Ex Parte Folchini et al

Patent Trial and Appeal Board

Feb 27, 2019

13696946 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/696,946 11/08/2012
23486 7590 03/01/2019
SHUTTLEWORTH & INGERSOLL, P.L.C.
115 3RD STREET SE, SUITE 500
P.O. BOX 2107
CEDAR RAPIDS, IA 52406
FIRST NAMED INVENTOR
Enrico Folchini
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.
24409-0002 1966
EXAMINER
MACKEY, PATRICK HEWEY
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
kathyi@shuttleworthlaw.com
uspto@shuttleworthlaw.com
deanna@shuttleworthlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRICO FOLCHINI and MARIO CASAZZA 1
Appeal2018-005343
Application 13/696,946
Technology Center 3600
Before: EDWARD A. BROWN, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
7, 9-12, 14--16, and 21-23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief indicates that Contego Packaging is the real party in
interest. Appeal Br. 2.
Appeal2018-005343
Application 13/696,946
CLAIMED SUBJECT MATTER
The claims are directed to a medicine information insert and method
of making it. Claim 1, reproduced below with emphasis added, is illustrative
of the claimed subject matter:
1. A medicine package comprising:
a medicine information insert provided in an interior of the
medicine package, the medicine information insert comprising:
a plurality of sheets, made of paper;
the sheets being fixed together at a respective joining zone;
the sheets being superposed over each other such that sheet
surfaces constituting large planar surfaces of the sheets are in
contact with each other, the joining zone being located at an edge
of the sheets;
wherein each sheet of the insert comprises a fold line, the
fold line of each sheet being superposed over fold lines of other
sheets in the insert, thus forming a series of parallel fold lines
parallel to the joining zone;
wherein the series of parallel fold lines parallel to the
joining zone are suitable for folding the entirety of the unfolded
insert onto itself through a single folding action about the
superposed series of fold lines parallel to the joining zone
without requiring any further folding;
wherein the entirety of the insert is an entire area of all the
sheets of the insert;
wherein each sheet of the insert also comprises a series of
parallel fold lines perpendicular to the joining zone.
Br. 14 (Claims App.).
Appellants indicate that Figure 3 depicts a fold line (reference number
8) as recited in claim 1, and we reproduce this figure below.
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Appeal2018-005343
Application 13/696,946
FIG 3
Appellants Figure 3 depicts insert 1 in perspective, identifying fold lines 8,
joining zone 5, and sheets 2. Spec. ,r 57.
REFERENCES RELIED ON BY THE EXAMINER
Wilen
Denny
Vijuk
US 6,752,427 Bl
US 2005/0098934 Al
US 6,964,413 B2
REJECTIONS
June 22, 2004
May 12, 2005
Nov. 15, 2005
I. Claims 1-5, 9-12, 14--16, 21, and 23 are rejected under 35
U.S.C. § I03(a) as unpatentable over Wilen and Vijuk.
II. Claims 6, 7, and 22 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wilen, Vijuk, and Denny.
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Appeal2018-005343
Application 13/696,946
OPINION
Rejection I
The Examiner finds that Wilen teaches many of the elements recited
by claim 1, including an information insert and a series of parallel fold lines
parallel to a joining zone and that are suitable for folding the entirety of the
unfolded insert onto itself. Non-Final Act. 2-3. Specifically, the Examiner
refers to longitudinal fold line 15 and spine 51, depicted in Figure 4 of
Wilen, respectively, for the recited fold line(s) and joining zone. Id.
Appellants argue that Figure 4 of Wilen depicts an unfolded insert, but
does not depict any single fold line that is parallel to the joining zone (spine
51) and that allows for folding the entirety of the unfolded insert onto itself.
Br. 10.
In response, the Examiner states, "[t]he claims merely require fold
lines parallel to the joining zone which could be used for folding the entirety
of an unfolded insert onto itself." Ans. 6. The Examiner finds that in
Figures 4 and 7 of Wilen, structures identified by reference numbers 15, 58,
and 67 are fold lines that are "'suitable' for folding the entirety of the
unfolded insert onto itself." Id.
Appellants have the better position because, in Figures 4 and 7 of
Wilen, longitudinal fold line 15 does not allow folding of the entirety of the
unfolded insert onto itself when the insert is in the unfolded state. With
respect to Figure 4 of Wilen, the sequence of folding steps set forth in
column 7, lines 18-27 causes (i) panel Z to fold onto panel Y, then (ii) the
combination of panels Y /Z folds onto panel X. Finally, this combination of
panels X/Y/X folds over longitudinal fold line 15. Thus, in the unfolded
state, longitudinal fold line 15 is actually three separate segments, two of
which face a first direction (e.g., into the page as shown in Figure 4) and one
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Appeal2018-005343
Application 13/696,946
of which faces a second direction opposite the first direction (e.g., out of the
page as shown in Figure 4). Only after Wilen's insert is folded in steps (i)
and (ii) discussed above does longitudinal fold line 15 function to allow
folding of the entirety of the insert upon itself. In other words, longitudinal
fold line 15 does not perform this function when the insert depicted in Figure
4 of Wilen is in an unfolded state as required by claim 1. Thus, Figure 4 and
the supporting description does not support the Examiner's finding that
longitudinal fold line 15 qualifies as the fold line ( or series of fold lines)
recited in claim 1.
The embodiment of the insert disclosed in Figure 7 of Wilen suffers
from the same deficiency. As discussed in column 7, lines 46-54 of Wilen,
panel W folds onto panel V, then this combination of panels folds along
longitudinal fold line 15 (panel C folds onto panel D). Thus, longitudinal
fold line 15 is used only to allow a folded insert to be further folded upon
itself. Accordingly, longitudinal fold line 15 does allow folding of the entire
insert upon itself when the insert depicted in Figure 7 of Wilen is in an
unfolded state as required by claim 1.
The Examiner does not rely on Vijuk in any way that remedies the
deficiency discussed above regarding Wilen. See Non-Final Act. 4.
Consequently, we do not sustain the Examiner's rejection of claim 1 or
claims 2-5, 9-12, 21, and 23 depending therefrom, as unpatentable over
Wilen and Vijuk.
Independent claim 14 is directed to a method for making a medicine
package and recites substantially similar limitations to those discussed above
regarding claim 1 (see Br. 14, 17-18 (Claims App.)), and for the same
reasons discussed above regarding the rejection of claim 1, we do not sustain
the rejection of claim 14 and claims 15 and 16 depending therefrom.
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Application 13/696,946
Rejection II
The Examiner relies on Denny only for claim limitations other than
those discussed above regarding Wilen (see Non-Final Act. 5), and we do
not sustain the rejection of claims 6, 7, and 22 as unpatentable over Wilen,
Vijuk, and Denny.
DECISION
The Examiner's decision to reject claims 1-7, 9-12, 14--16, and 21-
23 is reversed.
REVERSED
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