Ex Parte Littlejohn et alDownload PDFPatent Trial and Appeal BoardJul 1, 201611778232 (P.T.A.B. Jul. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111778,232 07/16/2007 31743 7590 07/05/2016 Georgia-Pacific LLC 133 Peachtree Street NE - GA030-42 ATLANTA, GA 30303 FIRST NAMED INVENTOR Mark B. Littlejohn 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 12544-USA 1057 EXAMINER DEMEREE, CHRISTOPHER R ART UNIT PAPER NUMBER 3782 MAILDATE DELIVERY MODE 07/05/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK B. LITTLEJOHN, MICHAEL A. BREINING, and LARRY A. MEJEUR Appeal2014-005972 Application 11/778,232 Technology Center 3700 Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and LEE. L. STEPINA, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark B. Littlejohn et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-8, 20-29, 31, 34, 38, 39, and 41-51 in this application. There is no rejection of record for claim 35. See Final Act. 2--4. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Dixie Consumer Products LLC as the real party in interest. Appeal Br. 4. Appeal2014-005972 Application 11/778,232 CLAIMED SUBJECT MATTER Claims 1, 20, and 29 are independent. Claim 1 illustrates the subject matter on appeal: 1. A paperboard plate formed from a paperboard blank, compnsmg: a) a generally planar bottom portion; b) an upwardly and outwardly extending fluted sidewall portion, wherein the sidewall portion comprises a plurality of flutes arranged substantially around an outer perimeter of the bottom portion to define a fluted perimeter, wherein the flutes are present at fewer than about 3.5 flutes per inch of the fluted perimeter; c) a radial profile having a single transition of about 15° to about 50° disposed between the bottom portion and the sidewall portion; d) a plate diameter to flute length ratio of greater than about 6, wherein the plate has a basis weight of greater than 7 5 pounds per ream; and e) a coating comprising polyethylene disposed on a top side and bottom side of the paperboard blank and \vherein the plate comprises the coating on its top side and bottom side. Appeal Br. 22 (Claims App.). REJECTIONS ON APPEAL Claims 1-8, 20-28, and 41--48 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ingersoll (US 221,564, iss. Nov. 11, 1879) and Littlejohn' 176 (US 7,048, 176 B2, iss. May 23, 2006), in view of Inagaki (US 4,679,724, iss. July 14, 1987) or Shetty (US 2004/0052987 Al, pub. Mar. 18, 2004). Claims 29, 31, 34, 38, 39, and 49-51 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ingersoll and Littlejohn' 176, in view of 2 Appeal2014-005972 Application 11/778,232 Inagaki or Shetty, and further in view of Toussant (US 6,364,203 B2, iss. Apr. 2, 2002). ANALYSIS A. Obviousness based on Ingersoll and Littlejohn '176 in view of Inagaki or Shetty In rejecting claim 1, the Examiner finds Ingersoll discloses a paperboard plate comprising a single transition between a generally planar bottom portion and a fluted sidewall portion. Final Act. 2 (citing Ingersoll, Figs. 1-2). The Examiner further finds Ingersoll's plate lacks the specific dimensions (i.e., fewer than about 3.5 flutes per inch of perimeter, transition of about 15-50°, and plate diameter to flute length ratio greater than about 6, hereafter "Claimed Dimensions"), basis weight, and coating recited in claim 1. Id. The Examiner finds Littlejohn '176 teaches a container with the claimed basis weight of greater than about 7 5 pounds per ream, and a transition angle of "less than about 60°." Id. at 2-3 (citing Littlejohn '17 6; 3:2-5, 3:23-27). According to the Examiner, it would have been obvious to modify Ingersoll's plate to have such a basis weight and transition angle "to create a sturdy plate." Id. at 3 (citing Littlejohn' 176, 1:56-60).2 The Examiner further determines it would have been obvious to make the plate of Ingersoll and Littlejohn '17 6 have the Claimed Dimensions, "since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art." Final Act. 3 (citing 2 The Examiner relies on Inagaki and Shetty for the polyethylene coating recited in claim 1. Final Act. 2-3. We need not review this portion of the rejection, given our determination that the Examiner errs regarding the obviousness of the Claimed Dimensions. 3 Appeal2014-005972 Application 11/778,232 Jn re Boesch, 617 F.2d 272 (CCPA 1980)). According to the Examiner, the Claimed Dimensions are "result effective variables [that] all endeavor to create a more sturdy plate." Ans. 6 (citing Littlejohn' 176, col. 2). Therefore, in the Examiner's view, "it would have been obvious to try" the Claimed Dimensions. Id. Appellants argue the Examiner errs in determining it would have been obvious to modify the plate of Ingersoll, in light of Littlejohn '17 6, to have a single transition of about 15-50°, to create a sturdy plate. Appeal Br. 13-14. Appellants point out container 10 in Littlejohn '176 has three transitions: first arcuate section 18, second arcuate section 20, and third arcuate section 22. Id. at 13; see Littlejohn '176, Fig. lB. Appellants further contend it was known at the time of the invention that strength was derived from multiple transitions (as in Littlejohn '17 6), not a single transition (as claimed). Appeal Br. 14 (citing First Littlejohn Decl. 3 i-fi-f 12-15). Therefore, in Appellants' view, the Examiner errs in determining a person of ordinary skill in the art would have been motivated to modify Ingersoll's single transition to be within the claimed range, in light of Littlejohn '17 6, to create a sturdy plate. Id. As to the other Claimed Dimensions, Appellants assert "[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation." Appeal Br. 14--15 (quoting MPEP § 2144.05, and citing In re Antoine, 559 F .2d 618 (CCP A 1977)). Appellants contend 3 See Declaration of Mr. Mark Littlejohn under 37 C.F.R. § 1.132, executed on February 24, 2011, and attached to Appeal Brief as Exhibit A. 4 Appeal2014-005972 Application 11/778,232 Ingersoll does not recognize the Claimed Dimensions as being result- effective, given Ingersoll's failure to disclose the Claimed Dimensions. Id. at 15. Appellants also contend Littlejohn' 176 "discloses more transition angles provide more strength, which is the exact opposite of the claimed invention" of a single transition. Id. (citing Littlejohn '176, 5:20-22, 6:55- 62, 8:19-23). We are persuaded of Examiner error in determining it would have been obvious to modify Ingersoll's plate to have the Claimed Dimensions, in light of Littlejohn' 176 and routine optimization. We find no support in Littlejohn '17 6 for the Examiner's conclusion that having a single transition of about 15-50° would create a sturdy plate. Littlejohn '17 6 indicates its plate is "rigid and strong" (Littlejohn '176, 1 :56-57), and further discloses an initial sidewall transition angle of about 50-80°, preferably about 62.5° (id. at 3:23-27, 7:41--43, 8: 13-15, Fig. 4). 4 However, we find no disclosure in Littlejohn ' 176 indicating the initial sidewall transition angle causes the plate to be sturdy. Indeed, consistent with Appellants' argument that the plate of Littlejohn '17 6 is sturdy by having multiple transitions, Littlejohn '176 indicates its plate is "characterized by dimensions about the flange [16} and downwardly extending lip portion [24] of the rim which provide rigidity." Littlejohn '176, 6:52---60, 8:19-25 (emphasis added), Fig. lB. 4 Angle Al in Littlejohn '176 is the most directly analogous to the single transition angle of claim 1. See Littlejohn '176, Fig. 4 (angle Al), Appellants' Fig. 13 (angle 232). However, angle Al in Littlejohn' 176 is taken from the vertical, whereas the claimed transition angle is taken from the horizontal. Id. Therefore, to convert values for angle Al to the claimed transition angle, one must subtract the Al value from 90 degrees. 5 Appeal2014-005972 Application 11/778,232 The Examiner does not articulate why the initial sidewall transition of about 50---80° in Littlejohn' 176, absent the further transitions provided by Littlejohn' 176, would lead to a sturdy plate. Nor does the Examiner articulate how a disclosure of an initial transition of about 50---80°, even if it were related to plate sturdiness, would lead a person of ordinary skill to employ the claimed range of about 15-50° in a single transition. The Examiner cites column 2 of Littlejohn' 176 in support of determining that Littlejohn '176 recognized a single sidewall transition as a result-effective variable endeavoring to create a more sturdy plate. Ans. 6. We can find no discussion in column 2 of Littlejohn '17 6 relating to sidewall transitions, much less in relation to providing plate sturdiness. The remaining Claimed Dimensions are (a) fewer than about 3. 5 flutes per inch of perimeter, and (b) a plate diameter to flute length ratio of greater than about 6. The Examiner appears to equate the claimed "flutes" to the "scores" described in Littlejohn' 176, and cites Littlejohn '17 6 column 2 as recognizing the Claimed Dimensions are result- effective variables endeavoring to create a more sturdy plate. Ans. 6. The cited column 2 discloses specific ranges of various dimensions in a paperboard blank for creating a plate, including the number of scores around the plate perimeter, the plate diameter, and the length of the scores. Littlejohn' 176, col. 2. However, the Examiner does not adequately explain how the disclosure of such dimensions establishes that the Claimed Dimensions were recognized as being result-effective for a sturdy plate. In particular, Claimed Dimensions (a) and (b) are both ratios specifying particular relationships between two variables. The Examiner does not articulate how Littlejohn' 176 establishes such relationships being result- 6 Appeal2014-005972 Application 11/778,232 effective, much less how the combination of all three Claimed Dimensions in claim 1 is result-effective. Thus, we do not sustain the rejection of independent claim 1 as unpatentable over Ingersoll and Littlejohn' 176 in view of Inagaki or Shetty. Independent claim 20 recites the same Claimed Dimensions as claim 1, except that the diameter is of the central portion rather than the entire plate. Appeal Br. 23 (Claims App.). Claim 20 stands rejected on substantially the same rationales as claim 1 in relation to the Claimed Dimensions. Final Act. 2-3. Accordingly, we likewise do not sustain the rejection of claim 20, and of claims 2-8, 21-28, and 41--48 which each depend from claim 1 or claim 20, as unpatentable over Ingersoll and Littlejohn' 176 in view of Inagaki or Shetty. B. Obviousness based on Ingersoll and Littlejohn '176 in view of Inagaki or Shetty, and further Toussant Claims 29, 31, and 49-51 Independent claim 29 recites the same Claimed Dimensions as claim 1, except that the transition range extends up to 60° rather than ending at 50°. Appeal Br. 24--25 (Claims App.). In rejecting claim 29, the Examiner relies on the combination of Ingersoll and Littlejohn '17 6 in relation to the Claimed Dimensions. Final Act. 4. In particular, the Examiner relies on Toussant in relation to the claimed sidewall inflection(s), not the Claimed Dimensions. Id. Accordingly, for the reasons provided above, we do not sustain the rejection of claim 29, and of claims 31 and 49-51 which each depend from claim 29, as unpatentable over Ingersoll and Littlejohn' 176 in view of Inagaki or Shetty, and further Toussant. 7 Appeal2014-005972 Application 11/778,232 Claims 34, 38, and 39 Claim 34 depends from claim 1, and claim 38 depends from claim 20, with both dependent claims adding "at least one inflection disposed on" the sidewall. Appeal Br. 25 (Claims App.). Claim 39 depends from claim 38. Id. The Examiner relies on Toussant in relation to the claimed sidewall inflection(s), not the Claimed Dimensions. Final Act. 4. Accordingly, for the reasons provided above, we do not sustain the rejection of claims 34, 38, and 39 as unpatentable over Ingersoll and Littlejohn' 176 in view of Inagaki or Shetty, and further Toussant. DECISION The Examiner's decision to reject claims 1-8, 20-29, 31, 34, 38, 39, and 41-51 is not sustained. As noted above, there is no rejection of record for claim 3 5. REVERSED 8 Copy with citationCopy as parenthetical citation