Ex Parte Cox et al

Patent Trial and Appeal Board

Jul 17, 2018

14095067 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/095,067 12/03/2013 Aaron R. Cox
116550 7590 07/19/2018
ZIP Group PLLC - IBM Storage
610 Kingsview Ln N
Minneapolis, MN 55447
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.
TUC920110034US2 1003
EXAMINER
MCNURLEN, SCOTT THOMAS
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
matt@zipgp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON R. COX, ZHENDE FU, and LEI R. LI
Appeal2016-005985
Application 14/095,067
Technology Center 3700
Before DANIELS. SONG, GEORGE R. HOSKINS, and LEE L. STEPINA,
Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Aaron R. Cox et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-20 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 International Business Machines Corporation is an applicant as provided
in 37 C.F.R. § 1.46. The Appeal Brief identifies the same entity as the real
party in interest. Appeal Br. 1.
Appeal2016-005985
Application 14/095,067
CLAIMED SUBJECT MATTER
Claim 1 illustrates the subject matter on appeal, and it recites:
1. A method of providing the reuse of transportation
packaging for the transport of an electronic device, the method
compnsmg:
providing a pattern on at least one surface of the
transportation packaging, the pattern defining a portion of the
transportation packaging to be removed from the transportation
packaging and assembled, the assembled pattern comprising a
first portion that engages with a first side of the electronic device
and a second portion that engages with a second side of the
electronic device.
Appeal Br. 13 (Claims App.).
REJECTIONS ON APPEAL
Claims 1, 2, 5-10, 13-15, and 17-20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Stone (US 2,240,024, iss. Apr. 29, 1941),
Anderson (US 2009/0250363 Al, pub. Oct. 8, 2009), and Shin
(US 4,648,548, iss. Mar. 10, 1987).
Claims 3, 4, 11, and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Stone, Anderson, Shin, and Fiallo (US 5,375,702, iss.
Dec. 27, 1994).
Claims 11 and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Stone, Anderson, Shin, and Epstein (US 6,149, 111, iss.
Nov. 21, 2000).
Claims 1, 2, 6-10, 14, 15, and 17 stand rejected on the ground of
nonstatutory obviousness-type double patenting, over claims 1-5 of Cox
(US 8,708,139 B2, iss. Apr. 29, 2014).
2
Appeal2016-005985
Application 14/095,067
Claims 3, 4, 11, and 12 stand rejected on the ground of nonstatutory
obviousness-type double patenting, over claim 1 of Cox in view of Fiallo.
Claims 5 and 13 stand rejected on the ground of nonstatutory
obviousness-type double patenting, over claim 1 of Cox in view of Stone
and Anderson.
Claims 11 and 16 stand rejected on the ground of nonstatutory
obviousness-type double patenting, over claim 1 of Cox in view of Epstein.
Claims 18-20 stand rejected on the ground of nonstatutory
obviousness-type double patenting, over claim 1 of Cox in view of Stone.
ANALYSIS
A. Obviousness based on Stone, Anderson, and Shin
(Claims 1, 2, 5-10, 13-15, and 17-20)
Claims 1, 2, and 5---8
In rejecting claim 1, the Examiner finds "Stone discloses providing a
pattern" which, when assembled, comprises first and second portions as
recited in the claim. Final Act. 2 ( emphasis added). The Examiner finds
"Stone fails to disclose the pattern being provided on transportation
packaging." Id. (emphasis added). The Examiner finds "Anderson discloses
various product accessories and supports being formed in a planar packaging
material (Figs. 1, 3; abstract), and Shin discloses forming removable patterns
in a transportation packaging blank [no citation provided]." Id. The
Examiner determines:
It would have been obvious to one of ordinary skill in the art to
form Stone's table in one panel of the transport packaging, as
taught by Anderson and Shin, to provide a table to support the
packaged product (for example, an electronic device), and to
eliminate the cost associated with a separate insert. Further, it
3
Appeal2016-005985
Application 14/095,067
would have also been obvious to one of ordinary skill in the art
to make this combination because it only involves combining
known prior art elements according to known methods to yield
predictable results.
Id.; see also Ans. 11-12 (expounding on obviousness rationale(s)).
Appellants argue, in part, that the Examiner errs by providing an
insufficient rationale for combining Stone, Anderson, and Shin, to reach the
invention of claim 1. See Appeal Br. 10-11. Appellants particularly
contend "the Examiner's rejection[] fail[s] to articulate reasoning with
rational underpinnings supporting the Examiner's determination of
obviousness." Id. at 11.
The Examiner bears the burden of providing a rational underpinning
sufficient to support the legal conclusion of obviousness. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007). We agree with Appellants'
argument that the rejection presently before us does not satisfy that burden.
The Examiner's principal rationale is that it would have been obvious
"to form Stone's table in one panel of the transport packaging, as taught by
Anderson and Shin, to provide a table to support the packaged product."
Final Act. 2 ( emphasis added). The Examiner does not cite any disclosure in
Stone to establish that Stone discloses transportation packaging for Stone's
bed table A. See id. We have not found any such disclosure from our own
review of Stone. Further, Stone indicates bed table A is "formed of
corrugated board, cardboard or similar material" and is ''produced from
blanks so shaped as to utilize substantially all of the sheet material." Stone,
pg. 1, col. 1, 11. 1-16 (emphasis added); see also id. at pg. 1, col. 1, 11. 27-37,
Figs. 1--4 (various views of assembled bed table A), Fig. 5 (plan view of
4
Appeal2016-005985
Application 14/095,067
sheet material blank used to form bed table A). Thus, Stone does not appear
to disclose forming bed table A from, as claimed, "a pattern defining a
portion of' a sheet of material "to be removed from" the material, much less
transportation packaging.
Therefore, we understand the rejection to propose the obviousness of
forming Stone's bed table A in the transportation packaging of Anderson or
of Shin, to support the respective packaged products disclosed in those
references. However, Anderson's packaged product is an article of furniture
such as desk 10, with various accessory products such as pencil holder 20
being formed from portions of the packaging used to contain the article of
furniture for shipping. Anderson, Abstract, Fig. 1, ,r,r 25-26. As generally
discussed in further detail below, the Examiner has not articulated a
sufficient reasoning with rational underpinnings to conclude that Stone's bed
table A would be used to support an article of furniture such as Anderson's
desk 10. As to Shin, the rejection fails to address the nature of the packaged
product( s) or the items formed from portions of the packaging used to
transport the packaged product (see, e.g., Shin, Fig. 1), much less establish a
benefit to supporting such product( s) or items with Stone's bed table A.
Thus, the Examiner has failed to set forth a rational basis for concluding that
it would have been obvious to modify the transportation packaging of either
Anderson or Shin to include a pattern for forming Stone's bed table A.
The rejection, more generally, refers to the benefits of using Stone's
bed table A "to support [any sort of] packaged product (for example, an
electronic device)." Final Act. 2. We agree with the Examiner that Stone's
bed table A would be useful to support a product, perhaps even including an
electronic device. The issue presently before us, however, is whether the
5
Appeal2016-005985
Application 14/095,067
rejection has established a rational underpinning for the asserted obviousness
of forming Stone's bed table A as a removable pattern on transportation
packaging which contains a product to be supported by the table. We
determine the rejection has not done so.
The rejection does not establish a rational relationship, based on the
evidence of record, between (a) the normal and expected usage of a table
such as Stone's bed table A to support products thereon, and (b) the notion
of transporting the table along with product(s) to be supported thereon. 2
Given that, we conclude the rejection is tainted by a hindsight consideration
of Appellants' Specification and claims. This becomes even more apparent
when considering the rejection as a whole, which posits that Stone's bed
table A could be used "to support" a packaged electronic device on the top
surface of the table while, at the same time, having portions 21 projecting
from the bottom surface of the table which are "capable of engaging" sides
of the electronic device. See Final Act. 2; Stone, Fig. 1. The rejection's
cursory reference to cost savings (Final Act. 2; Ans. 12) presumes the
obviousness of transporting a table along with product( s) to be supported on
the table, and does not overcome the taint of hindsight in that regard.
We, finally, disagree with the Examiner's conclusion that "combining
known prior art elements according to known methods to yield predictable
2 We acknowledge Anderson's disclosure of transporting desk 10 in
packaging having patterns for forming various accessories for desk 10, such
as pencil holder 20. Anderson, Fig. 1, ,r 26. Nonetheless, the Examiner's
rejection would reverse that disclosure, by transporting the accessories in
packaging having a pattern for forming Stone's bed table A to support the
accessories. The Examiner has not provided a rational basis for such a
modification of Anderson's disclosure.
6
Appeal2016-005985
Application 14/095,067
results," by itself, establishes obviousness. See Ans. 11-12. This
consideration, no doubt, can be an important part of the obviousness inquiry.
See KSR v. Teleflex, 550 U.S. at 415-16 (stating "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results," but also expressing "the need
for caution in granting a patent based on the combination of elements found
in the prior art") ( emphases added).
However, the fact that the cited prior art would have allowed for the
claimed invention, or possibly could be combined to reach the claimed
invention, is not a sufficient reasoning to support obviousness. Personal
Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991-92 & 993-94 (Fed. Cir.
201 7) ( obviousness requires "a motivation to pick out those two references
and combine them to arrive at the claimed invention," and "the amount of
explanation needed will vary from case to case, depending on the
complexity of the matter and the issues raised in the record"); In Touch
Techs., Inc. v. VGo Comms., Inc., 751 F.3d 1327, 1351-52 (Fed. Cir. 2014).
The present rejection, at best, establishes that the cited prior art could have
been combined predictably to reach the claimed invention, and does not
provide a rational underpinning for why this would have been done. See
Personal Web v. Apple, 848 F.3d at 993-94 (it is "not enough" that "a
skilled artisan, once presented with the two references, would have
understood that they could be combined").
For the foregoing reasons, we do not sustain the rejection of claim 1
as having been obvious over Stone, Anderson, and Shin. The Examiner's
additional consideration of dependent claims 2 and 5-8 does not cure the
noted deficiency as to their common parent claim 1. See Final Act. 2-3.
7
Appeal2016-005985
Application 14/095,067
Therefore, we likewise do not sustain the obviousness rejection of those
claims.
Claims 9, 10, 13-15, and 17-20
The Examiner's rejection of independent claim 9 suffers from the
same deficiency as the rejection of claim 1 discussed above. See Final
Act. 3--4. The Examiner's additional consideration of dependent claims 10,
13-15, and 17-20 does not cure the noted deficiency as to their common
parent claim 9. See id. at 3, 4. Therefore, we do not sustain the obviousness
rejection of these claims.
B. Obviousness based on Stone, Anderson, Shin, and Fiallo or Epstein
(Claims 3, 4, 11, 12, and 16)
The Examiner's additional consideration of dependent claims 3, 4, 11,
12, and 16, and of Fiallo and Epstein, does not cure the noted deficiency as
to independent claims 1 and 9 noted above. See Final Act. 5. Therefore, we
do not sustain the obviousness rejections of these claims.
C. Double Patenting Rejections
The Office Action on appeal rejects all pending claims 1-20 on the
ground of nonstatutory obviousness-type double patenting over one or more
claims of Cox, either alone or in view of other prior art. See Final Act. 5-9.
The Appeal Brief does not address these double patenting rejections in any
fashion. The Reply Brief acknowledges the double patenting rejections, and
states: "A Terminal Disclaimer has been filed to overcome such
rejection[s]." Reply Br. 1. Our review of the record indicates the Terminal
Disclaimer was filed on the same day as the Reply Brief (May 19, 2016).
8
Appeal2016-005985
Application 14/095,067
We refuse to consider the argument presented in the Reply Brief, and
the accompanying Terminal Disclaimer, because they were not presented in
the Appeal Brief, thereby depriving the Examiner of an opportunity to
address the argument and Terminal Disclaimer. See 37 C.F.R.
§§ 4I.37(c)(l)(iv), 41.41(b). We, therefore, summarily sustain the double
patenting rejections. See id.; In re Baxter Int'!, Inc., 678 F.3d 1357, 1362
(2012) (argument waived when not timely presented in briefing to the
Board, absent exceptional circumstances). In the event of further
prosecution of this application, the Examiner of course remains free to
determine what effect (if any) the Terminal Disclaimer has on the double
patenting rejections.
DECISION
The various obviousness rejections of claims 1-20 are each reversed.
The various double patenting rejections of claims 1-20 are each
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9