Sonoco Development, Inc.

Patent Trials and Appeals Board

Jun 1, 2021

2020003041 (P.T.A.B. Jun. 1, 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.
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