Sonoco Development, Inc.Download PDFPatent Trials and Appeals BoardJun 1, 20212020003041 (P.T.A.B. Jun. 1, 2021) Copy Citation 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. 14/518,275 10/20/2014 Michael L. Thornton 29958/09014 6654 27530 7590 06/01/2021 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center, Suite 2300 301 South College Street Charlotte, NC 28202 EXAMINER AXTELL, ASHLEY ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 06/01/2021 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL L. THORNTON and R. MICHAEL SCHOCK Appeal 2020–003041 Application 14/518,275 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and GEORGE C. BEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 11–17, 22–28, 30–33, and 38–42. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sonoco Development, Inc. Appeal Br. 1. Appeal 2020-003041 Application 14/518,275 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A container for housing at least two different products in a separated environment, the container, when filled with the at least two different products, consisting essentially of: a container housing, the container housing having a first closed end and a second closed end; at least a first product and a second product within the container housing, wherein the first product is different from the second product, wherein the first product is located within the container housing adjacent to the first closed end and wherein the second product is located within the housing adjacent to the second closed end; a separate product container housing the second product and located adjacent to the second end and wherein the separate product container comprises at least one open end; and at least one removable, flexible divider comprising more than 50% papermaking fibers and located within the container housing between the first product and the separate product container housing so as to separate the first product from the second product, wherein the at least one divider is sized to be larger than the exterior size of the separate product container and is placed onto the at least one open end of the separate product container such that the divider overhangs an edge of the separate product container, wherein the divider is adhered onto the at least one open end of the separate product container and adhered to the walls of the interior of the container housing, and wherein the first product is separated from the second product until the removable divider is removed from the separate product container. Appeal Br. 12–13 (Claims Appendix). Appeal 2020-003041 Application 14/518,275 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Stern US 1,793,526 Apr. 8, 1929 Porter US 1,754,524 Apr. 15, 1930 Courtney US 2,321,660 June 15, 1943 Zoeller US 2,949,369 Oct. 29, 1956 Adams US 819,960 Sept. 9, 1958 Aldington US 2,864,546 Dec. 16, 1958 Palmer US 3,561,664 Feb. 9, 1971 Lowry US 6,092,717 July 25, 2000 Kraklow US 6,500,475 B1 Dec. 31, 2002 Lee US 2014/0305818 A1 Oct. 16, 2014 THE REJECTIONS 1. Claims 1–3, 11–17, 22, 24–26, 31–33, 38–40, and 42 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 13–17, 22, 26, 31, 32, 38–40, and 42 are rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter, Palmer, and Lowry. 3. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as unpatentable over Zoeller, Porter, Palmer, Lowry, and further in view of Aldington. 4. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Zoeller, Porter, Palmer, Lowry, and further in view of Courtney. 5. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter, Palmer, Lowry, and further in view of Kraklow. Appeal 2020-003041 Application 14/518,275 4 6. Claims 33, 38, and 42 are rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter, Palmer, Lowry, and further in view of Stern. 7. Claims 27, 28, 30, and 41 are rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter. 8. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter, Palmer, and further in view of Lowry. 9. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Zoeller in view of Porter and further in view of Palmer. 10. Claims 1, 13–17, 22, 31, 32 and 40 are rejected under 35 U.S.C. § 103 as unpatentable over Adams in view of Lee, Palmer, and further in view of Lowry. 11. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as unpatentable over Adams in view of Lee, Palmer, Lowry, and further in view of Aldington. 12. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Adams in view of Lee, Palmer, Lowry, and further in view of Courtney. 13. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Adams in view of Lee, Palmer, Lowry, and further in view of Kraklow. 14. Claim 33, 38, 39, and 42 are rejected under 35 U.S.C. § 103 as unpatentable over Adams in view of Lee, Palmer, Lowry, and further in view of Stern. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), Appeal 2020-003041 Application 14/518,275 5 cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections essentially for the reasons provided by Appellant in the record, adding the following for emphasis. Rejection 1 It is the Examiner’s position that that the combination of the divider being removable and also adhered to the housing walls and separate product container, as set forth in claim 1 and its dependent claims, does not meet the written description requirement. Final Act. 2–3. The Examiner states that while the Specification discloses use of an adhesive, the Specification does not disclose the particular type of adhesive that would be capable of allowing the divider to be removed from the walls of the container housing or separate product container. Final Act. 2–3. We agree with Appellant that because the type of adhesive would have been known to one skilled in the art, the written description requirement is satisfied. Appeal Br. 3–4. We note that the test for sufficiency of a written description is “[whether the disclosure] clearly ‘allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). “Because the specification is viewed from the perspective of one of skill, in some circumstances, a patentee may rely Appeal 2020-003041 Application 14/518,275 6 on information that is ‘well-known in the art’ for purposes of meeting the written description requirement.” Boston Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011). In view of the above, we reverse Rejection 1. Rejections 2–9 Rejections 2–9 use Zoeller as the primary reference. Appellant argues that modifying Zoeller to have a flexible divider would change the basic principle under which Zoeller’s construction was designed to operate. Appeal Br. 8–9. Appellant explains that Zoeller’s divider is rigid and is ram-driven into position, so much so that the container sidewall is slightly deformed by the divider. Zoeller, col. 3, ll. 43-49. Appeal Br. 7. Appellant states that Zoeller’s divider is “embedded” into the can’s sidewall. Zoeller, col. 3, lines 24-26. Appellant states that the fit between Zoeller’s rigid divider and the can wall is so tight that “a very slight budge is visibly perceptible on the exterior surface of the can sidewall”. Zoeller, col. 3, ll. 22–24. Appeal Br. 7. Appellant further states that nature of Zoeller’s pressurized container is indicative of the selection of a rigid divider which is ram-driven and embedded into the can’s sidewall. Appeal Br. 7. We are persuaded by this line of argument. In response, the Examiner states that this line of argument is a non-analogous art argument. Ans. 8. But we agree with Appellantthat this is not what Appellant argues; rather Appellant argues that the proposed modification would change Zoeller’s basic principle of operation for the reasons reiterated therein. Reply Br. 5–6. Hence, the Examiner’s response insufficiently addresses Appellant’s stated position. We also note that “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art Appeal 2020-003041 Application 14/518,275 7 invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959). In view of the above, we reverse Rejections 2–9. Rejections 10–14 With regard to the rejections involving Adams as the primary reference (Rejections 10–14), Appellant argues, inter alia, that the proposed modification of Adams would change Adams’s principle operation for the reasons expressed on pages 9–10 of the Appeal Brief. Therein, Appellant explains that Adams teaches a puncturable diaphragm which is not removable. Appeal Br. 9. Appellant states that after puncturing Adams’s diaphragm, Adams’s invention is designed to be shaken to intermix the contents thereof. Id. Appellant states that there is no teaching in Adams that puncturing its diaphragm would remove any aspect of the divider itself. Id. Rather, Appellant submits that the logical conclusion would be that a puncture (such as by a screwdriver, as suggested by Adams) forms a hole in the divider without any portion of the divider being removed. Id. In response to this argument, the Examiner states that Adams’s divider can be removed.2 Ans. 10. However, this misses Appellant’s point, which is that modifying Adams to replace its puncturable divider with a removable divider would change the principle of operation under which Adams’s construction was intended to operate. Reply Br. 7. 2 Appellant argues that there is no disclosure in Adams that indicates that the divider is capable of being removed. Reply Br. 7. Appeal 2020-003041 Application 14/518,275 8 The Examiner acknowledges that Adams desires for the contents of the package to be able to be held separately until they need to be mixed. Ans.10. Appellant states that Adams further teaches that it is an “object of the invention so to construct the container that the contents thereof can be mixed without removal thereof from the container.” Adams, col. 1, ll. 18- 20. Reply Br. 7. Appellant explains that one of the purposes of Adams’s diaphragm being puncturable rather than removable is so that the contents can be mixed without pre-removal of any contents from the container. Id. Appellant states that in Adams, “when it is desired to effect mixing of the contents of the container . . . the diaphragm 8 is ruptured by the insertion of an implement, such as a screw-driver, through the open mouth of the container and the contents thereof.” Adams, col. 3, ll. 4–10. Reply Br. 7. Appellant explains that thus the implement must be inserted through the open mouth of the container and through the contents themselves to rupture the diaphragm, and this allows intermixing without removal of the contents. Reply Br. 7–8. Appellant states that if Adams’s invention were modified to provide a removable divider rather than puncturable diaphragm, the user would be forced to remove the contents from the container before removing the divider, thereby destroying the basic principle of Adams’s invention. Reply Br. 8. Appellant submits that there would be no logical way to remove the divider without first removing at least part of the container contents. Reply Br. 8. Appellant therefore submits that because the removable divider could not be removed without removal of at least some of the contents first, the object of Adams’s invention (intermixing of the container contents without removal thereof from the container) would be destroyed. Appeal 2020-003041 Application 14/518,275 9 We are persuaded by Appellant’s aforementioned arguments and thus reverse Rejections 10–14. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 11–17, 22, 24–26, 31–33, 38– 40, 42 112 Written Description 1–3, 11–17, 22, 24–26, 31–33, 38– 40, 42 1, 13–17, 22, 26, 31, 32, 38–40 103 Zoeller, Porter, Palmer, Lowry 1, 13–17, 22, 26, 31, 32, 38–40 2, 3 103 Zoeller, Porter, Palmer, Lowry, Aldington 2, 3 24 103 Zoeller, Porter, Palmer, Lowry, Courtney 24 25 103 Zoeller, Porter, Palmer, Lowry, Kraklow 25 33, 38, 42 103 Zoeller, Porter, Palmer, Lowry, Stern 33, 38, 42 27, 28, 30, 41 103 Zoeller, Porter 27, 28, 30, 41 11 103 Zoeller, Porter, Palmer, Lowry 11 12 103 Zoeller, Porter, Palmer, Lowry 12 Appeal 2020-003041 Application 14/518,275 10 1, 13–17, 22, 31, 32, 40 103 Adams, Lee, Palmer, Lowry 1, 13–17, 22, 31, 32, 40 2, 3 103 Adams, Lee, Palmer, Lowry, Aldington 2, 3 24 103 Adams, Lee, Palmer, Lowry, Courtney 24 25 103 Adams, Lee, Palmer, Lowry, Kraklow 25 33, 38, 39, 42 103 Adams, Lee, Palmer, Lowry, Stern 33, 38, 39, 42 Overall Outcome 1–3, 11–17, 22–28, 30– 33, 38–42 REVERSED Copy with citationCopy as parenthetical citation