Ex Parte 7415812 et al

Patent Trial and Appeal Board

Dec 30, 2015

90012418 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/012,418 09/12/2012
22884 7590 12/30/2015
MIDDLETON & REUTLINGER
401 S. 4th Street, Suite 2600
(2600 Brown & Williamson Tower)
LOUISVILLE, KY 40202
FIRST NAMED INVENTOR
7415812
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.
0358-0152 8913
EXAMINER
DEMILLE, DANTON D
ART UNIT PAPER NUMBER
3993
MAILDATE DELIVERY MODE
12/30/2015 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 BRITISH AMERICAN TOBACCO (INVESTMENTS) LIMITED,
Appellant
Appeal2014-008224
Reexamination Control 90/012,418
Patent 7,415,812 B2 1
Technology Center 3900
Before MICHAEL C. ASTORINO, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the
Examiner's decision rejecting claims 1-3 and 6-42. Appeal Br. 6; Final
Act. 1. The Examiner has confirmed claims 4, 5, and 43--46 as patentable.
Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Issued Aug. 26, 2008, hereinafter "'812 patent."
Appeal2014-008224
Patent 7,415,812 B2
Reexamination Control 90/012,418
Claimed Subject Matter
Claims 1, 30, and 41 are the independent claims on appeal. Claim 41,
reproduced below, is illustrative of the subject matter on appeal.
41. A system providing a cigarette packing machine, the
machine consisting of three separate units, a first cigarette
bundle wrapping unit, a second cigarette bundle wrapping unit
and a third pack combining unit which partially surrounds said
first and second cigarette bundles with an outer frame.
Rejections
I. Claims 1, 3, 23, 24, 30, 33, 38, 39, 41, and 42 are rejected under
35 U.S.C. § 102(b) as being clearly anticipated by Focke '528 (US
4,258,528, iss. Mar. 31, 1981 ).
II. Claims 2, 8, 9, and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528.
III. Claims 3, 6, 7, 31, 32, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Focke '528 and Brizzi '842 (US 5,461,842,
iss. Oct. 31, 1995).
IV. Claims 10, 12-15, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Focke '528, Brizzi '842, and Brizzi '745 (US
5,680,745, iss. Oct. 28, 1997).
V. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528, Brizzi '842, Brizzi '745, and David (US 3,922,837, iss.
Dec. 2, 1975).
VI. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528, Brizzi '842, Brizzi '745, and Minarelli (US 5,647,190, iss.
July 15, 1997).
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VII. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528, Brizzi '842, Brizzi '745, and Rebsamen (US
4,135,346, iss. Jan. 23, 1979).
VIII. Claims 21and22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528, Brizzi '842, Brizzi '745, and Graybill (US
3,944,049, iss. Mar. 16, 1976).
IX. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528 and Focke '161 (US 6,491,161 Bl, iss. Dec.
10, 2002).
X. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528 and Focke '883 (DE 42 02 883 Al, pub. Aug.
4, 1993).
XI. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528 and Boldrini (US 4,962,628, iss. Oct. 16, 1990).
XII. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528 and Focke '393 (US 4,084,393, iss. Apr. 18, 1978).
XIII. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528, Boldrini, and Gandolfi (Italy Patent No. 1321004, pub.
May 4, 2000).
XIV. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Focke '528, Focke '393, and Gandolfi.
XV. Claims 35 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Focke '528 and Gandolfi.
XVI. Claims 1, 3, 6, 7, 10, 14, 15, 17, 23, 24, 30, 36-39, 41, and 42
are rejected under 35 U.S.C. § 102(b) as being anticipated by Brizzi '842.
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XVII. Claims 8, 9, 19, 20, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brizzi '842.
XVIII. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842 and David.
XIX. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842 and Minarelli.
XX. Claims 21and22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brizzi '842 and Rebsamen.
XXL Claims 21and22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brizzi '842 and Graybill.
XXII. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brizzi '842 and Focke '161.
XXIII. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brizzi '842 and Focke '883.
XXIV. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842 and Boldrini.
XXV. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842 and Focke '393.
XXVI. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842, Boldrini, and Gandolfi.
XXVII. Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brizzi '842, Focke '393, and Gandolfi.
XXVIII. Claims 35 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brizzi '842 and Gandolfi.
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XXIX. Claims 1-3, 6-10, 14, 15, 17-20, 23, 24, 30-32, and 35--40 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Gandolfi and
Brizzi '842.
XXX. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gandolfi, Brizzi '842, and David.
XXXI. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gandolfi, Brizzi '842, and Minarelli.
XXXII. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gandolfi, Brizzi '842, and Rebsamen.
XXXIII. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gandolfi, Brizzi '842, and Graybill.
XXXIV. Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gandolfi, Brizzi '842, and Focke '161.
XXXV. Claims 27-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gandolfi, Brizzi '842, and Focke '883.
XXXVI. Claims 33 and 34 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Gandolfi, Brizzi '842, Focke '528, and Boldrini.
XXXVII. Claims 33 and 34 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Gandolfi, Brizzi '842, Focke '528, and Focke '393.
ANALYSIS
Rejections I-XV
Independent claims 1 and 30, and dependent claims 2, 3, 6-29, and 31-40
The Appellant contends that the Examiner erred in finding that tinfoil
wrappers 27 correspond to "a first inner frame blank member A" and "a
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second inner frame blank member B" as recited in independent claim 1, and
similarly recited in independent claim 30. See Appeal Br. 15-16, Reply
Br. 6. The Appellant's contention is persuasive.
The Examiner explains how foil wrappers 27 can be considered an
inner wrapper, and as such, an inner member, and also a blank. See
Ans. 41--43. However, the Examiner fails to explain, and we fail to
ascertain, how a person of ordinary skill in the art would understand foil
wrappers 27 as a frame. Accordingly, it is unclear how a person of ordinary
skill in the art would have understood foil wrappers 27 to correspond to
inner frame blank members as required by claims 1 and 30.
Thus, the Examiner's rejection (i.e., Rejection I) of independent
claims 1 and 30, and dependent claims 3, 23, 24, 33, 38, and 39, as being
clearly anticipated by Focke '528, is not sustained. Rejections II-XV based
on the aforementioned errant finding are likewise not sustained.
Independent claim 41 and dependent claim 42
We have considered the Appellant's arguments against the
Examiner's rejection of independent claim 41 as being clearly anticipated by
Focke '528 and have determined that they are unpersuasive. We note that
the Appellant's arguments are directed primarily to the Examiner's rejection
of independent claims 1 and 30, which recite the phrase, "partially about."
See Appeal Br. 12-16, Reply Br. 3-6. Independent claim 41 does not recite
the phrase "partially about," instead reciting "partially surrounds." See
Reply Br. 3, n. 1.
The Examiner's rejection of claim 41 reads "Focke '528 consists of
three separate units, a first cigarette bundle wrapping unit 21, a second
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cigarette bundle wrapping unit 22 and a third pack combining unit 15 which
partially surrounds said first and second cigarette bundles with an outer
frame 10." Final Act. 6. The Examiner's findings for the rejection of
independent claim 41 are supported by a preponderance of the evidence. 2
The Appellant's contention that Focke '528 fails to disclose that "a
third pack combining unit which partially surrounds said first and second
cigarette bundles with an outer frame," as recited in claim 41, because
Focke's cigarette pack is wrapped entirely around and completely encloses
cigarette bundles is unpersuasive. Appeal Br. 12-14, 16-1 7.
Notably, independent claim 41 does not require that third pack
combining unit partially surrounds said first and second cigarette bundles
with an outer frame at any particular point during its operation, e.g., at a
time when the packaging is complete. But see Reply Br. 4. Rather claim 41
recites, "a third pack combining unit which partially surrounds said first and
second cigarette bundles with an outer frame," which reads on the point
during use of Focke '528's third pack conveying unit 15 when the lid of
outer blank member 10 is open while cigarette bundles 11 and 12 are
situated within outer blank member 10. See Focke '528, Fig. 1.
Thus, the Examiner's rejection (i.e., Rejection I) of claim 41 as clearly
anticipated by Focke '528 is sustained. The Appellant does not separately
argue the Examiner's rejection of claim 42 as clearly anticipated by
Focke '528 or the Examiner's rejection (i.e., Rejection II) of claim 41 as
2 Notably, the Examiner's rejection of independent claim 41 does not rely
on the Examiner's errant findings with regards to the rejection of claims
independent claims 1 and 30 as being clearly anticipated by Focke '528.
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unpatentable over Focke '528. As such, these rejections of claims 41 and 42
are likewise sustained.
Rejections XVI-XXVIII
Independent claims 1 and 30, and dependent claims 2, 3, 6-29, and 31-40
Independent claim 1 requires a "first cigarette wrapping unit" and a
"second cigarette wrapping unit," wherein "the first cigarette wrapping unit
is operable to assemble a first inner frame blank member A about a first
bundle of cigarettes" and "the second cigarette wrapping unit is operable to
assemble a second inner frame blank member B about a second bundle of
cigarettes." Appeal Br., Claim App. Independent claim 30 includes similar
requirements. See id.
The Appellant contends that the Examiner erred in finding that wheel
30 of Brizzi '842 includes structures that correspond to the "first cigarette
wrapping unit" and the "second cigarette wrapping unit" as required by
claims 1 and 30 because Brizzi '842 discloses that "bundles [are dropped]
into the double collar ( 46) (see Brizzi Fig. 2, annotated [in the Appeal Brief
at page 20] ... ), and as such the double collar ( 46) is not wrapped about
cigarette bundles." Appeal Br. 20-21. The Appellant's contention is
persuasive.
The Examiner finds that double collar 46 corresponds to the first inner
frame blank member A and the second inner frame blank member B. Final
Act. 18-19. As such, wheel 30 ofBrizzi '842 must be operable to assemble
a double collar 46 about a first bundle of cigarettes and about a second
bundle of cigarettes. However, wheel 30 does not appear operable to
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assemble double collar 46 about a first bundle of cigarettes and about a
second bundle of cigarettes. See Appeal Br. 20-21. Rather, as pointed out
by the Appellant, "at the point the double collar ( 46) of Brizzi is folded, it
still has not yet been combined with any cigarette bundle." Appeal Br. 21.
Instead, both bundles of cigarettes are inserted together into double collar 46
at station 38 of wheel 30 in Figure 2. See Brizzi '842, col. 3, 11. 21-37.
Accordingly, we are persuaded that the Examiner has failed to show that
Brizzi '842 discloses a first cigarette wrapping unit to assemble a first blank
member A about a first bundle of cigarettes and a second cigarette wrapping
unit operable to assemble a second inner frame blank member B about a
second bundle of cigarettes, as recited in independent claim 1 (and the
similar limitation in independent claim 30).
Thus, the Examiner's rejection (i.e., Rejection XVI) of independent
claims 1 and 30, and dependent claims 3, 6, 7, 10, 14, 15, 17, 23, 24, and
36-39, as being anticipated by Brizzi '842, is not sustained. Rejections
XVII-XXVIII are based on the aforementioned errant finding and are
likewise not sustained.
Independent claim 41 and dependent claim 42
We have considered the Appellant's arguments against the
Examiner's rejection of independent claim 41 as being anticipated by
Brizzi '842 and have determined that they are unpersuasive. We note that
the Appellant's arguments are directed primarily to the Examiner's rejection
of independent claims 1 and 30, which recite the phrase "partially about."
See Appeal Br. 17-21, Reply Br. 3-6. As discussed above, independent
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claim 41, does not recite the phrase "partially about," instead reciting
"partially surrounds." See Reply Br. 3, fn. 1.
The Examiner's rejection of claim 41 reads:
Brizzi teaches a first cigarette bundle wrapping unit at input
portion 4, a second cigarette bundle wrapping unit 44 and a
third pack combining unit 45,47. Brizzi doesn't clearly show
the third pack combining unit however it is described in the
specification in column 3, lines 40-45 and column 5, lines 15-
19. The third pack combining unit 45,47 would partially
surround the first and second cigarette bundles and then
completely surround the first and second cigarette bundles.
Final Act. 20. The Examiner's findings for the rejection of independent
claim 40 are supported by a preponderance of the evidence. 3
The Appellant's contention that Brizzi '842 fails to disclose that "a
third pack combining unit which partially surrounds said first and second
cigarette bundles with an outer frame," as recited in claim 41, because Brizzi
'842 cigarette pack is wrapped entirely around and completely encloses
cigarettes bundles, is unpersuasive. Appeal Br. 17-19.
As discussed above, independent claim 41 does not require that the
third pack combining unit partially surrounds said first and second cigarette
bundles with an outer frame at any particular point during its operation.
Rather claim 41 recites, "a third pack combining unit which partially
surrounds said first and second cigarette bundles with an outer frame,"
which reads on the point during use of Brizzi '842's third pack conveying
unit 45, when the lid of the outer blank member is open while the cigarette
3 Notably, the Examiner's rejection of independent claim 41 does not rely
on the Examiner's errant findings with regards to the rejection of claims
independent claims 1 and 30 as being anticipated by Brizzi '842.
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bundles are situated within the outer blank member. See Brizzi '842, Fig. 1,
Ans. 45.
Thus, the Examiner's rejection of claim 41 as anticipated by
Brizzi '842 is sustained. The Appellant does not separately argue the
Examiner's rejection of claim 42 as clearly anticipated by Brizzi '842. As
such, the Examiner's rejection of claim 42 is likewise sustained.
Rejections XXIX-XXXVII
The Appellant contends that the Examiner's combination of Gandolfi
and Brizzi '842 fails to render obvious independent claims 1 and 30. Appeal
Br. 21.
In contrast, the Examiner has determined that the prior art references
of Gandolfi and Brizzi '842 disclose the subject matter of claims 1 and 30
and that the combination of references would have been obvious. Final
Act. 28-30. The Examiner's findings suggest that the Examiner relies on
Gandolfi to disclose three blanks, as shown in Figure 13, which are joined
together to result in a hinged-lid book-opening packet. Final Act. 28 (citing
to Gandolfi, Figs. 1, 3, 13). The Examiner finds that "Gandolfi is non-
specific about the manner in which the blanks 56, 57, 58 would be formed
about the groups 6 of cigarettes" (id. at 29) and that Brizzi '842 remedies the
deficiency of Gandolfi's teachings with regard to the subject matter of
claims 1 and 30. See id. at 29-30.
The Appellant asserts, "[ n ]either Brizzi nor Gandolfi make any
suggestion or provide any motivation to combine the packaging as the
Examiner has done, particularly since the Brizzi machinery and pack differ
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significantly from that of Gandolfi." Appeal Br. 23. In particular, "Brizzi
discloses side by side half packs wherein Gandolfi discloses full width
packaging" and "[ s ]uch machinery in Brizzi is not capable of handling such
blanks." Id. at 24; see id. at 25. The Appellant's contention is persuasive.
Put simply, we fail to see how a person of ordinary skill in the art, after
reviewing the teachings associated with Gandolfi's blanks 56, 57, 58 to
make full width packaging and the teachings associated with Brizzi's
machinery to make side by side half packs would seek to combine those
teachings without using the benefit of impermissible hindsight. See Appeal
Br. 21-25, Reply Br. 7-8.
Thus, the Examiner's rejection (i.e., Rejection XXIX) of claims 1-3,
6-10, 14, 15, 17-20, 23, 24, 30-32, and 35--40, as unpatentable over
Gandolfi and Brizzi '842, is not sustained. The Examiner's rejections (i.e.,
Rejections XXX-XXXVII) based on the aforementioned errant reasoning
are likewise not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-3 and 6-
40.
We AFFIRM the Examiner's decision rejecting claims 41 and 42.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c).
AFFIRMED-IN-PART
msc
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PATENT OWNER:
MIDDLETON & REUTLINGER
401 S. 4TH STREET, SUITE 2600
(2600 BROWN & WILLIAMSON TOWER)
LOUIEVILLE, KY 40202
THIRD PARTY REQUESTER:
COOK ALEX LTD.
200 WEST ADAMS STREET
SUITE 2850
CHICAGO, IL 60606
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