embossed” (claim 21) are product- by-process limitations and that “[t]he structure of these two recitations are merely fluted papers, whether recited as embossed and/or corrugated.” Final Act. 4. Appellant attempts to distinguish the claimed board product by arguing a process limitation, but does not provide evidence demonstrating a structural difference between corrugated flutes and non-corrugated flutes. See Appeal Br. 19 (asserting that a non-corrugation process “necessarily means that the medium includes flutes that do not breakdown the natural strength of the paper by bending underlying fibers around corrugating rolls”). Such unsupported assertions are unpersuasive. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). We also observe that Appellant does not challenge the Examiner’s finding that the degree of fluting is process-dependent, and Appeal 2020-002886 Application 15/088,999 7 that “one could so lightly corrugate the flutes that there is no breakage of the fibers.” Ans. 11; see Reply Br., generally. Here, the Specification indicates that the difference between corrugated and non-corrugated (e.g., “embossed”) flutes is merely the orientation of the flutes vis-à-vis the machine direction of the paper. Spec. ¶ 10. This structural arrangement of flutes is disclosed by Rosati. Rosati, Figs. 11, 12; 1:10–17, 4:65–71. And, although the fluting patterns appear different in Appellant’s Figures 1 and 2 of the Drawings,2 this does not necessarily evince a structural difference that is imparted by the different processes. This is because in US patent application serial number 15/077,2503––incorporated by reference into the current application “in its entirety and for all purposes” (Spec. ¶ 13)––appears to show a highly similar, if not identical, “wavy” fluting pattern regardless of whether the paper is corrugated or embossed. See ʼ616 publication Figs. 2, 4; ¶¶ 6, 8. Because Appellant does not identify reversible error in the Examiner’s anticipation rejection of independent claims 1 and 21, we sustain it, along with the rejection of dependent claims 2–8, 11, and 22–25 which are not argued separately. 2 Figure 1 depicts a “wavy” fluting pattern prepared by corrugation, while Figure 2 depicts a more “zig-zag” pattern prepared by embossing. Spec., Figs. 1, 2; ¶¶ 14, 16. 3 This application was published as US 2017/0274616 A1 on Sept. 28, 2017, and was cited in an Information Disclosure Statement dated August 21, 2018. For ease of reference, we cite to the published application as the “ʼ616 publication.” Appeal 2020-002886 Application 15/088,999 8 Rejection III Appellant does not separately argue this rejection, but instead relies on the same deficient arguments provided for Rejection II. Appeal Br. 20. We, therefore, sustain the obviousness rejection of claims 9 and 10 for the same reasons provided supra with respect to Rejection II. Rejections IV–V The Examiner’s obviousness rejections are detailed at pages 5–8 of the Final Office Action. Similar to its arguments against the anticipation rejection over Rosati, Appellant asserts that the references relied upon in these obviousness rejections do not teach a non-corrugated or embossed flute as recited in the independent claims. Appeal Br. 21–30, 31–35. We reject that argument here for the same reasons provided supra. Appellant also asserts that the Chapman reference “teaches away from the claim recitations in a meaningful way” because “[c]orrugating is a fundamental change in the process’s operation here resulting in an inefficient waste of material.” Appeal Br. 30, 35. We disagree. Here again, Appellant relies on process differences in an attempt to distinguish a prior art structure over a claimed structure. Appellant, however, has not provided any evidence that a structural difference exists over the prior art. Absent such evidence, we are unpersuaded of any structural difference in the claimed board product and those products disclosed or suggested in the prior art. We, therefore, sustain the Examiner’s obviousness rejections. Appeal 2020-002886 Application 15/088,999 9 CONCLUSION Rejection I is reversed. Rejections II–V are affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11 112(b) Indefiniteness 1–11 1–8, 11, 21– 25 102(a)(1), 102(a)(2) Rosati 1–8, 11, 21–25 9, 10 103 Rosati, Hoppe 9, 10 9, 10 103 Rosati, GB074 9, 10 1–8, 11, 21– 25 103 Wandel, Chapman 1–8, 11, 21–25 1–8, 11, 21– 25 103 Guins, Chapman 1–8, 11, 21–25 1–8, 11, 21– 25 103 GB328, Chapman 1–8, 11, 21–25 9, 10 103 Wandel, Hoppe 9, 10 9, 10 103 Wandel, GB074 9, 10 9, 10 103 Guins, Hoppe 9, 10 9, 10 103 Guins, GB074 9, 10 9, 10 103 GB328, Hoppe 9, 10 9, 10 103 GB328, GB074 9, 10 Overall Outcome 1–11, 21– 25 TIME PERIOD FOR 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