Ex Parte Harding et al

Board of Patent Appeals and Interferences

May 18, 2012

11691089 (B.P.A.I. May. 18, 2012)

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.
11/691,089 03/26/2007 James Harding RANPP0170USB 5089
23908 7590 05/18/2012
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
HARMON, CHRISTOPHER R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JAMES HARDING and RICHARD O. RATZEL
_____________

Appeal 2010-002283
Application 11/691,089
Technology Center 3700
______________

Before MURRIEL E. CRAWFORD, ROBERT E. NAPPI, and
DAVID M. KOHUT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002283
Application 11/691,089

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 6, 13 through 17, and 26.
We reverse.
INVENTION
The invention relates to a system for packaging products in a
container. The system makes use of a probe which measures the void
volume of the container. The data from this measurement is used to
determine the amount of padding to be used in the container. See page 36 of
Appellants’ specification. Claim 6 is representative of the invention and
reproduced below:
6. A system for providing dunnage to a container for
packing an object in the container, comprising:

a void volume probe that measures a void volume of the
container and outputs information representative of the
measured void; and
a supply of dunnage that is controllable to dispense an
amount of dunnage to fill the void volume based on the
information output from the void volume probe.

REFERNCES
Johnson 3,509,797 May 5, 1970
Pryor 4,561,776 Dec. 31, 1985
Chow 4,922,687 May 8, 1990

Appeal 2010-002283
Application 11/691,089

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REJECTIONS AT ISSUE
The Examiner has rejected claims 6, 13 through 17 and 26 under 35
U.S.C. § 103(a) as unpatentable over Chow in view of Pryor. Answer 3-4.1,2
The Examiner has rejected claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Chow in view of Pryor and Johnson. Answer 4-5.

ISSUES
Appellants argue on pages 10 through 14 of Brief,3 that the
Examiner’s rejection of claims 6, 13 through 17, and 26 is in error.
Appellants argue that the skilled artisan would not substitute a void volume
probe for a bar code scanner, that Chow teaches away from using a
measuring probe to measure void volume and that using a probe to measure
void volume renders Chow unsatisfactory for its intended purpose.
Appellants’ arguments present us with the issue did the Examiner error in
finding that the skilled artisan would combine the references to include a
probe to measure void volume information and control the dispensing of
dunnage based upon the void volume information?

ANALYSIS

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
September 2, 2009.
2 We note that the Examiner’s statement of the rejection does not identify
claim 26 as included in this rejection, however we treat claim 26 as included
in the rejection as Appellants’ Brief addresses the rejection as including
claim 26.
3 Throughout this opinion we refer to Appellants’ Appeal Brief dated
November 24, 2008 and Reply Brief dated November 2, 2009.
Appeal 2010-002283
Application 11/691,089

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We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellants’ arguments. We
concur with Appellants’ conclusion that the Examiner erred in finding that
the skilled artisan would combine the references to include a probe to
measure the void volume information and control the dispensing of dunnage
based upon the void volume information.
Initially, we note that the same references were involved in our prior
decision of an appeal of Application 10/887,181 (Appeal no. 2006-2337,
dated November 30, 2006). In that decision we made the following
findings:
We find that Chow teaches a system for filling packages with
dunnage. As the examiner states, Chow teaches using a barcode
reader to read indicia on the box to identify the size of the box. See
column 2, lines 43 through 59. However, the indicia is not disclosed
as being used to determine the volume of the void in the box
(container) which contains an object. Chow further teaches that the
size of the box is used to control the height to which the box is lifted
relative to the dunnage fill tube. A fill valve is then opened for a
period of time and the fill is allowed to flow into the box, a mound of
fill clogs the fill pipe when the box is filled. See column 3, lines 30
through 35 and column 4, lines 12 through 21. The mound of fill is
then leveled with compressed air. See column 5, lines 1 through 5.
Chow states that the system provides the proper amount of fill
regardless of the contents of the box. See column 4, lines 15 through
20. We do not find that the system of Chow teaches determining the
void volume based upon measurements and using the measurements
to determine and control the amount of dunnage used to fill the box.
Rather, Chow’s system works based upon providing as much dunnage
as will fit into the box up to the level established by the height of the
box with respect to the fill tube and that the mound of dunnage then
completes the fill of the box.
The examiner relies upon Pryor to teach a probe, however the
examiner has not asserted, nor do we find that Pryor teaches a probe
to measure parameters of a container with an object in it and that the
Appeal 2010-002283
Application 11/691,089

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measurements are used to determine the void volume. We find that
Pryor teaches a probe for measuring parameters associated with a
machine tool.

Page 4 of decision of Appeal no. 2006-2337, dated November 30, 2006.
In this case, independent claims 6 and 26 recite limitations directed to
a probe measuring a void volume of a container and controlling the supply
of dunnage based upon the measured void volume. For the reasons
discussed in the prior decision and reproduced above, we do not find the
evidence supports a finding that the skilled artisan would combine the
teachings such that a probe is used to measure the void volume and control
dunnage based upon the measurement. Further, the Examiner’s reliance
upon Appellants’ discussion, page 36 of Appellants’ Specification, of using
a bar code reader is misplaced. The disclosure on page 36 of Appellants’
Specification identifies that the barcode reader reads information on the
packing slip or container to determine lengths of pads, the passage does not
teach that it is used to determine void volume. Thus, Appellants’ arguments
have persuaded us of error in the Examiner’s rejection of claims 6, 13
through 17 and 26 under 35 U.S.C. § 103(a) as unpatentable over Chow in
view of Pryor. We similarly will not sustain the Examiner’s separate
rejection of dependent claim 16 relies upon Chow and Pryor to teaches the
limitations of independent claim 6.

ORDER
The decision of the Examiner to reject claims 6, 13 through 17, and 26
is reversed.

Appeal 2010-002283
Application 11/691,089

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REVERSED

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