ILLINOIS TOOL WORKS INC.

Patent Trials and Appeals Board

Feb 17, 2022

2021004957 (P.T.A.B. Feb. 17, 2022)

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. 15/366,941 12/01/2016 Robert C. OLSEN ITW-66284-US 1096 45482 7590 02/17/2022 PAULEY ERICKSON & SWANSON 2800 W. HIGGINS ROAD SUITE 365 HOFFMAN ESTATES, IL 60169 EXAMINER PAGAN, JENINE MARIE ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 02/17/2022 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 ROBERT C. OLSEN and CHRISTOPHER J. LUDWIG ____________ Appeal 2021-0049571 Application 15/366,941 Technology Center 3700 ____________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and BRETT C. MARTIN, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 26, 27, 29-34, and 40.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 The pages of the Appeal Brief are unnumbered. Herein, all citations to the Appeal Brief are based on the pages being numbered consequently beginning with “1” (i.e., “Appeal Br. 1”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Illinois Tool Works, Inc., as the real party in interest. Appeal Br. 2. 3 Claims 28 and 35-39 are withdrawn from consideration. Final Act. 1 (Office Act. Summ.). Appeal 2021-004957 Application 15/366,941 2 CLAIMED SUBJECT MATTER Claims 26 and 40 are independent. Claim 26, reproduced below, illustrates the claimed subject matter. 26. A flexible carrier for carrying a plurality of containers, the flexible carrier comprising: a flexible sheet; an array of apertures formed in the flexible sheet and arranged in longitudinal rows and transverse ranks, each and every transverse rank of the transverse ranks formed of at least two container apertures and one handle aperture, wherein each handle aperture is formed in one of the longitudinal rows at a periphery of the flexible sheet along the longitudinal edge of the flexible sheet to form a plurality of handles; and a line of weakness extending across the flexible sheet between each adjacent pair of the transverse ranks, wherein the flexible carrier is separable into sub-carriers along the lines of weakness between the each adjacent pair of the transverse ranks, wherein the each and every transverse rank of the sub- carriers has a corresponding one of the plurality of handles, wherein the line of weakness comprises an intermittent perforation interrupted by a separation aperture disposed between adjacent handle apertures of the each adjacent pair of the transverse ranks. Appeal Br. 13 (Claims App.). REJECTION ON APPEAL Claims 26, 27, 29-34, and 40 are rejected under 35 U.S.C. § 103 as being unpatentable over Smith4 and Olsen5. 4 US 3,778,096, issued Dec. 11, 1973. 5 US 6,182,821 B1, issued Feb. 6, 2001. Appeal 2021-004957 Application 15/366,941 3 ANALYSIS Claims 26 and 30 The Examiner finds that Smith discloses a flexible carrier for carrying containers, comprising a flexible sheet (sheet 16), an array of apertures (apertures 18) arranged in the flexible sheet in longitudinal rows and transverse ranks, and a line of weakness (slits 30) extending across the flexible sheet between each adjacent pair of transverse ranks, wherein the flexible carrier is separable into subcarriers along the lines of weakness between each adjacent pair of transverse ranks. Final Act. 3. The Examiner concedes that Smith does not disclose: (a) each transverse rank of sub- carriers includes a corresponding handle and one handle aperture; and (b) each handle aperture is formed in one of the longitudinal rows at a periphery, and along the longitudinal edge, of the flexible sheet to form a plurality of handles, as claimed. Id. The Examiner relies on Olsen as teaching a flexible carrier comprising a flexible sheet and an array of apertures including container apertures (openings 20) and handle apertures (at handles 35), wherein each handle aperture is formed in one of the longitudinal rows at a periphery, and along the longitudinal edge, of the flexible sheet to form a plurality of handles, and wherein each transverse rank of sub-carriers (with a plurality of openings 20) has a corresponding handle. Final Act. 3-4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Smith’s carrier to have one handle aperture for each transverse rank, as taught by Olsen, to make it easier to carry the containers either separately or together. Id. at 4. The Examiner also determines that the combination inherently discloses an intermittent perforation interrupted by a separation Appeal 2021-004957 Application 15/366,941 4 aperture (i.e., aperture 26 of Smith) disposed between adjacent handle apertures, as taught by Olsen, of each adjacent pair of the transverse ranks. Id. Appellant first contends that neither Smith nor Olsen discloses or suggests “longitudinal rows and transverse ranks of container apertures, where each and every transverse rank of the transverse ranks includes one handle aperture,” as claimed. Appeal Br. 8. Appellant submits that Olsen only teaches one handle aperture for two ranks, to form a six-pack, where the handle aperture (at handle 35) is not in any rank, but is centered between two ranks. Id. These contentions are unpersuasive. Appellant’s position appears to be premised on construing a “transverse rank” to require at least two container apertures and one handle aperture aligned with each other in the transverse direction of the flexible carrier. Appellant also appears to contend that this construction distinguishes the claimed structure over Olsen’s container carrier as depicted in Figure 3, for example. According to this position, in Figure 3 of Olsen, all six container openings 20 on opposite sides of tear line 50 are not aligned, in the transverse direction, with each other and with the opening in handle 35, and, accordingly, are not in a “transverse rank.” Appellant does not, however, direct us to a definition of “transverse rank” in the Specification that supports that position. But even accepting Appellant’s apparent construction of “transverse rank,” we agree with the Examiner that the applied combination discloses, or reasonably suggests, the claimed limitation “longitudinal rows and transverse ranks of container apertures, where each and every transverse rank of the transverse ranks includes one handle aperture.” The Examiner Appeal 2021-004957 Application 15/366,941 5 finds that Smith discloses transverse ranks each formed of at least two container apertures, and further that the flexible carrier is separable into sub- carriers along the lines of weakness between each adjacent pair of the transverse ranks. Ans. 4. The Examiner relies on Olson, not Smith, as disclosing handle apertures. Olsen discloses packages that can be divided into at least two sub-packages. See Olsen, col. 1, ll. 52-54. As emphasized by Olsen, “FIGS. 2 and 3 show 12 pack and 6 pack configurations of package 1 and sub-package 2, however, this invention may apply to any combination of package 1 divisible into two or more sub-packages 2.” See id. at col. 4, ll. 51-54 (bold face omitted, emphasis added). Accordingly, Olsen’s packages (and carriers) are not limited to only those illustrated that form six-packs including two sub-packages. Rather, Olsen reasonably suggests other combinations, such as a 12 pack configuration of the package and four sub-packages of three containers. Olsen further discloses that “carrier 10 may comprise any number of handles 30, 35.” See Olsen, col. 3, ll. 33-34 (boldface omitted, emphasis added). Thus, Olsen does not limit the packages to have only two handles 35 as shown in Figure 1, for example. Further, Figure 3 of Olsen shows each separated sub-package 2 including a corresponding handle 35. Olsen’s teachings regarding “any number” of sub-packages and handles encompass, for example, a combination of a 12 pack package and four sub-packages of three containers, each including a handle. Even though Olsen does not explicitly describe this combination, an Examiner is not required to “seek out precise teachings directed to the specific subject matter of the challenged claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, in an obviousness analysis, an Examiner can consider not only the express Appeal 2021-004957 Application 15/366,941 6 disclosures of the references, but also the “inferences and creative steps that a person of ordinary skill in the art would employ.” Id. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Under § 103, a prior art reference “must be considered not only for what it expressly teaches, but also for what it fairly suggests.” In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). In light of the teachings of Smith and Olsen, we agree with the Examiner that the combination of Smith and Olsen discloses, or reasonably suggests, “longitudinal rows and transverse ranks of container apertures, where each and every transverse rank of the transverse ranks includes one handle aperture,” as claimed. Appeal Br. 8. Second, Appellant contends that neither Smith nor Olsen discloses or suggests “each handle aperture formed in one of the longitudinal rows at a periphery of the flexible sheet along the longitudinal edge of the flexible sheet to form a plurality of handles,” as claimed. Appeal Br. 8. Appellant contends that Smith has no handle at the longitudinal edge of the flexible sheet, and Olsen discloses spaced-apart handles 35 which are not a part of any rank or longitudinal row of apertures. Id. These contentions are unconvincing. The Examiner does not rely on Smith as disclosing handle apertures. Appellant does not explain persuasively why the handle apertures in Olsens’ handles 35 are not at “a longitudinal edge” of carrier 10 in Figure 1, for example, or why these handle apertures are not part of “a longitudinal row” of apertures. Further, Smith discloses container carriers that are separable into carrier sections including at least two container apertures arranged in transverse rows. See, e.g., Smith Figs. 3, 4. Olsen’s teachings encompass each sub-package of containers including a corresponding handle. In the combination, each Appeal 2021-004957 Application 15/366,941 7 carrier section (or sub-package) would include at least two container apertures and a handle including a handle aperture. Third, Appellant contends that both Smith and Olsen fail to disclose or suggest “a line of weakness extending between the each adjacent pair of the transverse ranks, and including an intermittent perforation interrupted by a separation aperture disposed between adjacent handle apertures of the each adjacent pair of the transverse ranks,” as claimed. Appeal Br. 8-9 (emphasis added). Appellant asserts that Olsen’s handles 35 are “separated by a relatively large gap space,” and applying Olsen to Smith would still result in that gap between handles. Id. at 9. Appellant contends that Olsen does not support the Examiner’s position that the combination would inherently provide the recited intermittent portion of a line of weakness between handle apertures. Id. In the Reply Brief, Appellant asserts A portion of the line of weakness extends between, and connects, adjacent handle apertures in Appellant’s claimed invention. The intermittent perforation between the handle apertures must be manually torn to separate the handles of the sub-carriers. Olsen shows sub-carrier handles that are always separate and spaced apart, centered between more than one rank, and not connected by any perforation or other line of weakness. Adding the handles of Olsen to Smith does not provide Appellant’s ‘one-handle-per-rank’, with a line of weakness including an intermittent perforation interrupted by a separation aperture disposed between adjacent handle apertures of each adjacent pair of the transverse ranks. Appeal 2021-004957 Application 15/366,941 8 Reply Br. 3.6 Appellant’s contentions are unpersuasive. Figure 1 of Olsen shows adjacent handles 35 connected to each other along a portion of tear line 50, which allows the handles to be individually separated from carrier 10. As adjacent handles 35 are connected to each other by tear line 50, we disagree that handles 35 are “separated by a relatively large gap space.” Additionally, claim 26 does not recite that “a portion of the line of weakness . . . connects . . . adjacent handle apertures,” or that “the intermittent perforation . . . must be manually torn to separate the handles of the sub-carriers,” as Appellant contends. See Reply Br. 3 (emphasis added); Appeal Br. 13 (Claims App.). Nonetheless, in Olsen, a portion of tear line 50 would “be manually torn to separate the handles of the sub-carriers” each including a handle 35. In the combination, a sub-carrier handle would be provided for each rank, and adjacent sub-carrier handles would be connected by a line of weakness. The Examiner relies on Smith as teaching a separation aperture 26. Final Act. 3. Adding Olsen’s handles to Smith’s flexible carrier would result in “one-handle-per-rank,” and “a line of weakness including an intermittent perforation interrupted by a separation aperture disposed between adjacent handle apertures of each adjacent pair of the transverse ranks.” For the above reasons, we sustain the rejection of claim 26, and claim 30 which is not separately argued, as unpatentable over Smith and Olsen. 6 The Reply Brief also lacks page numbering. All citations herein to the Reply Brief are based on its pages being numbered consequently beginning with “1.” Appeal 2021-004957 Application 15/366,941 9 Claim 27 Claim 27 depends from 26 and recites, “the each and every transverse rank of the transverse ranks, with a corresponding handle aperture, is between two of the plurality of lines of weakness.” Appeal Br. 13 (Claims App.). Appellant contends that “Olsen has a handle 35 centered between two adjacent ranks,” and the combination does not inherently provide all the recited limitations of claim 27. Id. at 10. Appellant’s contention is unpersuasive for the reasons discussed above for claim 26. Accordingly, we sustain the rejection of claim 26 as unpatentable over Smith and Olsen. Claim 29 Claim 29 depends from 26 and recites that “the each handle aperture has a width greater than a corresponding container aperture in a respective rank.” Appeal Br. 14 (Claims App.). The Examiner finds that Olsen meets this limitation. Final Act. 4. Appellant disagrees, stating, “as shown in the figures, Olsen discloses a handle opening that is significantly thinner in a width direction (perpendicular to the longitudinal rows) than the openings 20.” Appeal Br. 10. The Examiner responds that Appellant’s Specification “does not recite any specific dimensions or locations of where the width is taken along the handle apertures or the container apertures, therefore, as far as can be determined the handle aperture in Olsen appear to have a width greater than the width of the container apertures.” Ans. 6. We agree with Appellant. Appellant’s Specification discloses that “[t]he handle aperture 35 preferably includes a width greater than a corresponding container aperture 25 in a respective rank.” Spec. 5. This aperture configuration is shown in Appellant’s Figures 1 and 3, in which Appeal 2021-004957 Application 15/366,941 10 handle apertures 35 have a greater dimension in the transverse direction perpendicular to the longitudinal direction of carrier 10. The Examiner has not shown that Olsen discloses the claimed limitation. Nor does the Examiner provide a rationale for modifying Olsen to meet the claimed relationship. Thus, we do not sustain the rejection of claim 29 as unpatentable over Smith and Olsen. Claim 31 Claim 31 depends from claim 26 and recites that “the flexible sheet comprises six or more handle apertures.” Appeal Br. 14 (Claims App.). The Examiner finds that the applied combination of Smith and Olsen meets this limitation. Final Act. 5. Appellant disagrees. Appeal Br. 10. Appellant’s contention is unpersuasive. Olsen discloses that the carrier may comprise any number of handles 30, 35, and further shows that each sub-package can include a corresponding handle 35. Accordingly, we sustain the rejection of claim 31 as unpatentable over Smith and Olsen. Claim 32 Claim 32 depends from claim 26 and recites “further comprising a bar code positioned on each of the plurality of handles.” Appeal Br. 14 (Claims App.). The Examiner finds that Olsen teaches a bar code 25 positioned on each handle. Final Act. 5. Appellant disagrees. Appeal Br. 10. Olsen discloses that “[e]ach handle 30, 35 preferably additionally comprises label 25 or other means for pricing package 1. Label 25 may be a UPC label or a price tag affixed with respect to handle 30, 35.” See Olsen, col. 3, lines 50-53 (emphasis added), Figs. 1-3. Appellant does not apprise us of error in the Examiner’s position that the applied combination Appeal 2021-004957 Application 15/366,941 11 would meet the bar code limitation. Accordingly, we sustain the rejection of claim 32 as unpatentable over Smith and Olsen. Claim 33 Claim 33 depends from claim 26 and recites, “each handle of the plurality of handles is attached to each adjacent handle along the intermittent perforation.” Appeal Br. 14 (Claims App.). The Examiner finds that the applied combination inherently discloses this limitation. Final Act. 5. Appellant contends that “the combination cannot inherently provide this limitation, as the handles 35 of Olsen are spaced well apart. The handles 35 are also not connected by Olsen’s separation line 50.” Appeal Br. 10. Appellant’s contention is unpersuasive for reasons discussed above for claim 26. Accordingly, we sustain the rejection of claim 33 as unpatentable over Smith and Olsen. Claim 34 Claim 34 depends from claim 26 and recites that “each handle of the plurality of handles is adapted for use with the flexible carrier undivided, and for a corresponding divided sub-carrier separately and individually.” Appeal Br. 14 (Claims App.). The Examiner finds that the applied combination meets this limitation. Final Act. 5. Appellant contends that “Olsen discloses one handle for a 12-pack with two handles for two six-packs. As there is a dedicated handle for the undivided carrier, it is not apparent/inherent that each handle can be used for the undivided carrier.” Appeal Br. 11. We agree with Appellant that Olsen shows handle 30 attached to the carrier when undivided (Fig. 1), but removed when the carrier is divided (Fig. 3). See also Olsen, col. 4, ll. 43-45. However, the Examiner does not Appeal 2021-004957 Application 15/366,941 12 propose modifying Smith’s container carrier to include handle 30. As Appellant does not apprise us of Examiner error in the Examiner’s proposed modification of Smith, we sustain the rejection of claim 34 as unpatentable over Smith and Olsen. Claim 40 Independent claim 40 recites substantially similar limitations as those in claim 26. Appeal Br. 15-16 (Claims App.). Appellant contends that “Olsen discloses one handle for more than one adjacent rank. Adding the Olsen handles to Smith would merely result in a handle configuration as shown in Olsen . . . .” Id. at 11. Appellant’s contention is unpersuasive for substantially the same reasons as discussed above for claim 26. Thus, we sustain the rejection of claim 40 as unpatentable over Smith and Olsen. CONCLUSION We affirm the rejection of claims 26, 27, 30-34, and 40, and reverse the rejection of claim 29. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26, 27, 29- 34, 40 103 Smith, Olsen 26, 27, 30-34, 40 29 Appeal 2021-004957 Application 15/366,941 13 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 IN PART