Ex Parte Zoeckler

Board of Patent Appeals and Interferences

May 30, 2007

09818023 (B.P.A.I. May. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. ZOECKLER
____________

Appeal 2007-0008
Application 09/818,023
Technology Center 3700
____________

Decided: May 30, 20071
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael D. Zoeckler (Appellant) originally appealed under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-15 and 33-37. In an

1 Appellant’s counsel presented oral argument in this appeal on May 15,
2007.
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Amendment filed November 16, 2006, subsequent to the filing of the Appeal
Brief, Appellant cancelled claims 33-37. The Examiner entered this
Amendment on November 30, 2006. Consequently, this appeal involves
only claims 1-15. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
Appellant’s claimed invention is directed to a method of making
reinforced paperboard cartons. In particular, Appellant forms multi-width
fold lines where a fold line transitions across the edge of a reinforcing ribbon
(Specification 10). In cases where fold lines extend transversely across
reinforcing ribbons, and thus transition from the thinner or lower caliper
base sheet to the thicker or higher caliper reinforced regions, the fold lines
are formed in such a way that they do not cause cracking or otherwise
interfere with the folding of the carton, in accordance with Appellant’s
method (Specification 19). Claim 1 is illustrative of the claimed invention
and reads as follows:
1. A method of making reinforced paperboard
cartons comprising the steps of:
(a) advancing a web of paperboard along a
path, the web of paperboard having a width;
(b) progressively applying at least one
ribbon of reinforcing material to the advancing
web of paperboard to form a reinforced region for
the carton, the ribbon having a width less than the
width of the web of paperboard and an edge;
(c) scoring fold lines in the web of
paperboard, at least one of the fold lines extending
transversely to the reinforcing[ ]2 region and
crossing the edge of the ribbon of reinforcing

2 For consistency, “reinforcing region” should be “reinforced region.”
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material to define a fold line having a first section
within the reinforced region and a second section
outside the reinforced region, the first section of
the fold line being wider than the second section of
the fold line; and
(d) forming a transition zone between the
first and second sections of the fold line.
The Examiner relies upon the following as evidence of
unpatentability:
Campbell US 1,600,396 Sep. 21, 1926
Haddock US 3,735,674 May 29, 1973
Seufert (Seufert ‘206) US 4,064,206 Dec. 20, 1977
Seufert (Seufert ‘916) US 4,733,916 Mar. 29, 1988
This panel additionally relies on the admission in Appellant’s
Specification that it was known by those of skill in the art that “fold lines in
thinner material must be narrower than fold lines in thicker material”
(Specification 36:24-26) as additional evidence of unpatentability.
Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1-5, 7, and 11 as unpatentable over Campbell in view of
Seufert ‘916, claim 6 as unpatentable over Campbell in view of Seufert ‘916
and Seufert ‘206, and claims 8-10 and 12-15 as unpatentable over Campbell
in view of Seufert ‘916 and Haddock.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed December 1, 2003). Appellant presents opposing
arguments in the Appeal Brief (filed September 16, 2003) . A Reply Brief
filed March 16, 2004 was denied entry (see Decision on Petition mailed
August 10, 2006 and Office Communication mailed September 13, 2006)
and will not be considered in our decision.

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THE ISSUE
Appellant has not argued the rejections of claim 6 as unpatentable
over Campbell in view of Seufert ‘916 and Seufert ‘206 and claims 8-10 and
12-15 as unpatentable over Campbell in view of Seufert ‘916 and Haddock
separately from the rejection of claims 1-5, 7, and 11 as unpatentable over
Campbell in view of Seufert ‘916. These rejections therefore stand or fall
with the rejection of claims 1-5, 7, and 11 as unpatentable over Campbell in
view of Seufert ‘916 (see In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987)).
In light of the above, the only issue presented to us for consideration
is whether the Examiner erred in concluding that the subject matter of claims
1-5, 7, and 11 is unpatentable over the combination of Campbell and Seufert
‘916.

FINDINGS OF FACT
1. Campbell discloses a method of reinforcing fiber board or corrugated
board for use in making shipping cases, cartons, or other folded
multiple-ply blanks (Campbell 1:1-5) by inserting lines of fabric or
other tape, or the like, between the plies of the web of the board from
which the blank is to be cut and scored. The lines of reinforcing
material coincide with the subsequent fold lines of the completed
carton. (Campbell 1:45-51.) As illustrated in Fig. 3, the plies of
paper and strips of tape are fed in web form from paper rolls 1-3 and
tape rolls 5, the paper webs are coated with silicate in bath 4, the tapes
are covered with a slow drying cement by passing them through a tank
5a and squeeze rolls 5b, and the plies of paper and tapes are then fed
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together to squeeze rolls 6 and then to scoring and cutting rolls not
shown (Campbell 2:1-14).
2. An essential feature of Campbell’s process is that the scoring is done
while the bond between the tapes and the paper is not dry, but is free
to slip when the scoring is done, thereby yielding a blank which is
truly reinforced by a tape that is firmly bonded on both sides to the
paper thereof (Campbell 1:81-91). This is done to address the
problem that a dry bond between the plies is broken when the score
lines are formed, because of the distortion incident to scoring,
separating the paper and the tape and diminishing the reinforcing
effect (Campbell 1:67-80).
3. As illustrated in Figs. 1 and 4, Campbell forms score lines, shown by
lines 9, 9, “necessary to permit erecting of the carton without breaking
the material thereof” (i.e., fold lines), some of the score lines
extending transversely of the reinforcing tapes, shown by dotted lines
8 (Campbell 2:32-34 and 2:45-48).
4. Campbell does not disclose forming the score lines or fold lines so
that a first section of the fold line within the reinforced region is wider
than a second section of the fold line outside the reinforced region and
forming a transition zone between the first and second sections of the
fold line, as required in independent claims 1 and 11.
5. Seufert ‘916 is directed to folding boxes having two overlapping
blanks of differing materials, such as a cardboard material and a
transparent stiff plastic foil (Seufert ‘916, col. 1, ll. 7-10), with
bending lines extending across the overlap (Seufert ‘916, col. 1,
ll. 32-36). The objective of Seufert ‘916 is to address the troublesome
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material displacement and material stretching that can occur during
folding because of the double material thickness at the points of
overlap (Seufert ‘916, col. 1, ll. 37-40). Seufert addresses this
problem by forming thinned-down areas 17 in the foil blank prior to
gluing the foil blank to the cardboard blank (Seufert, col. 2, ll. 57-60).
The thinned-down areas 17 in the foil are formed simultaneously with
the placement of bend lines 13 in the foil (Seufert ‘916, col. 8,
ll. 25-29). The thinned-down areas 17 and bend lines 13 can be
formed with a high frequency process or with a hot stamping process,
both of which processes are characterized by Seufert ‘916 as being so
well known that no further explanation thereof is necessary (Seufert
‘916, col. 8, ll. 29-41).
6. A transition zone between the thin bend line 13 and the wider thinned-
down area 17 having a gradually increasing width from the thin bend
line 13 to the wider thinned-down area 17 is illustrated in Figs. 2, 3,
and 4 of Seufert ‘916. The edge of the extra foil ply (the overlap area)
is located within the transition zone (Seufert ‘916, Figs. 2, 3, and 4)
7. Seufert ‘206 discloses use of a rule-shaped tool 20 in the type of high
frequency process alluded to by Seufert ‘916 (Finding of Fact 5) for
forming fold lines in carton material. Seufert ‘206 is the US
equivalent of the German application (“DE-PS No. 25 41 324”)
referred to by Seufert ‘916 in disclosing a suitable high frequency
process for forming the thinned-down areas 17 and bend lines 13 of
the foil (Seufert ‘916, col. 8, l. 38). Thus, the process and tooling
disclosed by Seufert ‘206 are capable of forming the configuration of
the thinned-down areas 17 and bend lines 13 disclosed by Seufert
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‘916 and illustrated in Figs. 2, 3, and 4 of Seufert ‘916. Seufert ‘206
illustrates an embodiment wherein the rule-shaped tool 20 is carried in
a holding plate 19 connected to a work cylinder 11 (Seufert, col. 5,
ll. 28-30 and 43-45).
8. Haddock evidences that a slot or channel 16 in the make ready 14
(i.e., counter plate) on a platen 10 used in conjunction with a rule 20
for forming creases for bending in carton blanks was known in the art
at the time of Appellant’s invention (Haddock, col. 3, ll. 13-18,
Fig. 1).
9. It was known by those of skill in the art at the time of Appellant’s
invention that fold lines in thinner material must be narrower than fold
lines in thicker material (Specification 36:24-26).

ANALYSIS
In rejecting claims 1-5, 7, and 11 as unpatentable over Campbell in
view of Seufert ‘916, the Examiner contends it would have been obvious “to
include the teachings of Seufert [‘916] in the invention of Campbell in order
to compensate stresses in the laminate materials when folded into the final
product and thereby maintaining the bond between the laminates” (Answer
4), but does not specify how the invention of Campbell would be modified
by including the teachings of Seufert ‘916 therein. We conclude that
combination of Campbell and Seufert ‘916, without more, would not result
in the method of Appellant’s independent claims 1 and 11. Campbell’s
reinforcing method involves forming fold lines extending transversely of
lines of reinforcement, which lines of reinforcement include an extra layer of
material relative to the other regions of the blank (Findings of Fact 1 and 3).
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Seufert ‘916 addresses the problems of extending a fold or bend line across
overlap regions (i.e., regions of different thickness) by, prior to gluing the
foil blank to the cardboard blank, forming a thinned-down area in the extra
ply in the region where the bend line crosses the overlap region, the thinned-
down area being wider than the bend line (Findings of Fact 5 and 6).
Therefore, “[including] the teachings of Seufert [‘916] in the invention of
Campbell” would appear to involve inserting between the plies of
Campbell’s board lines of reinforcing tape having thinned-down areas in the
regions where bend or fold lines will cross the lines of reinforcement.
Missing from the combination of Campbell and Seufert ‘916 is a teaching of
scoring the fold lines across the reinforced region to define a fold line having
a first section within the reinforced region and a second section outside the
reinforced region, the first section of the fold line being wider than the
second section of the fold line, as recited in claim 1, or impressing the
paperboard carton blank with a multi-point rule having a narrower first
section for scoring the portion of the fold line outside the reinforced region
and a wider second section for scoring the portion of the fold line within the
reinforced region, as recited in claim 11.
For the reasons explained above, we conclude that the Examiner erred
in concluding that the subject matter of claims 1 and 11 is unpatentable over
the combination of Campbell and Seufert ‘916. The rejection of
independent claims 1 and 11 and claims 2-5 and 7 depending from claim 1 is
reversed. The Examiner’s application of Seufert ‘206 and Haddock in
rejecting the remaining depending claims does not make up for the
deficiency in the combination of Campbell and Seufert. Accordingly, the
rejections of claim 6 as unpatentable over Campbell in view of Seufert ‘916
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and Seufert ‘206 and claims 8-10 and 12-15 as unpatentable over Campbell
in view of Seufert ‘916 and Haddock are also reversed.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection.
Claims 1-4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Campbell in view of Appellant’s admission (Specification 36:24-26) and
Seufert ‘916.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82
USPQ2d 1385, 1397 (2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
Campbell discloses the method of claim 1 with the exception of the
fold line extending transversely to the reinforced region having a first
section within the reinforced region and a second section outside the
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reinforced region, the first section of the fold line being wider than the
second section of the fold line, and a transition zone formed between the
first and second sections of the fold line (Finding of Fact 1). As admitted by
Appellant, however, it was known by those of skill in the art at the time of
Appellant’s invention that fold lines in thinner material must be narrower
than fold lines in thicker material (Specification 36:24-26). Thus, a person
of ordinary skill in the art at the time of Appellant’s invention would have
appreciated that the score lines extending across the lines of reinforcement
of Campbell’s carton blank should be formed so as to be wider in the
reinforced area (the thicker material) and narrower in the areas that are not
reinforced (the thinner material). Moreover, Seufert ‘916 evidences that
techniques were well known in the art at the time of Appellant’s invention
for forming fold lines or scores in plastic carton blank material that are wider
in a first section and narrower in a second section, with a transition zone
between the first and second sections that gradually widens from the
narrower width to the wider width (Findings of Fact 5-6). Thus, one of
ordinary skill in the art would have been able to implement one of the well
known and predictable techniques mentioned by Seufert ‘916 to score a fold
line in the reinforced carton blank material of Campbell having a first
section in the reinforced region that is wider than a second section in the
region that is not reinforced, with a transition zone between the first and
second sections that gradually widens from the narrower width to the wider
width, and would have been prompted to do so while the bond between the
tapes and the paper is not dry to ensure firm bonding of the tape on both
sides to the paper (Finding of Fact 2), in order to form the score lines so as
to be wider in the reinforced area (the thicker material) and narrower in the
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area that is not reinforced (the thinner material). The subject matter of
claims 1-4 therefore would have been obvious to one of ordinary skill in the
art at the time of Appellant’s invention.
Claims 5-7 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell in view of Appellant’s admission (Specification
36:24-26), Seufert ‘916, and Seufert ‘206.
As evidenced by Seufert ‘206, the US equivalent of the German
application (“DE-PS No. 25 41 324”) mentioned by Seufert ‘916 (Finding of
Fact 7), one of the well known techniques identified by Seufert ‘916
available for forming a bend line having a wider section, a narrower section,
and a transition zone of gradually increasing width between the wider
section and narrower section involves the use of a rule-shaped tool 20 (a
scoring rule). To utilize a multi-point rule having a narrower section to form
the narrower section of the bend line and a wider section to form the wider
section of the bend line would require merely a predictable variation of the
simple single point rule-shaped tool 20 taught by Seufert ‘206 well within
the skill of the art and thus would have been obvious. Campbell nominally
refers to scoring rolls (Finding of Fact 1) and Seufert ‘206 illustrates an
embodiment wherein the rule-shaped tool 20 is carried in a holding plate
connected to a work cylinder (Finding of Fact 7). A scoring rule formed as
part of a platen or press-type device, as embodied in Seufert ‘206, and a
scoring rule formed as part of a rotary scoring roll, as embodied in
Campbell, are both predictable variations of scoring devices and the use of
either to form the score lines in Campbell would have been obvious.
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Claims 8-10 and 12-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell in view of Appellant’s admission (Specification
36:24-26), Seufert ‘916, Seufert ‘206, and Haddock.
As evidenced by Haddock, the use of counter plates having slots or
channels in cooperation with a rule for forming creases (fold lines) in carton
blank material was known in the art at the time of Appellant’s invention
(Finding of Fact 8). A person of ordinary skill in the art would have
appreciated that a counter plate formed with an appropriately shaped slot or
channel for use in cooperation with the scoring rule would be beneficial in
the scoring device of Campbell to form a fold line having a first wider
section, a second narrower section, and a transition zone between the first
and second sections having a width gradually increasing from the narrower
width to the wider width. Thus, a counter plate having a groove shaped as
recited in claims 8-10 and 12-15 would have been obvious for use in
Campbell’s scoring device.

SUMMARY
The decision of the Examiner to reject claims 1-15 under 35 U.S.C.
§ 103(a) is reversed. New rejections of claims 1-15 under 35 U.S.C.
§ 103(a) are entered pursuant to 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record. . . .
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) (2006).
REVERSED; 37 C.F.R. § 41.50(b)

vsh

WOMBLE CARLYLE SANDRIDGE & RICE, PLLC
P.O. BOX 7037
ATLANTA, GA 30357-0037

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